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...

To access blog feed reader register for free. (You will also learn about new ways to read and access the freshest law blogs.)

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...

Watches Manufactured Abroad Bearing US Copyrighted Design Cannot Be Imported Without Copyright Owner's Consent According to Ninth Circuit

Posted on September 09, 2008
Case: Omega S.A. v. Costco Wholesale, 9th Cir. No. 07-55368 (09/03/08) The Two Sentence Summary: The Ninth Circuit panel reaffirmed their precedent holding that importation and sale of imported "gray market" watches manufactured overseas bearing a copyrighted design registered in the United States was an infringement of copyright...

Breach of Open Source Software License Allows Injunction for Copyright Infringement

Posted on August 18, 2008
Case: Jacobsen v. Katzer, Fed. Cir. No. 2008-1001 (8/13/08)The One Sentence Summary: Applying Ninth Circuit law, the Federal Circuit reversed a denial of preliminary injunction, holding that an open source copyright license requiring attribution as a condition of use and distribution of software could be enforced by preliminary injunction and remanded for a determination of whether preliminary injunction standards were met...

Even Reasonable and Narrow Non-Compete Agreements Are Barred by California Statute

Posted on August 07, 2008
Employment contracts with non-competition clauses are common outside of California, but a California statute, section 16600 of the California Business and Professions Code, prohibits non-compete contracts outside of a few statutory exceptions. In a decision issued on August 7, 2008, Edwards v...

Unsuccessful Patent Claims Did Not Allow Later Malicious Prosecution, Unfair Competition and Antitrust Claims

Posted on July 08, 2008
Case: Fisher Tool Co., Inc. v. Gillet Outillage, 9th Cir. No. 06-55996, 06-56165 (June 30, 2008)The One Sentence Summary: District court properly granted summary judgment for defendants on malicious prosecution, Lanham Act, state law tort and antitrust claims arising out of earlier patent suit on plier patents where defendant and its attorneys had good faith basis to assert patent infringement...

Exact Digital Models of Cars Not Protected by Copyright

Posted on June 27, 2008
Case: Meshworks v. Toyota, Tenth Cir. No. 064222 (June 17, 2008) The One Sentence Summary: Exact digital models of cars were not copyrightable because there was no creativity involved in their creation. Tenth Circuit Holdings: In derivative works cases, the court must separate out the preexisting work to determine what is copyrightable by the new author...

California Appellate Court Defines Statute of Limitations Period for Third-Party Trade Secret Actions

Posted on June 20, 2008
Case: Cypress Semiconductor Corp. v. Superior Ct. (Silvaco Data Systems), No. H032114 (Cal. Ct. App. May 30, 2008)The One Sentence Summary: Court holds that the statute of limitations on a cause of action for third-party trade secret misappropriation begins to run when the plaintiff has any reason to suspect that the third-party knows or reasonably should know that the information is a trade secret...

Statutory Damages Were Not Available for Series of Infringements Where Work Was Registered After 1st Infringement

Posted on June 16, 2008
Case: Derek Andrew, Inc. v. Poof Apparel Corp., No. 07-35048, Ninth Circuit, June 11, 2008The One Sentence Summary: Statutory damages for copyright infringement were not available where the first infringement in a series occurred before registration...

Patent Exhaustion Doctrine Prevented Pursuit of Customers of a Licensee

Posted on June 16, 2008
Case: Quanta Computer, Inc., et al. v. LG Electronics, Inc., Supreme Court No. 06-937, June 9, 2008.The One Sentence Summary: The patent exhaustion doctrine prevented an action against a buyer of a patented article from a licensee. Supreme Court Holdings:The authorized sale of an article that substantially embodies a patent exhausts the patent holder's rights and prevents the patent holder from invoking patent law to control postsale use of the article...

Parody Web Site That Criticized Critics of the LDS Church Did Not Infringe Trademarks or Constitute Cyber-Squatting

Posted on June 03, 2008
Case: Utah Lighthouse Ministry v. Discovery Computing, 10th Cir. No. 07-4095 (05/29/2008)The One Sentence Summary: The panel affirmed summary judgment in favor of parody web site and domain names that used the mark of UTAH LIGHTHOUSE, a site criticizing the LDS Mormon church, to direct internet users to sites with opposing views...

Preparing Designs for Infringing Products Was Sufficient Preparation to Allow Declaratory Judgment Jurisdiction

Posted on May 28, 2008
Case: Cat Tech. LLC. v. Tubemaster Inc., Fed. Cir. No. 07-1443 (5/28/08)The One Sentence Summary: The second prong of the Federal Circuit's declaratory judgment test survives after the Supreme Court's Medimmune decision, and was met here where the accused infringer had made preparations to infringe...

In Doors Rock Band Dispute, Ninth Circuit Finds Insurer Duty to Defend Against Trademark Claims

Posted on April 02, 2008
Case: Manzarek v. St. Paul Fire & Marine Ins. Co., 9th Cir. No. 06-55936 (3/25/08)The One Sentence Summary: District court erred in dismissing an advertising injury insurance coverage and bad faith lawsuit involving members of the rock band, The Doors, and claims of trademark infringement...

Antisuit Injunction Not Available to Stop Litigation in China Despite Prior California Settlement

Posted on April 01, 2008
Case: TSMC North America v. Semiconductor Mfg. Int'l Corp., California Court of Appeal No. A117182, March 27, 20008In Brief: After the parties settled an earlier patent infringement suit with a settlement agreement providing for California choice of law and submission to California courts for jurisdiction, disputes again arose causing one party to file litigation in California and the other to file a suit in the Peoples' Republic of China...

Patent Office Rule Changes Blocked by District Court's Permanent Injunction

Posted on April 01, 2008
Case: Tafas v. Dudas, Nos. 1:07cv846, 1:07cv1008 (E.D. Va. 4/1/08)Judge James Cacheris of the United States District Court in Alexandria, Virginia issued a permanent injunction blocking the USPTO from implementing new rules for patent prosecution. The rules had been previously held up by a preliminary injunction issued on October 31, 2007...

Use of Trademark in Keyword Search Caused Initial Interest Confusion

Posted on March 04, 2008
Case: Storus Corp. v. Aroa Mktg. Inc., N.D. Cal. C-06-2454 (Feb. 15, 2008)The One Sentence Summary: Summary judgment of initial interest confusion under the Lanham Act was granted for plaintiff where defendant purchased keyword search advertisements using plaintiff's trademark and the advertisement displayed the trademark leading searchers to click on the advertisement...

Amounts Paid By Settling Copyright Defendants Reduces Judgment Against Non-Settling Defendants Under One-Satisfaction Rule

Posted on March 02, 2008
Case: Buc Int'l Corp. v. Int'l Yacht Council Ltd, 11th Cir. No. 05-16151 (2/25/08)The One Sentence Summary: Defendants found liable for copyright infringement should have been allowed to reduce the judgment against them under Federal Rule of Civil Procedure 60(b)(5) by the amount paid by settling defendants because one satisfaction rule applies to copyright claims.

Unfair Competition and Copyright Claims Against Karaoke Competitor Dismissed

Posted on March 01, 2008
Case: Sybersound v. UAV Corp., 9th Cir. No. 06-55221(2/27/08)The One Sentence Summary: Claims that a competitor in the karaoke business infringed copyrights and competed unfairly were dismissed.Ninth Circuit Holdings:Lanham Act 43(a) (15 U.S.C. § 1125(a)) claim for misrepresentations regarding copyright license status could not be brought by competitor who did not own copyrights, so dismissal of claim was proper...

Attorneys' Fees for Bad Faith Trade Secret Claim Improper Where Complaint Did Not Allege Trade Secret Misappropriation

Posted on February 22, 2008
Case: CytoDyn, Inc. v. Amerimmune Pharm., Inc., No. B187661 (Cal. Court of Appeal, 2/20/08)The One Sentence Summary: Complaint alleging unjust enrichment in taking of patents and trademarks did not allow award of attorneys' fees to defendants under California Trade Secrets Act despite erroneous claim for attorneys' fees under Trade Secrets Act in prayer for relief...

Prototype Sewing Machine Sold to the Customer Created On-Sale Bar

Posted on February 21, 2008
Case: Atlanta Attachment Co. v. Leggett & Platt, Inc., No. 2007-1188 (Fed. Cir. 2/21/08)The One Sentence Summary: Sale of a prototype sewing machine to a customer before the critical date created an on-sale bar making the patent invalid.Federal Circuit Holdings:On-sale bar of 35 U...

All Sleekcraft Factors Must Be Considered in Summary Judgment on Trademark Infringement Claims

Posted on February 21, 2008
Case: Jada Toys, Inc. v. Mattel, Inc., No. 05-55627 (9th Cir. 2/21/08)The One Sentence Summary: The panel reversed summary judgment rulings by the district court on trademark infringement, dilution and copyright claims in a dispute between toy makers...

Trade Secret Claims Should Have Been Stayed During Arbitration of Related Contract Claims

Posted on January 15, 2008
Case: Heritage Provider Network, Inc. v. Superior Court, Cal. Court of Appeal, Second District B20129 (January 14, 2008)The One Sentence Summary: In a California state court action alleging breach of contract, unfair competition and misappropriation of trade secrets arising out of canceled merger discussions between two physician groups, the trial court erred in not staying the case pending arbitration of the contract claims where the claims shared common factual issues.

Injunction Prohibiting Use of Unidentified Trade Secrets Was Too Vague

Posted on January 11, 2008
Case: Patriot Homes, Inc. v. Forest River Housing, 7th Cir. No. 06-3012 (January 10, 2008)A preliminary injunction in a trade secret and copyright case enjoined a defendant from "[u]sing, copying, disclosing, converting, appropriating, retaining, selling, transferring, or otherwise exploiting Patriot?s copyrights, confidential information, trade secrets, or computer files...

Patent Anticipated by Prior Art Paper That Shared Diagrams and Descriptions

Posted on January 11, 2008
Case: SRI Int'l, Inc. v. Internet Sec. Sys., Inc., Fed. Cir. No. 2007-1065 (January 8, 2008)On a patent for internet security techniques, a paper published more than one year before the patent was filed invalidated the patent due to anticipation. The panel rejected the argument that the paper was not enabling - shared language and diagrams between the paper and the specification established on summary judgment that the paper was enabling...

Foreign Corporation in Contested TTAB Proceeding Must Produce Corporate Designee Witness Pursuant to District Court Subpoena

Posted on January 01, 2008
Case: Rosenruist-Gestao E Servicos LDA v. Virgin Enters. Ltd., No. 06-1588 (4th Cir. December 27, 2007)The One Sentence Summary: A Portugese company attempting to register a mark in contested proceedings before the TTAB could be compelled by a district court subpoena under 35 U...

Likelihood of Confusion Analysis Is Not Limited to the Goods or Services for Which Mark Was Registered

Posted on January 01, 2008
Case: Applied Information Sciences v. eBay, No. 05-56123, 05-56549 (9th Cir. Dec. 28, 2007)The One Sentence Summary: In a trademark infringement claim, plaintiff can establish a protectable interest by showing it has a registered mark, but the likelihood of confusion analysis is not limited to the goods or services in which the mark was registered...

In Amended Opinion, Ninth Circuit Vacates Injunction Against Google But Directs Consideration of Ease of Stopping Infringement

Posted on December 14, 2007
Case: Perfect 10, Inc. v. Amazon.com, Inc., No. 06-55405 (9th Cir. 12/3/07) Summary: In a copyright infringement case, the panel reversed a district court preliminary injunction stopping Google from displaying thumbnail images of plaintiff?s copyrighted nude photographs because Google was likely to prevail on its fair use defense...

No Need To Engage In Likelihood Of Confusion Analysis Where Consumers Could Not Be Confused About A Product's Origin

Posted on December 13, 2007
Case: Top Tobacco, L.P. v. North Atlantic Operating Company, Inc., Case No. 07-1244 (7th Circuit Court of Appeals, December 4, 2007) The One Sentence Summary: A picture is worth a thousand words: here, one glance is enough to decide that there is no probability of confusion...

Ambiguous Prosecution History That Contradicted Specification Did Not Limit Claim Scope of Means Plus Function Claim

Posted on November 28, 2007
Case: Elbex Video, Ltd. v. Sensormatic Elecs. Corp., Fed. Cir. No. 2007-1097 (11/28/07)Summary: In a suit involving closed circuit television camera control patents, the district court erred in granting summary judgment of noninfringement by construing the term "receiving means" as a monitor in light of ambiguous prosecution history statements...

Broad Non-Hire Clause Covering All Employees of Temp Agency Was Unenforceable Under California Law

Posted on November 28, 2007
Case: VL Systems, Inc. v. Unisen, Inc., 152 Cal. App. 4th 708 (2007)Summary: A broad contract preventing an employer from hiring any former employee of the plaintiff temporary agency without paying a fee was an unenforceable non-compete under Business and Professions Code section 16600...

California Adopts Model State Trademark Law

Posted on November 28, 2007
California?s Governor Arnold Schwarzenegger recently signed into law the Model State Trademark Law (MSTL), replacing California?s previous trademark laws in their entirety.The MSTL:? adopts the USPTO?s goods and services classification and allows a single application to include multiple classifications;? expands the information required to be provided with an application for registration of a mark to a drawing of the mark and three specimens of that mark as it is actually used;? requires that an application include a declaration of accuracy signed by a specified person and would subject that person to a civil penalty of not more than $10,000 for willfully stating as true in the declaration any material fact he or she knows to be false;? reduces the registration period from 10 years to 5 years, and provides for successive 5-year renewal periods;? requires the applicant to state whether the applicant previously attempted to register the mark with the USPTO and if such registration was refused, to state the reason for its rejection...

Ninth Circuit Clarifies Test for Dilution, Finds that ?PerfumeBay? Dilutes ?eBay.?

Posted on November 28, 2007
Case: Perfumebay.com, Inc. v. eBay, Inc., Case No. 05-56794, Ninth Circuit Court of Appeals (November 5, 2007)Summary: For trademark dilution, the similarity requirement may be less stringent in circumstances in which the senior mark is highly distinctive and the junior mark is used for a closely related product, as is the case here...

Fourth Circuit Finds No Dilution in Chewy Vuiton Case

Posted on November 16, 2007
Case: Louis Vuitton Malletier S.A. v. Haute Diggity Dog, LLC, Case No. 06-2267, Fourth Circuit Court of Appeals (November 13, 2007)The One Sentence Summary: The Fourt Circuit found no dilution by "Chewy Vuiton" of the famous LOUIS VUITTON mark, construing the Trademark Dilution Revision Act of 2006 (TDRA) to hold that parody may be considered in determining whether dilution by blurring has occurred...

Patent Did Not Adequately Incorporate Ancestor Patent to Avoid Anticipation

Posted on November 09, 2007
Case: Zenon Environmental, Inc. v. US Filter Corp., Fed. Cir. No. 2006-1266, 2006-1267 (11/7/07)The One Sentence Summary: A water filter patent was invalid and anticipated where it was not entitled to the priority date of an ancestor patent when the intervening patents failed to incorporate by reference the necessary details of the ancestor patent...

ICANN Defers Action on WHOIS Database

Posted on November 06, 2007
A controversial proposal to limit access to information about domain name owners was tabled by a committee of the Internet Corporation for Assigned Names and Numbers (ICANN). The committee voted on October 30, 2007 to defer implementing policy changes that could eliminate or otherwise limit access to some or all of the data on domain name owners that is currently available to the public on the WHOIS database...

Doctrine of Equivalents Could Be Used to Expand Concentration Range in Patent Claims

Posted on November 02, 2007
Case: US Philips Corp. v. Iwasaki Elec. Co. Ltd., Fed. Cir. No. 2007-1117 11/2/07)The One Sentence Summary: The doctrine of equivalents could allow a jury to determine that a concentration of halogens in a lamp was close enough to a concentration range stated in the claims...

Assertion of Patent with Defective Title Was Not an Exceptional Case for Award of Attorneys' Fees

Posted on November 02, 2007
Case: Digeo, Inc. v. Audible, Inc., Fed. Cir. No. 2007-1133 (11/1/07)The One Sentence Summary: The district court did not err in refusing to grant an award of attorneys' fees under 35 U.S.C. section 285 where there was not clear and convincing evidence that the plaintiff should have known of the defects in title of the patent that it asserted, and district court did not need to allow discovery into the issue...

Corporations Must Limit Distribution of Advice to Maintain Attorney-Client Privilege

Posted on October 26, 2007
In this post, guest blogger M. Kay Martin describes a recent California appellate court opinion illustrating what corporations must to do avoid waiving attorney client privilege.The decision, Zurich American, holds that in order to avoid waiver, corporations should limit distribution of attorney advice, opinions and strategy to those who ?need to know,? and recipients should be cautioned not to indiscriminately forward the document to others who may not fall within that description...

Taking of Correspondence and Bid Information Needed for Time Sensitive Construction Projects Allows Trade Secret Claims to Proceed to Trial

Posted on October 17, 2007
Case: San Jose Construction, Inc. v. S.B.C.C., Inc., (Cal. App. 6th Distr. No. H031066 10/12/07)The One Sentence Summary: A project manager's taking of binders of correspondence and bids for time sensitive construction projects created questions of fact requiring a trial on trade secret, interference with prospective economic advantage and unfair competition claims by the former employer against the new employer...

Trademark Trial and Appeal Board No Substitute for Federal Court When Infringement Action is Threatened

Posted on October 16, 2007
Case: Rhoades v. Avon Products, Inc., Case No. 05-56047 (9th Cir. 10/15/07)The One Sentence Summary: Allegations of threats sufficient to create "reasonable apprehension" of an infringement suit stated an actual controversy for purposes of declaratory judgment jurisdiction and plaintiffs were not required to wait for the completion of Trademark Trial and Appeal Board (TTAB) proceedings before seeking declaratory relief...

Northern District of California Considering Changes to Its Local Patent Rules

Posted on October 13, 2007
At the Northern District of California's annual Patent Law Roundtable held on October 2, 2007, a panel including judges Marilyn Hall Patel, Ronald Whyte, Susan Illston, and Elizabeth Laporte discussed patent law developments. One of the items discussed was an effort to revise the Northern District's local rules for patent cases...

Northern District of California Adopts Revised Model Jury Instructions for Patent Cases

Posted on October 13, 2007
The Northern District of California has adopted revised model jury instructions for patent cases. The instructions reflect recent developments in patent cases including the changes in obviousness law from the Supreme Court's KSR decision.

Summary Judgment of Noninfringement Reversed Where Defendants Challenged Only Precision, and Not Validity, of Testing Methods

Posted on October 12, 2007
Case: Warner-Lambert Co. v. Purepac Pharmaceutical Co., Case No. 2006-1572 (Fed. Cir. 9/21/07)The One Sentence Summary: Summary judgment of noninfringement was reversed where the Federal Circuit, while affirming the district court's claim construction, rejected defendants' arguments which had focused on the precision of testing methods, rather than validity, to support findings of noninfringement...

Former Employer Who Disclaimed Interest in Former Employee's Patent Was Not a Necessary Party

Posted on October 12, 2007
Case: IpVenture, Inc. v. Prostar Computer, Inc. (Fed. Cir. No. 2006-1012, 2006-1081 9/28/07)The Two Sentence Summary: The district court erred in dismissing a former HP employee's patent claim where HP had disclaimed all interest in the patent despite an employee agreement requiring assignment of inventions...

Claims for Mental Processes for Resolving Disputes by Arbitration Were Unpatentable

Posted on September 26, 2007
Case: In re Comiskey, No. 2006-1286 (Fed. Cir. 9/20/07)The One Sentence Summary: Claims for a method of submitting disputes to arbitration were unpatentable subject matter under 35 U.S.C. § 101 when they were no more than mental processes, but the addition of a computer and communication devices to such claims was remanded to the PTO for whether the addition of these devices was obvious.

Ninth Circuit Rejects ?Trademark Disparagement? As A Cause of Action Under The Lanham Act

Posted on September 26, 2007
Case: Freecycle Network, Inc. v. Oey, No. 06-16219 (9th Cir. 9/26/07)The One Sentence Summary: Plaintiff?s preliminary injunction preventing defendant ?from making any comments that could be construed as to disparage upon [plaintiff's] possible trademark and logo? was vacated because defendant?s actions were not a ?use in commerce,? created no likelihood of confusion, and did not disparage plaintiff?s products or services; and to the extent the injunction was based on a ?trademark disparagement? claim under the Lanham Act, the district court abused its discretion because no such cause of action exists under the Act...