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Marketel International, Inc. v. Priceline.Com, Inc.

Citation: 36 F. App'x 423Docket: No. 01-1279

Court: Court of Appeals for the Federal Circuit; April 25, 2002; Federal Appellate Court

Narrative Opinion Summary

In this appellate case, Marketel International, Inc. challenged the United States District Court for the Northern District of California's decision to grant partial summary judgment in favor of Priceline.com, Inc. The court dismissed Marketel's claims, including misappropriation of trade secrets, conversion, unfair competition, and correction of inventorship. The misappropriation claim was invalidated by the expiration of nondisclosure agreements, while the conversion claim was dismissed as California law does not recognize trade secrets as property. The unfair competition claim failed due to its reliance on the unsuccessful misappropriation claim. Marketel's inventorship correction claim under 35 U.S.C. § 256 was also denied due to insufficient corroborating evidence beyond witness testimony. The appellate court conducted a de novo review and affirmed the lower court's decision, emphasizing that no genuine issue of material fact existed. The decision underscores the necessity of valid nondisclosure agreements and corroborated evidence in claims involving trade secrets and patent inventorship.

Legal Issues Addressed

Appellate Review of Summary Judgment

Application: The appellate court reviews summary judgment decisions de novo, affirming if no genuine issue of material fact exists.

Reasoning: The appellate review of summary judgment is conducted de novo, affirming if no genuine issue of material fact exists.

Conversion and Intangible Property

Application: The court held that California law does not recognize trade secrets as property subject to conversion claims.

Reasoning: The conversion claim did not apply to intangible property like trade secrets.

Correction of Inventorship under 35 U.S.C. § 256

Application: The court ruled against Marketel's inventorship claim due to insufficient corroboration beyond witness testimony.

Reasoning: The request for correction of inventorship for U.S. Patent No. 5,794,207 lacked sufficient corroboration beyond the testimony of alleged inventors.

Expiration of Nondisclosure Agreements

Application: The court found that Marketel's misappropriation of trade secrets claim was unenforceable due to the expiration of the nondisclosure agreements.

Reasoning: The misappropriation of trade secrets claim was based on expired nondisclosure agreements.

Unfair Competition Claims

Application: Marketel's unfair competition claim was dismissed as it was dependent on the unsustainable misappropriation claim.

Reasoning: The unfair competition claim was dependent on the unsustainable misappropriation claim.

Uniform Trade Secrets Act and Misappropriation Claims

Application: Marketel's trade secret misappropriation claim failed due to the expiration of nondisclosure agreements, as required by the UTSA.

Reasoning: Marketel contends that a genuine issue exists regarding breaches of the nondisclosure agreement and trade secrets appropriation, referencing California's Uniform Trade Secrets Act (UTSA).