Ambiguity is in the Eye of the Beholder: Exelixis v. Kappos

I never promised you any money.

The words could not be plainer: “I never promised you any money.” The meaning is clear and unambiguous, right? Ask six people to read the sentence, however, each in turn emphasizing the first, second, third, fourth, fifth, or sixth word, and you’ll quickly agree that multiple meanings are possible from even this simplest of sentence constructions. “I never promised you any money” (she did, but I didn’t); “I never promised you any money” (your sister, maybe, but not you); “I never promised you any money” (a return favor maybe, but no cash). You get the idea. […]

Of Cold Cheesesteaks and Disrespected Apostrophes: In re Campo’s Deli at Market, Inc.

The confusion of the possessive “its” (no apostrophe) with the contractive “it’s” (with apostrophe) is an unequivocal signal of illiteracy and sets off a simple Pavlovian “kill” response in the average stickler.
-Lynne Truss, Eats, Shoots & Leaves

Earlier this year, I visited Philadelphia’s Wells Fargo Center to watch a struggling 76ers team lose to the New York Knicks. Annoyingly, the crowd was mostly boisterous Knicks fans, many sporting Carmelo Anthony jerseys. Before the game, I stood in line at Campo’s waiting for a hot-off-the-grill cheesesteak. As I watched thin-sliced beef sizzle on the grill, I confess I may have drooled a bit. My $10 sandwich turned out to be cold, however, apparently cooked and wrapped much earlier. Bait-and-switch or just bad luck? With that experience behind me, you’d think that I’d rejoice at the Trademark Trial and Appeal Board’s recent decision to deny Campo’s Deli at Market Inc.’s application to register “Philadelphia’s Cheesesteak.” Actually, however, I think the PTO slid Campo’s a “cold sandwich.” You see, like Lynne Truss, author of Eats, Shoots & Leaves, a remarkable little treatise on punctuation, I believe the apostrophe deserves more respect.

Intent to Deceive: A High Hurdle Post-Therasense

1st Media, LLC v. Electronic Arts, Inc., et al. (Fed. Cir., 2012)

I have a soft spot for karaoke. It’s not that I can sing; my voice is suitable for use only in the shower or on a riding lawn mower. However, I did meet my wife on a blind date at a local restaurant on a Thursday evening that turned out to be Karaoke Night. The good news is that we got married in spite of our exposure to off-key renderings of hits by Neil Diamond, Kool & the Gang, and Madonna.

1st Media, LLC owns U.S. Pat. No. 5,464,946, which relates to an entertainment system for use in purchasing and storing songs, videos, and multimedia karaoke information. 1st Media sued Electronic Arts, Inc. and others in Nevada District Court for patent infringement. […]

The Enablement Requirement: A Limit on Greed

Magsil Corporation v. Hitachi Storage Technologies (Fed. Cir., 2012)

Thus we descended into the fourth chasm,
Gaining still farther on the dolesome shore
Which all the woe of the universe insacks.
–The Inferno, Canto VII, Dante Alighieri

Although patent validity is more frequently challenged on the basis of uncited or ill-considered prior art, Section 112 issues, including the requirement of an enabling disclosure, are underutilized as a basis of attack […]

Of Suits and Bottles

Ethox Chemicals LLC, a small specialty chemical developer based in South Carolina, is suing Coca-Cola Co. over a new additive for polyethylene terephthalate (PET) bottles [1], [2]. Ethox is claiming that the beverage giant misappropriated its molecule bis(2-phenoxyethyl) terephthalate (PEM), an additive designed to enhance the gas barrier properties of plastic containers made from PET. Ethox says PEM can be used to reduce gas permeation which might help extend bottled soda shelf-life and allow beer to be sold in PET bottles.

Joanne Davis Joins the Dilworth Team!

Dilworth IP is pleased to announce the addition of Joanne Davis to our team of professionals. Joanne’s years of experience in the practice of law have been focused in the corporate sphere with an emphasis on transactions, commercial and joint-venture agreements, and technology licensing. In the past, she has worked in the chemical, financial, health care and industrial business sectors, including 16 years in-house at a publicly traded, multi-national chemical manufacturer […]

Wrigley and Cadbury Adams Get Chewed

Wm. Wrigley Jr. Co. v. Cadbury Adams USA LLC (Fed. Cir., June 22, 2012)
Chewing gum has come a long way since, as a youth, I opened a pack of Juicy Fruit® gum just to inhale its marvelous aroma. As a law student, I felt unprepared for class without a stick or two of Doublemint® gum to calm the nerves and sharpen the brain. Then came the rivals to challenge Wrigley with creatively packaged products iced with the latest . The chewing gum wars began in earnest. This battle pits heavyweight Wrigley against upstart Cadbury Adams.

To Plea or Not to Plea: IP Theft Cases Advance

Recently, two cases involving IP theft advanced against two scientists.

A former Sanofi scientist accused of stealing trade secrets from Sanofi, a global drugmaker, has recently been sentenced to jail.

Four months after pleading guilty to stealing trade secrets from her former employer, Sanofi, and selling Sanofi compounds through another company in which she held an interest […]

Unsanctioned by the Victim: The High Cost of Hindsight Reconstruction

Hindsight reconstruction at the hands of a well-meaning patent examiner has victimized many a patent applicant. The examiner has a daunting task. He or she must review a new disclosure and claims, quickly grasp the nature of the invention, search for related prior art, and then (metaphorically) hop into the nearest flux capacitor-modified DeLorean, punch in the time, and accelerate to 88 mph […]

Some Words about Invention Promotion Firms

Invention Promotion Firms (IPFs) hold themselves out as providing a range of valuable services to novice inventors. For example, many of these firms offer to evaluate the patentability of inventions, file patent applications, present the invention to manufacturers, build prototypes, and market inventions. They often point out that most conventional services, i.e., law firms and marketing consultants […]