Justia Intellectual Property Opinion Summaries

An architecture firm (KFA) held registered copyrights in several building plans and technical drawings. In 2016, the firm licensed certain works to a development company (AHV) for use in the Austin, Texas area, with explicit requirements to include KFA’s copyright management information (CMI) on any displays or copies. KFA later worked directly with third-party graphics companies to create floorplans and renderings, again requiring its CMI be included. However, the floorplans and renderings produced by these companies did not contain KFA’s CMI. When AHV and its affiliates used these images for a new housing development’s online marketing, KFA sent notices of default and, after noncompliance, terminated the licensing agreement and demanded the return of its materials.KFA then sued AHV and the Creekside defendants in the United States District Court for the Western District of Texas, alleging violations of the Digital Millennium Copyright Act (DMCA), copyright infringement, conversion, and seeking specific performance. The district court dismissed the DMCA and conversion claims, and parts of the infringement claims, but allowed others to proceed. KFA then voluntarily dismissed its remaining claims with prejudice to facilitate an appeal.The United States Court of Appeals for the Fifth Circuit first addressed whether it had jurisdiction, given that the district court’s dismissal under Rule 41(a)(2) was erroneous because it only dismissed part of the action. The appellate court held that this error did not deprive it of jurisdiction. On the merits, the Fifth Circuit affirmed dismissal of the DMCA claims, holding that failure to include CMI on newly created images is not “removal” or “alteration” under the statute. However, it vacated the dismissal of the copyright infringement claims, ruling that the district court erred in applying a statutory exemption beyond its scope and remanded those claims for further proceedings. View "Flores v. AMH Creekside" on Justia Law

Several inventor-advocacy groups challenged the language used on the cover of patents issued by the United States Patent and Trademark Office (PTO), alleging that it is misleading. Specifically, they contended that the statement granting patent holders the “right to exclude others” is inaccurate following the Supreme Court’s decision in eBay Inc. v. MercExchange, L.L.C., which established that injunctions are no longer automatically granted to patent holders. The plaintiffs, all non-profit organizations supporting inventors, argued that the PTO’s failure to amend this language harms them because they must divert resources to educate their members about the true scope of patent rights.The United States District Court for the Eastern District of Virginia dismissed the case for lack of standing, holding that the plaintiffs had not shown a sufficient risk of future injury resulting from the challenged language. The district court also denied leave to amend the complaint, finding that any amendment would be futile. The plaintiffs appealed this decision.The United States Court of Appeals for the Federal Circuit affirmed the district court’s dismissal. The appellate court held that the organizations failed to demonstrate organizational standing because their alleged injury—diverting resources to educate members—was foreclosed as a basis for standing by the Supreme Court’s decision in Food & Drug Admin. v. Alliance for Hippocratic Medicine. The court also found that the plaintiffs did not establish associational standing, as they did not identify any member facing a real and immediate threat of future injury from the patent cover language. The court concluded that amendment of the complaint would be futile, as the foundational deficiencies in establishing standing could not be remedied by further allegations. The judgment of the district court was therefore affirmed. View "US INVENTOR, INC. v. SQUIRES " on Justia Law

A company operating a gas station in Washington entered into a series of agreements with a petroleum refiner and a logistics company. The agreements allowed the company to rebrand its station and market motor fuel under the refiner’s trademarks, even though the refiner did not supply the actual fuel. Instead, the logistics company served as an intermediary, and fuel was sourced from a third party. Later, the refiner and logistics company claimed the agreements were terminated, demanding the removal of the trademarks. The gas station operator refused, alleging that the termination violated the Petroleum Marketing Practices Act (PMPA), which regulates the termination and nonrenewal of petroleum marketing franchises.The United States District Court for the Western District of Washington dismissed the gas station operator’s PMPA claim. The court held that no PMPA franchise existed because the refiner did not supply the fuel to either the operator or the logistics company. The court reasoned that the statute required the refiner to be the supplier of the fuel for a franchise relationship to exist under the PMPA.The United States Court of Appeals for the Ninth Circuit reviewed the dismissal de novo. It held that the PMPA does not require the refiner to supply the actual fuel; rather, a franchise exists if there is a contract authorizing the use of the refiner’s trademark in connection with the sale of motor fuel. The court determined that the operator plausibly alleged franchise relationships with both the refiner and the logistics company, based on the mutual obligations in the agreements and the statutory definitions. The Ninth Circuit reversed the district court’s dismissal of the PMPA claims and remanded the case for further proceedings. View "CAN-AM FUEL DISTRIBUTION, LLC V. SINCLAIR OIL, LLC" on Justia Law

A company holding a patent for electrically controlled spectacles filed a lawsuit against a car manufacturer, alleging patent infringement. The plaintiff, represented by its counsel, sought damages for alleged infringement and included a request for pre-suit damages. The defendant moved to dismiss the complaint for failure to state a claim and for improper venue. In response, the plaintiff requested leave to amend its complaint and filed a proposed amended complaint. The plaintiff had previously entered into several settlement agreements licensing the patent to third parties.At the United States District Court for the Southern District of Texas, the judge dismissed the case with prejudice under Rule 12(b)(6), finding that the plaintiff’s proposed amended complaint was futile because it failed to adequately plead compliance with the patent marking requirements under 35 U.S.C. § 287(a), particularly regarding its licensees. The court denied leave to amend, denied a motion to amend the judgment, awarded attorney fees to the defendant under 35 U.S.C. § 285, and sanctioned plaintiff’s counsel, holding both the plaintiff and counsel jointly and severally liable for the attorney fees.On appeal, the United States Court of Appeals for the Federal Circuit affirmed the district court’s dismissal of the complaint without leave to amend, agreeing that amendment would have been futile due to the failure to plead compliance with § 287(a). The appellate court also affirmed the award of attorney fees, finding no abuse of discretion in the determination that the case was exceptional due to the plaintiff’s unreasonable litigation conduct. The court dismissed the portion of the appeal relating to the sanctions against counsel for lack of jurisdiction, as counsel had not properly or timely appealed on his own behalf and the plaintiff lacked standing to contest those sanctions. Costs were awarded to the defendant. View "VDPP, LLC v. VOLKSWAGEN GROUP OF AMERICA, INC. " on Justia Law

Music Choice, a company that transmits copyrighted sound recordings to businesses for background music, was accused by SoundExchange, Inc. of underpaying required royalties. The dispute centered on the proper interpretation of a federal regulation defining “gross proceeds,” which dictates the revenue base on which Music Choice must pay royalties for its business services. SoundExchange believed all revenues from business transmissions should be included, while Music Choice argued that only revenues derived solely from business services should count, excluding those also attributable to subscription services.The United States District Court for the District of Columbia, using the doctrine of primary jurisdiction, stayed the ongoing litigation and allowed the parties to seek an interpretive ruling from the Copyright Royalty Board (the “Royalty Board”). The Royalty Board, after reopening the relevant regulatory dockets, issued a ruling adopting SoundExchange’s interpretation of the regulation. Rather than returning to district court, Music Choice directly petitioned the United States Court of Appeals for the District of Columbia Circuit for review and vacatur of the Royalty Board’s decision.The United States Court of Appeals for the District of Columbia Circuit held that it lacked jurisdiction to review the Royalty Board’s interpretive ruling. The court reasoned that such a ruling was not a judicially reviewable “determination” under 17 U.S.C. § 803(c) and did not result from a proceeding in which Music Choice was a participant as required by statute. Additionally, the court found that the ruling did not bind Music Choice or any other party. As a result, the court dismissed Music Choice’s petition for review, leaving the parties to pursue their dispute in the district court. View "Music Choice v. COPYRIGHT ROYALTY BOARD" on Justia Law

The case involved a dispute over the validity of several claims in a patent owned by a company specializing in audience measurement technology. The patent described methods for capturing and processing images to measure and identify audiences exposed to media content, such as television. The technology used cameras to capture images, reduced their resolution to detect heads and faces, and used higher-resolution images for facial recognition. A competitor challenged the patent by petitioning for inter partes review, arguing that certain claims were obvious in light of prior art, specifically a scientific publication by Ying-li Tian, and other patent documents.The United States Patent and Trademark Office’s Patent Trial and Appeal Board reviewed the petition and instituted a review on several dependent claims after the patent owner disclaimed the independent claims at issue. The Board ultimately found all challenged claims unpatentable as obvious over combinations of prior art, including Tian. The patent owner appealed to the United States Court of Appeals for the Federal Circuit, contesting the Board’s determination that Tian was analogous art and that its teachings rendered the claims obvious.The United States Court of Appeals for the Federal Circuit affirmed the Board’s decision. The court held that substantial evidence supported the Board’s finding that Tian was reasonably pertinent to the problems addressed by the patent, namely image processing and facial detection, and thus constituted analogous art. The court also found that the Board did not err in concluding that the challenged claims were obvious in view of the prior art combinations. The court rejected arguments that the Board violated procedural requirements or misapplied the law regarding the scope of analogous art and obviousness. The judgment of the Board was affirmed. View "NIELSEN COMPANY (US), LLC v. TVISION INSIGHTS, INC. " on Justia Law

A biopharmaceutical company that develops and sells prescription medications—including a well-known HIV drug—discovered that U.S. patients were receiving versions of its medication intended only for foreign markets, specifically Turkey. This occurred after a Maryland patient received a Turkish-labeled version of the drug. The medication, while chemically identical to the U.S.-approved version, had packaging, labeling, and patient information in Turkish, omitting U.S. regulatory warnings and instructions. The biopharmaceutical company traced the importation to a group of entities and individuals who facilitated the import and sale of these foreign-market drugs to U.S. consumers, working in cooperation with third-party administrators and pharmacy benefit managers serving self-funded employer health plans.The company filed suit in the United States District Court for the District of Maryland against the entities and individuals involved in the importation, alleging direct and contributory trademark infringement under the Lanham Act. The district court granted a preliminary injunction, enjoining the defendants from importing, advertising, or facilitating the importation and sale of the company’s branded medications intended for foreign markets. The court found the imported drugs were materially different from the U.S. versions due to differences in labeling, warnings, and quality control procedures, and that the defendants had knowledge of these differences.On appeal, the United States Court of Appeals for the Fourth Circuit affirmed the district court’s decision. The Fourth Circuit held that the imported medications were not “genuine” under the Lanham Act because they materially differed from the U.S. versions and bypassed the company’s quality-control systems. The court found the company likely to succeed on its direct and contributory infringement claims, concluded that irreparable harm was presumed and not rebutted, and determined that the balance of equities and public interest supported the injunction. The district court’s preliminary injunction order was affirmed. View "Gilead Sciences, Inc. v. Meritain Health, Inc." on Justia Law

Aisha Putnam was employed by CaramelCrisp, LLC, working in research and development and also managing quality assurance for the company’s food products. During her time there, she observed several food safety and quality control violations, which she repeatedly reported to company management. In early 2019, Putnam sent anonymous emails to the FDA regarding these concerns. Two weeks after her communication with the FDA, CaramelCrisp terminated her employment. Subsequent to her termination, CaramelCrisp discovered that Putnam had taken company documents and initiated a trade secrets lawsuit against her.While the trade secrets case was pending, Putnam filed suit in the United States District Court for the Northern District of Illinois, alleging she was discharged in retaliation for her food safety complaints, bringing claims under the Food Safety Modernization Act (FSMA) and Illinois common law. The district court dismissed her common law claim, holding that the existence of a statutory remedy under the FSMA precluded a separate common law action. The court granted summary judgment to CaramelCrisp on Putnam’s FSMA claim to the extent it was based on her FDA emails because there was no evidence CaramelCrisp knew about them. Her claim based on complaints to management proceeded to trial, where a jury found that her complaints were not a contributing factor in her termination.On appeal, the United States Court of Appeals for the Seventh Circuit dismissed Putnam’s trial-related challenges due to her failure to provide trial transcripts. The court affirmed the district court’s dismissal of the common law claim and its summary judgment ruling, holding that Putnam failed to show CaramelCrisp knew of her FDA emails and that the jury’s finding precluded success on any theory requiring proof that her complaints contributed to her termination. View "Putnam v Caramelcrisp, LLC" on Justia Law

Dental Monitoring SAS owns a patent concerning a method for acquiring and analyzing dental arch images through the use of a deep learning device. The patented method involves acquiring an image, analyzing it with the deep learning device, determining a value for an image attribute, comparing that attribute with a setpoint, and sending feedback if a new image is needed. Align Technology, Inc. challenged the validity of claims 1–15 of this patent before the United States Patent and Trademark Office’s Patent Trial and Appeal Board (the Board), arguing that these claims were obvious in light of three prior art references, including a U.S. patent application (“Carrier”) that claimed priority to a provisional application filed before the effective date of Dental Monitoring’s patent.The Board reviewed whether Carrier qualified as prior art, a determination that depended on whether Carrier could rely on the filing date of its provisional application. The Board held that, under its own precedential decision in Penumbra Inc. v. RapidPulse, Inc., the requirement that a patent’s claim be supported by the provisional application’s written description did not apply under the America Invents Act (AIA) for prior art purposes. Instead, the Board found that Carrier qualified as prior art as of its provisional filing date because the provisional described the relevant subject matter and met certain procedural requirements. The Board then found all challenged claims unpatentable as obvious.On appeal, the United States Court of Appeals for the Federal Circuit vacated the Board’s decision. The court held that, under AIA § 102(d)(2) and § 119(e), a reference patent or application is entitled to the benefit of an earlier filing date for prior art purposes only if at least one of its published claims is supported by the provisional application’s written description as required by § 112(a). The court remanded the case for the Board to make the necessary factual findings under this legal standard. View "DENTAL MONITORING SAS v. ALIGN TECHNOLOGY, INC. " on Justia Law

Koi Design LLC retained Marron Lawyers, APC in April 2016 to represent it in a trademark dispute with Strategic Partners, Inc. When SPI sued Koi for trademark infringement, Marron—through its associate, A. Douglas Mastroianni—handled the case. Mastroianni repeatedly missed court deadlines and failed to participate in required discovery meetings, prompting warnings and potential sanctions from the court. Marron did not inform Koi of these mishaps or its internal concerns about Mastroianni’s competence. After repeated lapses, Marron terminated Mastroianni, but again did not disclose the reasons to Koi. Mastroianni continued to represent Koi at a new firm, and Koi ultimately suffered terminating sanctions and a default judgment with trebled damages, leading to bankruptcy.Koi sued Marron, Mastroianni, and another firm for breach of fiduciary duty, legal malpractice, and negligent supervision in the United States District Court for the Central District of California. Bloom Firm settled, and the district court granted summary judgment in favor of Marron on all claims, concluding that Koi had not established that Marron’s conduct caused its injuries. Koi appealed, arguing the district court erred both by granting summary judgment on grounds not adequately noticed and by finding no genuine dispute of material fact.The United States Court of Appeals for the Ninth Circuit reversed the district court’s grant of summary judgment. The court held that Marron owed duties to disclose material facts and supervise its employees under California law and professional conduct rules. The Ninth Circuit found genuine disputes of material fact regarding whether Marron breached those duties and whether its conduct was a “but for” cause of Koi’s harm. The court concluded that a reasonable jury could find Marron liable and remanded for further proceedings. View "IN RE: KOI DESIGN LLC V. MARRON LAWYERS, APC" on Justia Law