Attorneys' Fees for Bad Faith Trade Secret Claim Improper Where Complaint Did Not Allege Trade Secret Misappropriation

Case: CytoDyn, Inc. v. Amerimmune Pharm., Inc., No. B187661 (Cal. Court of Appeal, 2/20/08)

The One Sentence Summary: Complaint alleging unjust enrichment in taking of patents and trademarks did not allow award of attorneys' fees to defendants under California Trade Secrets Act despite erroneous claim for attorneys' fees under Trade Secrets Act in prayer for relief.

Click here to read more.

Prototype Sewing Machine Sold to the Customer Created On-Sale Bar

Case: Atlanta Attachment Co. v. Leggett & Platt, Inc., No. 2007-1188 (Fed. Cir. 2/21/08)

The One Sentence Summary: Sale of a prototype sewing machine to a customer before the critical date created an on-sale bar making the patent invalid.


Federal Circuit Holdings:

• On-sale bar of 35 U.S.C. § 102(b) applied to sale of prototype sewing machine to customer before critical date. The fact that the inventor did not retain control of the prototype was dispositive in determining the use was not experimental despite the customer's experimentation with the invention.
• The prototype sold was a sufficient reduction to practice of the invention despite later improvement of the invention in a later version of the sewing machine.
• The sale of the third prototype was material for purposes of an inequitable conduct determination, but the district court on remand should consider whether there was intent to deceive.
  
  

Click here to read more.

All Sleekcraft Factors Must Be Considered in Summary Judgment on Trademark Infringement Claims

Case: Jada Toys, Inc. v. Mattel, Inc., No. 05-55627 (9th Cir. 2/21/08)

The One Sentence Summary: The panel reversed summary judgment rulings by the district court on trademark infringement, dilution and copyright claims in a dispute between toy makers.



Ninth Circuit Holdings:

• Summary judgment for defendant Mattel on trademark infringement claim was improper when district court considered only dissimilarity of marks, and not the remaining Sleekcraft factors.
• Summary judgment against Mattel on its trademark dilution claim was improper where HOT RIGZ mark was nearly identical to famous HOT WHEELS mark.
• Copyright claim by Mattel presented issues of fact as to similarity of flame drawings.
  
  

Click here to read more.