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November 2006
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January 2007

Plumtree Software, Inc. v. Datamize, LLC

Plumtree Software, Inc. ("Plumtree") filed this declaratory judgment action against Datamize, LLC ("Datamize") in the United States District Court for the Northern District of California.  The district court denied Datamize’s motion to dismiss for lack of subject matter jurisdiction and granted summary judgment in favor of Plumtree on the ground that Datamize’s patents were invalid under the on sale bar doctrine, 35 U.S.C. § 102(b). Datamize now appeals. We sustain the district court’s jurisdictional ruling, but vacate and remand for further proceedings on the merits.

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Pritchett v. Pound

Appellant Nancy Pound and the Estate of Ronald Pound (collectively “Pound”) appeal the district court’s grant of summary judgment and award of attorney’s fees in favor of Appellees E. Price Pritchett and Pritchett, L.P. (collectively “Pritchett”) in this dispute over the copyright ownership of two books. Reviewing the summary judgment record de novo and the award of attorney fees for abuse of discretion, we affirm for the following reasons.

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Mike's Train House v. Lionel, L.L.C.

Defendant-Appellant Lionel, L.L.C., appeals a jury verdict finding it liable for misappropriation of trade secrets and unjust enrichment, and awarding Plaintiff-Appellee Mike’s Train House, Inc. (“MTH”) damages exceeding $40 million. After unsuccessfully moving the district court for a new trial and judgment as a matter of law, Lionel appeals the jury verdict, the district court’s evidentiary decisions, the specificity with which MTH identified its “trade secrets,” the imposition of joint and several liability, and the amount of the damage award. Lionel also appeals the district court’s order granting MTH’s request for an injunction. Because Lionel correctly argues that the district court erred in admitting expert testimony and in imposing joint-and-several liability, and because the jury award improperly “double counts” MTH’s damages, we REVERSE the district court’s order denying Lionel’s motion for a new trial and REMAND this case for further proceedings consistent with this opinion. Because the district court’s injunction is based entirely on the jury’s verdict, we REVERSE that order as well.

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Planet Bingo, LLC v. Gametech Internationall, Inc.

The United States District Court for the District of Nevada determined that GameTech International, Inc., did not infringe claims 3, 6-9 of U.S. Patent No. 5,482,289 (the '289 patent) and claims 1, 4, 7, 8, 11, 12, 15, 16, 19, 21, 24, 25, 28, 32, and 35-39 of U.S. Patent No. 5,727,786 (the '786 patent) belonging to Planet Bingo, LLC. Planet Bingo, LLC v. GameTech Int'l, Inc., CV-S-01-1295-
PMP (D. Nev. Apr. 18, 2005) (Infringement Decision). The district court further found in a separate order that prior art anticipated claims 2 and 5 of the '289 patent under 35 U.S.C. § 102(b). Planet Bingo, LLC v. GameTech Int'l, Inc., CV-S-01-1295-PMP (D. Nev. May 6, 2005) (Invalidity Decision). Finding no error, this court affirms the district court's findings.

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DSU Med. Corp. v. JMS Co., Ltd.

DSU Medical Corporation (DSU) and Medisystems Corporation (MDS) (collectively DSU) sued JMS Company, Limited (JMS) and JMS North America (collectively JMS) and ITL Corporation Pty, Limited (ITL) for patent infringement, inducement to infringe, and contributory infringement of United States Patent Nos. 5,112,311 (’311) and 5,266,072 (’072). After a six-week jury trial produced a unanimous verdict, the United States District Court for the Northern District of California entered a final judgment finding claims 46-47, and 50-52 of the ’311 patent invalid as obvious. The trial court also entered a final judgment, pursuant to the unanimous verdict, of infringement against JMS and JMS North American on claims 49, 53, and 54 of the ’311 patent, and of non-infringement for ITL. DSU Med. Corp. v. JMS Co., JMS N. Am. Corp., & ITL Corp. PTY, Nos. C-00-1826-DLJ, C-99-2690-DLJ, slip op. at 3-4 (N.D. Cal. May 7, 2004) (Judgment). The jury awarded total damages of $5,055,211 for infringement against JMS and JMS North America, and the trial court entered a final judgment holding both jointly and severally liable for the award. Finding no reversible error, this court affirms.

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L & W, Inc. v. Shertech, Inc.

L&W, Inc., a manufacturer of heat shields for automobiles, sued Shertech, Inc., and Steven W. Sheridan (collectively, “Shertech”) in the United States District Court for the Eastern District of Michigan. L&W sought a declaratory judgment that it did not infringe Shertech’s U.S. Patent No. 5,670,264 (“the ’264 patent”), that the ’264 patent was invalid, and that the ’264 patent was unenforceable because of inequitable conduct. Shertech counterclaimed, alleging that L&W’s products infringed the ’264 patent.

On cross-motions for summary judgment on the infringement claim, the district court entered summary judgment of infringement. The parties then tried the invalidity claims to a jury. The jury rendered special verdicts, finding all the claims of the ’264 patent invalid except for claim 7. A bench trial was then held on L&W’s inequitable conduct claim. The district court rejected that claim, holding that L&W failed to prove that Mr. Sheridan or his counsel acted with intent to deceive the U.S. Patent and Trademark Office. L&W moved for a new trial or judgment as a matter of law on claim 7 based in part on an asserted inconsistency in the jury’s special verdicts. Shertech moved for a new trial or judgment as a matter of law on claim 10. The district court denied both motions and entered judgment against L&W on claim 7 of the patent.

L&W appeals from the portion of the judgment holding it liable under claim 7, and Shertech cross-appeals from the portion of the judgment holding claim 10 invalid. We vacate the judgment of infringement on claim 7 and remand for further proceedings as to infringement. We affirm the portions of the judgment holding claim 7 valid and claim 10 invalid. We affirm the portion of the judgment holding that the ’264 patent is not unenforceable due to inequitable conduct.

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Sanofi-Synthelabo v. Apotex, Inc.

Apotex, Inc. and Apotex Corp. (collectively referred to as “Apotex”) appeal from the decision of the United States District Court for the Southern District of New York granting a preliminary injunction in favor of Sanofi-Synthelabo, Sanofi-Synthelabo, Inc., and Bristol-Myers Squibb (“BMS”) Sanofi Pharmaceuticals Holding Partnership (collectively referred to as “Sanofi”). Because we conclude that the district court did not abuse its discretion in granting the preliminary injunction, we affirm.

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Synergistic Int'l LLC v. Korman

Defendant Jody Fine Korman appeals from the district court’s award of summary judgment and damages to plaintiff Synergistic International, LLC, in this trademark dispute. See Synergistic Int’l, LLC v. Korman, No. 2:05-CV-49 (E.D. Va. Oct. 20, 2005) (the "Opinion"). Korman makes two contentions of error: first, that the court erred in ruling that Korman’s trademark, "THE WINDSHIELD DOCTOR," infringed Synergistic’s trademark, "GLASS DOCTOR ®"; and second, that the court erred in awarding more than $142,000 in damages to Synergistic. As explained below, we affirm on the liability ruling, but vacate the court’s award of damages and remand.

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Audi AG v. D'Amato

BOYCE F. MARTIN, JR., Circuit Judge. Defendant Bob D’Amato, who is unaffiliated with Audi, used the domain name www.audisport.com to sell goods and merchandise displaying Audi’s name and trademarks. Audi claims that D’Amato’s website infringes and dilutes its world famous trademarks “AUDI,” the “AUDI FOUR RING LOGO,” and “QUATTRO,” as well as the distinctive trade dress of Audi automobiles. Audi also claims that D’Amato violated the AntiCybersquatting Consumer Protection Act. The district court granted summary judgment and injunctive relief to Audi on all claims. The district court also granted Audi attorneys’ fees, but refused to award Audi statutory damages under 15 U.S.C. § 1117(a). D’Amato appeals the grant of summary judgment and injunctive relief and award of attorneys’ fees to Audi. He also appeals the district court’s denial of his Rule 56(f) motion for additional discovery. For the reasons below, we AFFIRM the district court.

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Starting a small business? Don't skimp on lawyers' fees

By Ellen Rosen
THE NEW YORK TIMES
12/01/2006

Ythan Lax was not a newcomer in the business world. He had spent years in corporate communications before striking out on his own by opening a Little Gym franchise in upstate New York. But despite his experience, he felt unprepared to cope with the myriad legal issues that arose and sought out a lawyer for help.

"If you think that having an attorney that is qualified is expensive, try not having one," Lax said, who paid $7,000 for his. "I can't count the number of mistakes I would have made — taxes, financing and, perhaps the scariest part — signing a seven-year lease with a personal guarantee," without the advice of counsel.

When do you really need a lawyer? Despite the proliferation of both self-help books and Internet advice, even the most sophisticated of business people find, as Lax did, that when starting a business they need an individual lawyer to guide them through the most basic decisions as well as the more complicated ones, like financing and property issues.
. . .
The business owner also should think about any intellectual property assets that will be used by the new company. At a minimum, product or company names should be researched online first, even though a lawyer ultimately should perform a trademark search. The owner also must think about how to protect other assets — designs or processes, for example — when starting up. While it may be simpler to contribute the assets to the business, Walsh said licensing them to the business could be a better option, because "you can maintain some control over use of the invention."

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