September 2012

A contract between a company and its supplier states that the supplier shall not “develop any other product derived from or based on” the company’s product.  Can the company enforce this provision against the supplier when the supplier develops a product that does not appropriate any trade secrets or novel features of the company’s product?

Not according to a decision of the First Circuit issued on September 4th.

Where the features of the product are well known in the art, and there has been no appropriation of novel features of the product, such a contract provision cannot be used to enjoin sales of the “derived” product: “a private contract may restrict copying of an idea that was not in the public domain at the time of contracting, but may not withdraw any idea from the public domain.”

Contour Design, Inc. v. Chance Mold Steel Co., Ltd. (1st Cir., Sept. 4, 2012)Read the full article

Now that the patent trial of the century is on pause for a bit (Apple v. Samsung), it’s time to catch up on the other tech trial of the century, Oracle v. SAP.  Yes, it’s difficult to keep track of all these tech trials of the century.  I hope that 80 years from now the world remembers that we had the tech trials of the century back in 2010 and 2012.*

*Oh, I almost forgot the other (the third) tech trial of the century, the copyright/patent trial between Oracle and Google earlier this year.  There may even be other tech trials of the century I have forgotten that were tried back in the early years of the century. My memory for this type of thing cuts out after a few years.

Seriously, for those who may have forgotten, in 2010 Oracle won a $1.3 billion copyright infringement judgment against SAP, reportedly the largest copyright judgment ever.  … Read the full article

Apple v. Samsung Jury Verdict Form. Huh?

by Lee Gesmer on September 3, 2012

Apple v. Samsung Jury Verdict Form.  Huh?

I’ve been meaning to post a link to the jury verdict form in the Apple v. Samsung patent case. Here it is, linked at the bottom of the post. And no, that’s not some weird crossword puzzle on the left, it’s a tiny section of the verdict form.

If this isn’t the most complex jury verdict form in American legal history, I can’t imagine what is. The Verge did a nice job of dissecting the jury verdict form pre-verdict, and concluded that a decision on the approximately 700 decision points would “not go quickly.”

Turns out The Verge was mistaken; the jury was able to wrap things up in just over two days, awarding over $1 billion to Apple. They did this with the help of a jury foreman who had applied for and obtained a patent – the only juror who had even the slightest familiarity with patents before this trial.… Read the full article

A recent Massachusetts Superior Court decision holds, on summary judgment, that a company may not enforce a noncompete/non-solicitation agreement against a former employee when the former employer had materially breached the agreement by changing the terms of  employment. Specifically, the employer changed the employee’s job responsibilities and title, and cut his annual salary by $40,000.

There’s nothing particularly surprising about this ruling, which is a reminder to employers that they can sacrifice the enforceability of a noncompete by materially changing the terms of an employment agreement. This can be avoided by entering into a new agreement containing the modified terms, something the employer in this case failed to do.

Protege Software v. Colameta (Sup. Ct. Middlesex, July 16, 2012) ( Kirpalani, J.)Read the full article