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LexisNexis® Mealey's™ Intellectual Property Legal News
Headline Intellectual Property Legal News from LexisNexis®
Federal Circuit: Claim Construction, Transfer Of Patent Case Were Proper
WASHINGTON, D.C. - A New Jersey federal judge's construction of a dispute claim term in a patent infringement case was upheld Nov. 17 by the Federal Circuit U.S. Court of Appeals, which also affirmed an Ohio federal judge's decision to transfer the litigation (Roxane Laboratories Inc. v. Camber Pharmaceuticals Inc., et. al., No. 16-1028, Fed. Cir.).
Illinois Federal Magistrate Judge: Defendant Entitled To Judgment Of Patent Invalidity
CHICAGO - Allegations of patent infringement were rejected Nov. 15 by an Illinois federal magistrate judge, who instead found that an interactive mailbox facility system patent claims ineligible subject matter under 35 U.S. Code Section 101 (Visual Interactive Phone Concepts Inc. v. United States Cellular Corporation, No. 11-5289, N.D. Ill.; 2016 U.S. Dist. LEXIS 158093).
Federal Magistrate Judge Will Allow Amended Patent Invalidity Contentions
SAN FRANCISCO - A defendant on Nov. 14 won the right to amend its patent invalidity contentions with more specificity, when a California federal magistrate judge agreed that the proposed amendments would not be futile (24/7 Customer Inc. v. LivePerson Inc., No. 15-2897, N.D. Calif.; 2016 U.S. Dist. LEXIS 157271).
Federal Circuit Affirms Patent Obviousness Holding By Board
WASHINGTON, D.C. - The Patent Trial and Appeal Board did not err in concluding that it would have been obvious for a person of ordinary skill in the art to store information and data in separate memories when maintaining the information during a loss in power, the Federal Circuit U.S. Court of Appeals ruled Nov. 15 in a dispute over patented radio frequency identification (RFID) tags (Intermec Technologies Corp., et al. v. Alien Technology LLC, No. 15-1808, Fed. Cir.).
Federal Circuit Upholds Patent Board Ruling In Favor Of Google
WASHINGTON, D.C. - Various asserted claims of a patent directed to a method of prioritizing search results based upon geographic location of a mobile device were properly deemed invalid as obvious, the Federal Circuit U.S. Court of Appeals concluded Nov. 15 (Unwired Planet LLC v. Google Inc., Nos. 15-1810, -1811, Fed. Cir.).
Federal Judge Deems Patent Valid, Infringed By Proposed Generic
WILMINGTON, Del. - Although finding one asserted patent invalid as obvious, a Delaware federal judge on Nov. 15 found that a related patent covering sublingually administered buphrenorphine is both valid and infringed by Actavis Elizabeth LLC (Orexo AB, et al. v. Actavis Elizabeth LLC, No. 14-829, D. Del.; 2016 U.S. Dist. LEXIS 157683).
Federal Circuit Affirms Compelled Assignment Of Inventor's Patents
WASHINGTON, D.C. - A California federal magistrate judge did not err in appointing a receiver to satisfy a judgment awarding attorney fees and costs in an underlying patent dispute, the Federal Circuit U.S. Court of Appeals ruled Nov. 9 (Dr. Aleksandr L. Yufa v. TSI Inc., No. 16-1784, Fed. Cir.; 2016 U.S. App. LEXIS 20189).
Storage System Lands Walt Disney In Court For Patent Infringement
MARSHALL, Texas - In a complaint filed Nov. 11 in a federal court in Texas, a patent owner accuses The Walt Disney Co. of infringement in connection with the "Disney Movies Anywhere" system and service (Rothschild Broadcast Distribution Systems LLC v. The Walt Disney Company, No. 16-1266, E.D. Texas).
Department Of Justice Wins Review Of Security Alarm System Patent
ALEXANDRIA, Va. - The Patent Trial and Appeal Board on Nov. 15 granted a petition for inter partes review (IPR) by the federal government, deeming the U.S. Department of Justice likely to prevail on its position that several claims of a security alarm system patent are invalid (Department of Justice v. Discovery Patents LLC, No. IPR2016-01041, PTAB).
Petition For Covered Business Method Review Granted By Patent Board
ALEXANDRIA, Va. - Petitioner SAP America Inc. successfully petitioned the Patent Trial and Appeal Board on Nov. 15 to undertake covered business method (CBM) review of a patent directed to network transactions (SAP America Inc. v. Lakshmi Arunachalam, No. CBM2016-00081, PTAB).
Magistrate Judge Bars Opinion On Company's Success In Trademark Infringement Suit
LOUISVILLE, Ky. - In a trademark infringement dispute, an internet marketing expert may not testify on whether a marketing consultant could determine the success of a startup company and whether the registration of a website domain name was "highly unusual and possibly unethical," a Kentucky federal magistrate judge ruled Nov. 4 (Louisville Marketing Inc. d/b/a Jewelry In Candles v. Jewelry Candles LLC v. P. Micah Buse, No. 15-00084, W.D. Ky.; 2016 U.S. Dist. LEXIS 153329).
Divided 6th Circuit Reverses Denial Of Leave To Amend Trademark Claim
CINCINNATI - A Michigan federal judge erred in dismissing allegations of infringement levied in connection with use of the "Bar's Leaks" trademark, a divided panel of the Sixth Circuit U.S. Court of Appeals ruled Nov. 2 (Bars Products Inc. v. Bar's Products International, No.14-1611, 6th Cir.; 2016 U.S. App. LEXIS 19991).
Jury Verdict Of No Likely Confusion Affirmed By 9th Circuit
SAN FRANCISCO - A California federal judge did not err in deciding various pretrial motions in favor of a defendant in a dispute over a red sailing ship trademark used in connection with Asian food products, the Ninth Circuit U.S. Court of Appeals ruled Nov. 4 (Anhing Corporation v. Viet Phu Inc., et al., No. 14-56664, 9th Cir.; 2016 U.S. App. LEXIS 19967).
German Glass Pipe Maker Sues Florida Tobacco Store
WEST PALM BEACH, Fla. - A German glass tobacco pipe maker on Nov. 4 sued a Florida tobacco shop in federal court in Florida, claiming that the shop sold counterfeit pipes (Sream Inc. v. Tobacco E. Cigs LLC, No. 0:16-cv-62624, S.D. Fla.).
Politicians Denied Motion To File Amicus Brief In Family Movie Act Suit
LOS ANGELES - Two former U.S. Congressmen saw their bid to participate in a lawsuit pertaining to the Family Movie Act of 2005 (FMA) as amici curiae denied by a California federal judge Nov. 10, with the judge finding their motion to be untimely because it was filed more than 30 days after the parties' principal briefs relating to a pending motion to preliminarily enjoin an online video-on-demand (VOD) service from purportedly infringing copyrighted works (Disney Enterprises Inc., et al. v. VidAngel Inc., No. 2:16-cv-04109, C.D. Calif.).
Microsoft Piracy Suit Against Georgia Firm May Proceed In Washington, Judge Rules
SEATTLE - A Washington federal judge on Nov. 10 declined to dismiss copyright, trademark and related claims against a Georgia company accused of selling pirated copies of Microsoft Corp. software, finding that Microsoft sufficiently alleged purposeful availment of Washington jurisdiction and harm experienced within the state (Microsoft Corp. v. Aventis Systems Inc., et al., No. 2:16-cv-01234, W.D. Wash.; 2016 U.S. Dist. LEXIS 156410).
Software Support Firm Denied Injunction Stay In Oracle Copyright Suit
LAS VEGAS - Finding that a copyright defendant did not demonstrate that it was likely to succeed on the merits of its appeal of an infringement verdict or that it would suffer irreparable harm, a Nevada federal judge on Nov. 9 declined to stay a permanent injunction related to software created by Oracle USA Inc. pending appeal (Oracle USA Inc., et al. v. Rimini Street Inc., et al., No. 2:10-cv-00106, D. Nev.; 2016 U.S. Dist. LEXIS 155494).
Illinois Panel Affirms Ruling In Insurer's Favor In Advertising Injury Dispute
CHICAGO - An Illinois appeals panel on Nov. 8 affirmed a lower court's ruling in favor of an insurer in its declaratory judgment lawsuit disputing coverage for an underlying trademark infringement dispute (Selective Insurance Company Of The Southeast v. Member's Property, Inc., No. 1-14-3436, Ill. App., 1st Dist., 2nd Div.; 2016 Ill. App. Unpub. LEXIS 2366).
PTO Director Tells Court To Uphold Ban On 'Racial Slurs' In Trademarks Suit
WASHINGTON, D.C. - Citing the bar under the Lanham Act's 15 U.S. Code Section 1052(a) of the registration of trademarks that "disparage" people, Michelle K. Lee, undersecretary of Commerce for Intellectual Property and director of the U.S. Patent and Trademark Office, argues in an opening brief filed Nov. 9 to the U.S. Supreme Court that there is a difference between a rule that restricts speech and one that refuses to endorse and promote it (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.).
Reseller Cites Amicus Curiae Brief In Asking Court To Decide Patent Exhaustion Doctrine
WASHINGTON, D.C. - Citing an amicus curiae brief filed by the acting U.S. solicitor general, Impression Products Inc. argues in a Nov. 3 supplemental brief that the U.S. Supreme Court should review a patent case that poses the question of whether foreign sales exhaust a patent owner's right to sue, as well as whether patent owners can impose restrictions on the use of patented items to prevent an exhaustion of their rights (Impression Products Inc. v. Lexmark International Inc., No. 15-1189, U.S. Sup.).
Google, Motorola Ask High Court To Review Restriction Of 'Common Sense' Presumption
WASHINGTON, D.C. - Relying on KSR International Co. v. Teleflex Inc. (550 U.S. 398, 415 ), Google Inc. and Motorola Mobility LLC petitioned the U.S. Supreme Court on Nov. 8 to review whether the Federal Circuit U.S. Court of Appeals erred 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.).
Pharm, Bio Tech Companies Ask High Court To Decide AIA's Institution Of Inter Partes Review
WASHINGTON, D.C. - Pharmaceutical and biotechnology companies and a biotechnology trade association in an amicus curiae brief filed Oct. 24 argue in support of 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 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.).
Amgen Opposes Review Of Commercial Marketing Notice To Product Sponsor
WASHINGTON, D.C. - Amgen Inc. and Amgen Manufacturing Ltd. (collectively, Amgen) argue in a Nov. 8 opposition brief that the U.S. Supreme Court should decline to review whether 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.).
Patent Owner Seeks U.S. Supreme Court Review On Entry Of JMOL
WASHINGTON, D.C. - An owner of patents relating to two-way communications asks the U.S. Supreme Court in an Oct. 21 petition to answer whether the Federal Circuit U.S. Court of Appeals erred in ordering entry of judgment as a matter of law (JMOL) on a ground not presented in a Federal Rule of Civil Procedure 50(b) motion in the district court, "even though the ground presented a purely legal question" (Eon Corp. IP Holdings LLC v. Silver Spring Networks Inc., No. 16-551, U.S. Sup.).
Importers Ask High Court To Decide ITC's Jurisdiction Reach On $6M Patent Fine
WASHINGTON, D.C. - Two importers argue in a Oct. 31 reply brief that the U.S. Supreme Court should consider whether the International Trade Commission's (ITC) jurisdiction over the importation of "articles that infringe" a patent extends to articles that do not infringe any patent (DBN Holding Inc. and BDN LLC v. International Trade Commission, No. 16-63, U.S. Sup.).
Flea Market Owner Seeks Review Of Aiding, Abetting Copyright Infringement Charge
WASHINGTON, D.C. - The owner of a flea market in an Oct. 11 petition asks the U.S. Supreme Court to decide whether charges for aiding and abetting copyright infringement and counterfeit goods are unconstitutionally vague because they did not provide him "a reasonable opportunity to know what is prohibited" (Jack Frison v. United States of America, No. 16-506, U.S. Sup.).
Oral Arguments Held In 'Useful Articles' Copyright Case
WASHINGTON, D.C. - Although a respondent's two-dimensional cheerleader uniform designs are themselves copyrightable, those copyrights do not extend to prevent others from making the useful article depicted in the two-dimensional designs, an attorney for cheerleading uniform manufacturer Star Athletica LLC told the U.S. Supreme Court Oct. 31 (Star Athletica, LLC v. Varsity Brands, Inc., et al., No. 15-866, U.S. Sup.).
Government Invited To Weigh In Before Supreme Court In Copyright Fair Use Case
WASHINGTON, D.C. - In its Oct. 31 orders list, the U.S. Supreme Court invited the views of the solicitor general in a dispute over a YouTube user's claim that three music publishers should be subject to takedown notice liability under Section 512(f) of the Digital Millennium Copyright Act (DMCA) because they demanded removal of a video from the website without a good faith belief that the video was not a fair use (Stephanie Lenz v. Universal Music Corp., et al., Nos. 16-217 & 16-218, U.S. Sup.).
8th Circuit Upholds Injunction, Award In Copyright, Trademark Case
ST. LOUIS - A Missouri federal judge's decision to permanently enjoin four defendants from licensing images or phrases from the iconic films Gone with the Wind and The Wizard of Oz as well as images from the animated Tom and Jerry short films was affirmed Nov. 1 by the Eighth Circuit U.S. Court of Appeals (Warner Bros. Entertainment Inc. v. X One X Productions, et al., No. 15-3728, 8th Cir.; 2016 U.S. App. LEXIS 19671).
2nd Circuit Partly Vacates DMCA Safe Harbor Rulings In Favor Of MP3Tunes
NEW YORK - A New York federal judge applied "too narrow" a definition of "repeat infringer" in finding that the former music downloading site MP3Tunes LLC qualified for safe harbor immunity under the Digital Millennium Copyright Act (DMCA), the Second Circuit U.S. Court of Appeals ruled Oct. 25 (Capitol Records LLC, et al. v. MP3Tunes LLC, et al., Nos. 14-4369, -4509, 2nd Cir.; 2016 U.S. App. LEXIS 19236).
California Federal Judge Rejects Equitable Estoppel Defense In Copyright Case
SAN FRANCISCO - A jury's award of $30.4 million in favor of a copyright infringement plaintiff will stand in light of an Oct. 24 ruling by a California federal judge that turned away a defendant's assertion of equitable estoppel (Synopsys Inc. v. ATopTech Inc., No. 13-2965, N.D. Calif.; 2016 U.S. Dist. LEXIS 147088).
Laches Presumption In Patent Cases Debated Before Supreme Court
WASHINGTON, D.C. - A finding by the Federal Circuit U.S. Court of Appeals that the presumption of laches is applicable in a patent infringement action filed more than six years after a patentee discovered allegedly infringing products was proper, the U.S. Supreme Court was told Nov. 1 (SCA Hygiene Products Aktiebolag and SCA Personal Care, Inc. v. First Quality Baby Products, LLC, et al., No. 15-927, U.S. Sup.).
Divided Federal Circuit Reverses Determination Of Patent Ineligibility
WASHINGTON, D.C. - Four patents relating to a data mediation software program recite a series of limitations that, "when considered individually and as an ordered combination," provide an inventive concept "sufficient to confer eligibility" under 35 U.S. Code Section 101, a divided Federal Circuit U.S. Court of Appeals ruled Nov. 1 (Amdocs [Israel] Limited v. Openet Telecom Inc., et al., No. 15-1180, Fed. Cir.; 2016 U.S. App. LEXIS 19593).
Federal Circuit Reaffirms: No Review Of Patent Board Reconsideration Decisions
WASHINGTON, D.C. - Nothing in the recent U.S. Supreme Court decision in Cuozzo Speed Technologies, LLC v. Lee (136 S. Ct. 2131 ) alters a 2015 conclusion by the Federal Circuit U.S. Court of Appeals that a determination by the Patent Trial and Appeal Board to discontinue inter partes review (IPR) is not reviewable on appeal under 35 U.S. Code Section 314(d), the Federal Circuit ruled Oct. 20, denying a petition for rehearing (Medtronic Inc. v. Robert Bosch Healthcare Systems Inc., Nos. 15-1977, -1986, -1987, Fed. Cir.; 2016 U.S. App. LEXIS 18855).
Federal Circuit: Claim Construction, Infringement Findings Not Erroneous
WASHINGTON, D.C. - A Massachusetts federal judge properly construed various disputed terms of two patents relating to three-dimensional scaffolding for growing cells in vitro to produce organ tissue, the Federal Circuit U.S. Court of Appeals ruled Oct. 13 (Massachusetts Institute of Technology, et al. v. Shire Pharmaceuticals Inc., et. al., No. 15-1881, Fed. Cir.; 2016 U.S. App. LEXIS 18426).
Federal Circuit Upholds Construction, Stipulation Of Patent Infringement
WASHINGTON, D.C. - An Illinois federal judge properly construed various disputed terms of a patented method for creating custom footwear inserts for athletes, the Federal Circuit U.S. Court of Appeals concluded Oct. 26 (ProFoot Inc. v. Merck & Co. Inc., No. 16-1216, Fed. Cir.; 2016 U.S. App. LEXIS 19294).
Federal Circuit Vacates Fee Award For Timberlake, Spears In Patent Case
WASHINGTON, D.C. - A California federal judge's decision awarding pop singers Justin Timberlake and Britney Spears $755,925.86 in attorney fees under 35 U.S. Code Section 285 after the duo prevailed on allegations of patent infringement was vacated and remanded by the Federal Circuit U.S. Court of Appeals on Oct. 20 (Large Audience Display Systems LLC v. Tennman Productions LLC, et al., No. 15-2040, Fed. Cir.; 2016 U.S. App. LEXIS 18854).
Texas Federal Magistrate Judge Says Award Of Fees Not Warranted In Patent Case
MARSHALL, Texas - Under the operative standard for awarding attorney fees in a patent case, a Texas federal magistrate judge on Oct. 24 found that allegations that Cabela's Inc. infringed a patented system and method for processing transactions do not qualify as "exceptional" (E2E Processing Inc. v. Cabela's Inc., No. 14-36, E.D. Texas; 2016 U.S. Dist. LEXIS 147139).
Federal Circuit Affirms Indefiniteness Holding For 1 Patent, Reverses Another
WASHINGTON, D.C. - An Ohio federal judge's conclusion that two patents directed to dissipating heat from light emitting diode lamps are invalid was partly affirmed and partly reversed Oct. 27 by the Federal Circuit U.S. Court of Appeals (GE Lighting Solutions v. Lights of America Inc., et al., Nos. 2015-1979, -1980, -1981, -1982, -2044, Fed. Cir.; 2016 U.S. App. LEXIS 19362).
Pennsylvania Federal Judge Severs, But Won't Transfer, Antitrust Cases
PHILADELPHIA - Efforts by Endo Pharmaceuticals Inc., Watson Laboratories Inc., Allergan PLLC and Impax Laboratories Inc. to sever allegations that they violated the Federal Trade Commission and Clayton Acts by delaying market entry of two proposed generic drugs were successful on Oct. 20, when a Pennsylvania federal judge agreed that the challenged agreements, underlying circumstances and drugs "have nothing to do with each other" (Federal Trade Commission v. Endo Pharmaceuticals Inc., et al., No. 16-1440, E.D. Pa.; 2016 U.S. Dist. LEXIS 145329).
Michigan Federal Judge Bars Damages Experts' Opinions In Patent Infringement Suit
DETROIT - In a patent infringement lawsuit concerning car navigational methods, a Michigan federal judge ruled Oct. 14 that damages experts failed to present a reliable methodology for a conjoint study to assist a jury in determining what portion of Garmin International Inc.'s profits could be attributed to the incremental value that the four patented features added to the overall value of the accused devices (Visteon Global Technologies Inc. and Visteon Technologies LLC v. Garmin International Inc., No. 10-10578, E.D. Mich.; 2016 U.S. Dist. LEXIS 142395).
Federal Circuit Says Marketing Of Generic Fortesta Would Infringe
WASHINGTON, D.C. - A bench trial held by a Texas federal judge correctly ended in findings that patents covering the testosterone gel Fortesta are not invalid as anticipated or obvious, as well as a ruling that the marketing of generic Fortesta would infringe the same patents, the Federal Circuit U.S. Court of Appeals ruled Oct. 14 (Endo Pharmaceuticals Inc., et al. v. Actavis Laboratories UT Inc., No. 16-1146, Fed. Cir.; 2016 U.S. App. LEXIS 18490).
California Federal Judge Partly Dismisses Induced Patent Infringement Claims
SAN FRANCISCO - Apple Inc. won partial dismissal on Oct. 21 of allegations that it induced others to infringe a patented process that facilitates video conferencing when a California federal judge agreed that one patent was not indirectly infringed; the judge denied dismissal as it relates to four other patents asserted in the action, however (Straight Path IP Group Inc. v. Apple Inc., No. 16-3582, N.D. Calif.; 2016 U.S. Dist. LEXIS 146262).
Michigan Federal Judge Sides With Defendant, Says Process Does Not Infringe
DETROIT - Allegations that a former licensee infringed a patented method and apparatus for micro-treating steel by continuing to use the technology after its license expired were rejected by a Michigan federal judge on Oct. 31 (SFP Works LLC v. Buffalo Armory LLC, No. 14-13575, E.D. Mich.; 2016 U.S. Dist. LEXIS 150112).
Takeda Takes Aim At Proposed Generic Drug In New Delaware Patent Case
WILMINGTON, Del. - An application by Mylan Pharmaceuticals Inc. to market a generic version of the brand-name drug Colcrys would infringe 17 patents, according to a lawsuit filed Oct. 24 in the U.S. District Court for the District of Delaware (Takeda Pharmaceuticals U.S.A. Inc. v. Mylan Pharmaceuticals Inc., No. 16-987, D. Del.).
Google Petition For Covered Business Method Patent Review Denied
ALEXANDRIA, Va. - The Patent Trial and Appeal Board on Oct. 25 turned away a request by Google Inc. for covered business method (CBM) patent review of five claims of a patent covering a location determination system (Google Inc. v. Locationet Systems Ltd., No. CBM2016-00062, PTAB).
Patent Board Denies Review Of Patents Related To Natalizumab
ALEXANDRIA, Va. - Three petitions for inter partes review (IPR) of patents covering the immunosuppressant drug natalizumab - marketed under the brand name "Tysabri" - were denied Oct. 17 by the Patent Trial and Appeal Board (Swiss Pharma International AG v. Biogen IDEC, No. IPR2016-00912, PTAB).
Patent Board Grants Review Of Children's Play Yard Clip Patent
ALEXANDRIA, Va. - Deeming a petitioner likely to succeed on its claim that two claims of a patented clip used in connection with children's play yards are invalid as anticipated, the Patent Trial and Appeal Board on Oct. 17 granted inter partes review (IPR) (Graco Children's Products Inc. v. Kolcraft Enterprises Inc., No. IPR2016-00911, PTAB).
Judge Partially Bars Expert Opinion On Fitness Brand In Trademark Infringement Suit
HOUSTON - In a trademark infringement lawsuit, an expert may testify on branding in the fitness industry but is not allowed to discuss whether an alleged brand meets various legal definitions related to trademark law, a Texas federal judge ruled Oct. 18, also denying summary judgment to a fitness training company on its fair use defense (Michael Jones v. American Council on Exercise, No. 15-3270, S.D. Texas; 2016 U.S. Dist. LEXIS 143882).
D.C. Federal Judge Denies Dismissal Of Lanham Act Claims Against McCormick
WASHINGTON, D.C. - Multidistrict litigation stemming from an alleged practice by McCormick & Co. Inc. of "slack-filling" black pepper containers will proceed with a claim of false advertising in place, a District of Columbia federal judge ruled Oct. 18 (In re: McCormick & Company Inc., MDL No. 2665, D. D.C.; 2016 U.S. Dist. LEXIS 143176).
Mattress Firm's Lanham Claim Against Review Site Partly Dismissed
NEW YORK - Many of the statements on a mattress review website about which a mattress manufacturer complains constitute opinions that are not actionable under the Lanham Act, a New York federal judge ruled Oct. 20, granting in part the site operator's motion to dismiss (Casper Sleep Inc. v. Derek Hales, et al., No. 1:16-cv-03223, S.D. N.Y.).
Antitrust Claim Dismissed, Lanham Act Claim Survives In New York Lawsuit
NEW YORK - A New York federal judge on Oct. 27 agreed with a plaintiff that counterclaims of antitrust violations and commercial disparagement by a trademark infringement defendant are ripe for dismissal (Dentsply International Inc. v. Dental Brands for Less d/b/a Dental Wholesale Direct, No. 15-8775, S.D. N.Y.; 2016 U.S. Dist. LEXIS 149139).
California Federal Magistrate Partly Dismisses Trademark Claims Against Google
SAN FRANCISCO - A claim that Google Inc. committed contributory trademark infringement when it failed to remove from Google Play apps from developers previously accused of infringing a plaintiff's "Spy Phone" trademark will proceed in light of an Oct. 14 holding by a California federal judge, who deemed the allegations sufficient to withstand a motion to dismiss under Federal Rule of Civil Procedure 12(b)(6) (Spy Phone Labs LLC v. Google Inc., No. 15-3756, N.D. Calif.; 2016 U.S. Dist. LEXIS 143530).
En Banc 9th Circuit: Review Fee Awards For Abuse Of Discretion
SAN FRANCISCO - In what it deemed a "correction in the law," an en banc Ninth Circuit U.S. Court of Appeals on Oct. 24 overruled its own precedent in concluding that a review of an award of attorney fees under the Lanham Act should be conducted under an abuse of discretion standard (SunEarth Inc. v. Sun Earth Solar Power Co. Ltd., Nos. 13-17622, 15-16096, 9th Cir.; 2016 U.S. App. LEXIS 19083).
10th Circuit Finds Jurisdiction Lacking In Lanham Act, CDA Case
DENVER - A Colorado federal judge's determination that a defendant was not entitled to immunity under Section 230 of the Communications Decency Act (CDA) for allegations the defendant violated the Lanham Act will not be reviewed, in light of findings Nov. 1 by the 10th Circuit U.S. Court of Appeals that appellate jurisdiction is lacking (General Steel Domestic Sales LLC v. Ethan Daniel Chumley, et al., No. 15-1293, 10th Cir.; 2016 U.S. App. LEXIS 19629).
Judge Won't Enjoin Yelp's Use Of 'We Know Just The Place' Tagline
OAKLAND, Calif. - Finding that a trademark infringement plaintiff failed to establish any likelihood of confusion or irreparable harm due to the use of a disputed tagline by Yelp Inc., a California federal judge on Oct. 25 denied the plaintiff's motion for a preliminary injunction against the business reviews website operator (TPW Management LLC v. Yelp Inc., No. 4:16-cv-03063, N.D. Calif.; 2016 U.S. Dist. LEXIS 147884).
Judge Refuses To Allow Insurer To Intervene In Copyright Infringement Dispute
CLEVELAND - An Ohio federal judge on Oct. 17 denied a commercial property's insurer motion to intervene in a copyright infringement dispute, finding that the insurer lacks a substantial interest in the case and that the insurance action would not share questions of law or fact with the copyright lawsuit (Design Basics LLC v. A.J. Bokar Building Company Inc. d/b/a Willow Wood Homes, No. 16-669, N.D. Ohio; 2016 U.S. Dist. LEXIS 143464).
Tech Company Seeks U.S. High Court Review Of ITunes Patent Challenge Under Cuozzo
WASHINGTON, D.C. - A tech company asks the U.S. Supreme Court in an Oct. 11 petition for a writ of certiorari to answer 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 under 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 Asks High Court To Review Expert Misconduct In Patent Dispute
WASHINGTON, D.C. - Johnson & Johnson Vision Care Inc. (JJVC) argues in an Oct. 7 petition for a writ of certiorari that the Federal Circuit U.S. Court of Appeals erred in allowing Rembrandt Vision Technologies LP a new trial over alleged infringement of its contact lens patent in a petition seeking consideration on a split over when an expert's false testimony should justify a new trial (Johnson & Johnson Vision Care Inc. v. Rembrandt Vision Technologies LP, No. 16-489, U.S. Sup.).
Drug Companies Ask High Court To Review Actavis Role In Patent, Antitrust Case
WASHINGTON, D.C. - Responding to the U.S. solicitor general's amicus curiae brief, drug companies argue in an Oct. 19 supplemental brief to the U.S. Supreme Court that they disagree with the solicitor's position that FTC v. Actavis (133 S. Ct. 2223 ) is not limited to cash payments when answering whether a reverse-payment agreement is immune from antitrust scrutiny if the consideration given by the brand-name manufacturer to the generic challenger is a promise to restrict its competition with the challenger after the challenger enters the market (SmithKline Beecham Corp., et al. v. King Drug Company of Florence Inc., No. 15-1055, U.S. Sup.).
Commil Asks For Rehearing By High Court Of Review In Patent Suit In Light Of Ruling
WASHINGTON, D.C. - Following the U.S. Supreme Court's denial of certiorari in 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, Commil USA LLC argues for a rehearing in an Oct. 25 petition in light of an en banc decision in Apple Inc. v. Samsung Elecs. Co. (Nos. 2015-1171, -1195, -1994, 2016 U.S. App. LEXIS 18225 [Fed. Cir. Oct. 7, 2016]) (Commil USA LLC v. Cisco Systems Inc., No. 15-1446, U.S. Sup.).
Pharmaceutical Company Seeks High Court Review In Trademark Dispute
WASHINGTON, D.C. - A pharmaceutical company in an Oct. 20 petition for writ of certiorari asks the U.S. Supreme Court to answer whether Sections 14(3) and 43(a) of the Lanham Act allow a foreign business that "has neither used nor registered its trademark in the United States to sue the owner of a U.S. trademark for conduct relating to the owner's use of its U.S. mark" (Belmora LLC and Jamie Belcastro v. Bayer Consumer Care AG, et al., No. 16-548, U.S. Sup.).
Retailers Ask High Court Not To Review Willfulness Infringement Prerequisite For Reduced Award
WASHINGTON, D.C. - The U.S. Supreme Court should not consider if willful infringement is a prerequisite for an award of infringer's profits reduced to $6.8 million to a trademark owner of magnetic snap fasteners for handbags, retailers argue in an Oct. 19 opposition brief, because every appellate court views willfulness "as an important factor, and the differences between them result in minimal inter-circuit variation" (Romag Fasteners Inc. v. Fossil Inc., et al., No. 16-202, U.S. Sup.).
Service Provider Says It Qualifies For Section 111 License In Copyright Suit
WASHINGTON, D.C. - In a copyright infringement action, a service provider argues in a Sept. 28 brief to the District of Columbia Circuit U.S. Court of Appeals that it qualifies for a license under Copyright Act Section 111 because it operates physical facilities that receive broadcast programming and then retransmits that programming over wires and other communications channels, including the internet, to paying subscribers (FilmOn X LLC, et al. v. Fox Television Stations Inc., et al., No. 16-7013, D.C. Cir.).
Music Companies Seek Dismissal Of Class Action On Copyright To Folk Song
NEW YORK - Music companies that claim ownership in the folk song "This Land Is Your Land" argue in an Oct. 10 reply brief that a New York federal court should dismiss a class action aimed at freeing the song for all to use because there is no subject matter jurisdiction (James Saint-Amour and Alena Ivleva a/k/a Jerra Blues, doing business as Satorii v. The Richmond Organization Inc. [TRO Inc.] and Ludlow Music Inc., No. 16-04464, S.D. N.Y.).
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.).