Northern California Courts Rule in Intellectual Property Cases

A drawing from U.S. Patent No. 5,559,990

Several judges on the U.S. District Court for the Northern District of California have recently ruled in intellectual property cases, among them:

Advanced Micro Devices v. Samsung Electronics is patent infringement lawsuit regarding a device (shown to the right) which makes computer memory faster.  The chip uses two registers (an X register and a Y register) with two decoders (an X decoder and a Y decoder) to figure out what goes where there is a "Y-select circuit." The whole case turns on the Markman construction of the "Y-select circuit."

Samsung proposes that the Court construe “Y-select circuit” as “a circuit that selects columns from an array and provides signals from the selected columns to a sense amplifier.”
AMD objects to Samsung’s inclusion of language specifying any interaction between the Y-select circuit and the sense amplifier, and instead proposes the construction “a circuit for selecting columns.”

Judge Susan Illston, didn't think this was a close call:

It is apparent from the claim language, however, that the Y-select circuit is the component which allows the sense amplifiers to receive signals from the columns that have been selected, thereby enabling the sense amplifiers to perform their recited function of amplifying the selected columns.

She went with Samsung's construction and granted it summary judgment for non-infringement.

Innospan Corp. v. Intuit Inc. is an unregistered trademark infringement case.  In 2006, Shasta Ventures, L.P. considered investing in Innospan, but by May 2006, it changed its mind.  Innospan alleges that Shasta stole the "Mint" mark and gave it to Mint Software which Intuit bought for $171 million in 2009.  Innospan claims that Intuit and Mint Software have used the Mint mark between 2006 and 2010 creating marketplace confusing and causing losses to Innospan.  As Judge William H. Alsup noted, the interesting claim is one for conversion:

In Kremen v. Cohen, the Ninth Circuit decided that intangible property could be converted. That decision, however, has yet to be applied to intangible intellectual property rights in a trademark within the Ninth Circuit.  In Meeker v. Meeker, Judge White analyzed the decision in Kremen and decided not to extend the tort of conversion “to reach the intangibleintellectual property rights in a trademark.” (N.D. Cal. Nov. 10, 2004). The same conclusion was reached by Judge Wilken in Tethys Bioscience, Inc. v. Mintz, et al., “although Kremen recognized that intangible property could be converted, subsequent California cases addressing the application of the conversion tort to intangible property have suggested that this theory should not be expanded to ‘displace other, more suitable law’.” (N.D. Cal. June 4, 2010). This order concurs.  Plaintiff’s complaint also alleges a claim for trade infringement under the Lanham Act. That claim is the appropriate legal avenue for trademark infringement, not conversion.

Judge Alsup granted the motion to dismiss the conversion claim but allowed the others to go into discovery.  The parties sought clarification of the order, which Judge Alsup provided:
Third, plaintiff’s claim for conversion was dismissed without leave to amend as a matter of law.

Finally, in regard to adding new claims or defendants in an amended complaint, the Federal Rules of Civil Procedure and local rules for this Court stillapply. All parties are advised to read and follow those rules.