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Clearwater Systems Corp. v. Evapco, Inc.

This is a patent infringement case that commenced as a trade secret dispute between two competitors in the non-chemical water treatment business. Clearwater Systems Corporation (“Clearwater”) brought an action in the U.S. District Court for the District of Connecticut (“district court”) against Evapco, Inc. (“Evapco”), as well as John W. Lane, a former Clearwater employee who was hired by Evapco, and Bullock, Logan & Associates (“Bul-lock”), a marketing consultant that provided marketing services for Clearwater and Evapco. Clearwater sought injunctive relief for alleged theft of trade secrets and other state business law torts. The district court concluded that Clearwater’s allegedly misappropriated information were not trade secrets under the Connecticut Uniform Trade Secrets Act and denied Clearwater’s request for a permanent injunction. Clearwater Sys. Corp. v. Evapco, Inc., No. 3:05-CV-507, 2005 WL 3543717, at *14 (D. Conn. July 26, 2005).

Prior to the resolution of the trade secrets claim, Evapco counterclaimed for a declaratory judgment that its “Pulse-Pure” product did not infringe two of Clearwater’s patents, U.S. Patent No. 6,063,267 (“’267 patent”), disclos-ing an apparatus for non-chemical water treatment, and U.S. Patent No. 6,641,739 (“’739 patent”), disclosing a method of non-chemical water treatment. Evapco also counterclaimed for a declaration of invalidity and/or unenforceability of the ’267 and ’739 patents. In response, Clearwater amended its complaint to assert a claim of patent infringement against Evapco, alleging that the Pulse-Pure infringed the ’267 and ’739 patents.

The parties subsequently submitted cross-motions for summary judgment of literal infringement of the ’267 patent and invalidity of the ’267 and ’739 patents. After hearing arguments relating to the motions, the district court ruled that the ’267 patent is not invalid for anticipation, but concluded that the ’739 patent is invalid because it is inherently anticipated by the ’267 patent. Clearwater Sys., Corp. v. Evapco, Inc., 596 F. Supp. 2d 291, 313 (D. Conn. 2009). Furthermore, the district court ruled that the Pulse-Pure does not literally infringe the ’267 patent and sua sponte ruled that the Pulse-Pure does not infringe the ’267 patent under the doctrine of equivalents. Id. at 302, 308. For the reasons discussed below, we vacate and remand for proceedings consistent with this opinion.

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Princo Corp. v. ITC

This case requires us to consider the scope of the doctrine of patent misuse. Patent misuse developed as a non-statutory defense to claims of patent infringement. In the licensing context, the doctrine limits a patentee’s right to impose conditions on a licensee that exceed the scope of the patent right. Because patent misuse is a judge-made doctrine that is in derogation of statutory patent rights against infringement, this court has not applied the doctrine of patent misuse expansively. In this case, we adhere to that approach, and we sustain the decision of the International Trade Commission that the doctrine of patent misuse does not bar the intervenor, U.S. Philips Corporation, from enforcing its patent rights against the appellants Princo Corporation and Princo America Corporation (collectively, “Princo”).

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Pass & Seymour, Inc. v. ITC

This appeal challenges a holding by the International Trade Commission (“Commission”) that certain accused products produced by General Protecht Group, Inc. (“Gen-eral Protecht” or “GPG”), Wenzhou Trimone Science and Technology Electric Co., Ltd. (“Trimone”), and Shanghai ELE Manufacturing Corporation (“ELE” and collectively “defendants”) do not infringe certain asserted patents held by Pass and Seymour, Inc. (“P&S”). The Commission found that the asserted patents at issue here were not infringed, and accordingly it found no violation of section 337 of the Tariff Act of 1930, as amended. See 19 U.S.C. § 1337. We agree with the claim construction and in-fringement analysis of the Commission pertinent here, and thus affirm the judgment.

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General Protecht Group, Inc. v. ITC

General Protecht Group, Inc. (“GPG”), Wenzhou Trimone Science and Technology Electric Co., Ltd. (“Trimone”), and Shanghai ELE Manufacturing Corp. (“ELE”) appeal from a final determination of the International Trade Commission (“Commission”) that the importation into the United States, sale for importation, or sale within the United States of certain ground fault circuit interrupters (“GFCIs”) violated section 337 of the Tariff Act of 1930, as amended, 19 U.S.C. § 1337. The Commission issued limited exclusion orders against the importation of GFCI products from each of the three appellants. See In re Certain Ground Fault Circuit Interrupters & Prods. Containing Same, Inv. No. 337-TA-615 (Int’l Trade Comm’n Mar. 9, 2009) (“Final Determination”). The Commission found that devices manufactured by appellants infringe U.S. Patent Nos. 7,283,340 (“the ’340 patent”), 5,594,398 (“the ’398 patent”), and 7,164,564 (“the ’564 patent”), and that none of these patents is invalid or unenforceable.

We hold that the Commission erred in three respects: (1) GPG’s 2003 and 2006 GFCIs and ELE’s 2006 GFCIs do not infringe the ’340 patent, because they do not have a “detection circuit” as claimed in the patent; (2) Trimone’s 2006 GFCIs and ELE’s 2006 GFCIs do not infringe the ’340 patent, because the “load terminals” of the patent do not include receptacle outlets; and (3) GPG’s 2006 GFCIs do not infringe the ’398 patent, because GPG performs the function of the “latching means” in a substantially different way than the structure disclosed in the patent. We remand for further proceedings in these respects. We affirm the Commission’s determination in all other respects.

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Fortune Dynamic, Inc. v. Victoria's Secret Stores Brand Mgmt., Inc.

In February 2007, Victoria’s Secret ran a one-month marketing campaign promoting its new line of BEAUTY RUSH product. As part of that promotion, Victoria’s Secret stores sold or gave away a hot pink tank top with the word “Delicious” written across the chest in silver typescript. Fortune Dynamic, Inc. (“Fortune”), the owner of the incontestable trademark DELICIOUS for footwear, sued Victoria’s Secret for trademark infringement. The district court granted summary judgment in favor of Victoria’s Secret. Mindful that “summary judgment is generally disfavored in the trademark arena,” Entrepreneur Media, Inc. v. Smith, 279 F.3d 1135, 1140 (9th Cir. 2002) (quotation marks omitted), we reverse and remand for trial.

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Jules Jordan Video, Inc. v. 144942 Canada Inc.

Ashley Gasper is an adult movie actor who performs under the stage name Jules Jordan, and is the president and sole shareholder of Jules Jordan Video (“JJV”), the creator of the videos in which Gasper appears. He and his company sued defendants 144942 Canada, Inc., d/b/a Kaytel Video Distribution (“Kaytel”), Leisure Time Video Canada, Inc. (“Leisure Time”), Alain Elmaleh, the principal shareholder of each of the corporate defendants (collectively the “Kaytel defendants”), Jacky’s One Stop and the other defendants named in this consolidated appeal. Gasper alleged that the Kaytel defendants had copied and sold thirteen copyrighted adult DVDs owned by JJV or Gasper and featuring Gasper’s performances (the “JJV action”). The complaint alleged claims for copyright infringement, contributory copyright infringement, violation of unfair business practice, unfair competition under California law, false and misleading advertising, and violation of Gasper’s right of publicity. The claims for unfair business practices and false advertising were dismissed prior to trial, leaving only the claims for copyright infringement based on the replication and distribution of the thirteen DVDs, and the claim for violation of Gasper’s right of publicity under California law.

After a lengthy and contentious trial, the jury returned a verdict for plaintiffs on both issues. After the verdict the court granted the Kaytel defendants’ motion for judgment as a matter of law (“JMOL”) in part, concluding that neither Gasper nor JJV had standing to assert the copyright claims, and denied plaintiffs’ motion for JMOL. The court rejected the Kaytel defendants’ claim that Gasper’s right of publicity claim was preempted by copyright law. Both parties have appealed. We disagree with the district court on both issues, concluding that Gasper’s right of publicity claim is preempted by the Copyright Act, but that Gasper and JJV had standing to assert the copyright claims in question.

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Tom Frye v. YMCA Camp Kitaki

Tom Frye appeals the district court's conclusion that the YMCA's play KnightQuest does not infringe the copyright for his play Kastleland. We hold that the district court's finding that the two plays are not substantially similar is not clearly erroneous. Consequently, the YMCA did not infringe Frye's copyright, and we affirm.

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Universal Furniture Int'l Inc. v. Collezione Europa USA, Inc.

Appellant Collezione Europa USA, Incorporated ("Collezione"), and its adversary in this proceeding, appellee Universal Furniture International, Incorporated ("Universal"), are competing furniture companies. In 2004, Universal sued Collezione in the Middle District of North Carolina, alleging infringement under the Copyright Act with respect to two of Universal’s furniture collections, as well as violations of the Lanham Act and the North Carolina Unfair and Deceptive Trade Practices Act (the "UDTPA"). In opposing the copyright claim, Collezione argued that the furniture at issue is not copyrightable. The district court disagreed, however, concluding that Universal possessed valid copyrights in its furniture designs and that Collezione had infringed those copyrights. See Universal Furniture Int’l, Inc. v. Collezione Europa USA, Inc., No. 1:04-cv-00977 (M.D.N.C. Sept. 14, 2007) (the "Liability Opinion"). The court also concluded in its Liability Opinion that Collezione had misrepresented Universal’s furniture lines as its own, in contravention of both the Lanham Act and the UDTPA. After conducting a thorough hearing on the damages issues, the court awarded more than $11 million to Universal. See Universal Furniture Int’l, Inc. v. Collezione Europa USA, Inc., No. 1:04-cv-00977 (M.D.N.C. Feb. 12, 2009) (the "Damages Opinion").

Collezione has appealed from the rulings made in the Liability Opinion, in favor of Universal, under the Copyright Act, the Lanham Act, and the UDTPA. Furthermore, Collezione contends that the court erred in the Damages Opinion in excluding its proof of deductible expenses. As explained below, we affirm.

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Geo M. Martin, Co. v. Alliance Mach. Sys. Int'l., LLC.

Following a trial for patent infringement that resulted in a hung jury, the United States District Court for the Northern District of California ruled as a matter of law that U.S. Patent No. 6,655,566 (the “’566 patent”) would have been obvious at the time of invention. Geo. M. Martin Co. v. Alliance Mach. Sys. Int’l, LLC, 634 F. Supp. 2d 1024 (2008) (JMOL Opinion). Because the record supports the trial court’s judgment, this court affirms.

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Transocean Offshore Deepwater Drilling, Inc. v. Maersk Contractors USA, Inc.

Transocean Offshore Deepwater Drilling, Inc. (Trans-ocean) appeals from a final judgment of the U.S. District Court for the Southern District of Texas. The district court, on summary judgment, held that the asserted claims of the patents-in-suit are invalid, not infringed, and that defendant Maersk Contractors USA, Inc. (Maersk USA) did not act willfully. For the reasons set forth below, we reverse-in-part, vacate-in-part, affirm-in-part, and remand.

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