News/Events - Newsletter

NEWS FROM OSTROLENK, FABER, GERB & SOFFEN, LLP
December 2005

Ostrolenk, Faber, Gerb & Soffen, LLP won a significant victory for its client, Alcatel Internetworking, Inc. As part of a patent infringement suit in which Alcatel was a plaintiff in a California patent infringement action, the defendant Rates Technology, Inc. brought a derivative suit in New York for abuse of process against Alcatel and its California lawyers in an effort to take discovery of the law firm and to force a favorable settlement in the California action.

The basis for the abuse of process claim was the California lawyers' proper service of a discovery subpoena on Rates' bank HSBC. OFGS moved for an early dismissal of the case to prevent the California defendant from gaining a tactical advantage in the underlying patent suit. In a rare result, the New York State court dismissed the claim, in its entirety, with prejudice, thereby freeing Alcatel from the defendant's settlement leverage.

Representing Alcatel and its lawyers were Douglas A. Miro and Douglas Q. Hahn. For more information, contact Mr. Miro at dmiro@ostrolenk.com.

OFGS successfully represented Safavieh, Inc., a leading designer, manufacturer, and importer of fine carpets, in its defense against a claim of copyright infringement brought by Odegard, Inc. in the U.S. District Court for the Southern District of New York, alleging that Safavieh's Mahogany carpet design infringed upon Odegard's Takyu III carpet design.

Safavieh filed a motion for summary judgment on its counterclaim of non-infringement of Odegard's Takyu III copyright, arguing that Odegard was entitled to only a thin scope of protection for the selection and arrangement of public domain features comprising its Takyu III design, and that under the "more discerning observer" standard, the overall look and feel of Safavieh's Mahogany design was not substantially similar to that of Takyu III.

On November 9, 2005, U.S. District Court Judge Robert W. Sweet issued a decision adopting Safavieh's arguments and dismissing Odegard's copyright infringement claim. Odegard, Inc. v. Safavieh, Inc. et al., Case No. 1:04-cv-04142-RWS (S.D.N.Y. 11/9/2005).

Representing Safavieh on this case were Robert C. Faber, Peter S. Sloane, and Charles P. Guarino. For more information, contact Mr. Faber at rfaber@ostrolenk.com.

Partner James A. Finder traveled to Japan to lecture prominent Japanese companies on cutting edge issues of patent law. Mr. Finder gave lectures on the recent Trex and Philips cases on patent claim construction issues, as well as the Lundgren case and the PTO's new guidelines on the examination of business method patent applications. In the Lundgren case, the United States Patent and Trademark Office signaled the elimination of roadblocks to business method patents. In particular, the Patent Office ruled that a patent application for a business method can not be rejected as "outside the technological arts." For more information, contact Mr. Finder at jfinder@ostrolenk.com.

Partners Robert C. Faber and Max Moskowitz presented a lecture to clients of a prestigious firm in Japan on the proposed changes in the United States Patent Act. For more information contact Mr. Faber at rfaber@ostrolenk.com or Mr. Moskowitz at mmoskowitz@ostrolenk.com.