Trade Secret Claims Should Have Been Stayed During Arbitration of Related Contract Claims

Case: Heritage Provider Network, Inc. v. Superior Court, Cal. Court of Appeal, Second District B20129 (January 14, 2008)

The One Sentence Summary: In a California state court action alleging breach of contract, unfair competition and misappropriation of trade secrets arising out of canceled merger discussions between two physician groups, the trial court erred in not staying the case pending arbitration of the contract claims where the claims shared common factual issues.

Click here to read more.

Injunction Prohibiting Use of Unidentified Trade Secrets Was Too Vague

Case: Patriot Homes, Inc. v. Forest River Housing, 7th Cir. No. 06-3012 (January 10, 2008)

A preliminary injunction in a trade secret and copyright case enjoined a defendant from "[u]sing, copying, disclosing, converting, appropriating, retaining, selling, transferring, or otherwise exploiting Patriot’s copyrights, confidential information, trade secrets, or computer files."

The Seventh Circuit held that this injunction was impermissibly vague and did not meet the requirements of Rule 65(d) of the Federal Rules of Civil Procedure that the injunction be specific in its terms and describe in reasonable detail the acts sought to be restrained.

Click here to read more.

Patent Anticipated by Prior Art Paper That Shared Diagrams and Descriptions

Case: SRI Int'l, Inc. v. Internet Sec. Sys., Inc., Fed. Cir. No. 2007-1065 (January 8, 2008)

• On a patent for internet security techniques, a paper published more than one year before the patent was filed invalidated the patent due to anticipation. The panel rejected the argument that the paper was not enabling - shared language and diagrams between the paper and the specification established on summary judgment that the paper was enabling.
• A paper posted on an FTP site with an obscure file name was not a publication - it was not indexed so that one of skill in the art would look for it there.
  

Click here to read more.

Foreign Corporation in Contested TTAB Proceeding Must Produce Corporate Designee Witness Pursuant to District Court Subpoena

Case: Rosenruist-Gestao E Servicos LDA v. Virgin Enters. Ltd., No. 06-1588 (4th Cir. December 27, 2007)

The One Sentence Summary: A Portugese company attempting to register a mark in contested proceedings before the TTAB could be compelled by a district court subpoena under 35 U.S.C. § 24 to produce a corporate designee Rule 30(b)(6) witness.

Click here to read more.

Likelihood of Confusion Analysis Is Not Limited to the Goods or Services for Which Mark Was Registered

Case: Applied Information Sciences v. eBay, No. 05-56123, 05-56549 (9th Cir. Dec. 28, 2007)

The One Sentence Summary: In a trademark infringement claim, plaintiff can establish a protectable interest by showing it has a registered mark, but the likelihood of confusion analysis is not limited to the goods or services in which the mark was registered.


What They Were Fighting About: Plaintiff Applied Information Science had a registered mark for SMART SEARCH for computer software, and sued eBay for using the term for web search. The district court granted summary judgment for eBay.

Ninth Circuit Holdings:

• Plaintiff's federally registered mark for Smart Search established a protectable interest in the goods and services listed on its registration.
• The scope of validity of the mark is limited to the goods and services registered, but an infringement analysis can extend to any goods and services where confusion is likely to result.
  
• The district court erred in granting summary judgment for eBay on the theory that plaintiff's registered uses were different from eBay's uses. However, summary judgment was affirmed because plaintiff had not presented any admissible evidence of likelihood of confusion in opposing summary judgment.
• The district court did not err in denying attorneys' fees to eBay - the case was not exceptional and not vexatious.
  

Click here to read more.