Interesantísimo caso de Jurisprudencia norteamericana que acerca la National Law Review, en su sección sobre Propiedad Intelectual.
Incumplimiento de secreto empresarial del actor, incluido en documento de patentes del demandado. En segunda instancia, el Federal Circuit hizo lugar.
"Yes, concluded the district court, noting that Intellisoft “ha[d] only advanced one theory of liability and that theory necessarily raise[d] substantial patent law issues, and the case “boil[ed] down to an inventorship dispute.” Intellisoft, Ltd. v. Acer America Corp., 2018 WL 6421872, at pages 8-9, 16 (N.D. Cal. Dec. 6, 2018). The district court went on to grant summary judgment in favor of Acer, reasoning that Intellisoft failed to prove under federal patent law that Bierman was the inventor of the patent claims at issue. Id. at 29-30.
But the Federal Circuit disagreed. Intellisoft, Ltd. v. Acer America Corp., 955 F.3d 927 (Fed. Cir. 2020). Under its analysis, Intellisoft did not need to prove that Bierman was an inventor of the claims in the ‘713 Patent, only that Intellisoft was the owner of the trade secrets by assignment from Bierman. Trade secret ownership, it concluded, was a matter of California state law that did not necessarily depend on patent laws. Id. at 932. In addition, it reasoned that Intellisoft did not need to establish patent infringement; it only had to show that Acer misappropriated the trade secrets under California state law. Id. Nor did it need to prove that Acer’s products infringed the relevant patent claims in order to prove trade secret damages. Id. at 933. It concluded that the state law claims did not necessarily require resolution of a substantial patent question so as to warrant removal under section 1441(a) for claims that “necessarily arise” under patent law. Id. The Federal Circuit likewise rejected removal under section 1454(a), noting that Acer’s “cross-claim” had been “lodged” but not accepted by the state court and concluding that “the claim supporting removal must be contained in an operative pleading.” Inasmuch as Acer had not obtained leave of the state court to file the cross-complaint, the patent declaratory judgment issues did not meet the test of being “contained in an operative pleading.” Id. at 934-35. The Federal Circuit therefore vacated the district court’s judgment and reversed the district court’s denial of Intellisoft’s motion to remand, ordering the case remanded to the California state court. Id. at 936."
LINK que explica el caso:
Why Patents Can Matter In Trade Secret Cases
Imagen: "Nocturno en negro y oro: el cohete cayendo", 1875 James McNeill Whistler (1834-1903)
Incumplimiento de secreto empresarial del actor, incluido en documento de patentes del demandado. En segunda instancia, el Federal Circuit hizo lugar.
"Yes, concluded the district court, noting that Intellisoft “ha[d] only advanced one theory of liability and that theory necessarily raise[d] substantial patent law issues, and the case “boil[ed] down to an inventorship dispute.” Intellisoft, Ltd. v. Acer America Corp., 2018 WL 6421872, at pages 8-9, 16 (N.D. Cal. Dec. 6, 2018). The district court went on to grant summary judgment in favor of Acer, reasoning that Intellisoft failed to prove under federal patent law that Bierman was the inventor of the patent claims at issue. Id. at 29-30.
But the Federal Circuit disagreed. Intellisoft, Ltd. v. Acer America Corp., 955 F.3d 927 (Fed. Cir. 2020). Under its analysis, Intellisoft did not need to prove that Bierman was an inventor of the claims in the ‘713 Patent, only that Intellisoft was the owner of the trade secrets by assignment from Bierman. Trade secret ownership, it concluded, was a matter of California state law that did not necessarily depend on patent laws. Id. at 932. In addition, it reasoned that Intellisoft did not need to establish patent infringement; it only had to show that Acer misappropriated the trade secrets under California state law. Id. Nor did it need to prove that Acer’s products infringed the relevant patent claims in order to prove trade secret damages. Id. at 933. It concluded that the state law claims did not necessarily require resolution of a substantial patent question so as to warrant removal under section 1441(a) for claims that “necessarily arise” under patent law. Id. The Federal Circuit likewise rejected removal under section 1454(a), noting that Acer’s “cross-claim” had been “lodged” but not accepted by the state court and concluding that “the claim supporting removal must be contained in an operative pleading.” Inasmuch as Acer had not obtained leave of the state court to file the cross-complaint, the patent declaratory judgment issues did not meet the test of being “contained in an operative pleading.” Id. at 934-35. The Federal Circuit therefore vacated the district court’s judgment and reversed the district court’s denial of Intellisoft’s motion to remand, ordering the case remanded to the California state court. Id. at 936."
LINK que explica el caso:
Why Patents Can Matter In Trade Secret Cases
Imagen: "Nocturno en negro y oro: el cohete cayendo", 1875 James McNeill Whistler (1834-1903)
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