2012

January 11 summaries

Marctec, LLC v. Johnson & Johnson and Cordis Corporation

A litigation position which is unsupported by the intrinsic record, because it ignores both the specification and prosecution history, may be found frivolous and support a finding of vexatious litigation misconduct.

Area(s) of Law:
  • Patents

Wolk v. Kodak Imaging Network, Inc.

Defendant largely acted in accordance with DMCA when it provided plaintiff with a means to contact concerning removal of infringing images.

Area(s) of Law:
  • Copyright

Celsis In Vitro Inc, v. Cellzdirect, Inc.

The court analyzes four factors when considering a preliminary injunction: 1) likelihood of success on the merits, 2) irreparable harm, 3) balance of hardships, and 4) public interest.

Area(s) of Law:
  • Patents

Golan v. Holder

Congress did not exceed its authority under the Copyright Clause of the Constitution by removing works from the public domain previously unprotected by U.S. copyright laws.

Area(s) of Law:
  • Copyright

Dealertrack, Inc. v. Huber

"Disclosure of multiple examples [of embodiments] does not necessarily mean that such list is exhaustive." "Simply adding a ‘computer aided’ limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible."

Area(s) of Law:
  • Patents

Bohnsack v. Varco

If the plaintiff filed for a patent on the defendant’s invention, this is enough to constitute use of the defendant’s trade secret.

Area(s) of Law:
  • Trade Secrets

Olusegun Falana v. Kent State University and Alexander J. Seed

"A putative inventor who envisions the structure of a novel genus of chemical compounds and contributes the method of making that genus contributes to the conception of that genus."

Area(s) of Law:
  • Patents

Kinbook, LLC v. Microsoft Corporation

In a reverse trademark infringement case, the senior trademark owner still must demonstrate that he or she still has a distinct mark.

Area(s) of Law:
  • Trademarks

Jacob Krippelz, Sr. v. Ford Motor Company

Conclusory expert testimony is not a substitute for actual prior art disclosure in an anticipation analysis.

Area(s) of Law:
  • Patents

HTC Corporation v. IP-COM GMBH & CO.

To determine whether a means plus function limitation is definite, a court looks to: 1) the particular claimed function, and 2) the specification and corresponding structure, material, or acts that perform that function.

Area(s) of Law:
  • Patents

Charles L. Sims v. Viacom, Inc.

To file a claim for copyright infringement, one must first register a copyright.

Area(s) of Law:
  • Copyright

February 14 summaries

Craig Thorner v. Sony Computer Entertainment America LLC

The words of a patent claim are generally given their ordinary and customary meaning as understood by a person of ordinary skill in the art when read in the context of the specification and prosecution history.

Area(s) of Law:
  • Patents

Adair, Athwal, and Emtage v. Carter and Presta

"To overcome a [35 U.S.C.] § 135(b)(1) bar for a post-critical date claim, an applicant must show that such claim is not materially different from a pre-critical date claim present in the application… to obtain the benefit of the earlier filing date.”

Area(s) of Law:
  • Patents

Seacalt S.A. v. Wuxi Shenxi Constr. Mach. Co

Plaintiff's contention that exterior design of commercial hoist qualified for trade dress protection unavailable under Lanham Act due to a finding of functionality.

Area(s) of Law:
  • Trademarks

Mettler-Toledo, Inc. v. B-Tek Scales, LLC

In determining the construction of a means-plus function claim “[a] court must look to the specification to determine the structures that correspond to the claimed function."

Area(s) of Law:
  • Patents

United States v. Jin

Under the Economic Espionage Act, the Government must prove beyond a reasonable doubt that an economic spy intends to supply a trade secret to a benefitting nation.

Area(s) of Law:
  • Trademarks

Astrazeneca Pharmacuticals LP v. Apotex Corp.

Charging a §271(e)(2) patent infringement claim confers subject matter jurisdiction upon federal courts. In order to state a claim under §271(e)(2) for pharmaceutical use, the Abbreviated New Drug Application of the defendant must claim a use that was already patented.

Area(s) of Law:
  • Patents

Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc.

Long contested patent with application filed on October 24, 1974 and patent finally granted on August 20, 2002. The challenge involves issues of inventorship, anticipation, obviousness, lack of written description and of willful infringement, enhanced damages, attorneys’ fees and costs, and an ongoing royalty.

Area(s) of Law:
  • Patents

Innovative Legal Marketing, LLC v. Market Masters-Legal

As a general rule, copyright law does not protect scenes a faire, that are incidents, characters, or settings which, as a practical matter are indispensable or standard in the treatment of a given topic, and though an “ordinary” phrase may be quoted without fear of infringement, a copier may not quote or paraphrase the sequence of creative expression that includes such a phrase.

Area(s) of Law:
  • Copyright

Yesh Music v. Lakewood Church

A licensing agreement does not entitle the licensee to perpetual use of the composition for post expiration productions. Also, to show that vicarious liability or infringement exists in copyright claims, the individual in question must supervise or at least have the ability to supervise the infringing activity, and the individual must have a financial interest in the allegedly infringing activity.

Area(s) of Law:
  • Copyright

Roger Miller Music Inc. v. Sony/ATV Publishing, LLC

If an assignee becomes a registered owner of the copyright and renewal rights in a song while the author is alive and before the rights have vested, then the author cannot will those rights to someone else upon his death.

Area(s) of Law:
  • Copyright

Fort Properties, Inc. v. American Master Lease, LLC

Simply adding a “computer aided” limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.

Area(s) of Law:
  • Patents

Tempo Lighting, Inc. v. Tivoli, LLC

The definition of a term claimed in one applicant's original prosecution was treated as intrinsic evidence when construing the claim of the same term in another applicant's application.

Area(s) of Law:
  • Patents
  • , Claim Construction

Kwan Software Eng'g, Inc. v. Foray Techs., LLC

Independent development constituted complete defense to copyright infringement and DMCA claims.

Area(s) of Law:
  • Copyright
  • , Infringement, DCMA

Loftness Specialized Farm Equip., Inc. v. Twiestmeyer

A breach of a non-disclosure agreement alone formed the basis of an action even though the information protected by the non-disclosure agreement would not otherwise be entitled to trade secret protection.

Area(s) of Law:
  • Trade Secrets
  • , Nondisclosure agreements

March 19 summaries

Fort Properties, Inc. v. American Master Lease, LLC

Simply adding a “computer aided” limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.

Area(s) of Law:
  • Patents

Beane v. Mii Technologies, LLC

An assertion that all information ever created amounts to a trade secret does not satisfy the requirements of the Uniform Trade Secret Act.

Area(s) of Law:
  • Trade Secrets

In re Erik P. Staats and Robin D. Lash

The two-year limitation of 35 U.S.C. § 251 relating to broadening of claims on reissue application only applies to the first broadening reissue application; any further broadening reissue applications, whether or not related to the first broadening reissue application, may be filed outside of the two-year limit.

Area(s) of Law:
  • Patents

In re Viterra Inc.

Concerning identical marks, the “degree of similarity necessary to support a conclusion of likely confusion declines.”

Area(s) of Law:
  • Trademarks

Own Your Power Communications, Inc. v. Oprah Winfrey

A trademark phrase can be used by Plaintiff in a non-trademark descriptive sense and thus will not infringe on Defendant's trademark phrase.

Area(s) of Law:
  • Trademarks

Digital-Vending Services International, LLC v. The University of Phoenix, Inc.

“The context in which a term is used in the asserted claim can be highly instructive” to its claim construction. A limitation should not be read into a claim “based on statements made during prosecution absent a clear disavowal or contrary definition.”

Area(s) of Law:
  • Patents

Bedford Auto Dealers Assoc. v. Mercedes Benz of North Olmsted

Even though Plaintiff may have registered term as a trademark, if the court finds that the term is generic then the term will not be worthy of the protection of a trademark.

Area(s) of Law:
  • Trademarks

Ray Communications, Inc. v. Clear Channel Communications, Inc.

Laches may bar relief, but not automatically; a showing of “plus” factors must be presented for laches to bar relief.

Area(s) of Law:
  • Trademarks

Broadcast Music, Inc. v. Haibo, Inc.

When assessing the amount of statutory damages warranted for infringement, the Court has wide discretion.

Area(s) of Law:
  • Copyright

OgoSport, LLC v. Maranda Enterprises, LLC

Even if a plaintiff established a protectable trade dress and a likelihood of confusion, it cannot prevail if defendant shows that trade dress is merely functional.

Area(s) of Law:
  • Trademarks

Erickson v. Blake

If there is primarily only one way to express an idea, the expression cannot be copyrighted under the merger doctrine.

Area(s) of Law:
  • Copyright

Marine Polymer Technologies, Inc. v. HemCon Inc.

Intervening rights with respect to reissued patents do not accrue where the accused product or activity infringes a claim that existed in the original patent and remains without substantive change after reissue.

Area(s) of Law:
  • Patents

Mayo Collaborative Services v. Prometheus Laboratories, Inc.

Patents based on natural law must contain other inventive elements to ensure the patent in practice amounts to significantly more than a patent of the natural law itself.

Area(s) of Law:
  • Patents

McGee v. André

Copyright infringement can only occur when probative and substantial similarity are proven; copyright does not protect unoriginal work.

Area(s) of Law:
  • Copyright

Brigham Young Univ. v. Pfizer, Inc.

Under Utah precedent, the Uniform Trade Secrets Act preempts claims based on the unauthorized use of information, regardless of whether that information met the statutory definition of a trade secret.

Area(s) of Law:
  • Trade Secrets

Ergo Licensing, LLC v CareFusion 303, Inc.

Means-plus-function terms are required to point out the particular structure used to perform the function, lest it be deemed “indefinite.”

Area(s) of Law:
  • Patents

Merit Homes, LLC v. Joseph Carl Homes, LLC

A nonexclusive license can be granted without a written conveyance.

Area(s) of Law:
  • Copyright

Poindexter v. EMI Record Group, Inc.

Only the owner of the copyright has standing to assert a claim for its infringement, and assignment of the right to sue to a non-owner is insufficient to confer standing.

Area(s) of Law:
  • Copyright

Fail-Safe, LLC v. A.O. Smith Corp.

By volunteering information without broaching the topic of confidentiality, it is unreasonable to expect a confidential relationship.

Area(s) of Law:
  • Trade Secrets

April 11 summaries

Advanced Fiber Technologies Trust v. J&L Fiber Services, Inc.

Unclear patent terms can be probative of a lack of willfulness on the part of an alleged patent infringer.

Area(s) of Law:
  • Patents

Aventis Pharma S.A. v. Hospira, Inc.

Intentionally withholding prior art material to the patent's subject matter from the Patent and Trademark Office will render a patent unenforceable for inequitable conduct.

Area(s) of Law:
  • Patents

Noah Systems, Inc. v. Intuit Inc.

Failure to disclose all of the algorithms necessary for the claimed functions will be treated as if no algorithm was disclosed at all.

Area(s) of Law:
  • Patents

U.S. v. Nosal

The phrase “exceeds authorized” in the CFAA is limited to access restrictions, and does not extend to use restrictions.

Area(s) of Law:
  • Trade Secrets

Steak Umm v. Steak ‘Em Up

Injunctions for trademark infringement cannot be granted if the trademarks are not likely to cause customer confusion.

Area(s) of Law:
  • Trademarks

U.S. v. Lam

The jury is granted broad discretion to discern whether allegedly infringed goods and marks are indistinguishable from the legitimate mark.

Area(s) of Law:
  • Trademarks

American Calcar, Inc. v. American Honda Motor Co., Inc.

Undisclosed prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art.

Area(s) of Law:
  • Patents

Trident Products & Services, LLC v. Canadian Soiless Wholesale, Ltd.

Without expert testimony, a reasonable juror could not determine whether a trade secret was "not known or readily ascertainable by proper means."

Area(s) of Law:
  • Trade Secrets

Federal Trade Commission (FTC) v. Watson Pharmaceuticals, Inc.

Reverse payment settlements do not violate antitrust laws in patent cases, because patent holders have been granted a lawful right to exclude for the duration of their patent.

Area(s) of Law:
  • Patents

Harley v. Nesby

Circumstantial evidence of access plus substantial similarities can show actual copying

Area(s) of Law:
  • Copyright

Warner Chilcott Laboratories Ir., Ltd. v. Impax Laboratories, Inc.

Patent infringement cannot be shown where the alleged infringers do not directly apply, and accepted testing method do not show the presence of, the patented substance.

Area(s) of Law:
  • Patents

May 19 summaries

Art of Living Foundation v. Does 1-10

Trade secret infringement is possible even when materials are widely distributed if the methods for compiling those materials are not.

Area(s) of Law:
  • Trade Secrets

Art of Living Foundation v. Does 1-10

Copyright registration obtained more than five years after publication does not constitute prima facie evidence of valid copyright ownership. Transfer of rights must be accompanied by a written conveyance or a later written confirmation of transference.

Area(s) of Law:
  • Copyright

OSI Pharm., Inc. v. Mylan Pharm., Inc.

To invalidate a patent on grounds of anticipation or obviousness, an alleged infringer must demonstrate that the patent is invalid with clear and convincing evidence.

Area(s) of Law:
  • Patents

Otsuka Pharmaceutical Co., Ltd. v. Sandoz, Inc.

In discerning obviousness, the court looks to whether one of ordinary skill would have had reasonable motivation to modify the earlier claimed compound to make the compound of the asserted claim.

Area(s) of Law:
  • Patents

Scorpio Music S.A. v. Willis

A partial owner could terminate his or her right, so long as it was only for his or her part.

Area(s) of Law:
  • Copyright

In re Youman

The Patent and Trademark Office must determine whether the narrowing language related to surrendered subject matter.

Area(s) of Law:
  • Patents

Wag’n Enterprises, LLC v. United Animal Nations

Unfounded and purely speculative concerns over confusion do not evince actual confusion by consumers.

Area(s) of Law:
  • Trademarks

Layne Christensen Co. v. Bro-Tech Corp.

To demonstrate willful infringement, a patentee must show the infringer acted despite an objectively high likelihood it was infringing a valid patent and that the infringer either knew, or the risk was so obvious that it should have known, of the risk it was infringing a valid patent.

Area(s) of Law:
  • Patents

In re Baxter Intl., Inc.

Because of the lower standard of proof used in PTO reexaminations, the PTO is not bound by validity decisions of the courts on the same patent claims, especially when the PTO considers evidence not presented to the court when it reached its decision.

Area(s) of Law:
  • Patents

Gucci America, Inc. v. Guess?, Inc.

TRADEMARK; POST-SALE CONFUSION (Post-sale confusion does not result in a “misdirected purchase” but a “purchase intended to confuse.")

Area(s) of Law:
  • Trademarks

WNET v. Aereo, Inc.

The Copyright Act is preempted by state law when the material is privately broadcasted if it is not already protected and is different from a copyright claim.

Area(s) of Law:
  • Copyright

Beerntsen Candies, Inc. v. Beerntsen’s Confectionary, Inc.

Surname rule applies even after the name no longer gives information about the owner of the business.

Area(s) of Law:
  • Trademarks

In re Hyon

Obviousness is a question of fact that the Court of Appeals reviews for substantial evidence.

Area(s) of Law:
  • Patents

T. Marzetti Company v. Roskam Baking Company

In testing for genericness, the 6th Circuit Court of Appeals gauge whether ”the public perceives the term primarily as the designation of the article."

Area(s) of Law:
  • Trade Secrets

Weco Supply co. v. Sherwin-Williams Co.

A “supplier/jobber" relationship does not create a duty of confidentiality.

Area(s) of Law:
  • Trade Secrets

Moore v. Commercial Aircraft Interiors, LLC

Where there is no suspicion of disclosure of trade secrets, an employer may still prohibit employment with a competitor for fear of unconscious disclosure of trade secrets.

Area(s) of Law:
  • Trade Secrets

Tetris Holding, LLC v. Xio Interactive, Inc.

The Merge Doctrine does not prevent authors from creating copyrightable expressions of rules or concepts.

Area(s) of Law:
  • Copyright

DISH Network, L.L.C. v. Sonicview USA, Inc.

Creating boxes designed to circumvent satellite encryption illegally is a violation of the Digital Millennium Copyright Act.

Area(s) of Law:
  • Copyright

Oracle America, Inc. v. Google Inc.

Copyright covers only the specific writing of program code, not program function, or presentation.

Area(s) of Law:
  • Copyright

June 12 summaries

Formfactor, Inc. v. Micro Probe, Inc.

A trade secret does not exist upon failure to describe the "subject matter of the trade secret with sufficient particularity to separate it from matters of general knowledge in the trade or of special knowledge."

Area(s) of Law:
  • Trade Secrets

Hollmer v. Harari

When inquiring into the continuity of multiple patent applications, the adequacy of an incorporation by reference is determined by the reasonable person of ordinary skill in the art standard.

Area(s) of Law:
  • Patents

In re Bill of Lading Transmission and Processing System Patent Litigation

A complaint that meets the requirements of a relevant sample form in the Appendix to the Federal Rules of Civil Procedure cannot be dismissed for failing to meet the requirements established under the Twombly line of cases.

Area(s) of Law:
  • Patents

Univ. of Ala. Bd. of Trs. v. New Life Art, Inc.

Rights to a trademark were not upheld when there was an ambiguous agreement and First Amendment rights did not outweigh public interest in free expression.

Area(s) of Law:
  • Trademarks

L.A. Printex Industries v. Aeropostale Inc.

A certificate of registration containing inaccurate information is sufficient to sustain an infringement claim, so long as the applicant was unaware of the inaccuracy, and the inaccuracy would not have caused the copyright office to reject the application.

Area(s) of Law:
  • Copyright

Obodai v. Demand Media, Inc.

Conforming to the DMCA's safe harbor provision protects a service provider from committing contributory copyright infringement.

Area(s) of Law:
  • Copyright

Louis Vuitton Mallatier S.A. v. Warner Bros. Entertainment, Inc.

Trademark dilution was not found when consumers were unlikely to be confused under the Lantham Act standard.

Area(s) of Law:
  • Trademarks

Northland Family Planning Clinic, Inc. v. Center for Bio-Ethical Reform

The courts look to transformative use, the amount of copyrighted material used, and the market in which the copyrighted material is used when determining whether a work is protected under “fair use.”

Area(s) of Law:
  • Copyright

Apple, Inc. v. Motorola, Inc.

When plaintiff claiming patent infringement fails to establish any basis for an award of relief, the defendant is entitled to a judgment dismissing the case.

Area(s) of Law:
  • Copyright

Drew Estate Holding Co., LLC v. Fantasia Distribution, Inc.

Under the "natural expansion" doctrine, a trademark owner enjoys protection over related goods that lie within the realm of the natural expansion of its business.

Area(s) of Law:
  • Trademarks

In re Mouttet

When a patent claims a structure already known, differing only in the substitution of one known element for another, it must do more than yield the predictable result of that substitution to avoid rejection for obviousness.

Area(s) of Law:
  • Patents

WesternGeco LLC v. Ion Geophysical Corp.

An infringing system is made at the place where it is assembled for use, while it is used at the place where it is put into operation.

Area(s) of Law:
  • Patents

July 10 summaries

Fishman Transducers, Inc. v. Paul

When parties are not in direct competition, evidence linking a loss in profits to the trademark infringement is required.

Area(s) of Law:
  • Trademarks

General Electric Co. v. ITC

Tariff Act of 1930, § 337, protects domestic industry by prohibiting imports that infringe on U.S. patents.

Area(s) of Law:
  • Patents

Midwestern Pet Foods, Inc. v. Societe Des Produits Nestle S.A.

Evidence of fame that postdates an intent-to-use application is relevant to a showing of a likelihood of confusion.

Area(s) of Law:
  • Trademarks

Sunbeam Products, Inc. v. Chicago American Manufacturing, LLC

A trustee’s rejection of a contract does not abrogate a trademark license.

Area(s) of Law:
  • Trademarks

Loughlin v. Ling

If a patent application is entitled to receive the benefit of an earlier effective date under 35 U.S.C. § 120, the earlier date is that application’s filing date for determining whether any of that application's claims offend the one year time restraint in 35 U.S.C. § 135(b)(2).

Area(s) of Law:
  • Patents

deVere Group GMBH v. Opinion Corp.

Use of company name and description in web address for an internet consumer review site does not show plausible confusion required for a trademark violation.

Area(s) of Law:
  • Trademarks

Granger v. One Call Lender Services

The award of statutory damages is appropriate in the default judgment context, but a single infringer of a single work is only liable for a single amount regardless of the number of infringement acts.

Area(s) of Law:
  • Copyright

In re Antor Media Corporation

Unclaimed disclosures in patents carry a presumption of enablement.

Area(s) of Law:
  • Patents

Dish Network, L.L.C. v. Alejandri

To demonstrate circumvention of access controls, the plaintiff must show: (1) the defendant distributed the technology, and (2) that the technology was designed to circumvent access control systems and has only limited alternative uses.

Area(s) of Law:
  • Copyright

Chicago Bldg. Design P.C. v. Mongolian House, Inc.

A claim for copyright infringement must be brought within 3 years of a party receiving notice (actual or inquiry) of a completed claim.

Area(s) of Law:
  • Copyright

August 12 summaries

InterDigital Communications, LLC. v. International Trade Commission

The differentiation doctrine presumption is particularly strong in cases where a limitation is the sole differentiation between claims and one party is asserting a dependent claim on an independent claim.

Area(s) of Law:
  • Patents

Chicago Bldg. Design P.C. v. Mongolian House, Inc.

Although the courts should be reluctant to resolve religious property disputes, they may do so if the dispute can be resolved without consideration of doctrinal or other religious matters.

Area(s) of Law:
  • Copyright

Lopez v. Gap, Inc.

TRADEMARK; UNFAIR COMPETITION (Trademark infringement was not found when marks are not sufficiently distinctive and use primarily geographic terms.)

Area(s) of Law:
  • Trademarks

In re Beineke

An accidental seedlings discovery is not the product of the human inventive faculty.

Area(s) of Law:
  • Patents

Hearthware, Inc. v. E. Mishan & Sons

Similarities in infomercials do not constitute copyright infringement when the similarities are standard components of infomercials.

Area(s) of Law:
  • Copyright

Hearthware Inc. v. E. Mishan & Sons Inc.

If an allegedly infringing product owner does not make a literal lie in advertising the product, then there must be a showing of a likelihood of confusion.

Area(s) of Law:
  • Trademarks

Perfect Pearl Co. v. Majestic Pearl & Stone, Inc.

Prior use of a mark in commerce is sufficient to earn trademark rights and trumps those rights in the marks that were later obtained by another by registering the marks.

Area(s) of Law:
  • Trademarks

Golden Hour Data Systems, Inc. v emsCharts, Inc.

Clear and convincing evidence cannot be established upon successful claim reexamination when material is not deemed "but-for" material.

Area(s) of Law:
  • Patents

Peters v. West

A strong evidentiary showing of the opportunity to copy a work does not lessen the plaintiff's burden to show a significant similarity between the copyrighted and offending works.

Area(s) of Law:
  • Copyright

Greenliant Systems, Inc. v. Xicor LLC

A patentee may enlarge the scope of his original claim only if by error he claimed less than he had a right to claim in the original patent.

Area(s) of Law:
  • Patents

ActiveVideo Networks, Inc. v. Verizon Communications, Inc.

A JMOL for patent non-infringement must be supported with substantial evidence. Permanent injunctions on patent infringement cannot be upheld where losses are quantifiable based on lost license fees and damages are not irreparable harm.

Area(s) of Law:
  • Patents

In re Applied Materials, Inc.

Simple determination of optimum ranges for operation, and development of more comprehensive explanations of variable relationship based on broad ranges of prior art, does not qualify as non-obvious.

Area(s) of Law:
  • Patents

September 8 summaries

Ibormeith IP, LLC v. Mercedes-Benz USA, LLC

For “means-plus-function” claims using algorithms, one must disclose it so as to show how its structure, material, or act supports the patent claim.

Area(s) of Law:
  • Patents

Suntree Tech., Inc. v. Ecosense Intl., Inc.

A plaintiff must establish that the defendant not only used its protected mark, or one confusingly similar to it, but also that it was likely to confuse consumers as to source of the product or service.

Area(s) of Law:
  • Trademarks

Libya v. Miski

To establish a protected right in a descriptive mark, a party must demonstrate, with survey data or other evidence, that the mark has obtained secondary meaning in the marketplace.

Area(s) of Law:
  • Trademarks

Capitol Records, Inc. v. Thomas-Rasset

Record companies are not entitled to clarification of the Copyright Act without a Art. III case or controversy; Copyright infringement includes making media available to be distributed as well as actual distribution.

Area(s) of Law:
  • Copyright

Preferred Systems Solutions, Inc. v. GP Consulting, LLC

A list of confidential information, which fails to explain which items are trade secrets or how that information was misappropriated, is insufficient to support a claim of misappropriation of a trade secret.

Area(s) of Law:
  • Trade Secrets

Outside the Box Innovations, LLC v. Travel Caddy, Inc.

To render a patent unenforceable due to inequitable conduct, both the materiality of a nondisclosure or misrepresentation and intent to deceive the USPTO must be proven.

Area(s) of Law:
  • Patents

Granger v. Acme Abstract Co.

In order to determine if a computer program is copyrightable and has been infringed, one must delineate between the copyrightable expression and the unprotected elements of the program.

Area(s) of Law:
  • Copyright

Molinelli-Freytes v. University of Puerto Rico

An original manuscript created by employees while performing duties that are within the scope of their employment may be used by the employer without violating the 1976 Copyright Act.

Area(s) of Law:
  • Copyright

October 10 summaries

Belkin Intl., Inc. v. Kappos

The Director's determination that prior art does not raise substantial new questions of patentability is final and nonappealable.

Area(s) of Law:
  • Patents

The Authors Guild v. Hathitrust

Digitizing a book and putting it into a format possible for a print-disabled person to access it is sufficiently transformative for a fair-use defense.

Area(s) of Law:
  • Copyright

Energy Transportation Group, Inc. v. William Demant Holding A/S

Prosecution history estoppel bars the assertion of the doctrine of equivalents when the presumption that a key claim phrase was narrowed to secure the patent in question is not overcome.

Area(s) of Law:
  • Patents

Technology Patents, LLC v. T-Mobile (UK) Ltd.

Doctrine of Equivalents will not broaden claims beyond their explicit terms.

Area(s) of Law:
  • Patents

Sempris, LLC v. Watson

Noncompete agreements signed by employees of a company that are later acquired remain valid.

Area(s) of Law:
  • Trade Secrets

Flo Healthcare Solutions, LLC v. Kappos

To rebut the presumption that a limitation is not a means-plus-function limitation, the patentee must show that the limitation is essentially “devoid of anything that can be construed as structure.”

Area(s) of Law:
  • Patents

Brandywine Commun. Tech., Inc. v. T-Mobile USA, Inc.

Where knowledge is an essential element of a patent infringement claim, the defendant must have been aware of the patent's existence before litigation was instigated in order for that element to be satisfied.

Area(s) of Law:
  • Patents

Winchester Mystery House, LLC v. Global Asylum, Inc.

A trademark claim could be made when an allegedly infringing movie title bares no relation to the film or there was an intent to mislead.

Area(s) of Law:
  • Trade Secrets

Hobbs v. John

Concepts and feelings are not copyrightable when they belong to the general scène à faire of the genre.

Area(s) of Law:
  • Copyright

Wilden Pump and Engineering LLC v. JDA Global LLC

Part numbers are not source identifiers when a prefix is used to differentiate between makers of similar parts

Area(s) of Law:
  • Trademarks

November 6 summaries

Hor v. Chu

The time period for asserting the defense of laches against an inventorship claim is measured from the date the patent was issued, not from the date the patent application was filed.

Area(s) of Law:
  • Patents

Norgren, Inc. v. ITC

The possibility of drawing inconsistent conclusions from the evidence does not mean an administrative agency's conclusion was not supported by substantial evidence.

Area(s) of Law:
  • Patents

Edsal Manufacturing Company, Inc. v. Vault Brands, Inc.

Claims for trademark infringement are not proper if the term has only been used as a descriptor, not a trademark.

Area(s) of Law:
  • Trademarks

Transocean Offshore Deepwater Drilling, Inc. v. Maersk Drilling USA, Inc.

When a court determines that a patent presents a prima facie case of obviousness, a presumption of invalidity for obviousness is raised. That presumption, however, can be rebutted by strong, objective evidence showing that the patent is nonobvious.

Area(s) of Law:
  • Patents

Ritz Camera & Image, LLC v. Sandisk Corporation

Parties that purchase patented goods have standing to assert a Walker Process antitrust claim against the patentee, alleging the patent was obtained by fraud on the PTO.

Area(s) of Law:
  • Patents

General Electric Co. v. Wilkins

The Clear and Convincing evidentiary standard required to rebut the presumption of patent validity will not be met when the key corroborative witness testimony is predicated on the challenging party’s own sequence of events.

Area(s) of Law:
  • Patents

December 11 summaries

Metso Minerals Indus., Inc. v. Johnson Crushers Intl., Inc.

When the difference between subject matter patented and prior art is such that the solution patented would have been obvious to a person skilled in the art, the patent is invalid for obviousness.

Area(s) of Law:
  • Patents

Brandywine Commun. Tech, LLC v. Casio Computer Co. Ltd.

To state a valid claim for contributory infringement, a plaintiff must plead facts suggesting the defendant both knew of the existence of the relevant patent at the time of the infringement, and that the product has no substantial non-infringing uses.

Area(s) of Law:
  • Patents

Abraham v. Alpha Chi Omega

Delay in registering trademark resulted in unfair prejudice.

Area(s) of Law:
  • Trademarks

In re Yamazaki

Once a patent has issued subject to the terms of a terminal disclaimer, the Patent and Trademark Office is foreclosed from later reissuing the patent with a term greater than that for which the patent was originally issued.

Area(s) of Law:
  • Patents

Pregis Corp. v. Kappos

Because the Patent Act provides sufficient administrative and judicial relief for third parties injured by wrongly issued patents, the APA cannot be used to provide competitors in a patent dispute with an alternative means to obtain relief.

Area(s) of Law:
  • Patents

National Football Scouting, Inc. v. Rang

A numerical expression representing an opinion of a player’s likelihood of succeeding in the NFL is copyrightable.

Area(s) of Law:
  • Copyright

In re Rosuvastatin Calcium Patent Litigation

An unsuccessful filing of an ANDA is a statutory act of infringement.

Area(s) of Law:
  • Patents

Miller’s Ale House, Inc. v. Boynton Carolina Ale House, LLC

To relitigate a previous judicial determination of genericness, a purported trademark holder would need to show a drastic change in consumer perception.

Area(s) of Law:
  • Trademarks

Blehm v. Jacobs

When determining whether works are substantially similar, courts will analyse the protected expression of underlying concepts and themes – not the themes sought to be expressed.

Area(s) of Law:
  • Copyright

C. W. Zumbiel Co., Inc. v. Kappos

A patent claim's preamble is a limitation if it is essential to understand limitations or terms in the claim body.

Area(s) of Law:
  • Patents

In re Fenofibrate Patent Litigation

When a patent claim calls for a quantity “between” two numbers, it should be construed to cover only that specific range and it should not be read to cover “a range between two values which are themselves ranges.”

Area(s) of Law:
  • Patents