From 10/21/2002 to 10/27/2002 the following Patent, Copyright,
Trademark and Trade Secret cases were decided and are summarized below:

(1) PATENT VALIDITY (description need not describe the claimed subject matter in exactly the same terms used in the claims ("in haec verba"), but rather indicate to one of skill in the art that as of the filing date the inventor had invented what is claimed)

(2) PATENT CLAIM CONSTRUCTION (well settled that if the body of the claim sets out the complete invention, and the preamble is not necessary to give life, meaning, and vitality to the claim, then the preamble is of no significance to claim construction)

(3) COPYRIGHT, INFRINGEMENT, STATUTORY DAMAGES; COSTS & ATTORNEY FEES (pursuant to 17 U.S.C. Sec. 504(c)(1), Plaintiff is entitled to elect between actual damages and profits of Defendant, or statutory damages; pursuant to 17 U.S.C. Sec. 505, a court, in its discretion, may award full costs to the prevailing party in a copyright action)

(4) TRADEMARK INFRINGEMENT, CUSTOMER CONFUSION (similarity in article design and logo between trademarks created customer confusion)

(5) TRADE SECRET, PROTECTABILITY (customer list and pricing information is not a protectable trade secret when readily available)

(1)
All Dental Prodx, LLC v. Advantage Dental Products
No: 02-1107 (Oct. 25, 2002)
United States Court of Appeals, Federal Circuit
Before Newman, Friedman, and Lourie

For full opinion

PATENT VALIDITY

Opinion (Lourie): The court determined that a term in the claims that was not used at all in the specification was nevertheless "definite and clear" in light of the prosecution history that distinguished prior art based on the term. The court reversed summary judgment of invalidity under paragraph 112, and affirmed summary judgment of noninfringement. (Written by Vincent Anderson.)

For full opinion

PATENT CLAIM CONSTRUCTION

Opinion (Dyk): The court reaffirmed that when a preamble simply describes features that necessarily exist in a device, and do not specify how the device is to operate, the preamble is superfluous. The court vacated the summary judgment of noninfringement in favor of Laboratory Computer Systems and remanded. (Written by Vincent Anderson.)

(3)
Stevens v. Aeonian Press, Inc.
No: 00 Civ. 6330 (JSM) (Oct. 23, 2002)
United States District Court, S.D.N.Y.
Before Martin

For full opinion:
2002 U.S. Dist. Lexis 20189

COPYRIGHT, INFRINGEMENT, STATUTORY DAMAGES; COSTS & ATTORNEY FEES

Opinion (Martin): Plaintiff Stevens elected to receive an award of statutory damages. The court awarded Stevens costs and attorney's fees due to the willful nature of the copyright infringement by Defendants Clauss, Amereon, and Paulsen. (Written by David R. Bragg.)

(4)
Bebe Stores v. The May Company Department Stores International Inc.
No: 4 02 CV 1254 (CDP) (Oct. 21, 2002)
United States District Court, E.D. Missouri, Eastern Division Before Perry

For full opinion
2002 U.S. Dist. LEXIS 20463

TRADEMARK INFRINGEMENT, CUSTOMER CONFUSION

Opinion (Perry): The district court granted Plaintiff Bebe Stores' motion for a preliminary injunction against Defendant May Company. Bebe alleged May Co.'s newly launched women's clothing line, "be," was so similar in article design, logo and advertising to Bebe's garments, logo, and advertising that it resulted in consumer confusion; hence, constituted trademark infringement. (Written by Sarah Mabee.)

(5)
Western Forms, Inc. v. Pickell
No: 01-2496 (Oct. 25, 2002)
United States Court of Appeals, Eighth Circuit
Before Wollman, Hansen, Oberdorfer

For full opinion:
2002 U.S. App. LEXIS 22345

TRADE SECRET, PROTECTABILITY

Opinion (Hansen): The appellate court affirmed the judgment of the district court, which denied recovery to Plaintiff Western for alleged breach of contract and violations of The Missouri Uniform Trade Secrets Act by Defendant Pickell. Analogizing to a similar Missouri case, the court found Western's customer list and pricing information was unprotectedle because it was readily obtainable. (Written by Scott Rickard.)

END OF SUMMARIES

The purpose of this service is to report on recently decided cases regarding copyright, patent, trademark, and trade secret law in all federal and state jurisdictions. New editions are published each Wednesday. Each edition covers a seven-day period ending the previous Sunday. Where possible, links to the full text of the cases are provided.

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