Archive | June, 2012

When Is Software a Work for Hire?

A recent California case provides a good illustration of different possible grounds for finding that software is a work made for hire under the Copyright Act.  Siniouguine v.  Mediachase Ltd., CV 11-6113-JFW (AGRx) (C.D. Cal. June 11, 2012).  Among other things, the court held that the software was “specially commissioned” and qualified as a work […]

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Federal Circuit Upholds Obviousness Rejection

What are the chances of overcoming the obviousness rejection of a patent claim having all of its elements disclosed in the prior art, albeit by multiple references?  In the wake of KSR v. Teleflex, the odds of succeeding with such an argument have unquestionably suffered.  Certainly one cannot be surprised at the result in In […]

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Bad Faith Not Shown Under the ACPA

A jury finding that cybersquatting defendants had not acted in bad faith, and thus enjoyed a safe harbor from liability under the Anti-Cybersquatting Consumer Protection Act (ACPA), 15 U.S.C. § 1125(d), has been upheld by the Eleventh Circuit.  Pensacola Motor Sales, Inc. v. Eastern Shore Toyota LLC, No. 10-15761 (11th Cir. June 21, 2012). The […]

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Plaintiff Goes First In Trade Secrets Discovery

A classic tension in trade secrets cases lies between plaintiffs’ reluctance to identify their trade secrets and defendants’ contentions that plaintiffs will tailor their accusations of trade secrets theft to match information produced by the defendants.  Acknowledging this tension, a Nevada magistrate judge has held that a plaintiff had not identified allegedly stolen trade secrets […]

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Amended Patent Infringement Complaint Allowed After Federal Circuit Decision

An amended complaint for patent infringement has been allowed under the standard recently set forth by the Federal Circuit in In re Bill of Lading Transmission & Processing Sys. Patent Litig., No. 2010-1493 (Fed. Cir. June 7, 2012).  Under the Federal Circuit’s recent holding, the court had a relatively easy decision in Pagemelding, Inc. v. […]

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Nominal Defendant in Forum Does Not Prevent Venue Transfer in Patent Case

Venue could not be established in an Illinois patent case simply by naming a “peripheral defendant” located in Illinois.  A motion to transfer venue to the Central District of California, the locale having the most connections to the alleged infringement, was therefore granted.  Oplus Technologies, Ltd. v. Sears Holdings Corp., No. 11-cv-8539 (N.D. Ill. June […]

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Federal Circuit Refines Willful Infringement Standard

The Federal Circuit “now holds that the threshold objective prong of the willfulness standard . . . is a question of law based on underlying mixed questions of law and fact and is subject to de novo review.”  Bard Peripheral Vascular, Inc. v. W.L. Gore & Associates, Inc., No. 2010-1510 (June 14, 2012).  The panel […]

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No Personal Jurisdiction Based on “Location” of Patent

A patent owner’s residence in Washington state did not confer personal jurisdiction over defendants in a dispute over the defendants’ rights to license and sub-license the patent.  VSIM Patent Co., LLC v. Benson, No. C12-102RSL (W.D. Wash. 2012).  The action that the patent owner brought did, however, end up conferring a right to fees and […]

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Is Claim Construction a Prerequisite for Determining Patent Eligibility?

A court has denied a motion for summary judgment of invalidity based on Bilski v. Kappos, in part because the motion had been brought in advance of claim construction, and ahead of the court’s normal schedule for dispositive motions.  Lendingtree, LLC v. Zillow, Inc., No. 3:10-cv-00439-W (W.D.N.C. June 4, 2012).  Calling the motion premature, the […]

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Multidistrict Litigation Under The AIA

The Panel on Multidistrict Litigation (MDL) has further clarified its view of the interplay between the anti-joinder provisions of the America Invents Act (AIA), 35 U.S.C. § 299, and the provision for “coordinated or consolidated pretrial proceedings” under the MDL statute, 28 U.S.C. § 1407.  In In re Maxim Integrated Products, Inc., MDL No. 2354 […]

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