Willamette Law Online

Intellectual Property

2012

( 11 summaries )

January

Marctec, LLC v. Johnson & Johnson and Cordis Corporation

Patents: 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.

(Filing Date: 01-03-2012)

Wolk v. Kodak Imaging Network, Inc.

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

(Filing Date: 01-03-2012)

Celsis In Vitro Inc, v. Cellzdirect, Inc.

Patents: 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.

(Filing Date: 01-09-2012)

Golan v. Holder

Copyright: 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.

(Filing Date: 01-18-2012)

Dealertrack, Inc. v. Huber

Patents: "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."

(Filing Date: 01-20-2012)

Bohnsack v. Varco

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

(Filing Date: 01-23-2012)

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

Patents: "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."

(Filing Date: 01-23-2012)

Kinbook, LLC v. Microsoft Corporation

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

(Filing Date: 01-25-2012)

Jacob Krippelz, Sr. v. Ford Motor Company

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

(Filing Date: 01-27-2012)

HTC Corporation v. IP-COM GMBH & CO.

Patents: 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.

(Filing Date: 01-30-2012)

Charles L. Sims v. Viacom, Inc.

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

(Filing Date: 01-31-2012)

( 14 summaries )

February

Craig Thorner v. Sony Computer Entertainment America LLC

Patents: 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.

(Filing Date: 02-01-2012)

Adair, Athwal, and Emtage v. Carter and Presta

Patents: "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.”

(Filing Date: 02-07-2012)

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

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

(Filing Date: 02-07-2012)

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

Patents: 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."

(Filing Date: 02-08-2012)

United States v. Jin

Trademarks: 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.

(Filing Date: 02-08-2012)

Astrazeneca Pharmacuticals LP v. Apotex Corp.

Patents: 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.

(Filing Date: 02-09-2012)

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

Patents: 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.

(Filing Date: 02-10-2012)

Innovative Legal Marketing, LLC v. Market Masters-Legal

Copyright: 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.

(Filing Date: 02-13-2012)

Yesh Music v. Lakewood Church

Copyright: 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.

(Filing Date: 02-14-2012)

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

Copyright: 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.

(Filing Date: 02-22-2012)

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

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

(Filing Date: 02-27-2012)

Tempo Lighting, Inc. v. Tivoli, LLC

Patents: Claim Construction: 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.

(Filing Date: 02-10-2014)

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

Copyright: Infringement, DCMA: Independent development constituted complete defense to copyright infringement and DMCA claims.

(Filing Date: 02-11-2014)

Loftness Specialized Farm Equip., Inc. v. Twiestmeyer

Trade Secrets: Nondisclosure agreements : 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.

(Filing Date: 02-11-2014)

( 19 summaries )

March

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

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

(Filing Date: 02-27-2012)

Beane v. Mii Technologies, LLC

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

(Filing Date: 03-01-2012)

In re Erik P. Staats and Robin D. Lash

Patents: 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.

(Filing Date: 03-05-2012)

In re Viterra Inc.

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

(Filing Date: 03-06-2012)

Own Your Power Communications, Inc. v. Oprah Winfrey

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

(Filing Date: 03-06-2012)

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

Patents: “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.”

(Filing Date: 03-07-2012)

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

Trademarks: 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.

(Filing Date: 03-08-2012)

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

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

(Filing Date: 03-08-2012)

Broadcast Music, Inc. v. Haibo, Inc.

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

(Filing Date: 03-12-2012)

OgoSport, LLC v. Maranda Enterprises, LLC

Trademarks: 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.

(Filing Date: 03-12-2012)

Erickson v. Blake

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

(Filing Date: 03-14-2012)

Marine Polymer Technologies, Inc. v. HemCon Inc.

Patents: 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.

(Filing Date: 03-15-2012)

Mayo Collaborative Services v. Prometheus Laboratories, Inc.

Patents: 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.

(Filing Date: 03-20-2012)

McGee v. André

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

(Filing Date: 03-20-2012)

Brigham Young Univ. v. Pfizer, Inc.

Trade Secrets: 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.

(Filing Date: 03-22-2012)

Ergo Licensing, LLC v CareFusion 303, Inc.

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

(Filing Date: 03-26-2012)

Merit Homes, LLC v. Joseph Carl Homes, LLC

Copyright: A nonexclusive license can be granted without a written conveyance.

(Filing Date: 03-27-2012)

Poindexter v. EMI Record Group, Inc.

Copyright: 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.

(Filing Date: 03-27-2012)

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

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

(Filing Date: 03-29-2012)

( 11 summaries )

April

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

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

(Filing Date: 04-03-2012)

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

Patents: 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.

(Filing Date: 04-09-2012)

Noah Systems, Inc. v. Intuit Inc.

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

(Filing Date: 04-09-2012)

U.S. v. Nosal

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

(Filing Date: 04-10-2012)

Steak Umm v. Steak ‘Em Up

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

(Filing Date: 04-11-2012)

U.S. v. Lam

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

(Filing Date: 04-16-2012)

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

Patents: 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.

(Filing Date: 04-17-2012)

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

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

(Filing Date: 04-18-2012)

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

Patents: 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.

(Filing Date: 04-24-2012)

Harley v. Nesby

Copyright: Circumstantial evidence of access plus substantial similarities can show actual copying

(Filing Date: 04-30-2012)

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

Patents: 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.

(Filing Date: 04-30-2012)

( 19 summaries )

May

Art of Living Foundation v. Does 1-10

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

(Filing Date: 05-01-2012)

Art of Living Foundation v. Does 1-10

Copyright: 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.

(Filing Date: 05-01-2012)

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

Patents: 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.

(Filing Date: 05-01-2012)

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

Patents: 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.

(Filing Date: 05-07-2012)

Scorpio Music S.A. v. Willis

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

(Filing Date: 05-07-2012)

In re Youman

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

(Filing Date: 05-08-2012)

Wag’n Enterprises, LLC v. United Animal Nations

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

(Filing Date: 05-09-2012)

Layne Christensen Co. v. Bro-Tech Corp.

Patents: 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.

(Filing Date: 05-16-2012)

In re Baxter Intl., Inc.

Patents: 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.

(Filing Date: 05-17-2012)

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

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

(Filing Date: 05-21-2012)

WNET v. Aereo, Inc.

Copyright: 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.

(Filing Date: 05-21-2012)

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

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

(Filing Date: 05-24-2012)

In re Hyon

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

(Filing Date: 05-24-2012)

T. Marzetti Company v. Roskam Baking Company

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

(Filing Date: 05-25-2012)

Weco Supply co. v. Sherwin-Williams Co.

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

(Filing Date: 05-25-2012)

Moore v. Commercial Aircraft Interiors, LLC

Trade Secrets: 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.

(Filing Date: 05-29-2012)

Tetris Holding, LLC v. Xio Interactive, Inc.

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

(Filing Date: 05-30-2012)

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

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

(Filing Date: 05-31-2012)

Oracle America, Inc. v. Google Inc.

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

(Filing Date: 05-31-2012)

( 12 summaries )

June

Formfactor, Inc. v. Micro Probe, Inc.

Trade Secrets: 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."

(Filing Date: 06-07-2012)

Hollmer v. Harari

Patents: 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.

(Filing Date: 06-07-2012)

In re Bill of Lading Transmission and Processing System Patent Litigation

Patents: 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.

(Filing Date: 06-07-2012)

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

Trademarks: 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.

(Filing Date: 06-11-2012)

L.A. Printex Industries v. Aeropostale Inc.

Copyright: 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.

(Filing Date: 06-13-2012)

Obodai v. Demand Media, Inc.

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

(Filing Date: 06-13-2012)

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

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

(Filing Date: 06-15-2012)

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

Copyright: 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.”

(Filing Date: 06-15-2012)

Apple, Inc. v. Motorola, Inc.

Copyright: 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.

(Filing Date: 06-22-2012)

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

Trademarks: 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.

(Filing Date: 06-25-2012)

In re Mouttet

Patents: 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.

(Filing Date: 06-26-2012)

WesternGeco LLC v. Ion Geophysical Corp.

Patents: 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.

(Filing Date: 06-26-2012)

( 10 summaries )

July

Fishman Transducers, Inc. v. Paul

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

(Filing Date: 07-03-2012)

General Electric Co. v. ITC

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

(Filing Date: 07-06-2012)

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

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

(Filing Date: 07-09-2012)

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

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

(Filing Date: 07-09-2012)

Loughlin v. Ling

Patents: 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).

(Filing Date: 07-11-2012)

deVere Group GMBH v. Opinion Corp.

Trademarks: 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.

(Filing Date: 07-13-2012)

Granger v. One Call Lender Services

Copyright: 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.

(Filing Date: 07-27-2012)

In re Antor Media Corporation

Patents: Unclaimed disclosures in patents carry a presumption of enablement.

(Filing Date: 07-27-2012)

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

Copyright: 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.

(Filing Date: 07-30-2012)

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

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

(Filing Date: 07-31-2012)

( 12 summaries )

August

InterDigital Communications, LLC. v. International Trade Commission

Patents: 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.

(Filing Date: 08-01-2012)

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

Copyright: 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.

(Filing Date: 08-02-2012)

Lopez v. Gap, Inc.

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

(Filing Date: 08-02-2012)

In re Beineke

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

(Filing Date: 08-06-2012)

Hearthware, Inc. v. E. Mishan & Sons

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

(Filing Date: 08-10-2012)

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

Trademarks: 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.

(Filing Date: 08-10-2012)

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

Trademarks: 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.

(Filing Date: 08-14-2012)

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

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

(Filing Date: 08-15-2012)

Peters v. West

Copyright: 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.

(Filing Date: 08-20-2012)

Greenliant Systems, Inc. v. Xicor LLC

Patents: 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.

(Filing Date: 08-22-2012)

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

Patents: 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.

(Filing Date: 08-24-2012)

In re Applied Materials, Inc.

Patents: 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.

(Filing Date: 08-29-2012)

( 8 summaries )

September

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

Patents: 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.

(Filing Date: 09-05-2012)

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

Trademarks: 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.

(Filing Date: 09-05-2012)

Libya v. Miski

Trademarks: 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.

(Filing Date: 09-06-2012)

Capitol Records, Inc. v. Thomas-Rasset

Copyright: 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.

(Filing Date: 09-11-2012)

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

Trade Secrets: 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.

(Filing Date: 09-14-2012)

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

Patents: 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.

(Filing Date: 09-21-2012)

Granger v. Acme Abstract Co.

Copyright: 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.

(Filing Date: 09-27-2012)

Molinelli-Freytes v. University of Puerto Rico

Copyright: 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.

(Filing Date: 09-30-2012)

( 10 summaries )

October

Belkin Intl., Inc. v. Kappos

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

(Filing Date: 10-02-2012)

The Authors Guild v. Hathitrust

Copyright: 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.

(Filing Date: 10-10-2012)

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

Patents: 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.

(Filing Date: 10-12-2012)

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

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

(Filing Date: 10-17-2012)

Sempris, LLC v. Watson

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

(Filing Date: 10-22-2012)

Flo Healthcare Solutions, LLC v. Kappos

Patents: 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.”

(Filing Date: 10-23-2012)

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

Patents: 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.

(Filing Date: 10-24-2012)

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

Trade Secrets: 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.

(Filing Date: 10-24-2012)

Hobbs v. John

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

(Filing Date: 10-29-2012)

Wilden Pump and Engineering LLC v. JDA Global LLC

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

(Filing Date: 10-29-2012)

( 6 summaries )

November

Hor v. Chu

Patents: 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.

(Filing Date: 11-14-2012)

Norgren, Inc. v. ITC

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

(Filing Date: 11-14-2012)

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

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

(Filing Date: 11-15-2012)

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

Patents: 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.

(Filing Date: 11-15-2012)

Ritz Camera & Image, LLC v. Sandisk Corporation

Patents: 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.

(Filing Date: 11-20-2012)

General Electric Co. v. Wilkins

Patents: 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.

(Filing Date: 11-29-2012)

( 11 summaries )

December

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

Patents: 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.

(Filing Date: 12-04-2012)

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

Patents: 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.

(Filing Date: 12-05-2012)

Abraham v. Alpha Chi Omega

Trademarks: Delay in registering trademark resulted in unfair prejudice.

(Filing Date: 12-06-2012)

In re Yamazaki

Patents: 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.

(Filing Date: 12-06-2012)

Pregis Corp. v. Kappos

Patents: 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.

(Filing Date: 12-06-2012)

National Football Scouting, Inc. v. Rang

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

(Filing Date: 12-13-2012)

In re Rosuvastatin Calcium Patent Litigation

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

(Filing Date: 12-14-2012)

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

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

(Filing Date: 12-20-2012)

Blehm v. Jacobs

Copyright: 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.

(Filing Date: 12-27-2012)

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

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

(Filing Date: 12-27-2012)

In re Fenofibrate Patent Litigation

Patents: 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.”

(Filing Date: 12-27-2012)