by Section 2019.210 of the Code of Civil Procedure requires that a plaintiff identify its alleged trade secrets with “reasonable particularity” before that party can commence discovery on its claims based upon trade secret misappropriation. In Perlan Therapeutics, Inc. v. Superior Court (NexBio, Inc.), a California appellate court revisited the requirements of section 2019.210 and held that a trial court has “broad discretion” in determining whether a plaintiff has complied with its obligations under section 2019.210. Continue Reading Identifying Trade Secrets with “Reasonable Particularity”
7th Circuit Case Should Serve As A Reminder To Business Attorneys
by Scott Hervey
Recently the 7th Circuit in Sunstar, Inc. v. Alberto-Culver Company provided a reminder to attorneys engaging in a business transaction between domestic and a foreign parties. Stated plainly, the 7th Circuit reminded business attorneys that if a term is included in a transaction document – especially if that term is a foreign word – be sure you understand what it means. This case presented the question of how a foreign legal term included in a trademark license agreement should be interpreted where the choice of law for such agreement was Illinois state law. Continue Reading 7th Circuit Case Should Serve As A Reminder To Business Attorneys
Trademark Basics: Dilution
By Jeff Pietsch
Not all trademark law is aimed at protecting consumers. The Federal Trademark Dilution Act (“Act”) is aimed at protecting a company’s property right in its trademark. Dilution is defined as “the lessening of the capacity of a famous mark to identify and distinguish goods or services, regardless of the presence or absence of competition between the parties or the likelihood of confusion, mistake or deception.” In essence, dilution forbids the use of a famous trademark by others in any manner that lessens the uniqueness of the mark. Again, the purpose of the dilution doctrine is not to protect the consumer, but to protect the property right and goodwill that a company has developed in a mark.Continue Reading Trademark Basics: Dilution
Patent Enablement Requires More Than a Guess
By One of the requirements for obtaining a patent is enablement. As set forth in 35 U.S.C. §112, ¶1, the specification of the patent must teach a person skilled in the art how to make and use the invention without undue experimentation. The enablement requirement must be satisfied at the time the patent application is filed for each claim. If a claim in a patent is not enabled, it is invalid.Continue Reading Patent Enablement Requires More Than a Guess
The First Circuit Takes a Novel View of the Attorney Work Product Privilege
by Dale C. Campbell, David Muradyan* and Sara Davidson*
Is the work product of an attorney always protected? No, according to the First Circuit in a decision which may draw the attention of the U. S. Supreme Court. The First Circuit, sitting en banc (the “Court”) ruled that the attorney work product doctrine did not protect tax accrual work papers prepared by in-house attorneys to support defendant Textron Inc.’s (“Textron”) calculation of tax reserves. United States v. Textron Inc., 577 F.3d 21 (1st Cir. 2009). Practitioners, especially in-house counsel, need to be aware of this decision and determine whether it influences how they practice.
Continue Reading The First Circuit Takes a Novel View of the Attorney Work Product Privilege