Intellectual Property Law

Price Disclosed By Plaintiff to Customer Without Obligation of Confidentiality Was Not Plaintiff's Trade Secret

Posted on September 30, 2009
Case: Southwest Stainless, LP v. Sappington, 10th Cir. No. 08-5127 (9/21/09)The One Sentence Summary: The panel affirmed damage and injunction awards in a case to enforce non-compete agreements under Oklahoma law, but reversed a trade secret finding based upon disclosure of a price to a customer without obligations not to disclose the price...

Failure to Provide Detailed Expert Analysis of Hypothetical Royalty Negotiations Causes Reversal of Damages Award Against Microsoft

Posted on September 30, 2009
Case: Lucent v. Gateway, Dell and Microsoft, Fed Cir. No. 08-1485 (9/11/09)The One Sentence Summary: Lump sum reasonable royalty damages award was not supported by evidence where plaintiff's expert analysis had flaws including not using comparable licenses, and not addressing the small contribution that the patented date picker function made to the success of Microsoft's Outlook program...

Corporate Reorganization Caused Breach of Non-Transfer Provision of Software License

Posted on September 28, 2009
Case: Cincom Sys., Inc. v. Novelis Corp., Sixth Cir. No. 07-4142 (9/25/09) The One Sentence Summary: Corporate reorganization of licensee caused a transfer of copyright license that was prohibited by express terms of license and by federal common law...

Copyright and Trade Dress Claims for Spoiled Brat Characters Fall Due to Failure to Show Access and Secondary Meaning

Posted on September 22, 2009
Case: Art Attacks Ink v. MGA Entertainment, 9th Cir. No. 0756110p (September 16, 2009)The One Sentence Summary: Summary judgment against copyright and trade dress infringement claims for copying of Spoiled Brat characters by Bratz dolls was affirmed where plaintiff did not make an adequate showing of defendant's access to the copyrighted images, and where trade dress claims failed to show secondary meaning of images as identifier of plaintiff...

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Cancellation of Trademark for Fraud Requires Intent to Deceive PTO

Posted on September 17, 2009
Case: In re Bose Corporation, Federal Circuit No. 08-1448 (Aug. 31, 2009)The One Sentence Summary: In opposition proceeding, the Trademark Trial and Appeal Board erred in cancelling Bose's WAVE trademark for fraud when there was not clear and convincing evidence of an intent to defraud the Patent and Trademark Office...

Invalidation of Means Plus Function Patent Claim Requires Evidence of Corresponding Structure in Prior Art

Posted on September 10, 2009
Case: Fresenius USA, Inc. v. Baxter Int'l, Inc. , Fed. Cir. No. 08-1306 (Sep. 10, 2009)The One Sentence Summary: The panel ruled on several issues, some for patentee and some for the defendant, including a ruling that a means plus function claim could not be invalidated when defendant had failed to produce evidence that the corresponding structure was present in the prior art...

Right of Publicity Claims by Paris Hilton Not Subject to Anti-SLAPP Motion to Strike

Posted on September 02, 2009
Case: Hilton v. Hallmark, 9th Cir. No. 0855443p (Aug. 31, 2009)The One Sentence Summary: Anti-SLAPP motion properly denied where celebrity plaintiff could prevail on common law right of publicity claims.What They Were Fighting About: Hallmark published a card showing Paris Hilton as a waitress saying "That's Hot," her trademarked phrase...

Trademark "Tacking" Back to Earlier Registered Version Not Allowed

Posted on August 25, 2009
Case: One Industries, LLC v. Jim O'Neal Distributing, Inc., 9th Cir. No 08-55316 (8/24/09)The One Sentence Summary: The changes in plaintiff's trademark were too significant to allow tacking of the marks, and summary judgment for defendant was appropriate where the marks were so dissimilar that there was no likelihood of confusion...

Bad Faith Trade Secret Claims Brought for Anticompetitive Reasons Justify $1.6M Sanction

Posted on August 21, 2009
Case: FLIR Systems v. Parrish, Cal. App. 2nd Dist. No. B209964 (6/15/09)The One Sentence Summary: Bad faith sanctions of $1,641,216.78 in attorney fees and costs for bringing and maintaining a bad faith trade secret action were affirmed under California's Uniform Trade Secret Act, Civ...

Injunction After Trade Secret Case Was Too Broad In Prohibiting Customer Solicitation

Posted on August 20, 2009
Case: Retirement Group v. Galante, Cal. App. 4th Dist. No. D054207 (Aug. 20, 2009)The One Sentence Summary: A preliminary injunction against former employees in a trade secret case was too broad and in violation of California's prohibition on non-compete agreements (Business & Professions Code § 16600) in barring former employees from soliciting customers of the former employer whose identities were not trade secrets...

Cross-Complaint Asserted to Counter Trade Secret Complaint Falls to Anti-SLAPP Motion

Posted on July 27, 2009
Case: Raining Data Corp. v. Barrenechea, Cal. App. No. G040902 (July 21, 2009)The One Sentence Summary: Cross-complaint alleging unfair competition and related claims arising from filing of trade secret complaint was properly stricken with anti-SLAPP motion, and award of attorneys' fees was proper...

Facebook Allowed to Pursue Copyright Claims Against Service Which "Scraped" Facebook Pages in Violation of Terms of Use

Posted on June 12, 2009
Case: Facebook v. Power Ventures, Inc., N.D. Calif. Case No. C08-5780 JF (May 11, 2009)The One Sentence Summary: A complaint alleging copyright infringement and other claims against a service that "scraped" content from Facebook pages was sufficient to survive a motion to dismiss...

Trade Secret Identification Under California Statute Need Not Always Include Differentiation From Skill in the Art

Posted on March 30, 2009
Case: Brescia v. Angelin, Cal. Ct of Appeal, No. B204003 (3/17/09)The One Sentence Summary: In a trade secret action against Sylvester Stallone and others, plaintiff's identification of its trade secret formula for body building supplement pudding was sufficient to comply with section 2019...

No Laches Found Where Defendant Had Not Invested in Brand Awareness For Infringing Domain Name During Period of Delay in Bringing Suit

Posted on March 17, 2009
Case: Internet Specialties West, Inc. v. Milon-Digiorgio Enterprises, Inc., 9th Cir. No. 07-55199 (3/17/09)The One Sentence Summary: In affirming an injunction prohibiting use of an ISPWEST domain name for internet services, the panel affirmed jury instructions on likelihood of confusion, and affirmed a finding of no laches where the defendant had not invested in brand awareness during a period of delay...

Breach of Confidence and Unfair Competition Claims Were Preempted By California's Trade Secret Act

Posted on March 03, 2009

Patent Claims for Candle Design Which Prevented Scorching Were Invalid Due to Obviousness

Posted on February 09, 2009
Case: Ball Aerosol & Specialty Container, Inc. v. Limited Brands, Inc., Bath & Body Works, Inc., et al., Fed Cir. No. 2008-1333 (2/9/09)The One Sentence Summary: Patent claims for a candle which prevented scorching by having feet on the base of the candle holder and having these feet rest on a cover used as a stand were invalid because the invention was obvious...

Non-Compete Clause Could Not Be Enforced Outside of Areas Where Comedy Businesses Were Operating

Posted on February 05, 2009
Case: Comedy Club, Inc. v. Improv West Assocs., 9th Cir. No. 05-55739 (1/29/09)The One Sentence Summary: After remand from the Supreme Court, the Ninth Circuit panel reaffirmed its earlier decision holding that an arbitrator's award enforcing an in-term non-compete clause over the entire country was in manifest disregard of California's law barring restraints on competition, Business and Professions Code section 16600; the non-compete was only enforceable where a comedy club owned by the licensor was operating...

Judicial Estoppel Prevents Party From Playing "Fast and Loose" By Taking Inconsistent Litigation Positions

Posted on February 04, 2009
Case: United Nat'l Ins. Co. v. Spectrum Worldwide, Inc., 9th Cir. No. 07-55833 (2/2/09)The One Sentence Summary: In a suit by the insurer for recovery of advertising injury insurance proceeds paid to settle a trade dress infringement suit, the district court properly granted summary judgment for the insurer where there was no coverage due to a first publication exclusion and the insured was judicially estopped from arguing that first publication occurred after the policy went into effect...

Qualcomm Penalized for Failure to Disclose Patents to Standard Setting Organization and for Litigation Misconduct in Failing to Produce Evidence

Posted on December 01, 2008
Case: Qualcomm Inc. v. Broadcom Corp., Fed. Cir. No. 07-1545 (12/1/08)The One Sentence Summary: The panel held that (1) Qualcomm's video patents are unenforceable against products compliant with an industry standard due to Qualcomm's intentional failure to disclose the patents to the standard setting organization; and (2) Qualcomm's failure to disclose the patents and its litigation misconduct of failing to produce evidence of its participation in the standard setting organization were a proper basis for an award of attorneys' fees to Broadcom...

Licensor of "Gone In 60 Seconds" Can Pursue Copyright and Trademark Claims for Retained Rights in the Character "Eleanor" the Car

Posted on November 17, 2008
Case: Halicki Films v. Sanderson Sales and Marketing, Carroll Shelby Int'l, 9th Cir. Nos. 06-55806, 06-55807 (11/12/08)The One Sentence Summary: The licensor of remake rights for the movie "Gone in 60 Seconds" retained sufficient rights in the Eleanor car character to pursue trademark and copyright infringement claims on remand...

Copyright Fair Use Symposium at USF

Posted on November 01, 2008
Fair Use in the Sky with Diamonds: Examining the Derivative Works Right in the Face of Fair Use, a symposium at the University of San Francisco, explored difficult and interesting questions about copyright fair use. Highlights included:Corynne McSherry of the Electronic Frontier Foundation and Jason Schultz of the Samuelson Law, Technology & Public Policy Clinic at Berkeley Law School spoke about fair use cases including the Lenz v...

Business Method Patents Are Limited by Federal Circuit in Bilski Decision

Posted on October 31, 2008
Case: In Re Bilski, Fed. Cir. No. 07-11130 (10/30/08)The One Sentence Summary: Sitting en banc, the Federal Circuit held that a "process" under 35 U.S.C. § 101 is patentable when it is tied to a particular machine or apparatus or it transforms a particular article into a different state or thing...

Patent Invalidity Due to Anticipation Requires that the Prior Art Include All Elements of the Claim Arranged or Combined as in the Claim

Posted on October 22, 2008
Case: Net Moneyin Inc. v. Verisign, Inc., Fed. Cir. No. 2007-1565 (10/20/08)The One Sentence Summary: The panel upheld a finding of invalidity for failure to disclose a computer algorithm as supporting structure for a means-plus-function claim, but reversed the district court in finding anticipation of another claim because an anticipating reference must include all claim limitations arranged or combined as in the claimed invention...

ITC's Exclusion Order in Cell Phone Chip Investigation Could Not Extend to Parties Not Named in Investigation

Posted on October 15, 2008
Case: Kyocera Wireless Corp. v. International Trade Commission, Fed. Cir. No. 2007-1493, -1494, -1495, -1496, -1497, -1498, -1499, -1514, -1573; 2008-1004, -1009, -1010, -1012, -1013, -1015, -1018, -1019 (October 14, 2008)The One Sentence Summary: In reviewing the ITC's exclusion order regarding cell phone chips, the Federal Circuit affirmed claim construction, anticipation, and obviousness rulings, but vacated the remedy due to errors in finding induced infringement and in ordering a limited exclusion order against producers of downstream products who were not named as parties in the ITC investigation...

Patent Cases May Be Leaving the Eastern District of Texas Due to Fifth Circuit Opinion Ordering Transfer of Auto Accident Case

Posted on October 14, 2008
Case: In re Volkswagen of America, 5th Cir. 07-40058 (October 10, 2008)The One Sentence Summary: The Fifth Circuit ordered the Eastern District of Texas to transfer a car crash product liability case from the Eastern District of Texas to Dallas, the site of the crash, leading patent attorneys to predict that patent infringement suits brought in the rocket docket in Marshall may now be transferred to other jurisdictions having a greater connection to the dispute...

After Ten Years of Litigation and Three Appeals, Claims for Semiconductor Wafer Tracking Are Deemed Obvious

Posted on October 10, 2008
Case: Asyst Technologies Inc. v. Emtrak Inc., Fed. Cir. No. 07-1554 (10/10/08) The One Sentence Summary: On the third appeal of a case involving patents for tracking semiconductor wafers through a manufacturing process, the panel affirmed the district court's finding on a judgment as a matter of law that the asserted claims were obvious in light of the test announced in the Supreme Court's KSR decision...

Implied Statutory Warranty to Deliver Goods Free from Rightful Claims by Third Parties Can Be Breached by Non-Frivolous Trademark Infringement Claims

Posted on October 10, 2008
Case: Pacific Sunwear of California, Inc. v. Olaes Enterprises, Inc., No. D051391 Fourth Dist., Div. One. (Oct. 9, 2008)The One Sentence Summary: Unsuccessful trademark infringement claims asserted against the buyer of "Smile Now, Cry Later" Hot Sauce Monkey shirts supported the buyer's claim that the seller breached the statutory implied warranty of section 2312(3) of the California Uniform Commercial Code to provide goods that were free of "rightful claims...

Reissued Patent Claim Did Not Impermissibly Broaden the Scope of the Original Claim

Posted on October 10, 2008
Case: Predicate Logic, Inc. v. Distributive Software, Inc., Fed. Cir. No. 2007-1539 (10/9/08)The One Sentence Summary: The district court erred in finding that claims for software analysis modified during reexamination were broader and different in scope than original claims...

District Court's Five Year Delay in Issuing Opinion After a Patent Trial Did Not Warrant Reassignment of the Case on Remand

Posted on October 08, 2008
Case: Cohesive Tech. Inc. v. Waters Corp., Fed. Cir. No. 08-1029 (10/7/08)The One Sentence Summary: The panel considered several issues in affirming in part rulings by the district court on a dispute about patents for high pressure liquid chromatography, and refused to reassign the case despite a five year delay after trial before the district court issued its opinion...

Patent for Controlling Gas Flows Invalidated for Inequitable Conduct Where Witness Could Not Explain the Failure to Disclose References to the PTO

Posted on October 08, 2008
Case: Praxair, Inc. v. ATMI, Inc., Fed. Cir. No. 2007-1483, 2007-1509, 9/29/08The One Sentence Summary: The panel affirmed in part, reversed in part and remanded after considering inequitable conduct, indefiniteness, and claim construction challenges...

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