Willamette Law Online

Intellectual Property


( 16 summaries )


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)


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 )


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)


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 )


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)

( 0 summaries )