2010 Intellectual Property and Technology Article Compendium

March 7, 2011

As a service to our clients and friends, O’Melveny is pleased to share, for your reference, this compendium of articles and client alerts authored in 2010 by our Intellectual Property and Technology lawyers.

The full text of each article and client alert may be viewed by clicking "Read the article" below its summary. 

"A Statistical Analysis of Trade Secret Litigation in Federal Courts," 45 Gonzaga Law Review 291 (March 17, 2010)

David Almeling, Darin Snyder, Michael Sapoznikow, Whitney McCollum, Jill Weader

This article presents, for the first time, a statistical analysis of trade secret litigation in federal courts. Presenting statistics from 394 cases in which a federal district court issued a written opinion based on trade secret law between 1950 and 2008, the authors include an analysis of key findings, explain what the data add to an understanding of trade secret law, and describe the history and current state of trade secret litigation in the federal courts, ending with a focus on why courts reach the decisions they do.

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"Tracking Trade Secret Stats," Law 360 (March 25, 2010)

David Almeling

This article summarizes the key findings of a larger, first-in-kind, statistical analysis and study that the authors performed and published in the Gonzaga Law Review in March 2010 reviewing trade secret litigation in federal courts from 1950 through 2008.

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"A False Sense of Security?: Nonpracticing Entities and Potential Liability for Inducing Others to Infringe," Landslide, A publication of the ABA Section of Intellectual Property Law (March/April 2010)

Paul J. Meyer

It is conventional wisdom that nonpracticing entities are insulated from infringement risks, at least with respect to counterclaims as part of patent litigation originally initiated by such entities. However, nonpracticing entities should not consider themselves completely immune from claims of patent infringement. This article considers how an entity that solely intends to sell or license intellectual property (e.g., an IP-holding company) might become the subject of an infringement claim by a patentee under 35 U.S.C. § 271(b), and how the entity might proactively address such risks.

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“Federal Circuit Clarifies Scope of Design Patent Protection: Richardson v. Stanley Works, Inc.,” (March 16, 2010)

David Enzminger

This alert discusses a March 9, 2010, Federal Circuit decision that helped to resolve a lingering concern over the proper scope of design patents by affirming that courts should compare only the ornamental features of products when analyzing the products for design patent infringement. Richardson v. Stanley Works, Inc., No. 2009-1354, (Fed. Cir. Mar. 9, 2010).

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"Supreme Court Holds Business Methods May Be Patentable," (June 28, 2010)

Darin Snyder, Brian Berliner, Sue Roeder

On June 28, 2010, the United States Supreme Court ruled in Bilski v. Kappos (Case No. 08-964) that some business methods may be eligible for patent protection under United States law. This alert discusses the case, its holding, and possible ramifications of the decision.

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"Medical Treatment and Diagnostic Procedures - Patent Eligible?," Orange County Business Journal (August 30, 2010)

John Kappos, Paul Veravanich

The patent-eligibility of particular methods has been the topic of recent debate, with the focus centering on the future of business method patents. This article looks at the possible application of Bilski v. Kappos and other recent decisions, specifically in the context of medical treatment and diagnostic procedures.

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"Intellectual Property Law," California Litigation Review, California State Bar (October 2010)

Ken O'Rourke, Jeff Huang

O’Melveny partner Ken O’Rourke and associate Jeff Huang authored the Intellectual Property Law section of the 2009-2010 California Litigation Review. The Review is published annually by the California State Bar Litigation Section to provide an overview of developments of interest to California civil litigators and judges, and a review of select areas of practice. In the IP section, O’Rourke and Huang discuss several notable recent cases in California, particularly in the areas of Rights of Publicity, Trade Secrets, and Copyright law.

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"Likelihood of Confusion? -- Three Areas of Uncertainty in Trademark Law," IP Litigator (September/October 2010)

Mark Miller, Shabnam Malek, Jordan Raphael, Victoria Schwartz, Amy Lucas

This article addresses three noteworthy developments in trademark law and whether these decisions enhance or detract from certainty in trademark disputes. Two of the developments involve issues concerning contributory liability in trademark infringement: (1) the Second Circuit’s decision in Tiffany (NJ) Inc. v. eBay Inc ., which squarely places the burden of policing the Internet for counterfeit goods on trademark owners, (2) the standard for contributory infringement of a trademark and the surprise outcome in Gucci America, Inc. v. Frontline Processing Corp. — finding sufficient allegations to move forward with a claim of contributory infringement by an online payment processor based on the actions of merchants and (3) recent transformations in the determination of irreparable harm in the context of motions for a preliminary injunction.

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"Which Opinion in Princo Best Applies Recent Supreme Court Lessons?," Daily Journal (October 5, 2010)

Darin Snyder, Sue Roeder

The majority in the Federal Circuit’s en banc decision in Princo Corp. v. ITC narrowed the patent misuse doctrine to a bright-line, two-part test. A vigorous dissent defended a different, but equally categorical, test. A concurring opinion, by contrast, suggested that the court should not predefine the types of patentee conduct that might constitute patent misuse. This article examines the various opinions set forth in this interesting decision.

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"The Basics of U.S. Section 337 Investigations: Is Your Company Ready?,” Business Homu (November 2010) (Japanese)

Scott Nonaka, Ryan Padden

This article provides an overview of Section 337 proceedings in the U.S. International Trade Commission relating to the importation of potentially infringing products. The article generally explains who may be subject to such proceedings, the procedures that apply and the remedies that are available. The article discusses several recent proceedings with a focus on Japanese importers of goods into the U.S. The article is published in Japanese.

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"U.S. Trade Secret Law Case Study: Protecting Against Theft and Adverse Claims," International Business Law and Practice (October 2010) (Japanese)

Scott Nonaka, Ryan Padden

This article provides an introduction to the law relating to U.S. trade secret misappropriation in the context of a case study involving a Japanese distributor of a U.S.-based multi-level marketing company. The article discusses common pitfalls that can create potential liability for trade secret misappropriation. The article also discusses generally best practices for preserving one's trade secrets. The article is published in Japanese.

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"Selecting a Litigation Forum From Among the District Courts and the International Trade Commission," Patent Litigation 2010, Practising Law Institute (September 2010)

David Enzminger, David Dalke

A patent-holder seeking to enforce its patent must first decide how and where to enforce the patent. This article addresses considerations in selecting a litigation forum from the perspective of the patent-holder, as well as the accused infringer.

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