We will be discussing one Federal Circuit case and one WIPO UDRP administrative panel decision during our weekly SoCal IP Institute meeting on Monday, February 27, 2012. Brief synopses are presented below.
ClearValue, Inc. et al. v. Pearl River Polymers, Inc. et al., Case No. 2011-1078 -1100 (Fed. Cir. Feb. 17, 2012) (attached). ClearValue accused Pearl River of indirectly infringing U.S. patent no. 6,120,690 (’690 patent) related to a process for clarifying low alkalinity water using a quarternized plymer and an aluminum polymer. After a jury found that the ’690 patent was valid and indirectly infringed, the district court denied Pearl River’s JMOL motions of invalidity and noninfringement. Because the jury’s verdict that the ’690 patent was not invalid under 35 U.S.C. § 102 was not supported by substantial evidence, the Federal Circuit reversed the denial of the motion for JMOL of invalidity.
In particular, the Federal Circuit found that the prior art’s teaching of a similar method including clarifying water with an alkalinity range from zero to 150 parts-per-million also taught the patent’s claim of clarifying water with an alkalinity of 50 arts per million or less. The district court’s decision was reversed for failure to recognize that this prior art anticipated the claimed invention.
Cross-Appellant ClearValue appealed the district court’s grant of JMOL that Pearl River did not misappropriate ClearValue’s Trade Secret #1. The Federal Circuit agreed with the district court that the jury verdict was not supported by substantial evidence and, therefore affirmed. The primary contention was that the trade secret was not, in fact, a trade secret. An employee of ClearValue had disclosed the elements of the alleged trade secret.
LEGO Juris A/S v. Griffith, Case No. D2011-1263 (WIPO Adm. Pan. Oct. 1, 2011) (attached). LEGO filed a complaint under the Uniform Domain Name Dispute Resolution Policy (UDRP) of Mr. Griffith’s registration of the domain name legoworskhop.com. LEGO s a Danish company, owner of the LEGO brands of toys and associated products. Mr. Griffith is an individual living in North Carolina. Mr. Griffith registered the disputed domain on February 25, 2011. LEGO wrote to Mr. Griffith regarding the domain name several times without response.
LEGO contended that each requirement of paragraph 4(a) of the UDRP was made out. This paragraph requires a complaintant to prove that:
(i) your domain name is identical or confusingly similar to a trademark or service mark in which the complainant has rights; and
(ii) you have no rights or legitimate interests in respect of the domain name; and
(iii) your domain name has been registered and is being used in bad faith.
LEGO contended that its mark was famous and that the “workshop” and “.com” aspects of the registration do not effect the overall impression. LEGO further contended that Mr. Griffith has no legitimate rights in the name. As to paragraph 4(a)(iii), LEGO pointed to the famousness of its own name, Mr. Griffith’s failure to respond to inquiries regarding the domain and the likelihood of confusion created by the registration. Mr. Griffith’s defense was that he registered the site for the use of his 15-year-old son so that he might show off his LEGO creations. Mr. Griffith further indicated that there was no intent to profit from the site and that offers to purchase the domain were refused.
The administrative panel found that paragraph 4(a)(i) was made out. As to 4(a)(ii), the panel found that there was some legitimate dispute as to this element, and that some advertisements for Lego toys, Lego guns and Star Wars Lego appeared on or referred to the site. However, given that the use was minimal and that the links appeared to have been put there by the registrar automatically before Mr. Griffith created a web page that removed of the links, the panel determined that LEGO failed to establish that Mr. Griffith had no legitimate interests in the domain. The panel indicated that it was unnecessary to consider paragraph 4(a)(iii), but that were it to consider it, that LEGO’s showing was inadequate to indicate that Mr. Griffith had any bad faith in registering the domain name. Accordingly, the complaint was denied.
All are invited to join us in our discussion during the SoCal IP Institute meeting on Monday, February 27, 2012 at Noon in our Westlake Village office. This activity is approved for 1 hour of MCLE credit. If you will be joining us, please RSVP to Amanda Jones by 9 am Monday morning.
Key in the ClearValue Case and evidenced all over the case, as well as the prosecution file, is that the overlapping range was molecular weight, wherein was demonstrated both critical range and surprising/unexpected results.
The real question is “Why did the panel ignore the critical parameter which had demonstrated surprising/unepxted results and argue that an overlapping yet non-critical paramter should have been labelled critical?”
Further, there is no evidence of ClearValue stating that Hassick taught all of the claim limitaitons.
Further still, the footnote on page 6 of the Ruling referencing Hassick is incorrect.
Is this not creating facts?
Is this not ex-post facto and a violation of the 7th Amendment?
Lastly, what about Texas Trade Secret Law. The Trade Secret Claim Standard is In re Bass. How can a federal circuit judge re-write Texas Law?
This makes no sense to me. Someone, please help?