Justia Intellectual Property Opinion Summaries

Norwich Pharmaceuticals sought to market a generic version of Xifaxan, a drug invented by Salix Pharmaceuticals for treating irritable bowel syndrome with diarrhea and hepatic encephalopathy. Norwich submitted an Abbreviated New Drug Application (ANDA) to the FDA, identified as number 214369. Salix believed this ANDA infringed its patents and sued Norwich in the United States District Court for the District of Delaware. That court found Norwich’s ANDA infringed Salix’s patents related to hepatic encephalopathy, while the patents for irritable bowel syndrome were invalid as obvious. The court’s final judgment barred FDA approval of Norwich’s ’369 ANDA until Salix’s hepatic encephalopathy patents expired in October 2029.Following the judgment, Norwich amended its ’369 ANDA to remove the indication for hepatic encephalopathy and requested the Delaware District Court modify its judgment to allow immediate FDA approval of the amended ANDA. The court denied this motion, reasoning that Norwich could not change its ANDA after final judgment to circumvent the prior ruling. Norwich appealed to the United States Court of Appeals for the Federal Circuit, which agreed the judgment restricted approval of the entire ANDA, including non-infringing indications, until 2029, and affirmed the Delaware District Court’s decision.After the FDA declined to grant final approval of Norwich’s amended ANDA, instead issuing only tentative approval, Norwich sued in the United States District Court for the District of Columbia, arguing the FDA acted arbitrarily and capriciously. The court granted summary judgment to the FDA and Salix. On appeal, the United States Court of Appeals for the District of Columbia Circuit held that the Delaware District Court’s judgment applied to Norwich’s ANDA as amended, so the FDA correctly delayed final approval until October 2029. The appellate court affirmed the district court’s judgment. View "Norwich Pharmaceuticals, Inc. v. Kennedy" on Justia Law

Two organizations involved in competitive cheerleading became embroiled in a dispute over the use of two marks: “THE CHEERLEADING WORLDS,” which is registered on the Supplemental Register with the U.S. Patent and Trademark Office, and “WORLDS,” which is claimed as an unregistered common law mark. The plaintiff, a governing body for competitive cheerleading, has held an annual event under these marks since 2004. The defendants, including a group of former members of the plaintiff organization, began hosting a similarly named event in the same region, allegedly causing confusion among participants and the public.The United States District Court for the Middle District of Florida granted summary judgment for the defendants, concluding that both marks were generic as a matter of law and thus not entitled to trademark protection. The court found that the terms described the basic nature of the plaintiff’s services and discounted evidence showing non-generic use, reasoning that the plaintiff’s event had long been the only one of its kind. The court also rejected the plaintiff’s argument that the defendants were barred from contesting the marks’ distinctiveness due to an earlier dismissal of an affirmative defense with prejudice.On appeal, the United States Court of Appeals for the Eleventh Circuit reversed. The appellate court held that the issue of distinctiveness was properly before the district court, as distinctiveness is an element of the plaintiff’s claim and not an affirmative defense. The Eleventh Circuit found that there were genuine disputes of material fact as to whether the marks were descriptive or had acquired secondary meaning, based on evidence of public association with the plaintiff’s event. The court remanded the case for trial, holding that summary judgment was inappropriate because a reasonable jury could find the marks protectable. The court also declined to decide issues of likelihood of confusion and individual liability without factual findings. View "U.S. All Star Federation, Inc. v. Open Cheer & Dance Championship Series, LLC" on Justia Law

A Chinese citizen was admitted to the United States as a lawful permanent resident in 2007. In 2012, New Jersey charged him with trademark counterfeiting. While awaiting trial, he traveled temporarily to China. Upon his return to the U.S., a border officer, aware of his pending criminal charge, declined to treat him as already admitted and instead paroled him into the country pending the outcome of his case. After he pleaded guilty to the state charge in 2013, the government initiated removal proceedings, charging him as an applicant for admission who was inadmissible because of his conviction for a crime involving moral turpitude.An Immigration Judge found him removable on these grounds, and the Board of Immigration Appeals affirmed. The respondent sought review in the United States Court of Appeals for the Second Circuit. That court vacated the removal order, holding that unless border officers had “clear and convincing” evidence at the time of entry that the lawful permanent resident had committed the crime, the individual must be treated as already admitted. The Second Circuit concluded that the pending criminal charge did not constitute clear and convincing evidence, so the individual should not have been paroled but deemed admitted, and thus could not be removed on inadmissibility grounds.The Supreme Court of the United States reviewed the case and vacated the Second Circuit’s judgment. The Court held that the Immigration and Nationality Act does not require border officers to have clear and convincing evidence that a lawful permanent resident has committed a crime involving moral turpitude before treating the resident as an applicant for admission. The Court remanded the case for further proceedings, without deciding whether the underlying crime involved moral turpitude. View "Blanche v. Lau" on Justia Law

Enanta Pharmaceuticals owned a patent directed to certain chemical compounds and methods for inhibiting coronavirus replication. The patent claimed priority to an earlier provisional application filed in July 2020. In the original provisional application, the relevant chemical group was described as containing two to twelve carbon atoms, while in the later patent, the range was changed to include one to twelve carbon atoms. Before the non-provisional patent was filed, Pfizer publicly disclosed a compound that fell within the scope of Enanta’s later patent claims.Enanta filed suit in the United States District Court for the District of Massachusetts, asserting that Pfizer’s product infringed its patent. Pfizer countered that the patent was invalid because its public disclosure anticipated the patent claims, and argued that Enanta’s patent could not claim priority to the earlier provisional application since the specific chemical group was not adequately supported in the provisional filing. The district court granted summary judgment in Pfizer’s favor, concluding that the change from two to one carbon atoms was not a correctable typographical error, and that the patent could not claim the earlier priority date.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the district court’s decision de novo. The appellate court held that the provisional application did not provide written description support for the later patent’s claims, specifically the inclusion of the one-carbon group, and thus the patent was not entitled to the earlier priority date. As a result, Pfizer’s disclosure anticipated all claims of Enanta’s patent, rendering them invalid. The Federal Circuit affirmed the district court’s grant of summary judgment. View "ENANTA PHARMACEUTICALS, INC. v. PFIZER INC. " on Justia Law

Ironburg Inventions Ltd. owns a patent for a video game controller featuring additional, resilient controls on the back of the device. Ironburg alleged that Valve Corporation’s Steam Controller infringed several claims of this patent. Valve responded by filing an inter partes review (IPR) petition in 2016 challenging the patent, and later amended its invalidity contentions in district court proceedings to include new grounds based on prior art references that had been asserted by a third party, Collective Minds Gaming Co. Ltd., in a separate IPR.The United States District Court for the Western District of Washington granted Ironburg’s motion for IPR estoppel under 35 U.S.C. § 315(e)(2), barring Valve from asserting two invalidity grounds—one based on the Kotkin reference and another combining Willner, Koji, and Raymond—finding they could have been discovered by a skilled searcher conducting a diligent search. After a jury verdict for Ironburg and an initial appeal, the United States Court of Appeals for the Federal Circuit vacated and remanded, instructing the district court to place the burden on Ironburg and to evaluate whether the grounds were reasonably discoverable.On remand, the district court again estopped Valve from raising both grounds. The United States Court of Appeals for the Federal Circuit reviewed the evidence and found that the district court erred. Specifically, the district court relied on insufficient evidence to estop the Kotkin ground, as the search results from Valve’s agent included thousands of references without further narrowing. For the Willner-Koji-Raymond ground, the district court failed to properly account for hindsight bias in the evidence presented. The Federal Circuit reversed the district court’s estoppel rulings and remanded for proceedings consistent with its opinion, instructing the district court to reconsider the invalidity of the patent in light of both grounds. View "IRONBURG INVENTIONS LTD. v. VALVE CORPORATION " on Justia Law

The dispute centers on the HAVANA CLUB trademark, originally registered in the United States in 1976 by a Cuban state-owned company, Cubaexport. Due to changes in U.S. law, renewal of the trademark registration required a specific license from the Treasury’s Office of Foreign Assets Control (OFAC) after 1998. In December 2005, Cubaexport submitted its renewal application and payment to the United States Patent and Trademark Office (PTO) without the required OFAC license. OFAC later notified the PTO that the payment was unauthorized, leading to the PTO’s refund of the fee and refusal to renew the registration. Cubaexport unsuccessfully litigated against OFAC and, in 2015, reapplied for the license, which OFAC granted retroactively in 2016, authorizing the 2005 payment.After the PTO Director accepted Cubaexport’s renewal filing based on the retroactive OFAC license, Bacardi sued the PTO and its Director in the United States District Court for the Eastern District of Virginia. Bacardi argued the PTO lacked statutory authority to renew the expired registration and acted arbitrarily and capriciously. The district court initially dismissed the case, finding judicial review precluded by the Lanham Act, but the United States Court of Appeals for the Fourth Circuit reversed and remanded. On remand, Cubaexport intervened, and after cross-motions for summary judgment, the district court granted judgment for the defendants, finding the OFAC license validated the payment and that any deficiency was cured during the petition process.Reviewing the district court’s summary judgment de novo, the United States Court of Appeals for the Fourth Circuit held that the PTO Director acted within statutory authority, as the retroactive OFAC license validated the 2005 payment, satisfying the renewal requirements. The court also held the Director’s explanation for the renewal was reasonable and not arbitrary or capricious. The Fourth Circuit affirmed the district court’s judgment. View "Bacardi and Company Limited v. Squires" on Justia Law

After participating in a songwriting contest co-sponsored by Sony and a well-known Puerto Rican singer, the plaintiff submitted an original song and accompanying music video for consideration. Upon advancing as a finalist, the plaintiff was asked to sign documents related to contest participation. Another entrant was ultimately selected as the contest winner. Later, the defendant released a song and video that the plaintiff claimed were substantially similar to his contest submission, leading the plaintiff to file suit for copyright infringement and allege fraudulent inducement into the contest.Following extensive procedural history, including several prior appeals and a Supreme Court decision clarifying when copyright owners may sue, the United States District Court for the District of Puerto Rico dismissed the plaintiff’s earlier complaint without prejudice due to the timing of his copyright registration. The plaintiff then filed a new action, again asserting copyright infringement. The defendant responded with counterclaims challenging the validity of the plaintiff’s copyright registration and moved for summary judgment, arguing that the plaintiff had assigned his copyright to Sony by agreeing to the contest’s rules. The district court adopted a magistrate judge’s recommendation granting summary judgment to the defendant, dismissed the plaintiff’s remaining claims, and invalidated the plaintiff’s copyright registration, all without permitting discovery.On appeal, the United States Court of Appeals for the First Circuit held that the district court abused its discretion by granting summary judgment and invalidating the copyright registration without affording the plaintiff a fair opportunity to conduct discovery, particularly since the relevant evidence was largely under the defendant’s and Sony’s control. The First Circuit vacated the district court’s summary judgment order and the invalidation of the copyright registration, remanding the case for further proceedings to allow discovery. View "Cortes-Ramos v. Martin-Morales" on Justia Law

EnvTech, Inc., a company specializing in cleaning products and services for hydrofluoric acid alkylation (HF alky) units in oil refineries, alleges that Patrick DeBusk, CEO of USA DeBusk LLC (USAD), orchestrated the theft of its proprietary neutral pH chelation cleaning formula and process. EnvTech claims that DeBusk directed the hiring of key former EnvTech employees, who were privy to EnvTech’s trade secrets, and used their knowledge to allow USAD to enter and compete in the specialized market for HF alky unit cleaning. EnvTech further asserts that this conduct was part of a broader pattern, with USAD hiring competitors’ employees to misappropriate trade secrets under DeBusk’s direction.The United States District Court for the Southern District of Texas dismissed EnvTech’s amended complaint under Federal Rule of Civil Procedure 12(b)(6). The district court found that EnvTech had not plausibly alleged that DeBusk personally engaged in trade secret theft with the necessary mental state or that a pattern of racketeering activity under the Racketeer Influenced and Corrupt Organizations Act (RICO) was sufficiently pleaded. The court dismissed the case with prejudice after EnvTech’s amended complaint did not cure the perceived deficiencies.The United States Court of Appeals for the Fifth Circuit reviewed the dismissal de novo and found that EnvTech plausibly alleged DeBusk’s knowing direction and participation in the theft and use of EnvTech’s trade secrets, as well as a broader pattern of similar conduct involving other competitors. The Fifth Circuit held that EnvTech’s allegations were sufficient to state a RICO claim based on a pattern of trade secret theft and conspiracy, and that the continuity and relatedness requirements for a RICO pattern were satisfied. The Fifth Circuit reversed the district court’s dismissal and remanded the case for further proceedings. View "EnvTech v. DeBusk" on Justia Law

Two businesses and their principals were involved in the sale of a cigar company. The sale was governed by a written agreement which expressly reserved three registered trademarks for the sellers, and did not mention other closely related marks. After the sale, the buyers’ company launched new cigar products and marketing campaigns referencing the history and reputation of the reserved marks and associated product lines. The sellers objected, claiming infringement of their reserved trademark interests and associated goodwill. When attempts to resolve the dispute failed, the sellers filed a federal trademark infringement lawsuit.The first lawsuit was brought in the United States District Court for the Southern District of Florida. That court did not address the merits of the trademark claims. Instead, it found that the claims arose out of the sales agreement, which contained a forum selection clause requiring venue in state court in Lawrence County, South Dakota. On that basis, the Florida district court dismissed the case on forum non conveniens grounds. Subsequently, the buyers initiated a related contract lawsuit in South Dakota state court. The sellers then filed the present lawsuit in the United States District Court for the District of South Dakota, asserting only federal Lanham Act claims and omitting the sales agreement from their initial filings.The United States Court of Appeals for the Eighth Circuit held that the federal trademark claims arose out of the sales agreement, because resolving them would require analyzing the parties’ contractual allocation of trademark rights and goodwill. The court further held that the forum selection clause in the agreement was valid, mandatory, and enforceable under South Dakota law and federal law, and that it required litigation to proceed in state court in Lawrence County, South Dakota. The Eighth Circuit also concluded that state courts have concurrent jurisdiction over federal Lanham Act claims. Accordingly, the Eighth Circuit affirmed the district court’s dismissal. View "Vaughn Boyd v. Deadwood Tobacco Co." on Justia Law

Deque Systems Inc., a company specializing in web accessibility software, developed and registered multiple versions of its DevTools and Rules Help Pages products. To access these, users agreed not to copy, reverse-engineer, or otherwise misuse the software or its documentation. In 2021, BrowserStack, a competing firm, sought to develop its own accessibility testing tools. More than 100 BrowserStack employees created accounts with Deque—agreeing to Deque’s terms—and later, BrowserStack released an Accessibility Toolkit, which Deque alleged was developed by unlawfully copying and reverse-engineering DevTools and the Rules Help Pages.Deque filed suit in the United States District Court for the Eastern District of Virginia, claiming copyright infringement, false advertising, breach of contract, and unjust enrichment, and sought injunctive relief, damages, and other remedies. During discovery, Deque repeatedly failed to properly disclose its damages calculations and supporting evidence by the deadlines set in the court’s scheduling order. Despite several opportunities to supplement its disclosures and a late attempt to introduce expert testimony, Deque did not timely provide the required information. BrowserStack moved to exclude Deque’s damages evidence and for summary judgment. The district court granted these motions, finding that Deque’s noncompliance with disclosure rules was neither substantially justified nor harmless, and that Deque presented no evidence supporting injunctive or other relief.On appeal, the United States Court of Appeals for the Fourth Circuit reviewed and affirmed the district court’s judgment. The Fourth Circuit held that the district court did not abuse its discretion in excluding all evidence of Deque’s damages under Federal Rule of Civil Procedure 37(c)(1) due to repeated and unjustified failures to comply with disclosure requirements. The court also held that summary judgment for BrowserStack was warranted because Deque could not establish entitlement to injunctive, declaratory, or monetary relief. View "Deque Systems Inc. v. Browserstack, Inc." on Justia Law