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LexisNexis® Mealey's™ Intellectual Property Legal News
Headline Intellectual Property Legal News from LexisNexis®
Oral Arguments Held In Apple, Samsung Smartphone Design Patent Dispute
WASHINGTON, D.C. - An award of infringer's profits in a design patent case should consist only of those profits attributable to the article of manufacture to which the design patent is applied and not all profits realized from the total product, an attorney for petitioner Samsung Electronics Co. told the U.S. Supreme Court on Oct. 11 (Samsung Electronics Co. Ltd., et al. v. Apple Inc., No. 15-777, U.S. Sup.).
Petitions For Certiorari In 2 Patent Cases Are Rejected By Supreme Court
WASHINGTON, D.C. - A dispute over the proper standard for disregarding or crediting the technical testimony of qualified experts when overturning a jury verdict of direct patent infringement will not be argued before the U.S. Supreme Court in an upcoming term in light of an Oct. 3 denial of certiorari; the court also turned away a petition that posed the question whether the Federal Circuit U.S. Court of Appeals erred in holding that there must be a proven reasonable expectation of success for a claimed combination invention to be deemed obvious (Commil USA LLC v. Cisco Systems Inc., No. 15-1446; E.I. du Pont de Nemours & Co. v. MacDermid Printing Solutions LLC, No. 15-1777, U.S. Sup.).
Divided Federal Circuit Reverses Patent Eligibility Ruling
WASHINGTON, D.C. - Although affirming findings by a Delaware federal judge that two anti-virus patents are invalid under 35 U.S. Code Section 101, a divided Federal Circuit U.S. Court of Appeals on Sept. 30 reversed findings that a third patent asserted in the case claims patent-eligible subject matter (Intellectual Ventures I LLC v. Symantec Corp., et al., Nos. 2015-1769, -1770, -1771, Fed. Cir.; 2016 U.S. App. LEXIS 17695).
Fraud Detection Patent Recites Ineligible Matter, Federal Circuit Concludes
WASHINGTON, D.C. - Finding no error in a Florida federal judge's determination of patent ineligibility under 35 U.S. Code Section 101, the Federal Circuit U.S. Court of Appeals on Oct. 11 affirmed dismissal of a dispute over a fraud detection patent (FairWarning IP LLC v. Iatric Systems Inc., No. 15-1985, Fed. Cir.; 2016 U.S. App. LEXIS 18313).
Federal Circuit: Form 18 Inapplicable To Claims Of Joint Patent Infringement
WASHINGTON, D.C. - A New York federal judge's decision to dismiss allegations of patent infringement levied against CBS Corp. and CBS Interactive Inc. was affirmed Sept. 30 by the Federal Circuit U.S. Court of Appeals, which ruled that Form 18 in the Appendix to the Federal Rules of Civil Procedure does not apply in cases alleging joint patent infringement (Edwin Lyda v. CBS Corporation, et al., No. 15-1923, Fed. Cir.; 2016 U.S. App. LEXIS 17694).
Federal Circuit Affirms Infringement Ruling In Apple, Samsung Patent Suit
WASHINGTON, D.C. - In an Oct. 7 en banc majority opinion, the Federal Circuit U.S. Court of Appeals affirmed a trial court's judgment and a jury verdict in favor of Apple Inc. against Samsung Electronics Co. in a dispute over smartphone technology patents, vacating an earlier panel ruling that had reversed the lower court's ruling (Apple Inc. v. Samsung Electronics Co., Ltd., et al., Nos. 2015-1171, 2015-1195 and 2015-1994, Fed. Cir.; 2016 U.S. App. LEXIS 18225).
3rd Circuit Affirms Denial Of Fee Award In Unjust Enrichment Case
PHILADELPHIA - An unjust enrichment and misappropriation plaintiff who prevailed on a motion to remand his case to state court - based upon findings that the claims advanced are dissimilar from patent infringement claims - was nonetheless properly denied a request for attorney fees, the Third Circuit U.S. Court of Appeals ruled Oct. 6 (Eric Inselberg v. New York Football Giants Inc., et al., No. 14-4709, 3rd Cir.; 2016 U.S. App. LEXIS 18156).
Utah Federal Judge Dismisses Patent Noninfringement Claim, Allows Validity Challenge
SALT LAKE CITY - A declaratory judgment action seeking a declaration of noninfringement and invalidity with regard to two utility patents was partly dismissed Oct. 12 by a Utah federal judge pursuant to Federal Rule of Civil Procedure 12(b)(6) (The Beer Barrel LLC v. Deep Wood Brew Products LLC, et al., No. 16-440, D. Utah.; 2016 U.S. Dist. LEXIS 141495).
Patent Board Won't Review Sony Patent, Rejects Invalidity Allegation
ALEXANDRIA, Va. - Allegations by several petitioners that a bi-directional communications system patent owned by Sony Corp. is invalid pursuant to 35 U.S. Code Section 103 were turned away Oct. 7 by the Patent Trial and Appeal Board (ARRIS International PLC, et al. v. Sony Corporation, No. IPR2016-00828, PTAB).
Baker Hughes Seeks Re-Examination Of Drag- Reducing Polymer Patent
ALEXANDRIA, Va. - A claimed method of introducing a drag-reducing polymer into a pipeline carrying a liquid hydrocarbon "was not new" and would have been obvious to one of ordinary skill in the art, Baker Hughes Incorporated asserts in an Oct. 6 petition for inter partes review by the Patent Trial and Appeal Board (Baker Hughes Incorporated v. Lubrizol Specialty Products Inc., No. IPR2016-01896, PTAB).
Patent Board Grants Inter Partes Review Of Perforation Detection Patent
ALEXANDRIA, Va. - A petition for inter partes review by Minerva Surgical Inc. was granted Oct. 6 by the Patent Trial and Appeal Board, which agreed that claims 1-15 of a patented method of detecting body cavity perforations are likely invalid under 35 U.S. Code Section 103 (Minerva Surgical Inc. v. Hologic Inc., No. IPR2016-00868, PTAB).
Apple Takes Aim At Flexible Interface Patent In New Petition
ALEXANDRIA, Va. - In several petitions for inter partes review filed with the Patent Trial and Appeal Board on Oct. 11, Apple Inc. attacked the validity of a patent covering digital emulation (Petition for Inter Partes Review of U.S. patent No. 6,470,399, No. IPR2016-01839, PTAB).
On Rehearing, Patent Board Finds New Ground To Reject Patent
ALEXANDRIA, Va. - A decision on rehearing from a September 2015 ruling that affirmed a patent examiner's rejection of various claims of a universal tire pressure monitoring patent yielded a new ground of rejection on Oct. 12 (Continental Automotive Systems US Inc. v. Schrader Electronics Inc., No. 2014-007436, PTAB).
Solicitor General To Take Part In 'Useful Articles' Copyright Case
WASHINGTON, D.C. - In its Oct. 11 orders list, the U.S. Supreme Court granted a request by the U.S. solicitor general to participate in upcoming oral arguments in a dispute over the copyrightability of "useful articles" (Star Athletica, LLC v. Varsity Brands, Inc., et al., No. 15-866, U.S. Sup.).
2nd Circuit Affirms: 'Made In America' Song Does Not Infringe Copyright
NEW YORK - Findings by a New York federal judge that Kanye West, Jay Z and other artists did not commit copyright infringement through their song "Made in America" were proper, the Second Circuit U.S. Court of Appeals ruled Oct. 7 (Joel R. McDonald aka Joel Mac v. Kanye West, et al., No. 15-3489, 2nd Cir.; 2016 U.S. App. LEXIS 18291).
2nd Circuit: Copyright Interest In 'Who's On First' Routine Lacking
NEW YORK - Although rejecting a New York federal judge's determination that incorporation of Abbott and Costello's iconic "Who's on First" comedy routine into a Broadway play was a fair use, the Second Circuit U.S. Court of Appeals on Oct. 11 nonetheless affirmed dismissal of the case after finding that plaintiffs failed to assert the existence of a plausible copyright interest (TCA Television Corp., et al., v. Kevin McCollum, et al., No. 16-134, 2nd Cir.; 2016 U.S. App. LEXIS 18333).
Supreme Court Denies Certiorari In Dispute Over Redskins Trademark
WASHINGTON, D.C. - A petition for a writ of certiorari before judgment was denied Oct. 3 by the U.S. Supreme Court in a trademark case that presents similar issues as one that received a grant of certiorari on Sept. 30 (Pro-Football Inc. v. Amanda Blackhorse, et al., No. 15-1311, U.S. Sup.).
New York Federal Jury Awards Tiffany's $13.75M In Trademark Case
NEW YORK - In part two of a two-phase damages trial, jurors empaneled before U.S. Judge Laura Taylor Swain of the Southern District of New York on Oct. 5 found that Tiffany and Co. is entitled to an additional $8.25 million in punitive damages as a result of trademark infringement by Costco Wholesale Corp., sources confirmed to Mealey Publications (Tiffany and Company v. Costco Wholesale Corp., No. 13-1041, S.D. N.Y.).
Plaintiff In Website Dispute Seeks To Quash Subpoenas Directed At Personal Life
CHICAGO - A woman bringing cybersquatting, fraud and defamation claims over a website created by her ex-boyfriend filed a motion to quash his discovery subpoenas in Illinois federal court on Oct. 5, asserting that the subpoenas were intended to harass and intrude on her personal life and lack any probative value related to the claims at issue in the case (Emily Mackie, et al. v. Mason Awtry, et al., No. 1:14-cv-09206, N.D. Ill.).
Florida Federal Magistrate Defers Discovery Ruling In Lanham Act Case
MIAMI - Efforts by 32 models to obtain, through discovery, the membership list of a defendant "swingers" club were unsuccessful on Oct. 3, when a Florida federal magistrate judge concluded that it remains unclear whether the requested information would assist the plaintiffs in determining the amount of damages available to them on their allegation that the club violated the Lanham Act (Jaime Faith Edmondson, et al. v. Velvet Lifestyles LLC, No. 15-24442, S.D. Fla.; 2016 U.S. Dist. LEXIS 136866).
Missouri Federal Judge Finds For Restaurant Franchisor In Franchise Agreement Dispute
ST. LOUIS - A Missouri federal judge on Oct. 3 ruled that Lion's Choice franchisee Valley Beef LLC's continued operation of its franchise after the termination of its franchise agreement constitutes a violation of the franchise agreement and a violation of Lion' Choice's trademarks and copyrights (LC Franchisor LLC, et al. v. Valley Beef LLC, No. 4:15-cv-00383, E.D. Mo.; 2016 U.S. Dist. LEXIS 136790).
New York Federal Judge: No Sanctions For Attorney In Copyright, Lanham Act Case
NEW YORK - Although finding "much to criticize" in the conduct of an attorney who advanced allegations of copyright infringement and violations of the Lanham Act in a third-party action against Viacom and others, a New York federal judge on Oct. 5 nonetheless declined a request for sanctions in the case (Scrilla Hill Entertainment Inc., et al. v. Bianca Dupree, et al., No. 16-490, S.D. N.Y.; 2016 U.S. Dist. LEXIS 138346).
Glass Maker Sues Tobacco Shop For Allegedly Selling Counterfeit Products
LOS ANGELES - A German tobacco glass pipe maker on Oct. 11 filed suit in California federal court against a retail smoke shop, claiming that the shop has sold and continues to sell counterfeit products made by the pipe maker without its express permission (Sream Inc. v. MP Tobacco Inc., No. 5:16-cv-2143, C.D. Calif.).
Judge Bars Employee From Testifying On Trademark Confusion In Trade Secrets Suit
PHILADELPHIA - In a misappropriation of trade secrets lawsuit, a company's employee in its marketing department is unqualified due to a lack of technical knowledge to testify on issues such as "branding, trademark confusion, customer reactions, business ethics, or trademark law," a Pennsylvania federal judge ruled Oct. 12, excluding the testimony (Alpha Pro Tech Inc. v. VWR International LLC, No. 12-1615, E.D. Pa.; 2016 U.S. Dist. LEXIS 141030).
Judge: Insured Failed To Provide Insurer Sufficient Notice Of Bad Faith Claim
ALBANY, Ga. - A Georgia federal judge on Sept. 30 found that an insured did not satisfy a statutory prerequisite demand requirement by failing to provide sufficient notice of a bad faith claim or litigation to its insurer before filing its initial complaint, granting the insurer's motion for summary judgment as to the bad faith claim (Foliar Nutrients Inc., et al. v. Nationwide Agribusiness Insurance Co., No. 14-75, M.D. Ga.; 2016 U.S. Dist. LEXIS 135327).
Ohio Panel: Court Erred In Finding Audit Request Was Not Claim Under Policy
LIMA, Ohio - Reversing a lower court in part, an Ohio appeals court on Oct. 11 held that the court erred in finding that an audit request in an underlying copyright infringement dispute was not a "claim" under an insurance policy (Eighth Floor Promotions v. The Cincinnati Insurance Companies, No. 10-15-19, Ohio App., 3rd Dist.; 2016 Ohio App. LEXIS 4119).
Blood Glucose System Maker Asks High Court To Decide Who Institutes Inter Partes Review
WASHINGTON, D.C. - A manufacturer of a blood glucose monitoring system on Sept. 20 petitioned the U.S. Supreme Court to decide whether the Leahy-Smith America Invents Act (AIA) permits the Patent Trial and Appeal Board instead of the director of the U.S. Patent and Trademark Office to make inter partes review (IPR) institution decisions (LifeScan Scotland Ltd. v. Pharmatech Solutions Inc. and Michelle K. Lee, Director, U.S. Patent and Trademark Office, No. 16-377, U.S. Sup.).
Patent Owner Asks High Court To Decide If AIA Allows Board To Institute Inter Partes Review
WASHINGTON, D.C. - A patent owner petitions the U.S. Supreme Court on Sept. 20 to answer whether the Leahy-Smith America Invents Act (AIA) permits the Patent Trial and Appeal Board instead of the U.S. Patent and Trademark Office (PTO) director to make inter partes review (IPR) institution decisions (Ethicon Endo-Surgery Inc. v. Covidien LP and Michelle K. Lee, Director, U.S. Patent and Trademark Office, No. 16-366, U.S. Sup.).
Solicitor Says U.S. Supreme Court Should Deny Petition In Patent, Antitrust Case
WASHINGTON, D.C. - A petition by drug manufacturers asking the U.S. Supreme Court to consider "whether a reverse-payment agreement is immune from antitrust scrutiny if the consideration given by the brand-name manufacturer to the generic challenger is not a cash payment, but rather a promise to restrict its competition with the challenger after the challenger enters the market" should be denied, the U.S. solicitor general says in an Oct. 3 amicus curiae brief (SmithKline Beecham Corp., et al. v. King Drug Company of Florence Inc., No. 15-1055, U.S. Sup.).
Amicus Curiae Filer Supports Supreme Court Question On Statute Governing Patent Venue
WASHINGTON, D.C. - An amicus curiae filer argues in an Oct. 5 amicus curiae brief in support of TC Heartland LLC's petition that the U.S. Supreme Court should resolve the governing provision for a venue transfer dispute in a patent infringement lawsuit (TC Heartland LLC d/b/a Heartland Food Products Group v. Kraft Foods Group Brands LLC, No. 16-341, U.S. Sup.).
Music Publishers Ask High Court To Reject Petition On Fair Use In Copyright Dispute
WASHINGTON, D.C. - Music publishers argue in a Sept. 26 opposition brief to the U.S. Supreme Court that it should not consider whether a YouTube user is excused from liability under Section 512 of the Digital Millennium Copyright Act (DMCA) because the user lacks standing to make her claim of a good faith belief that her video was protected under the fair use doctrine (Stephanie Lenz v. Universal Music Corp., et al., Nos. 16-217 & 16-218, U.S. Sup.).
Amylin Says To Supreme Court: Decision On Limitations Period Does Not Conflict With Petrella
WASHINGTON, D.C. - An appellate court's decision that a copyright complaint must be dismissed for falling outside the three-year statute of limitations proscribed by the Copyright Act does not conflict with Petrella v. Metro-Goldwyn-Mayer Inc. (134 S. Ct. 1962, 1969 ), Amylin Pharmaceuticals Inc. and Amylin Pharmaceuticals LLC (Amylin, collectively) argue in a Sept. 30 brief to the U.S. Supreme Court (Consumer Health Information Corp. v. Amylin Pharmaceuticals Inc., et al., No. 16-282, U.S. Sup.).
9th Circuit Hears Arguments From Skechers, Adidas Over Injunction In Trademark Suit
SAN FRANCISCO - The Ninth Circuit U.S. Court of Appeals on Oct. 7 heard oral arguments from Skechers USA Inc. and adidas America Inc. as to whether there was evidence of irreparable harm to support an injunction barring Skechers from selling two shoes that allegedly infringed on adidas' brand (adidas America Inc., et al. v. Skechers USA Inc., No. 16-35204, 9th Cir.).
Ex-Band Member Argues Email Blasts Did Not Violate Injunction Under 'Fair Use'
ORLANDO, Fla. - Email blasts for advertisements that include a musician's use of his former band's name do not violate a permanent injunction in a trademark lawsuit because of "fair use," the ex-band member argues in a Sept. 30 opposition brief in Florida federal court (Commodores Entertainment Corp. v. Thomas McClary and Fifth Avenue Entertainment LLC, No. 14-01335, M.D. Fla.).
Supreme Court Will Review Dispute Over Disparaging Trademarks
WASHINGTON, D.C. - A ruling by the Federal Circuit U.S. Court of Appeals that deemed the Lanham Act's disparagement provision - codified at 15 U.S. Code Section 1052(a) (Section 2[a]) - unconstitutional will be reviewed by the U.S. Supreme Court, which granted certiorari Sept. 29 (Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director, U.S. Patent and Trademark Office v. Simon Shiao Tam, No. 15-1293, U.S. Sup.).
Pa. Federal Judge Partly Allows Dilution Claims Over Buck Rogers To Proceed
PHILADELPHIA - A dispute over the Buck Rogers character will proceed with allegations of federal trademark dilution intact, but without a related state law claim, in light of a "divergence between the Lanham Act and Pennsylvania trademark law," according to a Sept. 16 ruling by a Pennsylvania federal judge (The Dille Family Trust v. The Nowlan Family Trust, No. 15-6231, E.D. Pa.; 2016 U.S. Dist. LEXIS 126191).
2nd Circuit Upholds Trademark Ruling In Favor Of Oprah Winfrey
NEW YORK - A New York federal judge's grant of summary judgment in favor of trademark infringement defendant Oprah Winfrey was affirmed Sept. 16 by the Second Circuit U.S. Court of Appeals, albeit on "slightly different grounds," according to the panel (Simone Kelly-Brown, et al. v. Oprah Winfrey, et al., No. 15-697, 2nd Cir.; 2016 U.S. App. LEXIS 16939).
California Federal Judge Partly Grants, Denies Relief In Lanham Act Dispute
SACRAMENTO, Calif. - The National Grange of the Order of Patrons of Husbandry and The California State Grange won a partial preliminary injunction on Sept. 23 on false advertising claims arising from the latest installment in ongoing litigation with a disaffiliated charter (The National Grange of the Order of Patrons of Husbandry, et al. v. California State Grange d/b/a The California Guild, No. 16-201, E.D. Calif.; 2016 U.S. Dist. LEXIS 130805).
3rd Circuit Says 'Fudgetopia' Trademarks Belong To Plaintiff
PHILADELPHIA - A Pennsylvania federal judge did not err in deeming a trademark infringement plaintiff the lawful and rightful owner of the "Fudgetopia" and "Fudgie Wudgie" trademarks as well as a related logo, the Third Circuit U.S. Court of Appeals ruled Sept. 23 (Three Rivers Confections LLC v. Christopher M. Warman, et al., No. 15-3436, 3rd Cir.; 2016 U.S. App. LEXIS 17390).
No Consumer Confusion On Use Of Navajo Mark By Retailers, Judge Finds
ALBUQUERQUE, N.M. - The Navajo Nation is not entitled to summary judgment on its trademark infringement claim against several retailers because the tribe did not prove that the retailers' use of the tribe's trademark caused confusion as a matter of law, a New Mexico federal judge held Sept. 19 (The Navajo Nation, et al. v. Urban Outfitters, Inc., et al., No. 12-195, D. N.M.).
Federal Circuit: Discovery Sanctions In Patent Case Were Abuse Of Discretion
WASHINGTON, D.C. - A Pennsylvania federal judge abused his discretion when striking a patent infringement defendant's answer and counterclaims as a sanction for failure to comply with two discovery orders, the Federal Circuit U.S. Court of Appeals ruled Sept. 29 (Drone Technologies Inc. v. Parrot S.A., et al., Nos. 15-1892, -1955, Fed. Cir.; 2016 U.S. App. LEXIS 17643).
Solicitor General To Participate In Supreme Court Samsung, Apple Patent Case
WASHINGTON, D.C. - In a Sept. 26 miscellaneous order list, the U.S. Supreme Court granted a motion by the U.S. solicitor general to participate as amicus curiae in the upcoming oral arguments in a design patent lawsuit between Samsung Electronics Co. and Apple Inc. pertaining to Apple smartphone designs (Samsung Electronics Co. Ltd., et al. v. Apple Inc., No. 15-777, U.S. Sup.).
New Jersey Federal Judge Enjoins Sales Of Generic Levothyroxine Formulation
TRENTON, N.J. - Although denying a plaintiff's request to dismiss counterclaims of inequitable conduct, a New Jersey federal judge on Sept. 20 nonetheless granted the plaintiff a preliminary injunction in a patent dispute over injectable lyophilized levothyroxine (Fresenius Kabi USA LLC v. Fera Pharmaceuticals LLC, et al., No. 15-3654, D. N.J.; 2016 U.S. Dist. LEXIS 128126).
New Jersey Federal Judge Denies Relief In Air Freshener Patent Case
TRENTON, N.J. - A case involving claims of willful design patent infringement will proceed without a preliminary injunction in place, a New Jersey federal judge ruled Sept. 27 (Brandywine Product Group International v. Universal Distribution Center LLC, No. 16-2248, D. N.J.; 2016 U.S. Dist. LEXIS 132195).
California Federal Judge Agrees: 3 Claims Of 2 Patents Fail Section 101
SAN FRANCISCO - Amazon.com Inc. on Sept. 20 won dismissal with prejudice of allegations that it infringed two patents amid findings by a California federal judge that the patents in suit do not pass muster under 35 U.S. Code Section 101 (TriDim Innovations LLC v. Amazon.com Inc., No. 15-5477, N.D. Calif.; 2016 U.S. Dist. LEXIS 127483).
Federal Circuit Sends Denial Of Enhanced Patent Damages Back To Texas Court
WASHINGTON, D.C. - On remand from the U.S. Supreme Court, a divided Federal Circuit U.S. Court of Appeals on Sept. 21 vacated a Texas federal judge's denial of enhanced damages in a patent infringement dispute (WesternGeco LLC v. ION Geophysical Corp., Nos. 2013-1527, 2014-1121, -1526, -1528, Fed. Cir.; 2016 U.S. App. LEXIS 17215).
Federal Circuit Upholds Patent Board Determination That Patent Is Anticipated
WASHINGTON, D.C. - A covered business method (CBM) review of an interactive video distribution patent correctly ended in findings of patent invalidity under 35 U.S. Code Section 102, the Federal Circuit U.S. Court of Appeals ruled Sept. 26 (Intertainer Inc. v. Hulu LLC, No. 15-2065, Fed. Cir.; 2016 U.S. App. LEXIS 17452).
Divided Federal Circuit Reverses Patent Indefiniteness Holding
WASHINGTON, D.C. - Sprint Communications Co. LP and several affiliates (Sprint, collectively) prevailed Sept. 23 before the Federal Circuit U.S. Court of Appeals in their effort to overturn a Delaware federal judge's determination that six voice-over Internet protocol (VOIP) patents are invalid as indefinite under 35 U.S. Code Section 112 (Sprint Communications Company LP, et al. v. Cox Communications Inc., et al., No. 16-1013, Fed. Cir.; 2016 U.S. App. LEXIS 17372).
Federal Circuit Reverses Judgment Upholding Verdict In Patent Dispute
WASHINGTON, D.C. - An advisory verdict of patent validity and infringement that was later upheld by a Nevada federal judge was based upon an erroneous claim construction, the Federal Circuit U.S. Court of Appeals ruled Sept. 23 (Server Technology Inc. v. American Power Conversion Corporation, No. 15-1605, Fed. Cir.; 2016 U.S. App. LEXIS 17368).
EBay Seeks Inter Partes Review Of Graphic User Interface Patent
ALEXANDRIA, Va. - In a Sept. 22 petition for inter partes review filed with the Patent Trial and Appeal Board, eBay Inc. and others allege that a graphic user interface (GUI) patent is invalid under 35 U.S. Code Section 103 (eBay Inc., et al., v. Global Equity Management Pty. Ltd., No. IPR2016-01828, PTAB).
Patent Board Turns Away Challenge Of Remote Device Management Patent
ALEXANDRIA, Va. - Samsung Electronics Co. Ltd.'s claim that a patented remote device management method and system is invalid pursuant to 35 U.S. Code Section 103(a) was rejected Sept. 19 by the Patent Trial and Appeal Board (Samsung Electronics Co. Ltd. v. Koninklijke KPN N.V., No. IPR2016-00808, PTAB).
Patent Board Grants Petition, Consolidates Drug Patent Challenges
ALEXANDRIA, Va. - A petition by Teva Pharmaceuticals USA Inc. for inter partes review of 31 claims of a patent that claims compositions useful in the treatment of diabetes was granted Sept. 23 by the Patent Trial and Appeal Board, which additionally agreed that the challenge should be consolidated with an IPR petition by Mylan Pharmaceuticals Inc. that was granted in May (Teva Pharmaceuticals USA Inc. v. Astrazeneca AB, No. IPR2016-01122, PTAB).
Patent Board Institutes Review, Grants Petition By Apple
ALEXANDRIA, Va. - A patent that is the subject of a lawsuit pending in Missouri federal court will also be the subject of inter partes review, the Patent Trial and Appeal Board ruled Sept. 26 (Apple Inc. v. Masa LLC, No. IPR2016-00748, PTAB).
Post-Grant Review Of Bicycle Drivetrain Patent Sought In New Petition
ALEXANDRIA, Va. - In a Sept. 24 petition for post-grant review (PGR) filed with the Patent Trial and Appeal Board, a company specializing in shock absorbers for mountain bikes takes aim at a patent that discloses a solitary chainring of a front crankset of a bicycle drivetrain (FOX Factory Inc. v. SRAM LLC, No. PGR2016-00043, PTAB).
Oracle Denied New Trial, Judgment In Java Suit Post-Trial Proceedings
SAN FRANCISCO - Oracle America Inc. saw its post-trial motions for judgment as a matter of law (JMOL) and for a new trial denied by a California federal judge Sept. 27, who found that defendant Google Inc. did not engage in any discovery misconduct meriting a new trial (Oracle America Inc. v. Google Inc., No. 3:10-cv-03561, N.D. Calif.).
9th Circuit Reverses Dismissal Of Effort To Enforce Copyright Award
SAN FRANCISCO - A California federal judge erred in refusing to enforce a 2 million Euro judgment ordered by a French court against an American art editor accused of copyright violations under the California Uniform Foreign-Court Monetary Judgment Recognition Act, the Ninth Circuit U.S. Court of Appeals ruled Sept. 26 (Yves Sicre de Fontbrune v. Alan Wofsy, No. 14-15790, 9th Cir. 2016 U.S. App. LEXIS 17477).
Trademark Counterclaim Survives Motion In New Jersey Federal Litigation
TRENTON, N.J. - Counterclaims of contributory copyright infringement were rejected Sept. 22 by a New Jersey federal judge as barred by the economic loss doctrine because the allegations giving rise to the counterclaim are not "separate and distinct" from a related breach of contract counterclaim (Air Express International d/b/a DHL Global Forwarding Corporation v. LOG-NET Inc., No. 12-1732, D. N.J.; 2016 U.S. Dist. LEXIS 129409).
New York Federal Judge Won't Strike Innocent Infringement Defense
NEW YORK - Although agreeing with three textbook publishers that a defendant cannot raise the affirmative defenses of copyright misuse and unclean hands to allegations of infringement, a New York federal judge on Sept. 19 denied a motion to strike the related affirmative defense of "innocent infringement" (John Wiley & Sons Inc., et al. v. Book Dog Books LLC, et al., No. 13-816, S.D. N.Y.; 2016 U.S. Dist. LEXIS 127307).
Temporary Restraining Order, Dismissal Denied In Texas Copyright Case
DALLAS - Efforts by a copyright infringement and false advertising plaintiff to obtain a temporary restraining order barring the construction of a single-family home were unsuccessful Sept. 16, when a Texas federal judge denied the request (The Joseph Paul Corporation d/b/a The Joseph Paul Homes v. Trademark Custom Homes, Inc., et al., No. 16-1651, N.D. Texas; 2016 U.S. Dist. LEXIS 126206).
Allegations That Textbook Maker Exceeded Copyright License Will Proceed
NEW YORK - Efforts by McGraw-Hill Global Education Holdings LLC and McGraw-Hill School Education Holdings LLC (McGraw-Hill, collectively) to dismiss allegations of copyright infringement were unsuccessful Sept. 16, when a New York federal judge rejected the textbook publishers' claim that 14 disputed photographs are in the public domain (Joseph Sohm v. McGraw-Hill Global Education Holdings LLC, et al., No. 16-4255, S.D. N.Y.; 2016 U.S. Dist. LEXIS 126836).
ABC, Yahoo Sued Over Broadcast, Posting Of Live Birth Video
NEW YORK - American Broadcasting Cos. Inc. (ABC) and Yahoo! Inc. were named as defendants in a Sept. 22 complaint in New York federal court by a man who claims that the companies breached the copyright in his video of a live birth that was aired on television and posted online without his permission (Kali Kanongataa v. American Broadcasting Companies Inc., et al., No. 1:16-cv-07382, S.D. N.Y.).
Judge Finds Documents Properly Withheld, Redacted In Polymer Trade Secrets Case
CHICAGO - A polymer firm properly redacted and withheld from production certain documents related to tests of its competitor's purportedly misappropriated products, an Illinois federal judge ruled Aug. 19, deeming the disputed documents work product and irrelevant to the defendant's deceptive acts counterclaim (PolyOne Corp. v. Yun Martin Lu, et al., No. 1:14-cv-10369, N.D. Ill.).
Insurer Entitled To Rescind Professional Liability Policies, Federal Judge Rules
ROCKFORD, Ill. - An Illinois federal judge on Sept. 19 granted a professional liability insurer's request to rescind three policies because of material misrepresentations that a patent and trademark attorney insured made on his application (Minnesota Lawyers Mutual Insurance Co. v. Jerry A. Schulman, et al., No. 14-50142, N.D. Ill., Eastern Div.; 2016 U.S. Dist. LEXIS 127261).
First Quality To High Court: No Error In Applying Laches In Patent Infringement Case
WASHINGTON, D.C. - The Federal Circuit U.S. Court of Appeals' holding that the presumption of laches applies to a patent infringement action filed more than six years after a patentee learned of the allegedly infringing products should be preserved, First Quality Baby Products LLC argues in a Sept. 12 response brief to the U.S. Supreme Court (SCA Hygiene Products Aktiebolag and SCA Personal Care, Inc. v. First Quality Baby Products, LLC, et al., No. 15-927, U.S. Sup.).
Apotex Asks High Court To Consider Commercial Marketing Notice To Product Sponsor
WASHINGTON, D.C. - Apotex Inc. and Apotex Corp. (collectively, Apotex) ask the U.S. Supreme Court in a Sept. 9 petition for writ of certiorari to decide if the Federal Circuit U.S. Court of Appeals erred in holding that biosimilar applicants must provide a product sponsor with a notice of commercial marketing under the Biologics Price Competition and Innovation Act (BPCIA) (Apotex Inc. and Apotex Corp. v. Amgen Inc. and Amgen Manufacturing Ltd., No. 16-332, U.S. Sup.).
Mylan Asks High Court If ANDA Subjects Filers To Specific Personal Jurisdiction
WASHINGTON, D.C. - Mylan Pharmaceuticals Inc. and Mylan Inc. (collectively, Mylan) ask the U.S. Supreme Court in a Sept. 19 petition whether the filing of an abbreviated new drug application (ANDA) by a generic pharmaceutical manufacturer is sufficient to subject them to specific personal jurisdiction in any state where they might market the drug (Mylan Pharmaceuticals Inc. and Mylan Inc. v. Acorda Therapeutics Inc. and Alkermes Pharma Ireland Ltd., No. 16-360, U.S. Sup.).
Accused Patent Infringer Asks High Court To Consider Statute Governing Venue
WASHINGTON, D.C. - The U.S. Supreme Court should consider whether 28 U.S. Code Section 1400(b) is the only provision governing venue in patent infringement actions, an accused patent infringer argues in a Sept. 12 petition, saying the provision is not supplemented by 28 U.S. Code Section 1391(c) (TC Heartland LLC d/b/a Heartland Food Products Group v. Kraft Foods Group Brands LLC, No. 16-341, U.S. Sup.).
PTO Tells High Court Federal Circuit Lacks Right To Consider Inter Partes Review
WASHINGTON, D.C. - The Federal Circuit U.S. Court of Appeals lacks jurisdiction to consider whether inter partes review (IPR) was properly instituted for a patent owner's claim, the U.S. Patent and Trademark Office (PTO) argues to the U.S. Supreme Court in a Sept. 23 brief, citing Cuozzo Speed Technologies, LLC v. Lee (579 U.S. 136 S.Ct. 890 105 L.Ed. 2d 423 ) (Automated Creel Systems Inc. v. Shaw Industries Group Inc. and Michelle K. Lee, Under Secretary of Commerce For Intellectual Property and Director, No. 16-108, U.S. Sup.).
LSAT Course Provider Asks High Court If 'Test Masters' Mark Can Be Trademarked
WASHINGTON, D.C. - A nationwide LSAT preparation course provider asks the U.S. Supreme Court in a Sept. 13 petition to consider whether an appellate court failed to consider secondary meaning evidence in a trademark infringement lawsuit over the "Test Masters" mark (Robin Singh Educational Services Inc. and Robin Singh v. Test Masters Educational Services Inc., No. 16-353, U.S. Sup.).
University Seeks High Court Clarification On Nominative Fair Use In Trademark Case
WASHINGTON, D.C. - The U.S. Supreme Court should clarify the proper approach to nominative fair use, a university named as a defendant in a trademark infringement lawsuit says in a petition filed Sept. 15 (Security University LLC and Sondra Schneider v. International Information Systems Security Certification Consortium Inc., No. 16-352, U.S. Sup.).
Manufacturer To U.S. High Court: Cheerleader Uniforms Are Copyright Protected
WASHINGTON, D.C. - Two-dimensional graphic designs are eligible for copyright protection, a cheerleader uniform manufacturer argues in a Sept. 14 response brief to the U.S. Supreme Court, further explaining that the protection is not lost when the designs appear on three-dimensional cheerleading uniforms (Star Athletica, LLC v. Varsity Brands, Inc., et al., No. 15-866, U.S. Sup.).
Jury Finds Apple's Devices Infringe Cellular Patent, Awards Plaintiff $22 Million
TYLER, Texas - After a seven-day trial in Texas federal court, a jury on Sept. 14 found that Apple Inc. infringed the asserted claims of a patent related to a method for detecting buffer status conditions, awarding the patentee more than $22 million (Cellular Communications Equipment LLC v. Apple Inc., No. 6:14-cv-00251, E.D. Texas).
On Remand, Federal Circuit Vacates Treble Damages In Patent Case
WASHINGTON, D.C. - Although reaffirming a jury's finding that three patents are valid and willfully infringed, the Federal Circuit U.S. Court of Appeals on Sept. 12 vacated a Michigan federal judge's award of treble damages and his subsequent determination that the case qualifies as exceptional (Stryker Corp. v. Zimmer Inc., et al., No. 13-1668, Fed. Cir.; 2016 U.S. App. LEXIS 16646).
Antitrust Claims Over Patent Litigation Revived By 3rd Circuit
PHILADELPHIA - A Delaware federal judge erred in treating antitrust standing as an issue of subject matter jurisdiction in dismissing a putative class action against alleged supracompetitive pricing of medicated eye drops, the Third Circuit U.S. Court of Appeals ruled Sept. 7 (Hartig Drug Company Inc. v. Senju Pharmaceutical Co. Ltd., et al., No. 15-3289, 3rd Cir.; 2016 U.S. App. LEXIS 16404).
Delaware Federal Judge Rejects Patent Ineligibility Challenge
WILMINGTON, Del. - Efforts by a patent infringement defendant to obtain dismissal of allegations that it infringed four patents were unsuccessful on Sept. 7 when a Delaware federal judge found that it remains unclear whether the patents in suit are invalid under 35 U.S. Code Section 101 (JSDQ Mesh Technologies LLC v. Fluidmesh Networks LLC, No. 16-212, D. Del.; 2016 U.S. Dist. LEXIS 119811).
Illinois Federal Judge Won't Reconsider Dismissal Of Patent Case
CHICAGO - An April 2016 dismissal, pursuant to Federal Rule of Civil Procedure 12(b)(6), of allegations that myriad defendants infringed a patented method for enhanced mercury control in coal-fired power plants will not be reconsidered, an Illinois federal judge revealed Sept. 14 (Nalco Company v. Chem-Mod LLC, et al., No. 14-2510, N.D. Ill.; 2016 U.S. Dist. LEXIS 124800).
Federal Circuit Affirms: Monoclonal Antibodies Are Not Infringed
WASHINGTON, D.C. - Findings in favor of a declaratory judgment plaintiff that patented monoclonal antibodies are not infringed by chimeric and humanized antibodies found in the "Cimzia" anti-inflammatory drug will stand in light of a Sept. 8 ruling by the Federal Circuit U.S. Court of Appeals (UCB Inc. v. Yeda Research and Development Co., No. 15-1957, Fed. Cir.; 2016 U.S. App. LEXIS 16474).
Michigan Federal Judge Allows Damages Testimony In Patent Infringement Suit
DETROIT - An expert may offer damages testimony on behalf of Garmin International Inc. in a patent infringement lawsuit concerning car navigational methods, a Michigan federal judge ruled Sept. 12 (Visteon Global Technologies Inc. and Visteon Technologies LLC v. Garmin International Inc., No. 10-10578, E.D. Mich.; 2016 U.S. Dist. LEXIS 122922).
Federal Circuit Reverses Dismissal Of Patent Dispute, Says Standing Not Lacking
WASHINGTON, D.C. - A Virginia federal judge erred in finding no substantial controversy between a plaintiff and defendant in a patent lawsuit that requested a declaration of noninfringement and invalidity, the Federal Circuit U.S. Court of Appeals ruled Sept. 8 (Asia Vital Components Co. v. Asetek Danmark A/S, No. 15-1597, Fed. Cir.; 2016 U.S. App. LEXIS 16476).
Federal Circuit Reverses Patent Board, Deems Deicing Patent Valid
WASHINGTON, D.C. - Findings by the Patent Trial and Appeal Board that the use of desugared, sugar beet molasses (DSBM) to deice road surfaces would have been obvious to a person of ordinary skill in the art were reversed Aug. 31 by the Federal Circuit U.S. Court of Appeals (In re: Natural Alternatives LLC, No. 15-1911, Fed. Cir.; 2016 U.S. App. LEXIS 16278).
Siding With Facebook, Divided Federal Circuit Invalidates 5 Patent Claims
WASHINGTON, D.C. - The Patent Trial and Appeal Board properly held two claims of two patents invalid, but erroneously deemed five other claims not anticipated and not obvious, according to a divided ruling by the Federal Circuit U.S. Court of Appeals on Sept. 9 (Software Rights Archive LLC v. Facebook Inc., et al., Nos. 15-1649, -1650, -1651, Fed. Cir.; 2016 U.S. App. LEXIS 16561).
Patent Board Grants Covered Business Method Review Of Trading Patent
ALEXANDRIA, Va. - A patented method that purportedly improves electronic trading is likely invalid under 35 U.S. Code Section 101, the Patent Trial and Appeal Board concluded Sept. 13 in a decision to institute covered business method (CBM) review (CQG Inc., et al. v. Chart Trading Development LLC, No. CBM2016-00046, PTAB).
Oracle Patent Will Face Inter Partes Review By Patent Board
ALEXANDRIA, Va. - Six claims of a patent covering database query optimization will be the subject of an upcoming inter partes review (IPR), the Patent Trial and Appeal Board announced Sept. 14 (Realtime Data LLC v. Oracle International Corp., No. IPR2016-00695, PTAB).
Hypermedia Navigation Patent Is Invalid, Netflix Says In New Petition
ALEXANDRIA, Va. - Citing four pieces of allegedly invalidating prior art, Netflix Inc. on Sept. 15 sought inter partes review before the Patent Trial and Appeal Board of a patent relating to the use of one device to select content for playback on another device (Netflix Inc. v. Convergent Media Solutions LLC, No. IPR2016-01812, PTAB).
Belt Connector Patent Is Invalid, New Inter Partes Review Petition Asserts
ALEXANDRIA, Va. - Several medical device makers on Sept. 15 took aim at a patent that claims a belt connector for electrically connecting an electrode belt to a biometric device, in a new petition for inter partes review filed with the Patent Trial and Appeal Board (Natus Medical Inc., et al., v. Nox Medical EHF, No. IPR2016-01822, PTAB).
With Registration Requirement Now Met, West Virginia Judge Reinstates Copyright Case
CHARLESTON, W.Va. - One month after dismissing a purported copyright infringement case, a West Virginia federal judge on Sept. 12 granted a plaintiff leave to amend in light of the plaintiff's recently received copyright registrations (CSS Inc. v. Christopher Herrington, et al., No. 16-1762, S.D. W.Va.; 2016 U.S. Dist. LEXIS 122869).
Wisconsin Federal Judge Clears Path For Trial, Won't Invalidate Copyrights
MILWAUKEE - Efforts by myriad infringement defendants to invalidate various copyrights as a sanction for the alleged spoliation of evidence were unsuccessful on Sept. 12, when a Wisconsin federal judge denied the request and instead scheduled the case for trial, indicating that no reference to spoliation will appear in the jury instructions (Design Basics LLC v. Campbellsport Building Supply Inc., et al., No. 13-560, E.D. Wis.; 2016 U.S. Dist. LEXIS 123126).
9th Circuit Affirms: Copyright Plaintiff Failed To Prove Access To Work
SAN FRANCISCO - A California federal judge properly granted three defendants summary judgment on allegations that they infringed a copyrighted two-measure vocal melody in their hit song "Domino" because the plaintiff failed to present any admissible evidence that established access to the allegedly infringed work, the Ninth Circuit U.S. Court of Appeals ruled Sept. 2 (Will Loomis v. Jessie J., et al., No. 13-57093, 9th Cir.; 2016 U.S. App. LEXIS 16261).
Dismissal Of Copyright Claims Against Beyonce Explained By Federal Judge
NEW YORK - A New York federal judge on Sept. 12 explained, in writing, his Aug. 31 "bottom-line Order" that dismissed allegations of copyright infringement levied against pop star Beyonce and others associated with the film and musical album "Lemonade" (Matthew Fulks v. Beyonce Giselle Knowles-Carter, et al., No. 16-4278, S.D. N.Y.; 2016 U.S. Dist. LEXIS 123150).
Federal Judge Allows California Law Claims Against Spice Maker To Proceed
SAN FRANCISCO - A California federal judge on Sept. 6 dismissed an organic spice maker's claims for trademark infringement with leave to amend, but allowed its claims for violation of various California laws (Morton & Basset LLC v. Organic Spices Inc., No. 15-cv-01849, N.D. Calif.; 2016 U.S. Dist. LEXIS 120092).
2nd Circuit Affirms: Pregnancy Test Claims Were False Advertising
NEW YORK - Findings by a New York federal judge that the marketer of a home pregnancy test committed false advertising under the Lanham Act by implying that the product measures weeks of pregnancy in a manner consistent with that used by doctors were affirmed Sept. 9 by the Second Circuit U.S. Court of Appeals (Church & Dwight Co. Inc. v. SPD Swiss Precision Diagnostics GMBH, No. 15-2411, 2nd Cir.; 2016 U.S. App. LEXIS 16625).
Florida Federal Judge Dismisses Trademark Claims, With Leave To Amend
MIAMI - A contractual dispute was dismissed Sept. 12 by a Florida federal judge, who found that a plaintiff's allegations of trademark infringement - the only alleged basis for federal jurisdiction - fail to state a claim pursuant to Federal Rule of Civil Procedure 12(b)(6) (Mainstream Advertising Inc. v. Moniker Online Services LLC, No. 16-61316, S.D. Fla.; 2016 U.S. Dist. LEXIS 123132).
Navajo Nation, Retailers To Discuss Settling Trademarks Claims
ALBUQUERQUE, N.M. - The trial for a trademark infringement dispute between a Native American tribe and several retailers should be delayed until the new year so the parties have time to work on a settlement, according to a joint motion filed Aug. 30 in New Mexico federal court, a day after a magistrate judge scheduled a settlement conference for the parties (The Navajo Nation, et al. v. Urban Outfitters, Inc., et al., No. 12-195, D. N.M.; 2016 U.S. Dist. LEXIS 63599).
5th Circuit Affirms: Trade Secret Claims Not Preempted By Copyright Act
NEW ORLEANS - A $15 million judgment on allegations of trade secret misappropriation will stand, in light of findings on Sept. 7 by the Fifth Circuit U.S. Court of Appeals that the case is not preempted by the Copyright Act (GlobeRanger Corporation v. Software AG, No. 15-10121, 5th Cir.; 2016 U.S. App. LEXIS 16429).
LifeTech Argues To High Court: Patent Law Was Wrongly Broadened Abroad
WASHINGTON, D.C. - In a $52 million patent case over DNA tests, the Federal Circuit U.S. Court of Appeals erred when it extended U.S. patent law's reach to allow for infringement damages if a component of a patented invention originates from the United States and is combined with others overseas, Life Technologies Corp. (LifeTech) argues in a Sept. 1 petitioner brief to the U.S. Supreme Court (Life Technologies Corp. v. Promega Corp., No. 14-1538, U.S. Sup.).
Geotag Asks U.S. Supreme Court To Review Patent Dispute With Google
WASHINGTON, D.C. - The U.S. Supreme Court should review the Federal Circuit U.S. Court of Appeals' decision affirming that Google Inc.'s advertising platform did not infringe GeoTag's patent for geographic search because the district court never had subject matter jurisdiction to hear the case, GeoTag Inc. argues in an Aug. 26 petition (GeoTag Inc. v. Google Inc., No. 16-268, U.S. Sup.).
Painkiller Maker Seeks Review Of Obviousness Inquiry In Patent Case
WASHINGTON, D.C. - Following an appellate court's decision that four patents covering the pain-relieving drug OxyContin are invalid, a painkiller manufacturer in a Sept. 1 petition for writ of certiorari asks the U.S. Supreme Court to consider whether an inventor's discovery is relevant to the obviousness inquiry (Purdue Pharma LP, et al. v. Epic Pharma LLC, et al., No. 16-289, U.S. Sup.).
Commil Tells High Court: Error In Use Of Expert Testimony To Reverse $74M Patent Award
WASHINGTON, D.C. - Commil USA LLC argues in an Aug. 29 reply brief to the U.S. Supreme Court that the Federal Circuit U.S. Court of Appeals violated its Seventh Amendment rights when the court reversed a jury's factual finding and a $74 million patent verdict against Cisco Systems Inc. based upon expert testimony (Commil USA LLC v. Cisco Systems Inc., No. 15-1446, U.S. Sup.).