Intellectual Property and Tech Law Reports

Optimum Techs., Inc. v. Henkel Consumer Adhesives, Inc.

In this appeal, plaintiff Optimum Technologies, Inc. (“Optimum”) raises a Henkel Corporation, the parent company of HCA, was also named as a defendant in this action and appears as a party in the caption of this appeal. The district court, however, determined that Henkel Corporation had no involvement in any of the facts alleged in Optimum’s complaint. Accordingly, the court granted summary judgment in favor of Henkel Corporation on all counts that had been lodged against it. That decision is not challenged by Optimum on appeal, and is therefore deemed waived. See AT&T Broadband v. Tech Commc’ns, Inc., 381 F.3d 1309, 1320 n.14 (11th Cir. 2004) (“Issues not raised on appeal are considered abandoned.”) (citation omitted).

A number of challenges to the district court’s disposition of its action against defendant-appellee Henkel Consumer Adhesives, Inc. (“HCA”).  Specifically, Optimum argues that: (1) the district court erred in granting partial summary judgment in favor of HCA on Optimum’s claims of trademark infringement and
unfair competition; (2) the district court erred in granting summary judgment in favor of HCA on Optimum’s claims of breach of confidential relationship, breach of fiduciary duty, fraudulent concealment, fraud, and negligent misrepresentation; and (3) the district court erred in granting --- following a jury trial that resulted in a mistrial --- HCA’s renewed motion for judgment as a matter of law on Optimum’s trademark and unfair competition claims, due to a lack of evidence establishing
Optimum’s damages. Following a careful review of the record and the arguments on appeal, we discern no reversible error by the district court, and, therefore, we AFFIRM.

Download the decision.

Frazer v. Schlegel

Dr. Ian Frazer and Dr. Jian Zhou (together the interference party "Frazer") appeal the decision of the United States Patent and Trademark Office, Board of Patent Appeals and Interferences ("the Board") awarding priority to Dr. C. Richard Schlegel and Dr. A. Bennett Jenson (together the interference party "Schlegel").1 The interference is between Frazer's United States patent application Serial No. 08/185,928 entitled "Papilloma Virus Vaccine," which claims priority from Australian and Patent Cooperation Treaty ("PCT") applications, and Schlegel's United States application Serial No. 08/216,506 entitled "Papillomavirus Vaccine."

Download the decision.

In re Trans Texas Holdings Corp.

Appellant Trans Texas Holdings Corp. (“Trans Texas”) appeals the decision of the Board of Patent Appeals and Interferences (“Board”) in Reexamination Nos. 90/005,841 and 90/005,842. The Board affirmed the examiner’s rejection of all of the claims of U.S. Patent No. 5,832,461 (filed Oct. 23, 1991) (“’461 patent”) and U.S. Patent No. 6,052,673 (filed Nov. 2, 1998) (“’673 patent”) as obvious under 35 U.S.C. § 103. We affirm.

Download the decision.

Ormco Corp. v. Align Tech., Inc.

Ormco Corporation (“Ormco”) appeals from the decision of the United States District Court for the Central District of California granting summary judgment in favor of Align Technology, Inc. (“Align”) that the asserted claims of Ormco’s U.S. Patents 6,616,444 (“the ’444 patent”), 6,244,861 (“the ’861 patent”), 5,683,243 (“the ’243 patent”), and 5,447,432 (“the ’432 patent) (collectively, the “Ormco patents”) were not infringed and are invalid. Align cross-appeals from the decision of the trial court granting summary judgment of invalidity of certain claims of Align’s U.S. Patent 6,398,548 (“the ’548 patent”) in favor of Ormco and Ormco’s subsidiary, Allesee Orthodontic Appliances, Inc. (“AOA”). Because the court correctly granted summary judgment as to some but not all of the claims of the Ormco patents, we affirm in part and reverse in part the judgment as to the Ormco patents. Because the court correctly granted summary judgment of invalidity of the specified claims of the ’548 patent, we affirm that judgment.

Download the decision.

Shum v. Intel Corp.

Frank T. Shum appeals from the decision of the United States District Court for the Northern District of California dismissing his claims for correction of inventorship pursuant to 35 U.S.C. § 256 and various state law claims, including fraud, fraudulent concealment, breach of fiduciary duty, and unjust enrichment. Because we conclude that the district court erred in conducting a bench trial on the inventorship claim prior to a jury trial on the state law claims when there were common underlying factual issues, and erred in dismissing the unjust enrichment claim on the pleadings, we vacate, reverse, and remand.

Download the decision.

Grocery Outlet Inc. v. Albertson's Inc.

Download the decision.

Mag Jewelry Co., Inc. v. Cherokee, Inc.

In December 2001, plaintiff Mag Jewelry Company ("Mag") purchased some costume jewelry at a Target
store in Rhode Island. The necklaces, whose pendants were comprised of four crystal stones in the shape of an angel, were of interest to Mag because it holds a copyright on that "crystal angel" design, and Target was not one of Mag's customers. Mag subsequently filed this copyright infringement action against Target Corporation and its supplier, Style Accessories, Inc. ("Style").1 The defendants denied copying Mag's angel, claiming that their jewelry was based on an identical design independently created by someone else. Following presentation of Mag's case to a jury, the district court granted defendants' motion for judgment as a matter of law. Mag appeals that ruling, and, in a crossappeal, defendants challenge the district court's refusal to award attorney's fees. After careful review of the record, we affirm the judgment for defendants on the merits but reverse the fees ruling.

Download the decision.

Brown v. Latin Am. Music Co.

This appeal is taken from the district court's dismissal with prejudice of the declaratory defendants'
counterclaim for copyright infringement. The counterclaimants are the Latin American Music Company and the Asociación de Compositores y Editores de Música Latino Americana (collectively herein "LAMCO"), who claim that they own valid copyrights for eleven poems that were written by Juan Antonio Corretjer and "musicalized" by Roy Brown, a music composer and performer.

Mr. Brown brought a declaratory judgment action in the United States District Court for the District of Puerto Rico, requesting the declaration that poet Corretjer's work "En la Vida Todo es Ir" is in the public domain because it was first published in 1957 without the requisite copyright notice. LAMCO's counterclaim named ten additional poems for which LAMCO charged Mr. Brown with infringement, based on his musical adaptations, of a copyright registered by LAMCO in February 2000. The parties filed statements of undisputed and disputed fact, depositions were taken, and Mr.Brown presented documentary evidence concerning the poems, their first publication, and his musicalizations as recorded on phonorecords. Mr. Brown moved for summary judgment on the ground that LAMCO did not possess a valid copyright for the poems, that ten of the poems were in the public domain, and that the musical
composition as to the eleventh was authorized by the poet. Mr. Brown also requested summary judgment on the ground that the claim  of infringement was time barred because the three-year statute of
limitations had run if the phonorecords are viewed as derivative works.

The district court denied Mr. Brown's motion for summary judgment, stating that some material facts were unresolved. However, the court dismissed the infringement counterclaim with prejudice, ruling that LAMCO had not established the elements required to proceed in a copyright infringement suit. On LAMCO's appeal, we affirm the judgment of the district court.

Download the decision.

Boston Scientific Scimed, Inc. v. Medtronic Vascular, Inc.

Boston Scientific Scimed, Inc. (“Scimed”)∗ appeals the district court’s grant of summary judgment affirming the Board of Patent Appeals and Interferences’ final decision, which denied Scimed the priority benefit of an earlier-filed European patent application for the subject matter at issue in Patent Interference Number 104,192 (“the ’192 interference”). Scimed Life Sys., Inc. v. Medtronic Vascular, Inc., 486 F. Supp. 2d 60 (D.D.C. 2006). We affirm.

Download the decision.

Sony Elecs., Inc. v. Guardian Media Techs, Ltd.

These declaratory judgment actions were brought by Sony Electronics, Inc. (“Sony”), Mitsubishi Digital Electronics America, Inc. (“Mitsubishi”), Victor Company of Japan, Ltd. (“JVC”), Matsushita Electric Industrial Co., Ltd. (“Matsushita”), and Thomson, Inc. (“Thomson”), in the United States District Court for the Southern District of California. Each of the five plaintiffs (four of which are appellants in this appeal) sued Guardian Media Technologies, Ltd. (“Guardian”), seeking declaratory judgments that two patents owned by Guardian, U.S. Patent Nos. 4,930,158 (“’158 patent”) and 4,930,160 (“’160 patent”), were not infringed by the plaintiffs, invalid, and not enforceable against the plaintiffs due to laches and equitable estoppel. After consolidating the cases, the district court granted Guardian’s motion to dismiss for lack of subject matter jurisdiction. Sony Elecs., Inc. v. Guardian Media Techs., Ltd., No. 05-CV-1777-B (S.D. Cal. Mar. 16, 2006) (“Sony”). Sony, Mitsubishi, JVC, and Matsushita appeal the district court’s dismissals. We vacate and remand for the district court to determine, in its discretion, whether to hear the actions.

Download the decision.