Category Archives: Trade Secret Law

Patent Infringement Case in Pittsburgh

Best Medical International Inc., a Virginia corporation, filed suit for patent infringement in the Western District of Pennsylvania against Accuray Inc. and several defendants as individuals on August 6, 2010. The patent in suit, U.S. Patent No. 5,596,619 entitled “Method and Apparatus for Conformal Radiation Therapy” is related to a method and apparatus for conformal radiation therapy with a specialized radiation beam.

The complaint alleges that Accuray has manufactured and sold a product that infringes the ‘619 patent. The complaint also alleges that the individual defendants have aided and abetted Accuray’s infringement of plaintiff’s patent and have divulged plaintiff’s trade secrets and intellectual property to defendant Accuray.

An answer has not yet been filed.

Trademark and Copyright Infringement Case Filed Against Pittsburgh Company

A California company and a Nevada limited liability company filed suit in the Western District Court against Pittsburgh company QuestMark LLC for trademark infringement, false designation of origin, false advertising, copyright infringement, misappropriation of trade secrets, breach of contract, and unfair competition.

The Amended Complaint filed February 11, 2010 alleges the following claims of trademark infringement under the Lanham Act:

1. Defendants’ use of the mark CREATING AN ACCOUNTABLE CULTURE constitutes infringement of Plaintiffs’ federally registered CREATING A CULTURE OF ACCOUNTABILITY;
2. Defendants’ use of the mark ACCOUNTABLE CULTURE constitutes infringement of Plaintiffs’ federally registered CULTURE OF ACCOUNTABILITY;
3. Defendants’ use of the mark KEYS TO ACCOUNTABILITY constitutes infringement of Plaintiffs’ federally registered STEPS TO ACCOUNTABILITY; and
4. Defendants’ use of the mark ACCOUNTABILITY WORKSHOP constitutes infringement of Plaintiffs’ federally registered ACCOUNTABILITY TRAINING.

The Amended Complaint also alleges copyright infringement of a customer proposal brochure and a document that lists training modules used by the California company in its leadership-training and management-consulting services. The document also outlines the key “take away” points from the various modules.

An Answer has not yet been filed.

Preliminary Injunction Denied in Barnes & Noble nook Case

Spring Design Inc. filed suit against Barnesandnoble.com, LLC in the United States District Court for the Northern District of California alleging three causes of action: (1) breach of written non-disclosure agreement, (2) misappropriation of trade secrets, and (3) common law unfair competition. Plaintiff “delivers innovative e-reader solutions and products to the e-book market.”

The factual allegations are as follows:

February 12, 2009 – Plaintiff and Defendant entered into a non-disclosure agreement. February 17, 2009 – Plaintiff presented its design for a dual-screen navigation electronic reader to an e-reader product consultant hired by Defendant.
May 13, 2009 – Plaintiff gave a presentation to a group of Defendant’s executives including a PowerPoint presentation with an overview of its design for an Android-based eReader named “Alex.” The PowerPoint slides indicated that they were confidential and subject to the NDA.
July 23, 2009 – Defendant emailed Plaintiff requesting a summary of Plaintiff’s product development. Plaintiff provided Defendant with an update, including a PowerPoint slide explaining how specific features of Alex represented a unique departure from Amazon’s Kindle 2, the main competitor of Defendant’s planned e-reader.
October 20, 2009 – Defendant announced the release of nook, its Android-based interactive dual-screen electronic reader that included features of Alex.

On November 30, 2009, the Court held a hearing and denied Plaintiff’s Motion for a Preliminary Injunction.

- Katie Cooper

Pennsylvania Supreme Court Strikes Down Trademark Law as Overbroad

On October 5, 2009, in a 4-3 decision, the Pennsylvania Supreme Court held that the Trademark Counterfeiting Statute,18 Pa.C.S. § 4119, is unconstitutionally overbroad.

The Trademark Counterfeiting Statute provides:

(a) Offense defined.– Any person who knowingly manufactures, uses,
displays, advertises, distributes, offers for sale, sells or possesses with intent
to sell or distribute any items or services bearing or identified by a counterfeit
mark shall be guilty of the crime of trademark counterfeiting.

* * * * *
(i) Definitions.– As used in this section, the following words and phrases shall
have the meanings given to them in this subsection:

“Counterfeit mark.” Any of the following:
(1) Any unauthorized reproduction or copy of intellectual
property.

(2) Intellectual property affixed to any item knowingly sold,
offered for sale, manufactured or distributed or identifying
services offered or rendered, without the authority of the owner
of the intellectual property.

“Intellectual property.” Any trademark, service mark, trade name,
label, term, device, design or word adopted or used by a person to
identify that person’s goods or services.

18 Pa.C.S. § 4119.

A statute is unconstitutionally overbroad only if the statute criminalizes a substantial amount of constitutionally protected speech.

The Commonwealth argued that the Trademark Counterfeiting Statute is not unconstitutionally overbroad because it is limited to persons with the intent to sell or distribute items with counterfeit trademarks and thus does not reach a substantial amount of constitutionally protected speech. The Commonwealth also relied on a proposed amendment to the statute, statutes from sister states, and the mens rea in the Crimes Code.

The Supreme Court held that under the definition of “intellectual property” any use of a “term” or “word” that is “engaged by another person to identify that person’s goods or services is a ‘counterfeit mark’” which is unconstitutionally overbroad.

- Katie Cooper

Pittsburgh Corporation Files Unfair Competition, Trademark Infringement, and Trade Secret Lawsuit

Burt Hill, Inc. is a Pennsylvania corporation with offices in Pittsburgh, Dubai and Abu Dhabi, United Arab Emirates. On September 21, 2009, Burt Hill filed suit against seven employees of Burt Hill for several causes of action including unfair competition, trademark infringement, and misappropriation of trade secrets. (Burt Hill, Inc. v. Hassan et al Case No. 2:2009cv01285.)

According to the Complaint, “Burt Hill provides architecture and engineering services, including interior design, landscape architecture, sustainable design, project management, and master planning services.”

Burt Hill owns U.S. Trademark Registration Number 3,201,245 for the mark BURT HILL, which registered on January 23, 2007. Burt Hill alleges that the mark is well-known in the architecture, engineering services, and construction industries and that Burt Hill has built significant goodwill through the use of its mark. The Complaint also alleges that Burt Hill has trade secrets and confidential and proprietary information regarding its business and customers that provide Burt Hill with a competitive advantage in its business.

In 2005, Burt Hill decided to expand by opening branch offices in Dubai and Abu Dhabi. Each of the defendants were entrusted employees of Burt Hill for several years in the Butler, Pennsylvania office. They were reassigned to the Dubai and Abu Dhabi offices where they held managerial positions.

From 2005 until 2009 the Dubai office grew very rapidly, which raised concerns for Burt Hill about the business practices of the Dubai office. Burt Hill alleges, “the business practices of the offices, especially the inefficient hiring and uncontrolled staff size, wasteful project and business management, high overhead, and large accounts receivable” were not consistent with Burt Hill’s standard business practice or corporate policies.

Burt Hill states that in March of 2009, the defendants made it known to Burt Hill that they wanted Burt Hill to give them the Dubai and Abu Dhabi offices, and if Burt Hill would not hand the offices over, they would take them themselves. Burt Hill alleges that the defendants “entered into a scheme … to divert Burt Hill’s projects, assets, and employees to a separate covert operation owned and controlled by defendants” and to do this, the defendants “used substantial resources of Burt Hill including its money, employees, trade secrets, intellectual property, and proprietary and confidential information.”

Defendants also “began marketing for BH Global rather than Burt Hill.” Defendants then “represented to current and prospective Burt Hill clients or marketing affiliates that BH Global was affiliated with Burt Hill.”

An Answer to the Complaint has not yet been filed. The Answer is due October 14, 2009.

- Katie Cooper