Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. California Court of Appeal, Fourth District, held that a one-year non-solicitation of employee provision in an employment agreement was an improper restraint on the defendants’ ability to practice their profession in violation of CA B&P Code 16600.  Context was competing travel nurse recruiting companies and the employees were travel nurse recruiters that went from plaintiff to defendant.  Recruiters left one plaintiff and went to the defendant and recruited some of the travel nurses they used when employed by plaintiff.  Another interesting ruling in the case was that use of certain contact information lists of travel nurses by the departing employees was not trade secret misappropriation based on the facts of the case.  The opinion can be found here (https://scholar.google.com/scholar_case?case=2773431992360659130&q=amn+aya&hl=en&as_sdt=2006).


2. Second Circuit, in a Summary Order, dismissed a second amended complaint alleging unregistered product design trade dress infringement (and related Lanham Act and state law claims) with prejudice under FRCP 12(b)(6).  The Court held that the trade dress must be described objectively (i.e., as objective design elements); that the description of the trade dress needs to be a species, not a genus (which is too general); and, that a party will not have unlimited opportunities to amend a complaint.  The Second Circuit again noted that photographs of the design to be protected are not a substitute for describing the allegedly protected trade dress.  The opinion can be found here (https://scholar.google.com/scholar_case?case=2499951861509040804&q=international+leisure+funboy&hl=en&as_sdt=2006).


3. Federal Circuit (CAFC) stated that claim scope disavowal in the context of claim construction is subject to an “exacting” standard that demonstrates an intent to deviate from the plain and ordinary meaning of a claim term and the full scope of the claim, and the disavowal must be made through expressions of manifest exclusion or restriction.  CAFC also noted that indefiniteness of a means plus function claim can be determined based on the limitation being one that is purely subject and user-dependent, without looking at structure associated with function.  The opinion is here (https://scholar.google.com/scholar_case?case=3962188623408520823&q=intellectual+ventures+t+mobile&hl=en&as_sdt=2006&as_ylo=2018).


4. CAFC made statements about plain and ordinary meaning in situation where terms were not construed during formal claim construction in the district court (a not uncommon situation).  A motion to exclude an expert from testifying about the scope of a particular limitation was denied, and the CAFC said that the ordinary meaning of a claim term is does not leave a term devoid of meaning, but is the meaning given by a person of ordinary skill in the art after reading the patent documents per Phillips.  In the opinion, the CAFC (at least this panel) said that a patent claim term can be bounded in its scope by how the term is consistently used in the specification.  The opinion is here (https://scholar.google.com/scholar_case?case=3643357583918241088&q=wisconsin+apple&hl=en&as_sdt=2006&as_ylo=2018).