Willamette Law Online

Intellectual Property

2014

( 16 summaries )

January

Diversey v. Schmidly

Copyright: ACCRUAL OF CLAIM: A copyright infringement claim was barred when it was brought more than three years after the date on which the plaintiff should have become aware of an act of infringement, despite plaintiff's arguing a "continuing wrong" exception.

(Filing Date: 12-23-2013)

Hokto Kinoko Co. v. Concord Farms, Inc.

Trademarks: Infringment: When a trademark holder alleged that a competitor wrongly imported and marketed mushrooms under its marks, the competitor's importation of its mushrooms was likely to confuse consumers under the Lanham Act despite no evidence of actual confusion.

(Filing Date: 12-24-2013)

KILOPASS TECHNOLOGY, INC. v. SIDENSE CORPORATION

Patents: Attorney's fees : The court may award reasonable attorney fees in patent infringement cases with exceptional circumstances; a clear and convincing evidence standard applies to the inquiry of whether fees will be awarded.

(Filing Date: 12-26-2013)

Institut Pasteur v. Focarino

Patents: Biological Patents: The board must give full consideration to resources which teach away from claimed inventions outcome.

(Filing Date: 12-30-2013)

Capitol Records, LLC v. Vimeo, LLC

Copyright: Infringment: The Digital Millennium Copyright Act's "safe harbor" provision did not apply when the alleged infringer was aware of facts from which infringing activity was apparent. If awareness was derived from viewing an infringing work, the infringement must be "objectively obvious."

(Filing Date: 12-31-2013)

Shammas v. Focarino

Trademarks: Attorney's fees : When the Patent and Trademark Office's successful motion for summary judgment only cited two cases, twenty-three hours of preparation time was deemed excessive.

(Filing Date: 01-02-2014)

Sprint Nextel Corp. v. Welch

Trademarks: Infringement: A reseller may be liable for trademark infringement if the reseller uses the trademark in a way that is likely to cause the general public to think the reseller is working in conjunction with the trademark owner.

(Filing Date: 01-08-2014)

Inhale, Inc. v. Starbuzz Tobacco

Copyright: Useful article: The design of a useful article is copyrightable only to the extent that it incorporates sculptural features that can be identified separately from, and are capable of existing independently of utilitarian aspects of the container.

(Filing Date: 01-09-2014)

Bright House Networks, LLC v. Cassidy

Trade Secrets: Petition for Writ of Certiorari: Where a party objects to the disclosure of information on the grounds that it is a trade secret, the trial court must determine if the information is in fact a trade secret, and secondly, if the information is protected the requesting party must show a reasonable necessity for the information.

(Filing Date: 01-10-2014)

Harel v. K.K. Int'l Trading Corp.

Patents: Infrigement: The visual distinctions between the drawing in the design patent application and the allegedly infringing lighter design demonstrated that, as a matter of law, the challenged lighter design was non-infringing.

(Filing Date: 01-10-2014)

Motorola Mobility LLC, v. Int’l. Trade Com’n

Patents: Infringement: Apple’s method of communicating changes in its devices’ registry of applications capable of receiving push notifications to a network did not infringe Motorola’s patent covering a method of communicating changes in the registry of installed applications to a network.

(Filing Date: 01-10-2014)

Nazomi Communs., Inc. v. Nokia Corp.

Patents: Because Western Digital’s MyBook hard drives and Sling Media’s Slingbox did not ship with the software required to enable native processing of Java programs, they did not infringe Nazomi’s patents directed toward a hardware-software combination capable of directly running Java programs.

(Filing Date: 01-10-2014)

Medtronic Corevalve, L.L.C. v Edwards Lifesciences Corporation

Patents: Invalidity : Priority was not established when an applicant did not list all previous amended and foreign applications on every intervening application.

(Filing Date: 01-22-2014)

Smith v. Casey

Copyright: Standing: Standing was found when a musician held legal rights to his work in exchange for royalties.

(Filing Date: 01-22-2014)

Top Tobacco, L.P. v. Midwestern Cash & Carry, LLC

Trademarks: Infringement; Dilution: Uncontroverted sale of counterfeit trademarked articles alone established infringement against corporate defendants but, without proof of willfulness on the part of individuals, did not establish infringement against individually named defendants.

(Filing Date: 01-22-2014)

In re Prairiesmarts LLC

Trade Secrets: Production: Trial court orders for production of material containing trade secrets were found to be an abuse of discretion because the party seeking production had not met their burden of proving that nonproduction constituted a real threat of an unjust result.

(Filing Date: 01-23-2014)

( 10 summaries )

February

Van Praagh v. Gratton

Trademarks: Trademarks on Personal Names: Although personal names used as trademarks are generally regarded as descriptive terms, the court found that they are protected if, through usage, they acquire distinctiveness and a secondary meaning. Because a name was found to be protected, the onus was on the second person trying to use it to avoid mistake.

(Filing Date: 01-28-2014)

Brownstein v. Lindsay

Copyright: A plaintiff’s joint authorship claim began to accrue when the plaintiff-author discovered her authorship had been expressly repudiated by a co-author.

(Filing Date: 01-29-2014)

N5 Techs. LLC v. Capital One Bank, N.A.

Patents: Infringement: Literal infringement was not found when the accused method did not practice each limitation in the asserted claim. Further a statement by an expert pertaining to patent validity was insufficiently probative of the issue of infringement under the doctrine of equivalence.

(Filing Date: 01-30-2014)

Videoshare, LLC v. YouTube, LLC

Patents: Infringement: VideoShare’s covenant not to sue YouTube for infringement of its patent divested the court of subject matter jurisdiction over YouTube’s counterclaim for a declaratory judgment of patent invalidity.

(Filing Date: 02-01-2014)

165 Park Row, Inc. v. JHR Dev., LLC

Trademarks: Likelihood of Confusion: "The Inn at Brunswick Station" was found to cause consumer confusion and thus infringe the trademark belonging to "The Brunswick Inn," even though "The Brunswick Inn" is a strongly descriptive mark.

(Filing Date: 02-04-2014)

PFIZER INC. v. TEVA PHARMACEUTICALS USA, INC.

Patents: Claim Construction: Claims are construed under the term’s plain and ordinary meaning as understood by a person or ordinary skill in the art unless: 1) patentee defines and acts as own lexicographer, or 2) patentee disavows the full scope of a claim in specification or prosecution.

(Filing Date: 02-06-2014)

Butamax Advanced Biofuels LLC v. Gevo, Inc.

Patents: Infringement: The definition in Butamax’s patent specification stating that the KARI polypeptide used a specific an electron donor did not mean that Butamax was acting as its own lexicographer and intending to limit the term to only cover use of the specific donor when both it and an alternate donor were within the ordinary meaning of the term at the time the patent was issued and where both the preferred embodiment and Enzyme Commission number listed in the patent permitted either electron donor to be used.

(Filing Date: 02-18-2014)

Commonwealth v. Eiseman

Trade Secrets: Disclosure: To the extent capitation rates constitute trade secrets, that information may be redacted in accordance with the Trade Secrets Act which protects against misappropriation of trade secrets, including disclosure without consent.

(Filing Date: 02-19-2014)

Jordan v. Jewel Food Stores, Inc.

Trademarks: First Amendment: An image advertisement congratulating Michael Jordan was commercial speech and not subject to constitutional protections.

(Filing Date: 02-19-2014)

Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp.

Patents: Standard of Review: Lighting Ballast's argument that the assessment of expert testimony and other factual questions, which are often raised during claim construction, justified a more deferential standard of appellate review did not provide a compelling justification for abandoning the current de novo standard applied to claim construction appeals.

(Filing Date: 02-21-2014)

( 19 summaries )

March

Integral Dev. Corp. v. Tolat

Trade Secrets: Misappropriation: Under the CUTSA, a plaintiff seeking relief for misappropriation of a trade secret must show the existence of the trade secrets with sufficient and reasonable particularity.

(Filing Date: 02-24-2014)

Starhome GmbH v. AT&T Mobility LLC

Patents: Claim Construction: Non-infringement was found when two figures were submitted in a claim and were ambiguous because they didn't rise to the level of clear intent to impart a novel meaning to the claim term.

(Filing Date: 02-24-2014)

Neri v. Monroe

Copyright: Fair Use: When a photograph of a work of art was transformative, despite it being a creative work, fair use was found.

(Filing Date: 02-26-2014)

Reynolds Consumer Products, Inc. v. Handi-Foil Corp.

Trademarks: Abandonment: Tacking is a question of law; the party seeking to tack bears the burden of proving that the current trademark and the registered trademark create a continuing commercial impression.

(Filing Date: 02-27-2014)

Airs Aromatics, LLC v. Victoria's Secret Stores Brand Mgmt.

Trademarks: Federal Jurisdiction: TRADEMARKS: Federal Jurisdiction: [9th Circuit Court of Appeals] A trademark cancellation claim standing alone does not provide an independent basis for federal jurisdiction.

(Filing Date: 02-28-2014)

Denimafia Inc. v. New Balance Ath. Shoe, Inc.

Trademarks: When determining the likelihood of confusion between trademarks courts apply an eight factor balancing test

(Filing Date: 03-03-2014)

Wells Fargo & Co. v. ABD Ins. & Fin. Servs.

Trademarks: Intent to reuse is not evaluated when use is not actually terminated in determining whether a trademark has been abandoned.

(Filing Date: 03-03-2014)

Alicea v. Machete Music

Copyright: There is a circuit split as to what actions meet the "preregistration" requirements found in the copyright act. However, under either test, a copyright holder must show some evidence that they have either registered or commenced registration procedures before they may bring a suit for copyright infringement.

(Filing Date: 03-07-2014)

Washington Consulting Group, Inc. v. Raytheon Technology Services Company, LLC et al.

Trade Secrets: Misappropriation: Misappropriation was not found when movant could not provide causal link between the alleged misappropriation and the damage suffered.

(Filing Date: 03-07-2014)

StorageCraft Tech. Corp. v. Kirby

Trade Secrets: Even though Mr. Kirby did not personally profit from disclosure of a trade secret, under Utah trade secret law, damages for the use or disclosure of trade secret may be measured by the defendant’s unjust enrichment, actual loss suffered by the plaintiff, or a reasonable royalty based on the price that the parties would have agreed upon for a license.

(Filing Date: 03-11-2014)

Lovely Skin, Inc. v. Istar Skin Care Prods., LLC

Trademarks: To overcome the strong presumption of validity that Lovely Skin's registered trademark had not acquired distinctiveness at the time of registration required Ishtar to show more than evidence of third parties with similar business names and marks.

(Filing Date: 03-13-2014)

Worlds, Inc. v. Activision Blizzard, Inc.

Patents: When Worlds, Inc. submitted its patent applications, it did not contain the required reference to its earlier filed provisional application and was not entitled to the priority date of the provisional application. Without that earlier priority date, Worlds invention was in public use more than one year before the priority date of its patent.

(Filing Date: 03-13-2014)

Alcon Research Ltd. V. Barr Laboratories, Inc.

Patents: Patent Infringement: When Barr challenged Alcon's patent, it did not show with clear and convincing evidence that a person of ordinary skill in the art could not practice the claim without undue experimentation, which is required to prove lack of enablement.

(Filing Date: 03-18-2014)

Teller v. Dogge

Copyright: Claim Elements: In order to prove a claim of copyright infringement, plaintiff must have a valid copyright and sufficiently show the defendant’s copying of original components of the work. Further, to demonstrate copying, plaintiff must show that the infringer had access to the copyrighted work and that the works at issue are substantially similar.

(Filing Date: 03-20-2014)

Jackson v. Odenat

Trademarks: In order to prevail on a defense of implied license the Defendant bears the burden of proving apparent authority to bind the Plaintiff.

(Filing Date: 03-24-2014)

U.S. v. Reichert

Copyright: DCMA: A sentencing enhancement under U.S.S.G. § 3B1.3 was proper because defendant had skills in the area of circumvention technology that “[m]ost persons of average ability” with “a minimum of difficulty” could not replicate.

(Filing Date: 03-28-2014)

Bulldog N.Y. LLC v. Pepsico, Inc.

Trade Secrets: Misappropriation of Trade Secrets: When one company markets its sole product to another company in the hopes of exposing the product to the public, the marketing company will lose its protection as a trade secret.

(Filing Date: 03-31-2014)

Carnegie Mellon Univ. v. Marvell Tech. Group, Ltd.

Patents: Damages: Although the facts used by the jury to conclude that Marvell willfully infringed Carnegie's patents also satisfied many of the Reed factors the size of the jury’s damage award in relation to Marvell’s market capitalization and cash reserves justified limiting the enhanced damages multiplier to 1.23.

(Filing Date: 03-31-2014)

Psihoyos v. John Wiley & Sons, Inc.

Copyright: Copyright infringement claims accrue upon actual or constructive discovery of the harm.

(Filing Date: 04-04-2014)

( 9 summaries )

March

Dardenne v. MoveOn.org Civil Action

Trademarks: Trademark Infringement: When a private group used a State's registered service mark to criticize the Governor of the State, the Court determined that the use of the mark would not confuse viewers as to the owner of the mark.

(Filing Date: 04-07-2014)

Louisiana Contractors Licensing Service, Inc. v. American Contractors Exam Services, Inc.

Copyright: Copyright Infringement: Copyrighted exam questions were reproduced and marketed without permission from the holder of the copyright, but the infringement was de minimis and was therefore not actionable.

(Filing Date: 04-07-2014)

United Video Props., Inc. v. Amazon.com, Inc.

Patents: When considering claim construction courts conduct a de novo review but consider the patents prosecution history.

(Filing Date: 04-08-2014)

Intellectual Ventures I LLC v. Capital One Fin. Corp.

Patents: Patentability and Indefiniteness: Patentability and Indefiniteness: A method that manipulates or reorganizes data is merely an abstract idea that is not subject to patentability. In applying an idea to a specific machine, the term "interactive interface" requires some standard to avoid being too indefinite and losing patent protection.

(Filing Date: 04-16-2014)

Stutts v. Texas Saltwater Fishing Magazine, Inc.

Copyright: Infringement : When two works are substantially similar the court may grant summary judgment if when viewing evidence in the light most favorable to the non-moving party they can draw inferences from the evidence presented that reasonable jurors could not find a substantially similar idea or expression.

(Filing Date: 04-18-2014)

Cohen v. Versatile Studios, Inc.

Copyright: Jurisdiction: Cases that hinge on whether a copyrighted work was created as a ‘work made for hire’ or as independent are ownership disputes that arise under the Copyright Act.

(Filing Date: 04-21-2014)

Gilead Scis., Inc. v. Natco Pharma Ltd.

Patents: Patent Infringement: The obviousness-type double patenting doctrine prohibits a patent owner from extending their exclusive use right through a later-expiring patent that is not patentably distinct from the earlier-expiring patent.

(Filing Date: 04-22-2014)

Ergowerx Int'l v. Maxell Corp. of Am.

Trademarks: Infringement: A distributor who sells trademarked goods that are genuine does not infringe on the trademark and does not violate the Lanham Act.

(Filing Date: 04-23-2014)

Karlson v. Red Door Homes, LLC

Copyright: A nonexclusive license may be granted orally or implied from conduct. An implied license is created when (1) a licensee requests creation of a work; (2) the licensor makes that work and delivers it to the licensee; and (3) the licensor intends that the licensee copy and distribute the work.

(Filing Date: 04-30-2014)

( 4 summaries )

May

Title Trading Services. USA, Inc. v. Kundu

Trade Secrets: Preliminary Injunction: When evaluating whether to grant a temporary restraining order the court considers four elements.

(Filing Date: 05-02-2014)

Medtronic Minimed v. Animas Corp.

Patents: Patent Infringement: When a patent involves mean-plus-function language the terms must be capable of being comprehended by an expert within that field in order to be held invalid for indefiniteness.

(Filing Date: 05-08-2014)

Whipps, Inc. v. Ross Valve Mfg. Co.

Trade Secrets: Preliminary Injunction: Trade Secrets: Preliminary Injunction: An idea may still be held to be a trade secret, despite not being written down or having written design plans, if a sufficiently detailed description of the design is provided to others.

(Filing Date: 05-08-2014)

Oracle Am. v. Google Inc.

Copyright: When determining whether source code was eligible for copyright protection the court examined the legislative history of 17 U.S.C. §102(a).

(Filing Date: 05-09-2014)

( 15 summaries )

June

Home Gambling Network, Inc. v. Piche

Patents: Patent Infringement attorneys' fees: In patent infringement cases, the award of attorneys' fees is reserved for “exceptional cases”; if the infringement is premised on operations that are outside of the United States, the claim cannot be successful and is likely subject to an award of attorneys’ fees.

(Filing Date: 05-22-2014)

Toys v. Pearl Enters.

Trademarks: When the re-sale of a product does not involve the actual “use” of a trademark, the re-sale of the product does not constitute trademark infringement.

(Filing Date: 05-23-2014)

Aspen Technology, Inc. v M3 Technology, Inc

Trade Secrets: Misappropriation of Trade Secrets: To satisfy the element of "use" of a trade secret, actual use may be inferred when a former employee quickly develops software for a competing company; the code does not have to be found in the competing software, as it can still be used as a roadmap for development.

(Filing Date: 05-29-2014)

Renna v. County of Union

Trademarks: Infringement: When a mark cannot be registered because it is not a suitable, protected mark a claim for trademark infringement cannot be brought under Section 43 of the Lanham Act.

(Filing Date: 05-29-2014)

EveryScape, Inc. v. Adobe Systems, Inc.

Patents: Patent Infringement: Patent infringement analysis involves two steps: (1) the threshold construction of the meaning and scope of the asserted claim, followed by (2) a determination of whether the accused product infringes the properly construed claim. If no reasonable jury could possibly find that an accused product satisfies every claim limitation of the asserted claims, either literally, or under the doctrine of equivalents, then summary judgment of noninfringement must be granted.

(Filing Date: 05-30-2014)

Nautilus, Inc. v. Biosig Instruments, Inc.

Patents: The standard to determine definiteness of patent claims requires review by someone skilled in the art.

(Filing Date: 06-02-2014)

Logan Developers v. Heritage Bldgs.

Copyright: Evidence of common elements and standard features shared by two designs are not enough to prove copyright infringement when the two designs are neither extrinsically nor intrinsically similar.

(Filing Date: 06-05-2014)

Mister Softee, Inc. v. Tsirkos

Trademarks: Trademark Infringement: In a trademark infringement case, courts look to an eight-part test that determines whether customer confusion will occur due to the infringement that will damage business for the senior user.

(Filing Date: 06-05-2014)

Authors Guild v. Hathi Trust

Copyright: Fair Use: When an association serving people with disabilities creates an online database of copyrighted works they are protected under the Fair Use Doctrine.

(Filing Date: 06-10-2014)

Bristol-Myers Squibb Co. v. Teva Pharmaceuticals USA, Inc.

Patents: Invalidity: A drug's unexpected properties alone are insufficient to establish non-obviousness.

(Filing Date: 06-12-2014)

Lambert Corp. v. LBJC Inc.

Trademarks: Trademark Infringement: To prevail on a claim for trademark infringement under the Lanham Act, Section 43(a), a plaintiff must prove: (1) ownership of a valid trademark; (2) use of the mark without its consent; and (3) that such use is likely to cause confusion. Even without a valid trademark registration, a trademark infringement plaintiff may still demonstrate superior rights to a trademark by establishing that it was the first user of the mark in commerce, however, such prior use must be “continuous,” and not merely “transitory.”

(Filing Date: 06-16-2014)

Alice Corp. Pty. LTD v. CLS Bank Int’l

Patents: The mere use of a computer is not sufficient to transfer ma claim from a patent-ineligible abstract idea to a patent-eligible invention.

(Filing Date: 06-19-2014)

OBAN US, LLC v. Nautilus, Inc.

Copyright: When a company licenses the use of its brand to another they do not have a duty to monitor the licensee’s infringement of a third party mark.

(Filing Date: 06-23-2014)

ABC, Inc. v. Aereo, Inc.

Copyright: The Copyright Act of 1976 gives a copyright owner the exclusive right to “perform the copyrighted work publicly.”

(Filing Date: 06-25-2014)

Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc.

Patents: PATENTS: PERMANENT INJUNCTION: The detrimental effect of restricting innovation combined with the public’s general interest in protecting inventive technology property outweighs any public interest in purchasing cheaper products from an infringing party.

(Filing Date: 06-30-2014)

( 0 summaries )

July