11th Circuit Finds That University Can Be Subjected to Injunction to Prevent Continuing Infringement

In National Association of Boards of Pharmacy v. Board of Regents of the University System of Georgia, 97 U.S.P.Q.2D 1931 (11th Cir. 2011), the National Association of Boards of Pharmacy (hereinafter “NABP”) owns copyrighted tests which it uses to accredit pharmacists.  Professor Flynn Warren of the University of Georgia offered a review course for these tests, and used actual questions from the tests in his review course.  After receiving a tip, the NABP confirmed that Professor Warren was using the actual copyrighted questions, after which Professor Warren and the University of Georgia agreed to cease and desist using the copyrighted questions.  Subsequently, NABP again determined that Professor Warren was again gathering copyrighted test questions for use in his course in violation of agreement previously reached.  To confirm their suspicions, the NABP purchased a copy of Professor Warren’s course materials for $100, and after confirming that 150 questions were copied from the NABP test, the NABP was forced to replace the

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Federal Circuit Finds Declaratory Judgment Not Available Against Field of Use Licensee Where Patent Owner Could Not Be Joined

In A123 Systems, Inc. v. Hydro-Quebec, 626 F.3d 1213 (Fed. Cir. 2010), Hydro-Quebec (HQ) is a licensee of U.S. Patent Nos. 5,910,382 and 6,514,640, which are owned by the Board of Regents for the University of Texas System (UT).  The license gives HQ an exclusive license within a specified field of use.  HQ had threatened suit against A123 for infringement of these patents, whereby A123 filed a Declaratory Judgment against HQ in the District of Massachusetts claiming non-infringement on August 14, 2006.  HQ moved to dismiss alleging that UT was a necessary party and could not be joined due to Eleventh Amendment immunity, and filed its own suit with UT in the Northern District of Texas.  A123 further filed a reexamination request for the patents, which resulted in the Texas action being stayed and the Massachusetts was dismissed without prejudice while the reexamination continued.  On conclusion of the reexamination, A123 motioned to reopen the Massachusetts action, which HQ opposed on

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Federal Circuit Finds Patent Enforcement By A University Against Customers Insufficient to Waive Sovereign Immunity To Allow the Supplier To File An Independent Action Against University

  In Tegic Communications v. Bd. of Regents of the Univ. of Texas System, 458 F.3d 1335 (Fed. Cir. 2006), Tegic Communications filed a declaratory judgment in the Western District of Washington against the Board of Regents of the University of Texas System (“the University”) due to the University’s enforcement of U.S. Patent No. 4,674,112 in the Western District of Texas against 48 cellular-telephone companies.  Tegic Communications alleged that, since it supplied allegedly infringing software to 39 of 48 these companies, Tegic Communications was under a reasonable apprehension of suit.  Relying on Florida Prepaid Postsecondary Education Expense Board v. College Savings Bank, 527 US 627, 51 USPQ2d 1081 (1999), the District Court dismissed the complaint as the University was immune under the Eleventh Amendment from patent infringement claims and had not waived its sovereign immunity for such claims by bringing suit against the 39 companies.   The Federal Circuit affirmed the District Court’s dismissal.

Federal Circuit Finds Mere Response To RFP Does Not Constitute Offer To Sell Infringing Device

In FieldTurf Intr., Inc. et al. v. SprinTurf, Inc. et al. and SportFields LLC and Orion, 433 F.3d 1366, 77 U.S.P.Q.2D 1468 (Fed. Cir. 2006), the Federal Circuit affirmed a summary judgment of non-infringement in favor of SportFields LLC and Orion (collectively “SportFields”) and reversed summary judgment in favor of SportFields on its counterclaims of intentional interference with prospective economic advantage and unfair competition, and vacated the award of attorney fees.