For our weekly SoCal IP Institute meeting on Monday, March 25th, 2019, we will discuss the following cases:
Falk Pharma Gmbh v. Salix Pharmaceuticals, Inc., (CAFC February 8 2019)(Available Here). Falk Pharma sued Salix Pharmaceuticals for trademark infringement. The litigation resulted in three appeals, defendant motioned to disqualify plaintiff’s law firm in all three appeals. The CAFC found that an engagement letter with a competitor’s corporate affiliate that incorporated by reference the competitor’s outside counsel guidelines created an attorney client relationship with the affiliate. The CAFC also found that though additional considerations may be necessary to disqualify the firm, the client did not face undue hardship or prejudice.
Night Owl v. Dongguan Auhua Electronics Co. (M.D Fla. )(Available Here) Plaintiff alleged that Defendant sold infringing goods in both China, and had plans to begin selling in the US. Defendant filed a trademark application in the USPTO, and plaintiff tried to get an injunction to stop the registration but could not find an address to serve defendant. Plaintiff then applied for an order authorizing alternative service. The court denied the motion in part (denied that service be allowed through email) but allowed service to be made under the secretary of commerce for intellectual property and director of the U.S. Patent and Trademark Office.
Ex Parte Smith (PTAB February 2, 2019) (Available Here) An Examiner at the USPTO rejected application 13/715,476, which had claims directed to a method of trading securities. The PTAB reversed the Examiner’s refusal. Specifically, the PTAB found that though the application’s claims were directed to a judicial exception, the claims disclosed a practical application of derivative trading. The PTAB also found the application disclosed specific technical improvements that were patent eligible.
All are invited to join us on Monday March 25th, 2019, at noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning.