Intellectual Property News

Case Summaries

Intellectual Property

[09/04] Janssen Pharmaceutica, N.V. v. Apotex, Inc.
In an action arising from alleged infringement of plaintiff's patent for the drug Risperdal, dismissal of defendant's counterclaims for lack of subject-matter jurisdiction is affirmed where no actual and continuing injuries to defendant existed regarding: 1) its ability to promptly launch its generic risperidone product and compete in the market immediately upon the expiration of plaintiff's patent; 2) delay of approval of its noninfringing generic risperidone product; and 3) patent uncertainty resulting from the coverage of a covenant-not-to-sue.

[09/04] In re Swanson
In a case regarding the reexamination of a patent for a method of quantitatively analyzing small amounts of biological fluids, a Board of Patent Appeals and Interferences decision affirming the examiner's rejection of certain claims is affirmed where: 1) a request for an ex parte reexamination of an issued patent upon a "substantial new question of patentability" was not barred by a prior court decision upholding the validity of a claim; and 2) substantial evidence supported the board's conclusion that there was a substantial new question of patentability in this case sufficient to warrant reexamination.

[09/04] Empresa Cubana Del Tabaco v. Culbro Corp.
In a case arising from a dispute over the ownership of the COHIBA mark on cigars sold in the U.S., denial of motion directing U.S. Patent and Trademark Office (PTO) to dismiss pending petitions to cancel defendant's registration of the trademark, is affirmed where the district court did not abuse its discretion in denying the relief requested.

[09/03] Omega v. Costco Wholesale Corp.
In a copyright infringement action under 17 U.S.C. sections 106(3) and 602(a), grant of summary judgment for defendant is reversed and remanded where non-counterfeit goods were first sold outside the U.S. and then imported for sale in the U.S. without the copyright holder's authorization, thus the first sale doctrine, section 109(a), does not apply.

[09/02] EraGen Bioscience, Inc. v. Nucleic Acids Licensing LLC
In a dispute arising out of a patent licensing agreement that had been purportedly terminated by defendant, the district court's judgment is vacated and remanded where, although defendants did terminate the agreement, the determination of whether termination was wrongful depends on the proper characterization of a "missing" sublicense related to the patents at issue.

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Trade Secrets

[08/19] In Re Cygnus Telecomm. Tech., LLC, Patent Litig.
In a patent dispute over computerized callback systems designed to lower the cost of overseas telephone calls, summary judgment of invalidity and dismissal of trade secret appropriation claims are affirmed where: 1) plaintiff was not collaterally estopped from appealing the invalidity finding despite not having named all defendants in its appeal; 2) plaintiffs produced no evidence disputing a statement by the inventor regarding the date on which he had reduced the invention to practice; 3) sales of a device that embodied the patent claims subjected the patent to invalidation despite that device's not being ready for sale on a commercial scale; and 4) the statute of limitations barred plaintiff's claim for misappropriation of trade secrets.

[07/29] In re: Carco Elec.
In a dispute between competing bidders in the acquisition of debtor's production facilities during bankruptcy proceedings, an appeal from a protective order limiting the disclosure of the bidders' respective trade secrets during discovery is dismissed for lack of appellate jurisdiction where the order was neither final nor appealable under the limited scope of the collateral order doctrine.

[05/15] Topps Co., Inc. v. Cadbury Stani S.A.I.C.
In an action alleging breach of contract and misappropriation of trade secrets involving a chewing gum licensing agreement, summary judgment for defendant is reversed and remanded where: 1) the licensing agreement was ambiguous as to defendant's entitlement to continual usage of trade secrets after the agreement's terminate date; and 2) extrinsic evidence did not weigh overwhelmingly in defendant's favor to permit a resolution of the agreement's ambiguity by summary judgment.

[05/12] Othentec Ltd. v. Phelan
In an action raising claims under the Virginia Computer Crimes Act and the Virginia Uniform Trade Secrets Act, summary judgment for defendants is affirmed where: 1) plaintiffs failed to present evidence that defendant had used a computer to withdraw funds he was not authorized to withdraw for an illegal or unauthorized purpose; and 2) plaintiffs did not present sufficient evidence to show that defendants were using plaintiffs' trade secrets in their manufacturing process.

[03/27] TSMC N. Am. v. Semiconductor Mfg. Int'l Corp.
In an action seeking to enjoin proceedings instituted in Beijing People's High Court in China pursuant to choice of law and forum selection provisions in a purported "settlement agreement" between the parties, denial of a motion for an antisuit injunction is affirmed in light of international comity and judicial restraint considerations.

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