LJN Newsletters

Trade secret plaintiffs sometimes couch their claims under other, alternative titles, such as "common law misappropriation," "unfair competition," or "breach of confidence." The tactic is often a deliberate ploy to avoid complying with state Uniform Trade Secrets Act (UTSA) statutes and case law governing trade secret litigation — a body of law that favors former employees in many respects.

Highlights of the latest intellectual property news and cases from around the country.

Intellectual property is an asset class and patents, prominent members of that class, are call options on the economic value of the covered technology. Because patent value can be substantial, and because the values of companies can be significantly impacted by the value of IP assets, the intersection of finance and patent law is increasingly common. In particular, here are four vignettes in which they intersect.

In two recent decisions, the Court of Appeals for the Federal Circuit ("Federal Circuit") elaborated on the standards to be used when considering whether to award lost profit damages to a patent owner who has successfully shown validity and infringement. Both decisions were released by the Federal Circuit on Dec. 4, 2003. (Ferguson Beauregard/Logic Controls, Div. of Dover Res., Inc. v. Mega Sys., LLC, 350 F.3d 1327 (Fed. Cir. 2003); and Utah Med. Prods., Inc. v. Graphic Controls Corp., 350 F.3d 1376 (Fed. Cir. 2003)). These cases should provide direction to patent owners, defendants, and their counsel when attempting to assert or defend against lost profits claims.

In 1963 the Supreme Court noted that patent applications "constitute one of the most difficult legal instruments to draw with accuracy." (See Sperry v. Florida Ex. Rel. Florida Bar, 373 U.S. 379, 383 (1963)). Recent decisions by both the Supreme Court and the Federal Circuit have made this task even more difficult. In particular, the Supreme Court's 2002 decision in Festo v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (535 U.S. 722) and the Federal Circuit's 2003 Festo remand decision, as well as the Federal Circuit's 2002 Johnson & Johnston (285 F. 3d 1046) (344 F. 3d 1359) decisions, all had significant narrowing effects on the doctrine of equivalents.

In the world of franchising, mandatory arbitration contract provisions have become de rigueur. In principle, agreements to arbitrate favor neither party; as a practical matter, however, franchisors and franchisees have quickly learned about the real-life advantages and disadvantages of including an arbitration clause in a franchise contract. Generally, these clauses are included in franchise contracts because they tend to favor the franchisor — the party that, in most cases, usually has the bargaining power to impose terms and conditions on the weaker party, the franchisee. There are very few, if any, reported cases in which a franchisee challenging the validity of an arbitration clause has been shown to have requested or demanded that an arbitration clause be included in the franchise agreement.

Highlights of the latest franchising news from around the country.

Highlights of the latest franchising cases from around the country.