Willamette Law Online

Intellectual Property

( 19 summaries )

Opinions Filed in August 2011

AIA Engineering Limited and Vega Industries, Ltd., Inc. v. Magotteaux International S/A and Magotteaux, Inc.

Patents: Impermissible recapture under 35 U.S.C. §251 is not implicated unless a patentee attempts to regain subject matter deliberately surrendered during the original patent prosecution.

(Filing Date: 08-31-2011)

Classen Immunotherapies, Inc. v. Biogen IDEC

Patents: Inclusion of a physical step may allow an otherwise ineligible process, machine, manufacture, or composition of matter to pass the §101 threshold and remain patent-eligible.

(Filing Date: 08-31-2011)

Kim Seng Co. v. J & A Imps., Inc.

Copyright: In order for a plaintiff to prevail on a copyright infringement claim, the item in question must be creative or original enough to qualify for copyright protection.

(Filing Date: 08-30-2011)

In re Keisuke Aoyama, Kojiro Toyoshima, and Yoshitaka Ezaki

Patents: A lower court's decision may be affirmed on alternative grounds, but under 37 C.F.R. §41.50(b) a patent applicant may subsequently be allowed to amend claims or offer new evidence not previously of record to overcome the new ground of rejection.

(Filing Date: 08-29-2011)

Nielsen Co. v. Truck Ads, LLC

Copyright: In order for an item to qualify for a valid copyright it only needs to have a small amount of originality.

(Filing Date: 08-29-2011)

Progressive Products, Inc. v. Swartz

Trade Secrets: A plaintiff must prove trade secrets were not available by proper means and that reasonable efforts were made to maintain the secrecy in order to prevail on a misappropriation claim.

(Filing Date: 08-26-2011)

Star Scientific, Inc. v. R.J. Reynolds Tobacco Company (a North Carolina Corporation) and R.J. Reynolds Tobacco Company (a New Jersey Corporation)

Patents: When claiming priority of a provisional application, the disclosure of best mode required is the best mode contemplated at the time of the provisional application; “a construed claim can be indefinite if the construction remains insolubly ambiguous, meaning it fails to provide sufficient clarity about the bounds of the claim to one skilled in the art,” but may be definite if “discerning the meaning is a formidable task and the conclusion may be one over which reasonable persons will disagree.”

(Filing Date: 08-26-2011)

Unigene Laboratories, Inc. and Upsher-Smith Laboratories, Inc. v. Apotex, Inc. and Apotex Corp.

Patents: Obviousness requires the showing that a person of ordinary skill at the time of the invention would have selected and combined prior art elements in the normal course of research and development to yield the claimed invention.

(Filing Date: 08-25-2011)

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc.

Patents: To determine whether an interference is required between two patents under 35 U.S.C. § 291 the court should apply a “two-way test” requiring that each patent, if prior art, would anticipate or render obvious the other patent.

(Filing Date: 08-23-2011)

August Technology Corporation and Rudolph Technologies, Inc. v. Camtek, Ltd.

Patents: In determining the claim construction of a term within a patent the court will consider a ambiguous term to be defined by language within the claim or preamble and will note distinctions within the language of the claim; in order to have an on sale bar the invention must have been conceived at the time of the offer for sale.

(Filing Date: 08-22-2011)

AK Steel Corp. v. Donald Earley

Trade Secrets: When a plaintiff makes a claim of trade secret infringement they must specifically identify what the trade secret information is; conclusory statements about trade secret infringement will be put aside by the court.

(Filing Date: 08-19-2011)

Derek Seltzer v. Green Day, Inc.

Trademarks: An image must be used in commerce in order to qualify as a trademark under the Lanham Act.

(Filing Date: 08-18-2011)

Lorillard Tobacco Company v. Zoom Enterprises, Inc.

Trademarks: A trademark's dilution can be inferred when the junior and senior marks are identical and found on products being sold together.

(Filing Date: 08-18-2011)

Cybersource Corporation v. Retail Decisions, Inc.

Patents: A method that can be performed by human thought alone is merely an abstract idea and is not patent-eligible because computational methods that can be performed entirely in the human mind embody basic tools of scientific work that are free to all men and reserved exclusively to none.

(Filing Date: 08-16-2011)

Curington and Brooks v. UMG Recordings, Inc.

Copyright: Registration of a copyright is a precondition to filing a claim of copyright infringement, without which, the claim is subject to dismissal.

(Filing Date: 08-12-2011)

CBT Flint Partners, LLC v. Return Path, Inc., and Cisco Ironport Systems, LLC

Patents: When an obvious error is present, a court must consider reasonable interpretations of a patent claim from the point of view of one skilled in the art.

(Filing Date: 08-10-2011)

MHL Tek, LLC v. Nissan Motor Co. and Nissan North America, Inc., and Hyundai Motor Co.

Patents: The scope of a patent assignment determines whether an assignee has the requisite standing to assert patent infringement.

(Filing Date: 08-10-2011)

In re NTP, Inc.

Patents: Upon reexamination claims are to be given their broadest reasonable interpretation consistent with the specification in light of the specification as it would be interpreted by one of ordinary skill in the art; a printed publication qualifies as prior art if one of ordinary skill in the art would have located the source after a reasonable search; uncorroborated testimony cannot be relied upon to establish a prior reduction-to-practice or conception date.

(Filing Date: 08-01-2011)

In re NTP, Inc.

Patents: A patent cannot claim the priority date of a previous application if the patent introduces new subject matter; as of 2002, during reexamination an examiner can consider any “substantial new question of patentability” and there is no longer a presumption of full consideration of cited sources during initial examination.

(Filing Date: 08-01-2011)