Justia Intellectual Property Opinion Summaries

In 2014, Ed Sheeran and Amy Wadge wrote the song "Thinking Out Loud," which became a global hit. Structured Asset Sales, LLC (SAS), which owns a portion of the royalties for Marvin Gaye's 1973 song "Let’s Get It On," alleged that Sheeran's song infringed on the copyright of Gaye's song. SAS claimed that the chord progression and syncopated harmonic rhythm in "Thinking Out Loud" were copied from "Let’s Get It On."The United States District Court for the Southern District of New York initially denied Sheeran's motion for summary judgment but later granted it upon reconsideration. The court concluded that the combination of the chord progression and harmonic rhythm in "Let’s Get It On" was too commonplace to warrant copyright protection. The court also excluded evidence and expert testimony related to musical elements not present in the sheet music deposited with the Copyright Office in 1973, which defined the scope of the copyright under the Copyright Act of 1909.The United States Court of Appeals for the Second Circuit reviewed the case and affirmed the district court's judgment. The appellate court agreed that the scope of the copyright was limited to the elements in the deposited sheet music and that the combination of the chord progression and harmonic rhythm was not original enough to be protectable. The court also found that no reasonable jury could find the two songs substantially similar as a whole, given their different melodies and lyrics. Thus, the court held that Sheeran did not infringe on the copyright of "Let’s Get It On" and affirmed the summary judgment in favor of Sheeran. View "Structured Asset Sales, LLC v. Sheeran" on Justia Law

CPC Patent Technologies Pty Ltd. sought discovery from Apple Inc. under 28 U.S.C. § 1782 for use in a prospective patent infringement lawsuit in Germany. CPC aimed to obtain documents describing the functionality of Apple’s biometric security technology. The district court granted CPC’s application, allowing them to serve a subpoena on Apple, but the scope of the discovery and the specific documents Apple must produce remained unresolved.Initially, a magistrate judge denied CPC’s application, finding the discovery requests unduly burdensome. CPC sought review, and the district court affirmed the magistrate judge’s decision under a clear error standard. On appeal, the Ninth Circuit held that the district court should have reviewed the magistrate judge’s decision de novo, as the ruling on a § 1782 application is dispositive. The case was remanded, and the district court, applying de novo review, granted CPC’s application. Apple objected, particularly concerned about the potential requirement to produce source code, but the district court’s order did not definitively resolve these objections.The United States Court of Appeals for the Ninth Circuit reviewed the case and dismissed the appeal for lack of appellate jurisdiction. The court held that the district court’s decision was not final because the scope of discovery and the specific documents Apple must produce were still undetermined. The lack of a final judgment meant that the Ninth Circuit could not evaluate the Intel factors used to determine whether discovery was warranted under § 1782. Consequently, the appeal was dismissed, leaving the district court to resolve the remaining discovery issues. View "CPC PATENT TECHNOLOGIES PTY LTD. V. APPLE INC." on Justia Law

NexStep, Inc. filed a lawsuit against Comcast Cable Communications, LLC, alleging infringement of nine patents, including U.S. Patent Nos. 8,885,802 and 8,280,009. The District Court for the District of Delaware granted summary judgment of non-infringement for the '802 patent after construing the term "VoIP" to require two-way voice communication, which NexStep's infringement theory did not meet. The '009 patent proceeded to a jury trial, where the jury found no literal infringement but did find infringement under the doctrine of equivalents. However, the district court granted Comcast's post-trial motion for judgment as a matter of law, finding NexStep's proof inadequate.The district court's summary judgment for the '802 patent was based on the construction of "VoIP" as requiring two-way voice communication, supported by technical dictionaries and the agreed industry standard meaning. NexStep's argument that VoIP should include one-way audio transmission was rejected. The court found no genuine dispute of material fact and granted summary judgment of non-infringement.For the '009 patent, the jury found no literal infringement but did find infringement under the doctrine of equivalents. However, the district court set aside this verdict, ruling that NexStep failed to provide the required particularized testimony and linking argument to support the doctrine of equivalents. The court found that NexStep's expert testimony was too conclusory and lacked specificity.The United States Court of Appeals for the Federal Circuit affirmed the district court's rulings. The appellate court agreed with the district court's construction of "VoIP" and its grant of summary judgment for the '802 patent. For the '009 patent, the appellate court found that NexStep's expert testimony did not meet the evidentiary requirements for the doctrine of equivalents, as it lacked particularized testimony and linking argument. The court dismissed Comcast's conditional cross-appeal related to the validity of the '009 patent. View "NEXSTEP, INC. v. COMCAST CABLE COMMUNICATIONS, LLC " on Justia Law

The case involves a dispute between two companies over the enforcement of standard-essential patents (SEPs) related to the 5G wireless-communication standard. The plaintiff, a telecommunications company, had made a commitment to license its SEPs on fair, reasonable, and non-discriminatory (FRAND) terms. The defendant, another technology company, sought an antisuit injunction to prevent the plaintiff from enforcing injunctions it had obtained in Colombia and Brazil based on these SEPs.The United States District Court for the Eastern District of North Carolina denied the defendant's request for an antisuit injunction. The district court applied a three-part framework to analyze the request, focusing on whether the domestic suit would be dispositive of the foreign actions. The court concluded that the domestic suit would not necessarily result in a global cross-license between the parties and therefore did not meet the threshold requirement for issuing an antisuit injunction.The United States Court of Appeals for the Federal Circuit reviewed the district court's decision. The appellate court vacated the district court's denial and remanded the case for further proceedings. The appellate court concluded that the district court had erred in its interpretation of the "dispositive" requirement. Specifically, the appellate court held that the FRAND commitment precludes the plaintiff from pursuing SEP-based injunctive relief unless it has first complied with its obligation to negotiate in good faith over a license to those SEPs. Since whether the plaintiff had complied with this obligation was an issue before the district court, the appellate court determined that the "dispositive" requirement was met.The appellate court did not decide whether the defendant was ultimately entitled to the antisuit injunction, leaving that determination to the district court's discretion upon further analysis. The case was remanded for the district court to consider the remaining parts of the foreign-antisuit-injunction framework. View "TELEFONAKTIEBOLAGET LM ERICSSON v. LENOVO (UNITED STATES), INC. " on Justia Law

The case involves a trademark infringement dispute between two Arizona-based personal injury law firms. The plaintiff, Lerner & Rowe, PC, owns three registered trademarks, including the name "Lerner & Rowe." The defendant, Brown, Engstrand & Shely, LLC, doing business as The Accident Law Group (ALG), used a marketing strategy called "conquesting" by purchasing the term "Lerner & Rowe" as a Google Ads keyword. This caused ALG's advertisements to appear when users searched for "Lerner & Rowe" on Google.The United States District Court for the District of Arizona granted summary judgment in favor of ALG on Lerner & Rowe's claims of trademark infringement and unjust enrichment but denied summary judgment on the unfair competition claims. ALG moved for reconsideration, and the district court subsequently granted summary judgment on all claims. Lerner & Rowe appealed the ruling.The United States Court of Appeals for the Ninth Circuit reviewed the case and affirmed the district court's decision. The court held that Lerner & Rowe failed to establish that ALG's use of the "Lerner & Rowe" mark was likely to cause consumer confusion. The court found that while the strength of the mark favored Lerner & Rowe, the evidence of actual confusion was de minimis, the reasonably prudent consumer's degree of care and the labeling and appearance of ALG's advertisements weighed in favor of ALG. The court concluded that Lerner & Rowe did not establish a genuine dispute of material fact regarding the likelihood of confusion, which is essential for a trademark infringement claim under the Lanham Act. The judgment was affirmed. View "LERNER & ROWE PC V. BROWN ENGSTRAND & SHELY LLC" on Justia Law

The case involves a dispute between two companies, Plaintiff Fuel Automation Station, LLC, and Defendant Energera Inc., both of which operate in the fuel industry and hold patents related to automated fuel delivery equipment. The conflict arose after Defendant, despite agreeing not to sue Plaintiff for patent infringement, initiated lawsuits against Plaintiff’s affiliated entity and subcontractor for using Plaintiff’s equipment, alleging infringement of a Canadian patent (the 567 Patent).The United States District Court for the District of Colorado initially reviewed the case. The court found that the covenant not to sue included the relevant parties but was ambiguous regarding whether it covered the 567 Patent. The court applied ordinary rules of contract construction and the patent exhaustion doctrine, which led to the conclusion that the covenant did protect downstream users of Plaintiff’s equipment. The district court granted partial summary judgment in favor of Plaintiff on this basis. However, it found genuine issues of material fact regarding whether the 567 Patent was included in the Patent Rights defined in the agreement, leading to a jury trial. The jury determined that the Patent Rights did cover the 567 Patent and that Defendant had breached the covenant not to sue.The United States Court of Appeals for the Tenth Circuit reviewed the case. The appellate court affirmed the district court’s rulings. It held that the covenant not to sue did indeed extend to downstream users under the patent exhaustion doctrine, meaning Defendant could not sue Plaintiff’s customers for using the equipment. Additionally, the appellate court agreed with the district court and the jury that the Patent Rights included the 567 Patent, thus supporting the finding that Defendant breached the covenant by suing Plaintiff’s affiliated entity and subcontractor. The appellate court affirmed the district court’s judgment in favor of Plaintiff. View "Fuel Automation Station v. Energera" on Justia Law

UTTO Inc. owns a patent for methods to detect and identify underground utility lines. UTTO sued Metrotech Corp. for patent infringement and tortious interference with prospective economic advantage. The district court dismissed both claims, stating that UTTO failed to state a claim for which relief could be granted. The court found that the patent infringement claim required a fuller claim-construction analysis and that the state-law tort claim was correctly dismissed.The United States District Court for the Northern District of California initially denied UTTO's motion for a preliminary injunction, concluding that UTTO had not shown a likelihood of success on the merits of its infringement claim. The court construed the claim language to require "two or more" buried asset data points for each buried asset. Subsequently, the district court dismissed UTTO's First, Second, and Third Amended Complaints, each time granting leave to amend until the final dismissal with prejudice. The court consistently held that UTTO had not sufficiently pleaded facts to meet the "receiving" or "generating" limitations of the patent claim and failed to allege the required elements for the tortious interference claim.The United States Court of Appeals for the Federal Circuit reviewed the case. The court vacated the district court's dismissal of the patent infringement claim, stating that additional claim-construction proceedings were needed to determine the proper scope of the disputed claim language. The court noted that the specification of the patent and potential extrinsic evidence required further examination. However, the court affirmed the dismissal of the state-law tort claim, agreeing with the district court that UTTO had not plausibly alleged that Metrotech's conduct was independently wrongful. The case was remanded for further proceedings consistent with the appellate court's opinion. View "UTTO INC. v. METROTECH CORP. " on Justia Law

A group of major record labels sued Grande Communications Networks, LLC, an internet service provider, for contributory copyright infringement. The plaintiffs alleged that Grande knowingly provided internet services to subscribers who used them to infringe on the plaintiffs' copyrighted works. The plaintiffs presented evidence that Grande received over 1.3 million infringement notices from Rightscorp, a company that identifies infringing activity on peer-to-peer networks, but Grande did not terminate or take action against repeat infringers. Instead, Grande continued to provide internet services to these subscribers, despite knowing about their infringing activities.The United States District Court for the Western District of Texas held a three-week jury trial. The jury found Grande liable for willful contributory copyright infringement and awarded the plaintiffs $46,766,200 in statutory damages. Grande moved for judgment as a matter of law (JMOL) on the issue of liability and for a new trial on damages, but the district court denied these motions. Grande then appealed, challenging the district court's rulings on its JMOL motion, the jury instructions, and the final judgment. The plaintiffs filed a conditional cross-appeal regarding a jury instruction.The United States Court of Appeals for the Fifth Circuit reviewed the case and upheld the jury's verdict, finding that the plaintiffs had provided sufficient evidence to support the jury's finding of contributory copyright infringement. The court concluded that Grande had knowledge of its subscribers' infringing activities and materially contributed to the infringement by continuing to provide internet services without taking basic measures to prevent further damage. However, the court found that the district court erred in awarding statutory damages for each individual song rather than for each album, as the Copyright Act treats all parts of a compilation as one work for statutory damages purposes. Consequently, the court vacated the damages award and remanded the case for a new trial on damages. The plaintiffs' conditional cross-appeal was dismissed as moot. View "UMG Recordings v. Grande Communications Networks, LLC" on Justia Law

AlexSam, Inc. filed a complaint against Aetna, Inc. alleging that Aetna marketed Mastercard-branded and VISA-branded products that infringed two claims of AlexSam’s U.S. Patent No. 6,000,608. The patent, which expired in 2017, covers a multifunction card system using a central processing hub to perform specialized card functions through an existing banking network. AlexSam claimed that Aetna’s products infringed the patent by using this system.The U.S. District Court for the District of Connecticut dismissed AlexSam’s complaint, finding that Aetna’s Mastercard products were licensed under a 2005 agreement between AlexSam and Mastercard, and that AlexSam failed to state a plausible claim of direct infringement for the VISA products. The court concluded that the license covered all transactions involving Mastercard products and that AlexSam’s allegations against Aetna’s VISA products were implausible because they did not show that Aetna itself performed the infringing acts.The United States Court of Appeals for the Federal Circuit reviewed the case and found that the district court erred in its interpretation of the license agreement and in dismissing the claims against the VISA products. The appellate court held that the license agreement only covered transactions involving activation or adding value to an account, not all transactions involving Mastercard products. Therefore, some of the alleged infringing activities could fall outside the scope of the license. The court also found that AlexSam’s complaint sufficiently alleged that Aetna directly and indirectly infringed the patent with its VISA products, providing enough detail to make the claims plausible.The Federal Circuit vacated the district court’s dismissal of the claims related to both the Mastercard and VISA products and remanded the case for further proceedings. The appellate court emphasized that the district court must take all well-pled factual allegations as true when evaluating a motion to dismiss. View "ALEXSAM, INC. v. AETNA, INC. " on Justia Law

The case involves a dispute between two companies, 1-800 Contacts, Inc. (Plaintiff-Appellant) and JAND, Inc., doing business as Warby Parker (Defendant-Appellee). 1-800 Contacts alleged that Warby Parker used its trademarks in keyword search advertisements, violating the federal Lanham Act and New York State common law. Specifically, 1-800 Contacts claimed that Warby Parker purchased keywords consisting of 1-800 Contacts' trademarks to divert customers searching for 1-800 Contacts to Warby Parker's website. However, 1-800 Contacts did not allege that Warby Parker used its trademarks in any other way beyond purchasing them as keywords.The United States District Court for the Southern District of New York granted Warby Parker's motion for judgment on the pleadings, dismissing the case. The district court applied the Polaroid test to determine the likelihood of consumer confusion and found that although 1-800 Contacts' trademarks were strong and there were indications of bad faith by Warby Parker, these factors were insufficient to establish a likelihood of consumer confusion. The court emphasized that Warby Parker's advertisements and landing pages clearly displayed Warby Parker's own mark, which was substantially different from 1-800 Contacts' marks.The United States Court of Appeals for the Second Circuit reviewed the case and affirmed the district court's judgment. The appellate court held that the mere act of purchasing a competitor's trademarks as keywords does not constitute trademark infringement. It found that 1-800 Contacts failed to plausibly allege any likelihood of consumer confusion under the Polaroid test. The court noted that Warby Parker's advertisements and landing pages did not use 1-800 Contacts' trademarks and were clearly marked with Warby Parker's own branding, making it unlikely that consumers would be confused about the source or affiliation of the advertisements. View "1-800 Contacts, Inc. v. JAND, Inc." on Justia Law