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May 2007
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July 2007

Buc Int'l Corp. v. Int'l Yacht Council

In this copyright infringement case, the plaintiff claimed copyright protection of a factual compilation – specifically, the selection, order, and arrangement of information about yachts listed for sale – vis a vis the defendants’ competing factual compilation, which came onto the scene after the plaintiff had obtained certificates of copyright registration. The case was tried to a jury, which found for the plaintiff. The defendants now appeal.1 They raise several issues, among them whether the court erred in instructing the jury that it could find copyright infringement if there were “substantial similarities” between the original elements of the plaintiff’s compilation and corresponding elements of the defendants’ compilation. According to the defendants, the court should have required the plaintiff to prove that the allegedly infringing elements were “virtually identical” to the plaintiff’s original elements.

We find no error in the district court’s “substantial similarities” instructions or in any of the other issues the defendants raise. We therefore affirm the district court’s judgment.

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Biomedino, LLC v. Waters Techs. Corp.

Biomedino, LLC (“Biomedino”) appeals the judgment of the United States District Court for the Western District of Washington that claims 13-17 and 40 of U.S. Pat. No. 6,602,502 (“the ’502 patent”) are invalid for indefiniteness under 35 U.S.C. § 112, ¶ 2. Biomedino v. Waters Techs. Corp., No. CV05-0042 (W.D. Wash. Mar. 15, 2006). Because the claim limitation “control means” has no corresponding structure described in the specification as required by 35 U.S.C. 112, ¶ 6, we affirm the district court’s invalidity determination.

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Bender v. Dudas

S. Michael Bender (“Bender”) appeals from a final decision by the United States District Court for the District of Columbia that granted summary judgment upholding a disciplinary action taken by the director of the United States Patent and Trademark Office (the “PTO” or “agency”) to exclude Bender from practicing before the PTO. Bender v. Dudas, No. 04-CV-1301 (D.D.C. Jan. 13, 2006) (“SJ Order”). Because the PTO’s findings were supported by substantial evidence, and because the disciplinary action was not arbitrary, capricious, an abuse of discretion, or otherwise not in accordance with the law, we affirm.

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China Healthways Inst., Inc. v. Wang

China Healthways Institute, Inc., doing business as Chi Institute, appeals the decision of the United States Patent and Trademark Office Trademark Trial and Appeal Board, wherein the Board denied Chi Institute's opposition to registration of the trademark "Chi PLUS" on application of Xiaoming Wang ("Wang"), on the ground that there was no likelihood of confusion. We reverse the decision of the Board.

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Linear Tech. Corp. v. Applied Materials, Inc.

In this action plaintiff Linear Technology Corporation (Linear) alleged that three
equipment manufacturers had sold it equipment that was the source of a patent
infringement claim against Linear by a third party. The trial court sustained the
demurrers of the three defendants, finding insufficient facts to state a cause of action for fraud or unfair competition and lack of subject matter jurisdiction on the causes of action for breach of contract, implied equitable indemnity, breach of statutory warranty, and breach of the covenant of good faith and fair dealing.

On appeal, Linear maintains that all of its claims were erroneously dismissed because they were properly brought in state court and stated viable causes of action. We agree with the superior court's ruling on the claims of fraud and unfair competition but find merit in Linear's jurisdictional arguments. Accordingly, we will reverse the judgment and remand for further proceedings on the contract-related claims.

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Thoroughbred Software Int'l, Inc. v. Dice Corp.

Plaintiff-Appellant Thoroughbred Software International, Inc. (hereinafter, “Thoroughbred”) appeals the award of damages and attorney’s fees in a case where the district court found Defendants-Appellees Dice Corporation and Clifford V. Dice (hereinafter, collectively, “Dice Corp.”) liable for copyright infringement. Thoroughbred appeals the district court’s denial of: (1) an award of actual damages for  infringing software that was not used by Dice Corp.’s customers; (2) profits that Dice Corp. earned as a result of the infringement; and (3) attorney’s fees on the ground that Thoroughbred was not a prevailing party. For the following reasons, we REVERSE the district court’s judgment denying actual damages for the unused infringing software; AFFIRM the denial of profits; and VACATE the district court’s denial
of attorney’s fees. We hereby REMAND this action to the district court to enter judgment in favor
of Thoroughbred on its claim for actual damages for the unused infringing software in the amount
of $183,794.25, and to determine whether Thoroughbred, as the prevailing party, is entitled to an
award for attorney’s fees.

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Greenberg v. National Geographic Soc'y

This case presents the question of whether § 201(c) of the Copyright Act accords a magazine publisher a privilege to produce a digital compilation that contains exact images of its past magazine issues. This case comes before this Court for a second time and requires a determination whether an intervening Supreme Court case, New York Times Co. v. Tasini, 533 U.S. 483 (2001), abrogates an earlier decision in this case, Greenberg v. Nat'l Geographic Soc'y, 244 F.3d 1267 (11th Cir. 2001) ("Greenberg I"), such that we are bound to overrule Greenberg I, which held that the digital compilation was not privileged.

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Entegris, Inc. v. Pall Corp.

Mykrolis Corporation (“Mykrolis”)1 sued Pall Corporation (“Pall”) in the United States District Court for the District of Massachusetts, asserting infringement of U.S. Patent Nos. 6,068,770 (the ’770 patent) and 6,378,907 (the ’907 patent) by certain fluid filtering devices manufactured and sold by Pall. The district court granted Mykrolis’ motion for a preliminary injunction. Mykrolis Corp. v. Pall Corp., No. 03-10392, 2004 U.S. Dist. LEXIS 7523 (D. Mass. Apr. 30, 2004) (preliminary injunction order). After subsequent motions by the parties, the court held Pall in contempt for violating the injunction but, in the same order, dissolved the injunction based, at least in part, on a newly-raised invalidity challenge to the asserted patents. Mykrolis Corp. v. Pall Corp., No. 03-10392, 2005 U.S. Dist. LEXIS 518, *11-12 (D. Mass. Jan. 12, 2005) (contempt order). Pall appeals the district court’s finding that Pall was in contempt. We dismiss that appeal for lack of jurisdiction. Mykrolis cross-appeals the court’s order dissolving the preliminary injunction. Because the district court did not abuse its discretion in dissolving the preliminary injunction, we affirm that decision.

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Motionless Keyboard Co. v. Microsoft Corp

On summary judgment, the U.S. District Court for the District of Oregon determined that Microsoft Corporation (“Microsoft”); Nokia, Inc. (“Nokia”); and Saitek Industries, Ltd. (“Saitek”) did not infringe, literally or under the doctrine of equivalents, Motionless Keyboard Company's (“MKC's”) U.S. Patent Nos. 5,178,477 (the '477 patent) and 5,332,322 (the '322 patent). Motionless Keyboard Co. v. Microsoft Corp., No. Civ. 04-180-AA, 2005 WL 1113818 (D. Or. May 6, 2005). Also on summary judgment, the district court determined that the '477 and '322 patents were invalid based on public use under 35 U.S.C. § 102(b). The district court also found the '322 patent invalid based on obviousness due to the patentee's terminal disclaimer in light of the '477 patent. Because the district court correctly construed the claim limitation "a concavity in said housing at said key actuation position, and a thumb-associable cluster of keys forming a keyboard within said concavity," this court affirms the ruling of no infringement. Because the trial court misapplied the concept of public use and incorrectly found obviousness due to a terminal disclaimer, this court reverses its invalidity rulings.

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