Intellectual Property and Tech Law Reports

Al Minor & Assoc v. Martin

Trade secrets – R.C. 1333.61(D) – Confidential client lists – List does not lose its character as trade secret merely because former employee utilized memory of list rather than writing or other tangible source.

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Dominant Semiconductors Sdn. Bhd. v. Osram GmbH

Dominant Semiconductors Sdn. Bhd. (“Dominant”) appeals from the decision of the United States District Court for the Northern District of California granting summary judgment in favor of OSRAM GmbH (“OSRAM”) on Dominant’s claims for unfair competition, intentional interference with contractual relations, interference with prospective economic advantage, and trade libel arising from OSRAM’s communications to its customers that Dominant infringed several of its patents.  Because the district court correctly determined that OSRAM’s communications were not objectively baseless, we affirm.

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Nasalok Coating Corp. v. Nylok Corp.

Appellant Nasalok Coating Corporation (“Nasalok”) appeals from a decision of the Trademark Trial and Appeal Board (“Board”). The Board granted summary judgment in favor of appellee Nylok Corporation (“Nylok”) in a cancellation proceeding brought by Nasalok. The Board held that Nasalok’s claims were barred by res judicata (claim preclusion). We affirm.

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Finisar Corp. v. DirectTv Group, Inc.

By a jury verdict, the United States District Court for the Eastern District of Texas found that The DirecTV Group, Inc., DirecTV Holdings, LLC, DirecTV Enterprises, LLC, DirecTV Operations, LLC, and DirecTV, Inc. (collectively DirecTV) had infringed U.S. Patent No. 5,404,505 (the ’505 patent), assigned to Finisar Corporation (Finisar). Finding DirecTV’s infringement to have been willful, the jury awarded $78.9 million in reasonable royalty damages. The district court sustained the jury’s verdict, except with respect to induced and contributory infringement, denied Finisar’s request for injunctive relief, imposed a compulsory license, and awarded Finisar $25 million in enhanced damages. Finisar Corp. v. DirecTV Group, Inc., No. 1:05-CV-00264 (E.D. Tex. July 7, 2006) (Final Judgment). The district court also denied DirecTV’s post-judgment motions for judgment as a matter of law (JMOL) or a new trial. Finisar Corp. v. DirecTV Group, Inc., Case No. 1:05-CV-00264 (E.D. Tex. Sept. 1, 2006) (JMOL Order).
Because the district court incorrectly construed a vital term featured prominently in each asserted claim, this court vacates the verdict of infringement. Furthermore, the district court erred in ruling that the prior art did not anticipate claim 16. This error also infects the scope of the prior art for assessing the validity of the rest of the claims. Therefore, this court remands for a new trial on both infringement and validity of claims 17, 22, 24, 26, 39, and 44.

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Honeywell Int'l, Inc. v. Hamilton Sundstrand Corp.

Honeywell International, Inc. and Honeywell Intellectual Properties, Inc. (collectively "Honeywell") brought suit against Hamilton Sundstrand Corporation ("Sundstrand") for infringement of claims 8, 10, 11, 19, and 23 of United States Patent No. 4,380,893 ("the '893 patent") and claim 4 of Patent No. 4,428,194 ("the '194 patent"). Because "rewriting of dependent claims into independent form coupled with the cancellation of the original independent claims creates a presumption of prosecution history estoppel," this court vacated an earlier infringement verdict in favor of Honeywell and remanded to determine whether Honeywell could rebut the presumption of surrender under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co, 535 U.S. 722 (2002) (Festo VIII), remanded to 344 F.3d 1359 (Fed. Cir. 2003) (en banc) (Festo IX). Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., 370 F.3d 1131, 1134 (Fed. Cir. 2004) (en banc) (Honeywell II). On remand, the United States District Court for the District of Delaware barred Honeywell from asserting the doctrine of equivalents. Honeywell Int’l Inc. v. Hamilton Sundstrand Corp., No. 99-309, 2006 U.S. Dist. LEXIS 57030, at *2 (D. Del. Aug. 14, 2006) (Honeywell III). Because Honeywell did not show that the alleged equivalent was unforeseeable at the time of the narrowing amendment or that the narrowing amendment bore no more than a tangential relation to the alleged equivalent, this court affirms.

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North American Medical Corp. v. Axiom Worldwide

Defendants-Appellants Axiom Worldwide, Inc. (“Axiom”), James Gibson, Jr., and Nicholas Exharhos appeal the district court’s grant of a preliminary injunction in favor of the Plaintiffs-Appellees, North American Medical Corporation (“NAM”) and Adagen Medical International, Inc. (“Adagen”). The district court enjoined the Defendants-Appellants from engaging in certain alleged acts of trademark infringement and false advertising. We now affirm the district court’s order in part and vacate and remand it in part.

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Symantec Corp. v. Hilgraeve, Inc.

In this patent infringement suit, appellant Symantec Corporation (“Symantec”) appeals from the district court’s grant of summary judgment of non-infringement of claims 1-20 of the asserted patent, U.S. Patent No. 5,319,776 (“the ’776 patent”). Symantec Corp. v. Computer Assocs. Int’l, Inc., No. 02-CV-73740-DT (E.D. Mich. Aug. 31, 2006) (reports and recommendations of magistrate judge).1 Computer Associates International, Inc. (“CA”), the accused infringer, cross-appeals from the district court’s grant of summary judgment on: (1) the defense of laches; (2) inequitable conduct; (3) invalidity over the prior art; and (4) inventorship. Id. Richard B. Levin (“Levin”) cross-appeals from the district court’s grant of summary judgment that he was not a co-inventor of the ‘776 patent. Id.
Because we find that the district court erred in its construction of the claim terms “a method of screening data as it is being transferred,” “destination storage medium,” “computer,” and “computer system,” we vacate and remand as to non-infringement and invalidity. We dismiss CA’s cross-appeal as to laches as improper, but we treat laches as an alternative ground for affirming the judgment. We affirm the district court’s decision on laches, inequitable conduct, and inventorship.

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PowerOasis, Inc. v. T-Mobile USA, Inc.

PowerOasis, Inc. and PowerOasis Networks, LLC (PowerOasis) appeal the United States District Court for the District of New Hampshire’s grant of summary judgment that claims 15, 18, 31, 35, 38, 40, and 49 (asserted claims) of U.S. Patent Nos. 6,466,658 (’658 patent) and 6,721,400 (’400 patent) are invalid as anticipated under 35 U.S.C. § 102(b). In reaching its decision, the district court concluded that none of the asserted claims of the two patents were entitled, under 35 U.S.C. § 120, to the benefit of the filing date of PowerOasis’s original application because the earlier application did not provide a written description of the invention claimed in the asserted patents, as required by 35 U.S.C. § 112. We affirm the grant of summary judgment of invalidity with respect to all asserted claims.

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Judkins v. HT Window Fashion Corp.

The United States District Court for the Western District of Pennsylvania denied HT’s motion for a preliminary injunction on the counterclaim. HT has appealed from the denial of the preliminary injunction. HT contended in the district court and argues on appeal that Judkins acted in bad faith when he sent the letters because he knew that his U.S. Patent No. 7,182,120 B1 (“the ’120 patent”), which the letters suggest is infringed by HT’s Polaris product, was unenforceable. We affirm the district court’s denial of the preliminary injunction and deny Judkins’s motion for attorney’s fees.

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O2 Micro Int'l Ltd. v. Beyond Innovation Tech. Co., Ltd.

Defendants-Appellants Beyond Innovation Technology Company Limited (“BiTEK”), SPI Electronic Company Limited and FSP Group (collectively, “SPI/FSP”), and Lien Chang Electronic Enterprise Company Limited (“Lien Chang”) appeal a final judgment by the United States District Court for the Eastern District of Texas. O2 Micro Int’l Ltd. v. Beyond Innovation Tech. Co., No. 2:04-CV-32 (E.D. Tex. Mar. 21, 2007). A jury found that Defendants-Appellants willfully induced the infringement of claims 1, 15, 35, and 39 of U.S. Patent No. 6,259,615 (“the ’615 patent”), claims 12 and 16 of U.S. Patent No. 6,396,722 (“the ’722 patent”), and claims 13, 16, and 17 of U.S. Patent No. 6,804,129 (“the ’129 patent”), all of which are owned by Plaintiff-Appellee O2 Micro International Ltd. (“O2 Micro”). The district court entered a final judgment and permanent injunction. For the reasons explained below, we vacate and remand for further proceedings.

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Microprocessor Enhancement Corp. v. Texas Instruments Inc.

This is a patent infringement case. Microprocessor Enhancement Corporation and Michael H. Branigin (collectively “MEC”) appeal the judgments of the United States District Court for the Central District of California, Docket Nos. 05-CV-00323 and 05-CV-05667, wherein the district court found on summary judgment that Texas Instruments Incorporated (“TI”) and Intel Corporation (“Intel”) did not infringe any claim of U.S. Patent No. 5,471,593 (“the ’593 patent”) owned by MEC and that all claims of the patent are invalid for indefiniteness. Because the district court erroneously concluded that the claims are indefinite, we reverse the court’s finding of invalidity. Because the district court correctly construed the term “pipeline stage,” we affirm the court’s judgment of noninfringement.

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Caraco Pharm. Labs., Ltd. v. Forest Labs., Inc.

This is an action brought under the Declaratory Judgment Act, 28 U.S.C. §§ 2201, 2202, and the provision of the Hatch-Waxman Act establishing civil actions for patent certainty, 21 U.S.C. § 355(j)(5)(C). Plaintiff-Appellant Caraco Pharmaceutical Laboratories, Ltd. (“Caraco”) appeals a decision of the United States District Court for the Eastern District of Michigan dismissing its declaratory judgment action for noninfringement against Defendants-Appellees Forest Laboratories, Inc., et al., (“Forest”). Caraco’s action was dismissed for lack of Article III jurisdiction on the grounds that it had been rendered moot when Forest unilaterally granted Caraco a covenant not to sue for infringement of the patent-in-suit, U.S. Patent No. 6,916,941. However, in the context of the Hatch-Waxman framework, Forest’s covenant not to sue did not eliminate the controversy between the parties. Accordingly, we hold that Caraco’s declaratory judgment action presents a continuing Article III controversy, and reverse and remand for further proceedings.

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Akira Akazawa v. Link New Tech. Int'l, Inc.

Akira Akazawa (“Akira”) and Palm Crest, Inc. (collectively “the appellants”) appeal the United States District Court for the Central District of California’s grant of Link New Technology International, Inc.’s (“Link”) motion for summary judgment based on lack of standing. Akira Akazawa v. Link New Tech. Int’l, No. SACV 03-1474 (C.D. Cal. Oct. 26, 2006). Because issues of Japanese intestacy law must be resolved by the district court in order to determine whether Akira owned U.S. Patent No. 5,615,716 (“the ’716 patent”), and therefore possessed standing to bring the present suit, we vacate the district court’s grant of summary judgment and remand for further proceedings.

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Ortho-McNeil Pharm., Inc. v. Mylan Labs., Inc.

The United States District Court for the District of New Jersey permanently enjoined Mylan Laboratories, Inc. from infringing Ortho-McNeil Pharmaceutical Inc.'s U.S. Patent No. 4,513,006 ('006). The '006 patent claims the anticonvulsive drug topiramate. The trial court also reset the effective approval date for Mylan's Abbreviated New Drug Application (ANDA). Because the district court correctly ruled on claim construction, inequitable conduct, obviousness, and enablement, and because the district court did not err in resetting the effective date of Mylan's ANDA under 35 U.S.C. § 271(e)(4)(A), this court affirms.

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Angel Flight of Georgia, Inc. v. Angel Flight Southwest

We AFFIRM the district court’s ruling in its entirety. The district court did not err in ruling (1) AFSE infringed AFGA’s common law trademark rights by using the mark in a manner that created a substantial risk of confusion; and (2) AFGA had not acquiesced to AFSE’s infringing use and was not estopped by laches from enforcing its common law rights in the mark. Similarly, the injunction entered by the district court, which was tailored to protect AFGA’s rights and ensure the public would not be confused, was properly entered. Finally, the district court did not clearly err by cancelling United States Trademark No. 1,491,541 on the ground the registration had been obtained through fraud.

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Tafas v. Dudas

District Court finds the USPTO's rules governing the examination of patents to be an unauthorized extension of USPTO authority.

At issue are the United States Patent and Trademark Office’s changes to the rules governing the examination of patents. This case presents itself by virtue of cross-motions for summary judgment by Plaintiffs Smithkline Beecham Corporation d/b/a GlaxoSmithKline, et al., Plaintiff Triantafyllos Tafas, and Defendants Jon W. Dudas and the United States Patent and Trademark Office. Defendants also move to strike several exhibits filed by Tafas and certain amici curiae. For the reasons stated below, the Court will grant Plaintiffs’ Motions for Summary Judgment, deny Defendants’ Motion for Summary Judgment, and deny as moot Defendants’ Motion to Strike.

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Birdgeport Music, Inc. v. WB Music Corp.

Plaintiff-Appellant Bridgeport Music, Inc. (“Bridgeport”) appeals from the district court’s order awarding attorneys’ fees and costs to Defendant-Appellee Universal-Polygram International Publishing, Inc. (“UPIP”) as a prevailing party under 17 U.S.C. § 505. This court had vacated an earlier award of fees and costs to UPIP and remanded to the district court for further consideration. Bridgeport Music, Inc. v. Rhyme Syndicate Music, 376 F.3d 615 (6th Cir. 2004). On remand, the district court awarded the same amount of fees and costs to UPIP. Bridgeport argues that the district court abused its discretion. For the reasons set forth below, we affirm.

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Aristocrat Techs. Australia Pty, Ltd. v. Int'l Game Tech.

The appellants, referred to collectively as “Aristocrat,” are the owner and exclusive licensee of U.S. Patent No. 6,093,102 (“the ’102 patent”). The patent is directed to an electronic slot machine that allows a player to select winning combinations of symbol positions. The appellees, referred to collectively as “IGT,” manufacture and sell gaming products that Aristocrat asserts infringe the ’102 patent. In an infringement action brought by Aristocrat against IGT in the United States District Court for the District of Nevada, the district court held all of the claims of the ’102 patent invalid for indefiniteness.

The game disclosed in the ’102 patent purportedly increases player interest in slot machines by providing the player with greater control over the definition of winning opportunities. It allows the player to define the winning opportunities based on symbols displayed on the top and side of a multi-line screen representing slot machine reels. Using the invention on a 3x5 screen, for example, the player can define numerous different arrangements that will allow the player to win for some subset of the 243 possible winning combinations. The player can do so by selecting symbol positions and thereby activating winning opportunities for combinations in which the symbols are not necessarily aligned with one another. The only constraint is that the selected combination must contain at least one symbol from each column. Figure 2 from the ’102 patent shows a 3x5 screen with selections, and the figure on the right shows one of the winning combinations for the selection in Figure 2.

On summary judgment, the trial court held all of the claims of the ’102 patent invalid. Aristocrat does not dispute that all of the claims rise and fall together. Like the parties, we therefore focus on independent claim 1.

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Agrizap, Inc. v. Woodstream Corp.

Agrizap, Inc. has sued Woodstream Corporation in the United States District Court for the Eastern District of Pennsylvania for fraudulent misrepresentation and infringement of U.S. Patent No. 5,949,636 (the ’636 patent), which pertains to an electronic rodent-killing device. Woodstream appeals the district court’s denial of its motion for judgment as a matter of law (JMOL) for no fraudulent misrepresentation. Woodstream also appeals the denial of its JMOL motion for invalidity and unenforceability. Agrizap cross-appeals the district court’s final judgment of noninfringement.

Because sufficient evidence supports the jury’s verdict finding Woodstream liable for fraudulent misrepresentation and the trial evidence provides a reasonable basis for the jury’s attendant award of damages, we affirm. Though we defer to the jury for its fact findings on obviousness, we ultimately conclude that, despite those findings, the patent claims in dispute are invalid for obviousness and thus reverse the district court’s denial of Woodstream’s JMOL in that respect. As our decision on those issues completely resolves this case, we decline to address the other arguments as to patent infringement, invalidity, or unenforceability.

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