For our weekly SoCal IP Institute meeting on Monday, November 23, 2020 we will discuss the following cases:

Oakley, Inc. v. The Partnerships and Unincorporated Associations Identified on Schedule A. (NDIL 2020) (Case Here) (Complaint here)

The District court in the Northern District of Illinois granted plaintiff’s ex parte motion for a temporary restraining order. The TRO was filed against 68 online retailer defendants and allowed joinder of all defendants because the asserted claims arose out of the same occurrence or series of occurrences. Said the court, “The Court is aware that some judges in this District have raised concerns regarding joinder in these types of counterfeiting cases brought against large numbers of online defendants [. . .] [A]lthough Plaintiff has not sufficiently demonstrated that the asserted claims arise out of the same transaction or series of transactions, Plaintiff has sufficiently demonstrated that they arise out of the same occurrence or series of occurrences.

Whitewater West Indus. v. Richard Alleshouse (Fed. Cir. 2020)(Case Here)

The Federal Circuit invalidated an employment agreement based in part on California law. The contact at issue stated,

“a. Assignment: Employee agrees that all right, title and interest in all inventions … that Employee conceives or hereafter may make or conceive …

(a) with the use of Company’s time, materials, or facilities; or (b) resulting from or suggested by Employee’s work for Company; or (c) in any way connected to any subject matter within the existing or contemplated business of Company shall automatically be deemed to become the property of Company as soon as made or conceived, and Employee agrees to assign to Company, its successors, assigns, or nominees, all of Employee’s rights and interests in said inventions, improvements, and developments in all countries worldwide. Employee’s obligation to assign the rights to such inventions shall survive the discontinuance or termination of this Agreement for any reason.”

§ 16600 of the California Business and Professions Code further states,

“Except as provided in this chapter, every contract by which anyone is restrained from engaging in a lawful profession, trade, or business of any kind is to that extent void.”

Said the court, “invention-assignment provisions that go beyond protection of proprietary information and ensnare post-employment inventions are to be judged under the strict § 16600 standards that protect former employees.”

All are invited to attend. Due to the Covid-19 situation the meeting will be conducted via video at 1:00pm PT. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Elisha Manzur by 9 am Monday morning to obtain a link to the video conference.