Opinions Filed in March 2012

Fail-Safe, LLC v. A.O. Smith Corp.

By volunteering information without broaching the topic of confidentiality, it is unreasonable to expect a confidential relationship.

Area(s) of Law:
  • Trade Secrets

Merit Homes, LLC v. Joseph Carl Homes, LLC

A nonexclusive license can be granted without a written conveyance.

Area(s) of Law:
  • Copyright

Poindexter v. EMI Record Group, Inc.

Only the owner of the copyright has standing to assert a claim for its infringement, and assignment of the right to sue to a non-owner is insufficient to confer standing.

Area(s) of Law:
  • Copyright

Ergo Licensing, LLC v CareFusion 303, Inc.

Means-plus-function terms are required to point out the particular structure used to perform the function, lest it be deemed “indefinite.”

Area(s) of Law:
  • Patents

Brigham Young Univ. v. Pfizer, Inc.

Under Utah precedent, the Uniform Trade Secrets Act preempts claims based on the unauthorized use of information, regardless of whether that information met the statutory definition of a trade secret.

Area(s) of Law:
  • Trade Secrets

Mayo Collaborative Services v. Prometheus Laboratories, Inc.

Patents based on natural law must contain other inventive elements to ensure the patent in practice amounts to significantly more than a patent of the natural law itself.

Area(s) of Law:
  • Patents

McGee v. André

Copyright infringement can only occur when probative and substantial similarity are proven; copyright does not protect unoriginal work.

Area(s) of Law:
  • Copyright

Marine Polymer Technologies, Inc. v. HemCon Inc.

Intervening rights with respect to reissued patents do not accrue where the accused product or activity infringes a claim that existed in the original patent and remains without substantive change after reissue.

Area(s) of Law:
  • Patents

Erickson v. Blake

If there is primarily only one way to express an idea, the expression cannot be copyrighted under the merger doctrine.

Area(s) of Law:
  • Copyright

Broadcast Music, Inc. v. Haibo, Inc.

When assessing the amount of statutory damages warranted for infringement, the Court has wide discretion.

Area(s) of Law:
  • Copyright

OgoSport, LLC v. Maranda Enterprises, LLC

Even if a plaintiff established a protectable trade dress and a likelihood of confusion, it cannot prevail if defendant shows that trade dress is merely functional.

Area(s) of Law:
  • Trademarks

Bedford Auto Dealers Assoc. v. Mercedes Benz of North Olmsted

Even though Plaintiff may have registered term as a trademark, if the court finds that the term is generic then the term will not be worthy of the protection of a trademark.

Area(s) of Law:
  • Trademarks

Ray Communications, Inc. v. Clear Channel Communications, Inc.

Laches may bar relief, but not automatically; a showing of “plus” factors must be presented for laches to bar relief.

Area(s) of Law:
  • Trademarks

Digital-Vending Services International, LLC v. The University of Phoenix, Inc.

“The context in which a term is used in the asserted claim can be highly instructive” to its claim construction. A limitation should not be read into a claim “based on statements made during prosecution absent a clear disavowal or contrary definition.”

Area(s) of Law:
  • Patents

In re Viterra Inc.

Concerning identical marks, the “degree of similarity necessary to support a conclusion of likely confusion declines.”

Area(s) of Law:
  • Trademarks

Own Your Power Communications, Inc. v. Oprah Winfrey

A trademark phrase can be used by Plaintiff in a non-trademark descriptive sense and thus will not infringe on Defendant's trademark phrase.

Area(s) of Law:
  • Trademarks

In re Erik P. Staats and Robin D. Lash

The two-year limitation of 35 U.S.C. § 251 relating to broadening of claims on reissue application only applies to the first broadening reissue application; any further broadening reissue applications, whether or not related to the first broadening reissue application, may be filed outside of the two-year limit.

Area(s) of Law:
  • Patents

Beane v. Mii Technologies, LLC

An assertion that all information ever created amounts to a trade secret does not satisfy the requirements of the Uniform Trade Secret Act.

Area(s) of Law:
  • Trade Secrets

Fort Properties, Inc. v. American Master Lease, LLC

Simply adding a “computer aided” limitation to a claim covering an abstract concept, without more, is insufficient to render the claim patent eligible.

Area(s) of Law:
  • Patents

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