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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