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LexisNexis® Mealey's™ Intellectual Property Legal News
Headline Intellectual Property Legal News from LexisNexis®
Supreme Court Grants Certiorari In Patent Dispute Over Biologics
WASHINGTON, D.C. - In its Jan. 13 orders list, the U.S. Supreme Court announced that it will hear a closely watched dispute between two drug makers over their competing interpretations of several provisions of the Biologics Price Competition and Innovation Act (BPCIA) (Sandoz, Inc. v. Amgen, Inc., No. 15-1039, U.S. Sup.; Amgen Inc. v. Sandoz Inc., No. 15-1195, U.S. Sup.).
Supreme Court Denies Certiorari In 4 Patent Disputes
WASHINGTON, D.C. - The U.S. Supreme Court on Jan. 9 denied certiorari in four patent cases covering technologies ranging from pharmaceutical compounds to surgical staplers (Mylan Pharmaceuticals, et al. v. Acorda Therapeutics, et al., No. 16-360; Ethicon Endo-Surgery Inc. v. Covidien LP, et al., No. 16-366; Lifescan Scotland Ltd. v. Pharmatech Solutions Inc., No. 16-377; Merck & Cie, et al. v. Watson Laboratories, No. 16-493, U.S. Sup.).
Federal Circuit Affirms: Cancer Treatment Method Would Infringe
WASHINGTON, D.C. - An Indiana federal judge properly found that under Akamai Technologies Inc. v. Limelight Networks Inc. (797 F.3d 1020, 1022 [Fed. Cir. 2015]) (Akamai V), a proposed generic chemotherapy drug would indirectly infringe "methods of treatment" claimed by an Eli Lilly & Co. patent, the Federal Circuit U.S. Court of Appeals ruled Jan. 12 (Eli Lilly & Co. v. Teva Parental Medicines Inc., et al., No. 15-2067, Fed. Cir.; 2017 U.S. App. LEXIS 555).
Summary Judgment In Favor Of Patent Defendant Reversed By Federal Circuit
WASHINGTON, D.C. - Disputed issues of material fact should have precluded a Florida federal judge from granting Ericsson Inc. a summary judgment that it does not infringe two patents relating to bandwidth allocation, a divided Federal Circuit U.S. Court of Appeals ruled Jan. 17 (Wi-LAN USA Inc. v. Ericsson Inc., No. 15-1766, -1794, Fed. Cir.; 2017 U.S. App. LEXIS 769).
Delaware Federal Judge: Bloomberg Entitled To Prevail In Patent Case
WILMINGTON, Del. - Allegations that Bloomberg L.P. and Bloomberg Finance L.P. (Bloomberg, collectively) infringed a patented method for providing subscribers with real-time financial market information were rejected Jan. 19 by a Delaware federal judge in response to a defense motion for summary judgment (Quest Licensing Corporation v. Bloomberg L.P. and Bloomberg Finance L.P., No. 14-561, D. Del.; 2017 U.S. Dist. LEXIS 7200).
Federal Magistrate Judge Largely Rules Against Google In Chrome Patent Case
MARSHALL, Texas - Efforts by patent infringement defendant Google Inc. to bar an expert witness from calculating reasonable royalty damages based upon the number of users who access Google Chrome in a seven-day period were unsuccessful on Jan. 9, when a Texas federal magistrate judge found that the methodology "appears sound" (Alfonso Cioffi, et al. v. Google Inc., No. 13-103, E.D. Texas; 2017 U.S. Dist. LEXIS 2614).
Federal Circuit Upholds Stipulations Of Patent Invalidity, Noninfringement
WASHINGTON, D.C. - A Delaware federal judge did not err in construing "seal," "prevent" and other phrases of four patents relating to vehicular tilt control apparatuses, the Federal Circuit U.S. Court of Appeals ruled Jan. 9 (Cloud Farm Associates LP v. Volkswagen Group of America and ZF Sachs AG, No. 16-1448, Fed. Cir.; 2017 U.S. App. LEXIS 325).
Federal Circuit Says Patent Challenger Lacks Standing To Appeal
WASHINGTON, D.C. - An appellant seeking to challenge a final written decision by the Patent Trial and Appeal Board that confirmed the validity of a conjugated antibody patent was turned away on Jan. 9 by the Federal Circuit U.S. Court of Appeals (Phigenix Inc. v. ImmunoGen Inc., No. 16-1544, Fed. Cir.; 2017 U.S. App. LEXIS 323).
Federal Circuit Affirms: Electronic Trading Method Is Patent Eligible
WASHINGTON, D.C. - The Federal Circuit U.S. Court of Appeals on Jan. 18 upheld findings by an Illinois federal judge that two patents directed to a method of electronic trading do not claim ineligible subject matter under 35 U.S. Code Section 101 (Trading Technologies International Inc. v. CQG Inc., et al., No. 16-1616, Fed. Cir.; 2017 U.S. App. LEXIS 834).
Patent Board Denies Intel Request For Inter Partes Review
ALEXANDRIA, Va. - A petition for inter partes review (IPR) of a patented method for reducing power consumption in integrated circuits was denied Jan. 10 by the Patent Trial and Appeal Board (Intel Corp. v. Future Link Systems LLC, No. IPR2016-01400, PTAB).
Patent Board Grants Mylan Request For Review Of Cancer Treatment Patent
ALEXANDRIA, Va. - The Patent Trial and Appeal Board on Jan. 10 granted a petition for inter partes review (IPR) of a patented cancer treatment method but denied a petitioner's request for joinder with a similar IPR (Mylan Pharmaceuticals Inc. v. Janssen Oncology Inc., No. IPR2016-01332, PTAB).
Patent Board Rejects Volkswagen Challenge To Audio Integration Patent
ALEXANDRIA, Va. - Allegations by Volkswagen of America Inc. that a patented audio device integration system would have been obvious to one of ordinary skill in the art were rejected Jan. 13 by the Patent Trial and Appeal Board (Volkswagen of America Inc. v. Blitzsafe Texas LLC, No. IPR2016-01448, PTAB).
Amerigen Seeks Patent Board Review Of Shire ADHD Drug
ALEXANDRIA, Va. - A patented pharmaceutical composition containing three different beads of amphetamine salts is unpatentable pursuant to 35 U.S. Code Sections 102(b) and 103, Amerigen Pharmaceuticals Limited argues in a Jan. 13 petition for inter partes review (IPR) (Amerigen Pharmaceuticals Limited v. Shire LLC, No. IPR2017-00665, PTAB).
Inter Partes Review Request Filed By Facebook, Instagram
ALEXANDRIA, Va. - Just three months after seeking inter partes review (IPR) by the Patent Trial and Appeal Board of a media delivery patent, Facebook Inc. and Instagram LLC on Jan. 15 filed a second petition for IPR of the same patent (Facebook Inc., et al. v. Skky LLC, No. IPR2017-00688, PTAB).
Supreme Court Hears Arguments In Dispute Over Disparaging Trademarks
WASHINGTON, D.C. - An attorney representing the U.S. Patent and Trademark Office (PTO) defended the constitutionality of the Lanham Act's disparagement provision on Jan. 18 in oral arguments before the U.S. Supreme Court (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.).
9th Circuit: Dismissal Of Karaoke Company's Trademark Case Was Proper
SAN FRANCISCO - Allegations by a karaoke music producer that a defendant's practice of "media-shifting" karaoke tracks from physical compact discs to digital files violates the Lanham Act were correctly dismissed by an Arizona federal judge, the Ninth Circuit U.S. Court of Appeals ruled Jan. 18 (Slep-Tone Entertainment Corporation v. Wired for Sound Karaoke and DJ Services LLC, No. 14-17229, 9th Cir.).
New York Federal Judge Denies Dismissal Of Canon's Trademark Claims
CENTRAL ISLIP, N.Y. - A defendant's motion to dismiss, pursuant to Federal Rule of Civil Procedure 12(b)(6), allegations that he infringed the "Canon" trademark was rejected Jan. 11 by a New York federal judge (Canon-U.S.A. Inc. v. F&E Trading, LLC, et al., No. 15-6015, E.D. N.Y.; 2017 U.S. Dist. LEXIS 4223).
Texas Federal Judge Denies Summary Judgment On Dilution Claim
HOUSTON - Although granting Viacom International Inc. summary judgment on allegations that a proposed "The Krusty Krab" restaurant would represent trademark infringement, a Texas federal judge on Jan. 11 denied Viacom's request as it relates to trademark dilution (Viacom International Inc. v. IJR Capital Investments LLC, No. 16-257, S.D. Texas.; 2017 U.S. Dist. LEXIS 3948).
Indiana Federal Judge Dismisses Amended Copyright Complaint
FORT WAYNE, Ind. - Allegations that a school copied a copyrighted educational model without consent were dismissed Jan. 6 by an Indiana federal judge pursuant to Federal Rule of Civil Procedure 12(b)(6) (Angela Brooks-Ngwenya v. National Heritage Academies, No. 16-183, N.D. Ind.; 2017 U.S. Dist. LEXIS 2071).
7th Circuit Rejects Copyright Claims Against Amazon.com
CHICAGO - In what it deemed a "very unusual case," the Seventh Circuit U.S. Court of Appeals on Jan. 6 affirmed dismissal of a dispute in which Amazon.com Inc. was accused of permitting third parties to advertise for sale six counterfeit books in violation of the Copyright Act (Reginald Hart v. Amazon.com Inc., No. 16-2793, 7th Cir.; 2017 U.S. App. LEXIS 256).
5th Circuit Affirms: State Law Claim Preempted By Copyright Act
NEW ORLEANS - In a Jan. 11 ruling, the Fifth Circuit U.S. Court of Appeals upheld a Texas federal judge's determination that a state law claim of unfair competition by misappropriation - levied in connection with allegations of stolen instructional drawings - is preempted by the Copyright Act (Ultraflo Corporation v. Pelican Worldwide, et al., No. 15-20084, 5th Cir.; 2017 U.S. App. LEXIS 509).
Porn Firm Tells 6th Circuit Downloader Failed To Show Prejudice In Dismissal
CINCINNATI - In a Jan. 13 appellee brief filed in the Sixth Circuit U.S. Court of Appeals, an adult entertainment company says that its abandoned infringement claim against an accused file sharer was properly dismissed with prejudice because of the defendant's dilatory discovery conduct and to serve judicial economy (Malibu Media LLC v. David Ricupero, No. 16-3628, 6th Cir.).
Majority: No Coverage For Legal Expenses Incurred Without Insurer's Approval
ATLANTA - A majority of the 11th Circuit U.S. Court of Appeals ruled Jan. 9 that an insurer has no duty to pay an insured's $405,989 in pre-tender legal expenses incurred in defending a copyright infringement lawsuit, affirming a lower court's finding that Florida's claims administration statute (CAS) does not control because the insurer relied on an exclusion and not a coverage defense in its refusal to pay the expenses (EmbroidMe.com, Inc. v. Travelers Property Casualty Company of America, No. 14-10616, 11th Cir.; 2017 U.S. App. LEXIS 368).
Home Design Company Seeks High Court Review Of Intervest In Copyright Suit
WASHINGTON, D.C. - In a dispute over an architectural floor plan, a home design company asks the U.S. Supreme Court in a Dec. 21 petition for certiorari to consider whether Intervest Construction Inc. v. Canterbury Estate Homes Inc. (554 F.3d 914, 919 [11th Cir. 2008]) should be overruled in light of conflicting precedent from other appellate courts, which hold that architectural works are entitled to the same protection as other copyrightable, original works under the Federal Copyright Act (Home Design Services Inc. v. Turner Heritage Homes Inc., et al., No. 16-858, U.S. Sup.).
9th Circuit Hears Arguments On Copyright Infringement Against Urban Outfitters
SAN FRANCISCO - The Ninth Circuit U.S. Court of Appeals heard oral arguments on Jan. 13 in a copyright infringement lawsuit over whether a trial judge erred in finding that Urban Outfitters Inc. and a department store infringed a copyrighted fabric design and whether a jury's finding of willfulness was supported by substantial evidence (Unicolors Inc. v. Urban Outfitters Inc., et al., No. 15-55507, 9th Cir.).
Alumni Association Asks High Court To Review Trademark Case Over Use Of Name
WASHINGTON, D.C. - A New Jersey technology alumni association on Dec. 9 petitioned the U.S. Supreme Court to answer whether the First and 14th Amendments to the U.S. Constitution protect it from claims of trademark infringement in connection with its use of the words "Alumni Association," in conjunction with the name of a state university (Alumni Association of New Jersey Institute of Technology v. New Jersey Institute of Technology, No. 16-798, U.S. Sup.).
PTO Says Lanham Act Declines To Link Government With Disparaging Marks
WASHINGTON, D.C. - Michelle K. Lee, under secretary of commerce for intellectual property and director of the U.S. Patent and Trademark Office, argues in her Jan. 9 reply brief to the U.S. Supreme Court that 15 U.S. Code Section 1052(a) does not restrict speech but rather "declines to assist, and declines to associate the federal government with, marks containing disparaging terms" (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.).
Patent Owner Asks Court To Answer If Inter Partes Review Is Unconstitutional
WASHINGTON, D.C. - The U.S. Supreme Court has been asked in a Nov. 23 petition filed by a patent owner to decide whether inter partes review (IPR) violates the U.S. Constitution by "extinguishing private property rights through a non-Article III forum without a jury" (Oil States Energy Services LLC v. Greene's Energy Group LLC, No. 16-712, U.S. Sup.).
Patent Owner Asks High Court To Review Federal Circuit Authority Over PTO
WASHINGTON, D.C. - A patent owner argues in its Jan. 10 reply brief in further support that the U.S. Supreme Court should determine whether the Federal Circuit U.S. Court of Appeals can "impute a patent law claim into a complaint that does not explicitly contain a claim arising under patent law in order to exert appellate jurisdiction" (Big Baboon Inc. v. Michelle K. Lee, director, U.S. Patent and Trademark Office, et al., No. 16-496, U.S. Sup.).
Apple Tells High Court Not To Remand ITunes Patent Challenge Under Cuozzo
WASHINGTON, D.C. - Apple Inc. argues in a Jan. 9 supplemental brief that the U.S. Supreme Court should not remand a case asking when a petition fails to give "sufficient notice" and what constitutes the Patent Trial and Appeal Board (PTAB) acting outside its limits to permit judicial review because there are questions left unanswered by Cuozzo Speed Technologies LLC v. Lee (136 S. Ct. 2131 ) (SightSound Technologies LLC v. Apple Inc., No. 16-483, U.S. Sup.).
Patent Owner Seeks High Court Review Of Finding Under Step 2 Of Alice
WASHINGTON, D.C. - A patent owner petitioned the U.S. Supreme Court on Jan. 5 to answer if patent claims can be invalidated under 35 U.S. Code Section 101 by finding under step two of Alice Corp. Pty. Ltd. v. CLS Bank Int'l. (134 S. Ct. 2347 ) that the claims "involve the conventional implementation of an abstract concept" based upon evidence "that the ordered combinations of hardware in the claims are unconventional apparatuses with novel applications" (IPLearn-Focus LLC v. Microsoft Corp., No. 16-859, U.S. Sup.).
Federal Circuit Will Rehear Patent Dispute Between Wi-Fi One, Broadcom
WASHINGTON, D.C. - The continued viability of Achates Reference Publishing Inc. v. Apple Inc. (803 F.3d 652 [Fed. Cir. 2015]) will soon be debated in light of a Jan. 4 decision by the Federal Circuit U.S. Court of Appeals to rehear, en banc, a dispute involving a data transmission patent (Wi-Fi One LLC v. Broadcom Corp., Nos. 15-1944, -1945, -1946, Fed. Cir.).
Chief Justice Issues Post-Argument Recusal In Patent Case
WASHINGTON, D.C. - In a letter sent to counsel on Jan. 4, Chief Justice G. John Roberts Jr. revealed that despite his December participation in oral arguments, he will take no part in the U.S. Supreme Court's upcoming decision in the patent dispute between Life Technologies Corp. and Promega Corp. (Life Technologies Corp. v. Promega Corp., No. 14-1538, U.S. Sup.).
Federal Circuit: Board Erred In Rejecting Credit Card Security Patents
WASHINGTON, D.C. - A decision by the Patent Trial and Appeal Board that rendered two patents relating to credit card transaction security invalid under 35 U.S. Code Sections 102 and 103 was vacated and remanded Dec. 22 by the Federal Circuit U.S. Court of Appeals (John D'Agostino v. Mastercard International Inc., Nos. 2016-1592, -1593, Fed. Cir.; 2016 U.S. App. LEXIS 23025).
Federal Circuit Upholds Rejection, Says Stent Patent Is Obvious
WASHINGTON, D.C. - Finding no error in a ruling by the Patent Trial and Appeal Board that invalidated, on obviousness grounds, 22 claims of a patented method of maintaining drugs delivered via a drug-eluting stent, a divided Federal Circuit U.S. Court of Appeals on Jan. 3 affirmed (In re: Ethicon Inc., No. 15-1696, Fed. Cir.; 2017 U.S. App. LEXIS 4).
Federal Circuit: Inherent Anticipation Ruling In Patent Case Was Erroneous
WASHINGTON, D.C. - A Wisconsin federal judge's finding that two patents were inherently anticipated by prior art was vacated Dec. 15 by the Federal Circuit U.S. Court of Appeals on the basis that genuine disputes of material fact should have precluded summary judgment (U.S. Water Services Inc., et al. v. Novozymes A/S, et al., Nos. 15-1950, -1967, Fed. Cir.; 2016 U.S. App. LEXIS 22244).
Federal Circuit Reverses Indefiniteness Holding, Judgment In Patent Case
WASHINGTON, D.C. - An Illinois federal judge erroneously granted a defendant summary judgment that myriad claims of a patented method for using a graphical indicator to encode information are invalid as indefinite, the Federal Circuit U.S. Court of Appeals ruled Jan. 5 (Sonix Technology Co. Ltd. v. Publications International Ltd., et al., No. 16-1449, Fed. Cir.).
Delaware Federal Judge: Harm Not Irreparable In Pharmaceutical Patent Case
WILMINGTON, Del. - A request by Bayer Pharma AG, Bayer Intellectual Property GmbH and Bayer HealthCare Pharmaceuticals Inc. (Bayer, collectively) for a preliminary injunction barring a competitor from selling a generic oral contraceptive was denied Dec. 28 by a Delaware federal judge, despite a July final judgment that the generic drug would infringe (Bayer Pharma AG, et al. v. Watson Laboratories Inc., No. 12-1726, D. Del.; 2016 U.S. Dist. LEXIS 179103).
Patent Injunction, Default Judgment Upheld By Federal Circuit
WASHINGTON, D.C. - A permanent injunction barring an infringement and unfair competition defendant from using a washer mold as well as various images of a plaintiff's patented products was not overly broad, the Federal Circuit U.S. Court of Appeals concluded Dec. 15 (United Construction Products Inc. v. Tile Tech Inc., No. 16-1392, Fed. Cir.; 2016 U.S. App. LEXIS 22248).
Nokia, Apple To Square Off In New Texas Federal Patent Litigation
MARSHALL, Texas - In a Dec. 21 complaint, Nokia Technologies Oy and Alcatel-Lucent USA Inc. (Nokia, collectively) accuse Apple Inc. of infringing eight patents relating to the International Telecommunication Union's (ITU) H.264 Advanced Video Coding standard, following two years of failed negotiations between the parties (Nokia Technologies Oy and Alcatel-Lucent USA Inc. v. Apple Inc., No. 16-1440, E.D. Texas).
Patent Board Grants Review In New Limelight, Akamai Dispute
ALEXANDRIA, Va. - In a ruling issued Dec. 30, the Patent Trial and Appeal Board announced it will review the patentability of nine claims of a patented method for delivering digital content (Limelight Networks Inc. v. Akamai Technologies Inc., No. IPR2016-01631, PTAB).
Patent Board Reverses Rejection, Prior Art Relied On By Examiner
ALEXANDRIA, Va. - Findings by a patent examiner that a claimed method of operating a steam generator would have been obvious to one of ordinary skill in the art were reversed Dec. 21 by the Patent Trial and Appeal Board (Ex parte John H. Chiu and George D. Mylchreest, No. 2015-002233, PTAB).
Microsoft Petition For Inter Partes Review Of Coding Patent Granted
ALEXANDRIA, Va. - A patented method and apparatus for entropy coding and the application of error-resilient coding to image compression likely contain claims that do not pass muster under 35 U.S. Code Section 103, the Patent Trial and Appeal Board ruled Dec. 16 (Microsoft Corp. v. FastVDO LLC, No. IPR2016-01179, PTAB).
Patent Board Consolidates Apple, Samsung Petitions For Inter Partes Review
ALEXANDRIA, Va. - Efforts by Samsung Electronics Co. Ltd. to invalidate a wireless communications patent raise identical issues to those raised by Apple Inc. and Microsoft Corp. in a joint June 2016 petition for inter partes review (IPR), the Patent Trial and Appeal Board ruled Dec. 21 (Samsung Electronics Co. Ltd. v. Evolved Wireless LLC, No. IPR2016-01310, PTAB).
4th Circuit Upholds Enhanced Award For DirecTV In Trademark Case
RICHMOND, Va. - A North Carolina federal judge did not err in rejecting a jury award of $760,000 in favor of a marketing company that had accused DirecTV LLC of violating the North Carolina Unfair and Deceptive Trade Practices Act (UDTPA), the Fourth Circuit U.S. Court of Appeals ruled Dec. 29 (Exclaim Marketing LLC v. DirecTV LLC, No. 15-2399, 4th Cir.; 2016 U.S. App. LEXIS 23378).
Missouri Federal Judge Denies Dismissal Of Trademark Claim
ST. LOUIS - Although a defendant won dismissal Dec. 27 of allegations that it committed tortious interference with business expectancies, its motion was denied by a Missouri federal judge as it relates to trademark infringement (John Beal Inc. v. Roofpros Inc. and Web.com Group Inc., No. 16-1151, E.D. Mo.; 2016 U.S. Dist. LEXIS 178513).
Federal Circuit Upholds Cancellation Of 'The Emerald City' Trademark
WASHINGTON, D.C. - Findings by the Trademark Trial and Appeal Board that a 2009 agreement regarding an as-then unregistered trademark constituted an assignment of the intent-to-use application in violation of Section 10 of the Lanham Act were proper, the Federal Circuit U.S. Court of Appeals ruled Dec. 13 (Emerald Cities Collaborative Inc. v. Sheri Jean Roese, No. 16-1703, Fed. Cir.; 2016 U.S. App. LEXIS 22073).
Former Franchisee Enjoined In Texas Trademark, Breach Of Contract Action
HOUSTON - A former franchisee accused of breach of contract was ordered by a Texas federal judge on Dec. 23 to refrain from conducting any business in any manner "that gives the general public the impression" that the franchise agreement is still in force or that the franchisee is "in any way" associated with the franchisor (Fantastic Sams Franchise Corporation v. Gerald Mosley, No. 16-2318, S.D. Texas; 2016 U.S. Dist. LEXIS 177941).
Mississippi Federal Judge Allows Git-R-Done Trademark Case To Proceed
JACKSON, Miss. - A request for summary judgment by a defendant accused of infringing the "Git-R-Done" tagline of the fictional character "Larry the Cable Guy" when it named its convenience store "Giterdone" was denied Dec. 28 by a Mississippi federal judge (Git-R-Done Productions Inc. v. Giterdone C Store LLC, No. 15-386, S.D. Miss.; 2016 U.S. Dist. LEXIS 179201).
New York Federal Judge: New Infringement Claims Barred By Settlement
NEW YORK - A longstanding dispute over the trademarked phrase "Get Lucky" was dismissed Dec. 22 by a New York federal judge, on grounds that the latest claims by plaintiff Marcel Fashions Group Inc. are barred by the terms of a 2003 settlement (Marcel Fashions Group Inc. v. Lucky Brand Dungarees Inc., No. 11-5523, S.D. N.Y.; 2016 U.S. Dist. LEXIS 177483).
New Jersey Federal Judge: Disgorgement Of Profits In Label Dispute Not Justified
TRENTON, N.J. - A plaintiff's request for disgorged profits in connection with allegedly false and misleading juice labels was rejected Dec. 23 by a New Jersey federal judge, acting in response to a defendant's motion for summary judgment (MB Imports Inc. v. T&M Imports LLC, et al., No. 10-3445, D. N.J.; 2016 U.S. Dist. LEXIS 178530).
Virginia Federal Judge: Third-Party, Online Sales Do Not Confer Jurisdiction
ALEXANDRIA, Va. - A defendant's distribution of allegedly infringing smart phone and tablet applications through third-party, online retailers is an insufficient basis for the exercise of personal jurisdiction in a trademark case, a Virginia federal judge ruled Dec. 22 (Michael Zaletel v. Prisma Labs Inc., No. 16-1230, E.D. Va.; 2016 U.S. Dist. LEXIS 177730).
Little Caesar Enterprises Sues Restaurant Corporation Alleging Breach Of Contract
DETROIT - Little Caesar Enterprises Inc. on Dec. 6 filed a breach of contract, trademark infringement, unfair competition and trade dress infringement lawsuit against a New York restaurant corporation in Michigan federal court, alleging that the defendants failed to adhere to the franchisor's standards and repeatedly failed to provide financial records (Little Caesar Enterprises Inc. v. Creative Restaurant Inc., et al., No. 2:16cv14263, E.D. Mich.).
Wal-Mart, Amazon Targeted By Rap Group For Trademark Violations
NEW YORK - Asserting damages in excess of $50 million, the iconic rap group Run-DMC filed suit Dec. 29 in New York federal court against retailers Wal-Mart and Amazon.com Inc. over clothing and accessories that directly infringe the "RUN-DMC" trademark (RUN-DMC Brand LLC v. Amazon.com Inc., et al., No. 16-10011, S.D. N.Y.).
New York Appeals Court: No Common-Law Public Performance Right
ALBANY, N.Y. - A divided New York Court of Appeals on Dec. 20 answered "no" to the question of whether a right of public performance exists for creators of pre-1972 sound recordings under New York common law (Flo & Eddie Inc. v. Sirius XM Radio Inc., No. 172, N.Y. App.).
New York Federal Judge Dismisses Copyright Dispute Over Muppets Song
NEW YORK - An Italian music publisher's claim that the "Mah Na Mah Na" song popularized by the Muppets by is an unauthorized derivative of a 1966 classical composition were dismissed Dec. 29 by a New York federal judge on grounds that the publisher lacks standing to sue for copyright infringement (Creazioni Artistiche Musicali S.r.l. v. Carlin America Inc., et al., No. 14-9270, S.D. N.Y.; 2016 U.S. Dist. LEXIS 180431).
Illinois Federal Judge Partly Grants Dismissal In Copyright Dispute
CHICAGO - An individual copyright defendant won dismissal of allegations on Dec. 20 by an Illinois federal judge, who cited a lack of evidence that the individual used a corporate defendant "as an instrument" to carry out "willful and deliberate" infringement (Live Face On Web LLC v. KAM Development LLC, et al., No. 16-8604, N.D. Ill.; 2016 U.S. Dist. LEXIS 175619).
Florida Federal Judge Won't Dismiss Copyright Lawsuit By DISH Network
TAMPA, Fla. - Allegations that the owners and operators of the Arabic television service "UlaiTV" committed copyright infringement will proceed in light of a Jan. 3 ruling by a Florida federal judge (DISH Network LLC v. Gaby Fraifer, et al., No. 16-2549, M.D. Fla.; 2017 U.S. Dist. LEXIS 380).
2nd Circuit: Confusion Unlikely In Copyright, Trademark Dispute
NEW YORK - A New York federal judge did not err in granting a copyright and trademark defendant summary judgment in a dispute with Louis Vuitton (LV) Malletier, S.A., the Second Circuit U.S. Court of Appeals ruled Dec. 22 (Louis Vuitton Malletier S.A. v. My Other Bag Inc., No. 16-241, 2nd Cir.; 2016 U.S. App. LEXIS 23014).
9th Circuit Remands Relief In Copyright Case, Citing Lack Of Factual Findings
SAN FRANCISCO - An Oregon federal judge's preliminary injunction was reversed and remanded Dec. 12 by the Ninth Circuit U.S. Court of Appeals, on grounds that the relief - first granted orally and later in writing - failed to include sufficient findings of fact or conclusions of law (Omnigen Research LLC and Prince Agri Products Inc. v. Yongquiang Wang, et al., No. 16-35471, 9th Cir.; 2016 U.S. App. LEXIS 22024).
Judge Declines To Stay Injunction On Video-Streaming Service Pending Appeal
LOS ANGELES - A California federal judge on Dec. 29 declined to stay pending appeal a preliminary injunction issued against a video on demand (VOD) provider, finding that the balance of hardships weighed in favor of the plaintiff movie studios that have demonstrated a likelihood of success on their copyright infringement claims against the VOD firm (Disney Enterprises Inc., et al. v. VidAngel Inc., No. 2:16-cv-04109, C.D. Calif.).
Texas Federal Judge: Amending Copyright Complaint Would Be Futile
DALLAS - A request by a copyright infringement plaintiff for leave to amend its pleading to add an individual defendant's corporate identity was rejected Dec. 16 by a Texas federal judge, who deemed the proposed amendment futile pursuant to 17 U.S. Code Section 507(b) (RBH Energy LLC v. Stuart L. Brown, No. 16-830, N.D. Texas; 2016 U.S. Dist. LEXIS 174072).
Band Member Argues That Disparagement Clause Is Contrary To 1st Amendment
WASHINGTON, D.C. - A member of an Asian-American rock band argues in his Dec. 9 response brief to the U.S. Supreme Court that the Lanham Act's disparagement clause is contrary to the First Amendment and, alternatively, that the clause does not bar the registration of his trademark and is unconstitutionally vague (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.).
U.S. Supreme Court Asked To Overturn Trademark Ruling In Favor Of Oprah Winfrey
WASHINGTON, D.C. - In a trademark infringement suit against Oprah Winfrey, an entrepreneur and her communications company in a Dec. 15 petition ask the U.S. Supreme Court to answer whether an appeals court "erred in dissecting the literal element of a composite mark, the greatest commercial impression, thereby requiring identical use rather than a colorable imitation of that mark for determining trademark infringement, thus circumventing a likelihood of confusion analysis in violation of the Lanham Act and the anti-dissection rule" (Simone Kelly-Brown and Own Your Power Communications Inc. v. Oprah Winfrey, et al., No. 16-803, U.S. Sup.).
Nonprofit Asks High Court To Review Restriction Of 'Common Sense' Presumption
WASHINGTON, D.C. - A nonprofit association for generic drug product manufacturers and distributors argues in a Dec. 9 brief that the U.S. Supreme Court should review whether the Federal Circuit U.S. Court of Appeals erred in light of KSR International Co. v. Teleflex Inc. (550 U.S. 398, 415 ) in restricting the Patent Trial and Appeal Board's ability to rely on the common sense and common knowledge of skilled artisans to establish the obviousness of patent claims (Google Inc. and Motorola Mobility LLC v. Arendi S.A.R.L., et al., No. 16-626, U.S. Sup.).
Tech Company Tells High Court To Review ITunes Patent Challenge Under Cuozzo
WASHINGTON, D.C. - A tech company argues in a Dec. 28 reply brief that the U.S. Supreme Court should decide when a petition fails to give "sufficient notice" and what constitutes the Patent Trial and Appeal Board (PTAB) acting outside its limits to permit judicial review because there are questions left unanswered by Cuozzo Speed Technologies LLC v. Lee (136 S. Ct. 2131 ) (SightSound Technologies LLC v. Apple Inc., No. 16-483, U.S. Sup.).
Johnson & Johnson Unit Says High Court Should Review Expert Misconduct In Patent Dispute
WASHINGTON, D.C. - Johnson & Johnson Vision Care Inc. (JJVC) argues in a Dec. 27 reply brief that the U.S. Supreme Court should consider whether the Federal Circuit U.S. Court of Appeals erred in granting Rembrandt Vision Technologies LP a new trial based on an expert's false testimony over alleged infringement of its contact lens patent (Johnson & Johnson Vision Care Inc. v. Rembrandt Vision Technologies LP, No. 16-489, U.S. Sup.).
Patent Owner Says Supreme Court Must Review Institution Of IPR In Patent Suit
WASHINGTON, D.C. - A patent owner argues in a Dec. 21 reply brief that the U.S. Supreme Court should review 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.).
Record Labels Ask High Court To Hear Dispute On DMCA Immunity For Pre-1972 Works
WASHINGTON, D.C. - In a Dec. 14 petition for certiorari, a group of record labels ask the U.S. Supreme Court to decide whether the safe harbor protections from copyright infringement liability that the Digital Millennium Copyright Act (DMCA) provides for internet service providers apply to sound recordings from before 1972, which are governed by state law, rather than federal copyright law (Capitol Records LLC, et al. v. Vimeo LLC, et al., No. 16-771, U.S. Sup.).
Accused Downloader Appeals Dismissal Of Claims Against Him Without Prejudice
CINCINNATI - A federal magistrate judge erred in granting voluntary dismissal of an adult movie studio's copyright infringement claims without prejudice, an Ohio man argues in a Dec. 21 brief in the Sixth Circuit U.S. Court of Appeals, contending that the disposition deprived him of the ability to seek a fees award as prevailing party for the studio's baseless lawsuit (Malibu Media LLC v. David Ricupero, No. 16-3628, 6th Cir.).
U.S. Supreme Court: Article Of Manufacture May Be Single Component Of Product
WASHINGTON, D.C. - A May 2015 ruling by the Federal Circuit U.S. Court of Appeals that jurors deciding damages in design patent infringement cases need not disregard unprotected elements when arriving at a total damage award was reversed and remanded Dec. 6 by the U.S. Supreme Court, in a win for Samsung Electronics Co. (Samsung Electronics Co. Ltd., et al. v. Apple Inc., No. 15-777, U.S. Sup.).
U.S. Supreme Court Hears Patent Dispute Over Multicomponent Inventions
WASHINGTON, D.C. - A jury award of $52 million in lost profits was premised on an erroneous instruction that worldwide sales can be considered even when the product in question only contains a single "staple article" manufactured domestically, an attorney for patent infringement defendant Life Technologies Corp. told the U.S. Supreme Court on Dec. 6 (Life Technologies Corp. v. Promega Corp., No. 14-1538, U.S. Sup.).
Supreme Court To Hear Case On Patent Infringement Action Venue Statutes
WASHINGTON, D.C. - In a Dec. 14 order list, the U.S. Supreme Court granted certiorari to a patent infringement defendant to decide the standard for determining the proper venue for such infringement suits to be brought against a corporate entity (TC Heartland LLC d/b/a Heartland Food Products Group v. Kraft Foods Group Brands LLC, No. 16-341, U.S. Sup.).
Supreme Court Vacates Patent Judgment, Cites Samsung Ruling
WASHINGTON, D.C. - The U.S. Supreme Court on Dec. 12 remanded a dispute over the patented ornamental design of a lip and hinge plate for a dock leveler to the Federal Circuit U.S. Court of Appeals, in light of the Supreme Court's Dec. 6 ruling in Samsung Electronics Co. Ltd., et al. v. Apple Inc. (No. 15-777, U.S. Sup.) (Systems, Inc. v. Nordock, Inc., No. 15-978, U.S. Sup.).
California Federal Jury: Apple Infringed Valid Patents, Owes $7.3 Million
SAN FRANCISCO - A jury empaneled before U.S. Magistrate Judge Nathaniel M. Cousins of the Northern District of California sided squarely against Apple Inc. on Dec. 15, deeming the tech giant an infringer of two valid patents and awarding Core Wireless Licensing S.a.r.L. $7.3 million in reasonable royalty damages following a six-day trial (Core Wireless Licensing S.a.r.L. v. Apple Inc., No. 15-5008, N.D. Calif.).
Cisco's Ethernet Copyright, Patent Claims Defeated In California Federal Verdict
SAN JOSE, Calif. - Claims of copyright and patent infringement brought by Cisco Systems Inc. against a competitor in the Ethernet switch market were rejected in a California federal jury's verdict Dec. 14, with the jury deeming the material not copyright protectable as scenes a faire and finding that Cisco failed to establish any infringement of its asserted command interface patent (Cisco Systems Inc. v. Arista Networks Inc., No. 14-5344, N.D. Calif.).
Federal Circuit Partly Affirms, Vacates In Dispute Over Patented Power Chips
WASHINGTON, D.C. - Citing a Delaware federal judge's incorrect instruction to jurors regarding the law on inducement, the Federal Circuit U.S. Court of Appeals on Dec. 12 vacated a verdict of infringement of two patents (Power Integrations Inc. v. Fairchild Semiconductor International Inc., et al., Nos. 15-1329, -1388, Fed. Cir.; 2016 U.S. App. LEXIS 21975).
Federal Circuit Affirms: Patent Case Barred By Sovereign Immunity
WASHINGTON, D.C. - An inventor's efforts to sue the California Franchise Tax Board (FTB) and several FTB employees for patent infringement was properly rejected by a California federal judge pursuant to Federal Rule of Civil Procedure 12(b)(6), the Federal Circuit U.S. Court of Appeals concluded Dec. 9 (Leslie Ann Peralta v. California Franchise Tax Board, et al., No. 16-1820, Fed. Cir.; 2016 U.S. App. LEXIS 21897).
Federal Circuit Upholds Rulings By Patent Board In Favor Of Apple
WASHINGTON, D.C. - In a trio of decisions released Dec. 9, the Federal Circuit U.S. Court of Appeals agreed with the Patent Trial and Appeal Board (PTAB) that various claims of four patents directed to establishing secure communications between multiple network devices for video and audio data transmission are unpatentable (VirnetX Inc. v. Apple Inc., Nos. 15-1934, -1935, Fed. Cir.).
Federal Circuit Vacates, Remands Invalidation Of Spinal Fusion Patent
WASHINGTON, D.C. - The Patent Trial and Appeal Board (PTAB) erred in deeming various claims of a spinal infusion patent invalid because it "failed to articulate a reason why" a person having ordinary skill in the art (PHOSITA) would have been motivated to modify and combine various prior art references to obtain the invention taught by NuVasive Inc.'s patented system and method, the Federal Circuit U.S. Court of Appeals ruled Dec. 7 (In re: NuVasive Inc., No. 15-1670, Fed. Cir.; 2016 U.S. App. LEXIS 21748).
Sprint Loses Motions To Bar Damages Experts In Patent Suits Against Comcast, Time Warner
KANSAS CITY, Kan. - A Kansas federal judge on Dec. 5 denied Sprint Communications Co. L.P. its attempts to exclude damages and patent experts in two consolidated patent infringement lawsuits filed against Comcast Cable Communications LLC and Time Warner Cable Inc. (TWC) (Sprint Communications Company LP v. Comcast Cable Communications LLC, et al., No. 11-2684 and Sprint Communications Company LP v. Time Warner Cable Inc., et al., No. 11-2686, D. Kan.; 2016 U.S. Dist. LEXIS 167849).
Patent Board: Apple Entitled To Review Of Compression Patent
ALEXANDRIA, Va. - Assertions by Apple Inc. that a device compression patent that has been frequently asserted in various federal lawsuits is invalid pursuant to 35 U.S. Code Section 103(a) were well received by the Patent Trial and Appeal Board, which instituted inter partes review (IPR) on Dec. 6 (Apple Inc. v. Parthenon United Memory Architecture LLC, No. IPR2016-01135, PTAB).
Patent Covering Rapid- Dissolve Films Won't Be Reviewed By Patent Board
ALEXANDRIA, Va. - Finding no likelihood that Dr. Reddy's Laboratories Inc. will prevail in showing that at least one claim of a patented rapid-dissolve film for orally administered active ingredients is invalid, the Patent Trial and Appeal Board on Dec. 5 denied inter partes review (IPR) (Dr. Reddy's Laboratories Inc. v. Monosol RX LLC, No. IPR2016-0111, PTAB).
Patent Board: Section 102(d) No Grounds For Instituting Inter Partes Review
ALEXANDRIA, Va. - A patent covering an apparatus for packing disposable objects, such as diapers, into a flexible tube will not be the subject of an upcoming inter partes review, the Patent Trial and Appeal Board revealed Dec. 12 (Munchkin Inc. v. International Refills Company Ltd., No. IPR2016-01154, PTAB).
Patent Board Grants Inter Partes Review Of LEGO Patent
ALEXANDRIA, Va. - Citing three pieces of prior art, Patent Trial and Appeal Board on Dec. 16 agreed to review the patentability of a manual controller for manipulating images or symbols on a visual display (Rubicon Communications LP v. LEGO A/S, No. IPR2016-01187, PTAB).
Patent Board Confirms Rejection Of Computer Method Patent Claims
ALEXANDRIA, Va. - A patent examiner did not err in deeming various claims of a patented method of generating a document guidance file unpatentable under 35 U.S. Code Section 103(a), the Patent Trial and Appeal Board ruled Dec. 15 (Ex parte Anil Kumar Padala, et al., No. 2016-000911, PTAB).
3rd Circuit Upholds Rejection Of Copyright Claims By Songwriter
PHILADELPHIA - A Pennsylvania federal judge did not err in granting pop singer Usher Terry Raymond (Usher) and myriad co-defendants summary judgment on allegations of copyright infringement nor in sanctioning the plaintiff's attorney more than $28,000 for communicating with an unrepresented defendant, the Third Circuit U.S. Court of Appeals ruled Dec. 8 (Daniel Marino v. Usher, et al., Nos. 15-2270, -2359, 3rd Cir.; 2016 U.S. App. LEXIS 21828).
Citing Sovereign Immunity, Michigan Federal Judge Partly Rejects Copyright Case
DETROIT - Allegations that a university violated the Copyright Act were rejected on summary judgment Dec. 5 by a Michigan federal judge on grounds of sovereign immunity; however, the judge in the same ruling agreed that two individuals will remain in the case as copyright infringement defendants (Alisa Wolf v. Oakland University, et al., No. 15-13560, E.D. Mich.; 2016 U.S. Dist. LEXIS 167268).
Video-Streaming Firm Enjoined From Editing Movies In Copyright Suit
LOS ANGELES - A video-on-demand (VOD) provider was hit with a preliminary injunction by a California federal judge Dec. 12 that prevents the firm from streaming, copying or editing works owned by the plaintiff movie studios, which accuse the company of infringement and circumventing their works' anti-piracy technology (Disney Enterprises Inc., et al. v. VidAngel Inc., No. 2:16-cv-04109, C.D. Calif.).
Federal Circuit Vacates, Remands Cancellation Of Service Marks By Board
WASHINGTON, D.C. - In a ruling issued Dec. 12, the Federal Circuit U.S. Court of Appeals indicated its disagreement with the "approach" taken by the Trademark Trial and Appeal Board when it required a service mark owner to demonstrate use of its marks in connection with personnel placement and recruitment services in addition to its software-related offerings (In re: JobDiva Inc., No. 15-1960, Fed. Cir.; 2016 U.S. App. LEXIS 21974).
6th Circuit: Trademark Claims By Disc Jockey Against Rapper, Others Fail
CINCINNATI - A Michigan federal judge did not err in rejecting allegations of trademark infringement levied in connection with a rapper's use of the stage name "Logic" because a plaintiff disc jockey operating as "DJ Logic" failed to demonstrate that consumers would likely be confused, the Sixth Circuit U.S. Court of Appeals ruled Dec. 13 (Lee Jason Kibler v. Robert Bryson Hall II, et al., No. 15-2516, 6th Cir.; 2016 U.S. App. LEXIS 22079).
Michigan Federal Judge Finds Jurisdiction Lacking In Lanham Act, Patent Case
DETROIT - A declaratory judgment patent action, later amended to include a claim of false advertising under the Lanham Act, was dismissed Dec. 8 by a Michigan federal judge on grounds of lacking personal jurisdiction (Precision Extraction Corp. v. Udoxi Scientific LLC, No. 16-11972, E.D. Mich.; 2016 U.S. Dist. LEXIS 169981).
D.C. Federal Judge Turns Away Jurisdictional Challenge In Trademark Case
WASHINGTON, D.C. - A common-law trademark dispute over the corporate identity and assets of Jericho Baptist Church Ministries Inc. will proceed in the U.S. District Court for the District of Columbia, a federal judge there announced Dec. 9 (Jericho Baptist Church Ministries Inc. v. Jericho Baptist Church Ministries Inc., et al., No. 16-647, D. D.C.).
Florida Federal Judge: Copyright, Trademark Case Fails To State A Claim
FORT MYERS, Fla. - Allegations by a pro se plaintiff that two individual defendants committed copyright and trademark infringement are insufficiently pleaded, a Florida federal judge ruled Dec. 6 (Daniel A. Bernath v. Don Shipley, et al., No. 16-40, M.D. Fla.; 2016 U.S. Dist. LEXIS 168253).
Biomedical Company Adds Federal Trade Secrets Claim To Novus Action
ANDERSON, S.C. - A South Carolina biomedical company on Nov. 29 added a Defend Trade Secrets Act (DTSA) violation claim against Novus Scientific companies to a federal court complaint alleging that Novus breached an agreement by making surgical mesh for purposes other than hernia repair and by not filing patent applications under the biomedical company's name (Poly-Med Inc. v. Novus Scientific Pte. Ltd., et al., No. 8:15-cv-01964-JMC, D. S.C.).
Health Care Company Opposes High Court Decision On Institution Of IPR In Patent Suit
WASHINGTON, D.C. - A global health care products company and the U.S. Patent and Trademark Office (PTO) director filed opposition briefs on Dec. 7 arguing against the U.S. Supreme Court granting review on whether the Leahy-Smith America Invents Act (AIA) permits the Patent Trial and Appeal Board (PTAB) instead of the 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.).