Catching Up-Week of October 27th

Posted on | January 23, 2009 | No Comments

Another is the series of posts attempting to catch up.  A couple marking cases: one sufficiency and one false, and inventorship.

2009-1039 Bowling v. Hasbro
D/RI 05-cv-229
Judge William Smith

Hasbro appeals from the judgment of Judge William Smith confirming damages (almost $500k) from a jury trial on infringement, enforceability and no inequitable conduct, and marking.  There did not appear to be a JMOL on infringement.  The case involves 5,938,197 related to certain types of polyhedral dice (attention AD&D players!), including a six-sided die used in some of Hasbro's Monopoly editions.  The marking issue focused on whether marking the die packaging was sufficient, while damages was based on a reasonable royalty theory supported by the parties' testimony but no expert for Bowling.

Memorandum and Order (sorry, WAY too big to post.  20 pages shouldn't be 14mb.  Memo to Rhode Island: don't scan, use "Print to PDF.")  Email me and I can send it too you if you want.

2009-1041 Technical Furniture Group v. CBT Supply
D/MD 06-3424
Judge Marvin Garbis

Plaintiff appeals from the judgment following a bench trial before Judge Garbis that its declaratory claims to alter the inventorship of 7,047,890 and D541,084 were not proved by clear and convincing evidence.  Plaintiff Stengel is a named co-inventor with others on these patents, and the suit attempted to drop these "others" and to add other others who are aligned with plaintiff.  Some additional counts related to the validity of an assignment of those patents' rights, but those claims were severed into a new action.

Decision (also scanned and too large.  Attention Maryland: see my note above to Rhode Island.)  Email me and I can send it too you if you want.

2009-1044 The Forrest Group v. Bon Tool
SD/TX 05-4127
Judge Nancy Atlas

Bon Tool appeals from the decision of Judge Nancy Atlas finding that plaintiff Forrest had improperly marked certain of its platform stilt products but awarding only $500 (with 1/2 going to the U.S.) finding it a result of a "single decision" to mark (as opposed to $500 for each stilt wrongly marked).  The court did also find the patent not invalid but not infringed.

35 USC 292 deals with false marking, and provides that violators "Shall be fined not more than $500 for every such offense."  Judge Atlas found a single decision to falsely mark is a single offense, even if the mark appears falsely on hundreds or more products.  The court reviewed either old pre-Federal Circuit law or district court decisions to conclude that the penalty does not apply to each good sold.  While perhaps not a large case, an interesting topic.

Order

2009-1045 Wedgetail Ltd v. Huddleston Deluxe
ED/TX 07-cv-202
Judge David Folsom

Defendant Huddleston appeals from Judge Folsom's decision to dismiss with prejudice its counterclaims based on a lack of subject matter jurisdiction.  After claim construction, which was adverse to plaintiff, plaintiff moved to dismiss its infringement claims with prejudice, and also gave a covenant that it would not sue defendant Huddleston on any current product.  The court agreed that the dismissal and covenant divested it of jurisdiction, and dismissed the counterclaims.

Motion (granted)

2009-1046 Abbott v. Yeda Research
D/DC 00-1720
Judge Ricardo Urbina

Not an infringement case but an appeal from a district court review of a BPAI decision that found Abbott's 5,334,915 unpatentable over certain prior art.  Judge Urbina reversed the BPAI.  The issue relates to inherency of disclosure, a topic of current interest to many so I include it here.

Decision

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