Justia Intellectual Property Opinion Summaries

Ogen and Dorit Perry, along with their limited partnership Dahlex LP, sought a writ of mandate to compel Milestone Financial LLC and its managers to produce corporate records under the California Revised Uniform Limited Liability Company Act. The trial court partially granted the petition, ordering the disclosure of some records but redacting member names and addresses, deeming the member list a protected trade secret. The court also declined to order the production of audited records.Milestone appealed, arguing the Perrys lacked standing, the records request did not meet statutory standards, and the redaction order should have included more documents. The Perrys cross-appealed, contending the member list is not a trade secret and the court erred in not ordering audited records. They also appealed the trial court's order on attorney fees and costs, arguing the awarded amount did not reflect the findings in the writ order and was an abuse of discretion.The California Court of Appeal, Sixth Appellate District, found substantial evidence supporting the trial court's decision that the Perrys' request was reasonably related to their interests. The court affirmed the trial court's finding that the member list is a trade secret but directed the trial court to amend its order to require Milestone to provide financial statements accompanied by the appropriate report or certificate. The appellate court also reversed the attorney fee award and remanded for reconsideration, requiring the trial court to provide a more detailed explanation for the reduced fee award. The judgment was otherwise affirmed, and each party was ordered to bear its own costs on appeal. View "Perry v. Stuart" on Justia Law

Carroll Shelby Licensing, Inc. and Carroll Hall Shelby Trust filed a lawsuit against Denice Halicki and her associated entities, alleging that Halicki's copyright claims over the "Eleanor" Ford Mustangs were invalid. Halicki counterclaimed, asserting that Shelby's "GT-500CR" Mustangs infringed her copyright in Eleanor, a collection of Mustangs featured in four films. The dispute also involved claims of breach of a prior settlement agreement between the parties.The United States District Court for the Central District of California held that Eleanor was not entitled to character copyright protection and dismissed Halicki’s breach of contract claim based on the settlement agreement. The court also denied Shelby’s request for a declaration that the GT-500CR did not infringe any of Halicki’s rights.The United States Court of Appeals for the Ninth Circuit reviewed the case and affirmed the district court’s summary judgment that Eleanor was not entitled to character copyright protection. The Ninth Circuit applied the Towle test and concluded that Eleanor did not have conceptual qualities, consistent traits, or distinctive elements necessary for character copyright protection. The court also affirmed the district court’s judgment that Shelby did not violate the settlement agreement, which prohibited Shelby from copying only Eleanor’s distinctive hood and inset lights.However, the Ninth Circuit reversed the district court’s denial of declaratory relief and remanded the case for the purpose of issuing the appropriate declaration. The appellate court held that a declaration would clarify and settle the legal relations between Shelby and Halicki and provide Shelby relief from the uncertainty that led to the proceedings. View "CARROLL SHELBY LICENSING, INC. V. HALICKI" on Justia Law

Sigray, Inc. filed a petition with the Patent and Trademark Office (PTO) requesting inter partes review of all claims of U.S. Patent No. 7,400,704, owned by Carl Zeiss X-Ray Microscopy, Inc. The patent claims X-ray imaging systems incorporating projection magnification. The PTO's Patent Trial and Appeal Board (PTAB) granted the petition, finding a reasonable likelihood that at least one of the challenged claims was unpatentable. However, in its final written decision, the PTAB declined to hold any of the asserted claims unpatentable. Sigray appealed the PTAB's decision regarding the unpatentability of claims 1-6 based on the prior art reference Jorgensen.The PTAB found that Sigray had not shown that Jorgensen inherently disclosed projection magnification within the claimed range. The PTAB concluded that there was a dispute about whether Jorgensen taught a diverging X-ray beam and found that Sigray failed to demonstrate that Jorgensen's X-ray beam diverged enough to result in projection magnification between 1 and 10 times.The United States Court of Appeals for the Federal Circuit reviewed the PTAB's decision. The court found that the PTAB had implicitly construed the claim limitation "between 1 and 10" to exclude small amounts of magnification, which was an error. The court held that the plain meaning of "between 1 and 10" includes even tiny, undetectable magnification. The court concluded that Jorgensen inherently contained projection magnification, as the evidence showed that Jorgensen's X-ray beams were not completely parallel and must result in some magnification. Therefore, the court reversed the PTAB's decision regarding claims 1, 3, and 4, finding them anticipated by Jorgensen. The court vacated the PTAB's decision regarding claims 2, 5, and 6 and remanded for further proceedings to determine if these claims would have been obvious in light of the opinion. View "SIGRAY, INC. v. CARL ZEISS X-RAY MICROSCOPY, INC. " on Justia Law

Plaintiff Jana Romanova, a professional photographer, filed a lawsuit against Defendant Amilus Inc. for willful copyright infringement. Romanova alleged that Amilus published her photograph on its website without authorization. Despite being served, Amilus did not respond or appear in court. Romanova moved for a default judgment, but the district court ordered Amilus to show cause why the motion should not be granted. After receiving no response from Amilus, the court then ordered Romanova to show cause why the use of her photograph did not constitute fair use. The district court ultimately dismissed Romanova’s complaint with prejudice, concluding that Amilus’s use of the photograph was fair use.The United States District Court for the Southern District of New York dismissed Romanova’s claim, finding that the fair use defense was clearly established on the face of the complaint. The court reasoned that Amilus’s publication of the photograph communicated a different message than the original, which justified the fair use defense. Romanova appealed the decision, arguing that the court erred in its substantive finding of fair use and in raising the defense sua sponte for a non-appearing defendant.The United States Court of Appeals for the Second Circuit reviewed the case and reversed the district court’s judgment. The appellate court found that the district court misunderstood the fair use doctrine, particularly the requirement for a transformative purpose and justification for copying. The appellate court held that Amilus’s use of the photograph did not communicate a different message and lacked any valid justification for copying. Consequently, the appellate court remanded the case with instructions to enter a default judgment in favor of Romanova. View "Romanova v. Amilus Inc." on Justia Law

Rebecca Curtin filed an opposition to United Trademark Holdings’ (UTH) registration of the mark RAPUNZEL for dolls and toy figures, claiming the mark was generic, descriptive, and failed to function as a trademark. Curtin, a doll collector and mother, argued that the registration would harm consumers by reducing competition and increasing prices for Rapunzel merchandise. She also claimed it would chill the creation of new Rapunzel-themed dolls and toys.The Trademark Trial and Appeal Board (TTAB) dismissed Curtin’s opposition, concluding she was not statutorily entitled to oppose the registration under 15 U.S.C. § 1063. The TTAB applied the Lexmark framework, which requires a plaintiff to fall within the zone of interests protected by the statute and to show a reasonable belief in damage proximately caused by the registration. The TTAB found that Curtin, as a consumer, did not have a commercial interest protected by the Lanham Act and that her alleged injuries were too remote and speculative.The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the TTAB’s decision, agreeing that the Lexmark framework was correctly applied. The court held that the interests protected by the Lanham Act in this context are commercial, and Curtin, as a consumer, did not fall within the zone of interests. Additionally, the court found that Curtin’s alleged injuries were derivative of harms to commercial actors and too remote to establish proximate causation. Thus, Curtin was not entitled to oppose the registration of the RAPUNZEL mark. View "CURTIN v. UNITED TRADEMARK HOLDINGS, INC. " on Justia Law

Vetements Group AG filed applications to register two marks, "VETEMENTS" in standard characters and in stylized form, for clothing items and online retail store services featuring clothing. The United States Patent and Trademark Office (PTO) Examining Attorney refused the applications, asserting that the marks were generic or merely descriptive without acquired distinctiveness, and thus barred from registration under Section 2(e)(1) of the Trademark Act.The Trademark Trial and Appeal Board (Board) affirmed the Examining Attorney's refusal, applying the foreign equivalents doctrine. The Board found that "VETEMENTS," which translates to "clothing" in English, was generic for the identified goods and services. The Board also determined that the marks were highly descriptive and that Vetements Group AG failed to establish acquired distinctiveness among U.S. consumers.The United States Court of Appeals for the Federal Circuit reviewed the case and upheld the Board's decision. The court agreed that the foreign equivalents doctrine was correctly applied, noting that an appreciable number of Americans are capable of translating "VETEMENTS" from French to English. The court found substantial evidence supporting the Board's conclusion that the marks were generic, as they directly referred to the genus of goods and services in question. Consequently, the court affirmed the Board's decision to refuse registration of the marks. View "In Re VETEMENTS GROUP AG " on Justia Law

Rodney Woodland, a freelance artist and model, sued Montero Lamar Hill, also known as Lil Nas X, for copyright infringement. Woodland claimed that Hill posted photos on his Instagram page that were too similar to photos Woodland had posted on his own Instagram account. Woodland's photos, posted between August 2018 and July 2021, received between eight and seventy-five "likes." Hill's allegedly infringing photos were posted between March and October 2021 and received hundreds of thousands to millions of "likes."The United States District Court for the Central District of California dismissed Woodland's claims, including copyright infringement, declaratory relief, accounting, and unjust enrichment. The court found that Woodland failed to allege facts showing a reasonable possibility that Hill viewed Woodland's photos on Instagram and that Hill's photos were not substantially similar to Woodland's. Woodland was granted leave to amend his complaint but ultimately failed to state a claim for copyright infringement.The United States Court of Appeals for the Ninth Circuit reviewed the case and affirmed the district court's dismissal. The Ninth Circuit held that Woodland did not plausibly allege that Hill had "access" to Woodland's photos, as the mere fact that Woodland posted his photos on Instagram was insufficient to show that Hill had viewed them. Additionally, the court found that Woodland failed to show that Hill unlawfully appropriated his photos. The court explained that the Copyright Act protects only the "selection" and "arrangement" of individual elements in a photo, and the photos in question were not substantially similar in their selection and arrangement of elements. Thus, Woodland's copyright infringement claim was dismissed. View "Woodland v. Hill" on Justia Law

The case involves a patent interference proceeding between the Regents of the University of California, the University of Vienna, and Emmanuelle Charpentier (collectively “Regents”) and the Broad Institute, Massachusetts Institute of Technology, and the President and Fellows of Harvard College (collectively “Broad”). The dispute centers on the priority of invention for a CRISPR-Cas9 system that edits DNA in eukaryotic cells using a single-guide RNA.The Patent Trial and Appeal Board (PTAB) issued a final decision concluding that Broad has priority over Regents for the CRISPR-Cas9 system. The PTAB determined that Broad reduced the invention to practice by October 5, 2012, when Broad's scientist, Feng Zhang, submitted a manuscript to Science. The PTAB rejected Regents' earlier asserted dates of conception and reduction to practice, which were based on various disclosures and experiments conducted by Regents' scientists. The PTAB also denied Regents' motion to be accorded the benefit of the filing date of its first and second provisional patent applications, determining that they lacked written description support for the claimed invention.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the PTAB legally erred by conflating the standards for conception and reduction to practice, requiring Regents' scientists to know their invention would work to prove conception. The court vacated the PTAB's decision on conception and remanded for reconsideration under the correct legal framework. The court affirmed the PTAB's decision on written description, finding no legal error in the PTAB's analysis. The court dismissed Broad's cross-appeal on claim construction as moot, as the PTAB's denial of Broad's preliminary motions was based on independently sufficient grounds unrelated to claim construction. View "THE BROAD INSTITUTE, INC. v. THE REGENTS OF THE UNIVERSITY OF CALIFORNIA " on Justia Law

Incyte Corporation appealed a post-grant review (PGR) final written decision from the Patent Trial and Appeal Board (Board) which held that Incyte failed to prove claims 1–7 and 9–21 of U.S. Patent No. 10,561,659 were unpatentable. The '659 patent, owned by Sun Pharmaceutical Industries, Inc., discloses a method of treating hair-loss disorders using deuterium-modified ruxolitinib. Incyte petitioned for PGR, arguing the claims were obvious, but the Board found Incyte's arguments unpersuasive and upheld the claims. Incyte's request for rehearing was also denied.The United States Court of Appeals for the Federal Circuit reviewed the case. Sun argued that Incyte lacked Article III standing to appeal. The court noted that standing is a threshold jurisdictional issue that must be addressed before reaching the merits of an appeal. To establish standing, Incyte needed to demonstrate an injury in fact, which it attempted to do by claiming potential infringement liability and invoking the competitor standing doctrine.The court found that Incyte's plans to develop a deuterated ruxolitinib product were too speculative to establish concrete plans for future activity that would create a substantial risk of future infringement. The court also determined that Incyte's reliance on the competitor standing doctrine was insufficient because Incyte did not show it was currently engaging in or had nonspeculative plans to engage in conduct covered by the claims of the '659 patent.Ultimately, the United States Court of Appeals for the Federal Circuit dismissed the appeal for lack of jurisdiction, concluding that Incyte failed to establish an injury in fact sufficient to confer Article III standing. View "INCYTE CORPORATION v. SUN PHARMACEUTICAL INDUSTRIES, INC. " on Justia Law

Ingenico Inc. filed a declaratory judgment action against IOENGINE, LLC, in the District of Delaware, asserting that IOENGINE's patents were invalid. The patents in question, U.S. Patent No. 9,059,969 and U.S. Patent No. 9,774,703, relate to a portable device, such as a USB thumb drive, that includes a processor for network communication. IOENGINE counterclaimed, alleging infringement. Ingenico argued that the patents were invalid due to prior art, specifically a USB device known as the DiskOnKey System, which included a Firmware Upgrader.The District Court for the District of Delaware held a jury trial, which resulted in a verdict finding the claims of the patents invalid as anticipated and obvious. IOENGINE filed a motion for judgment as a matter of law (JMOL) and a motion for a new trial, both of which were denied by the district court. IOENGINE then appealed the decision, challenging the jury's findings and the district court's rulings on jury instructions and the introduction of prior art.The United States Court of Appeals for the Federal Circuit reviewed the case. The court found that substantial evidence supported the jury's verdict that the DiskOnKey System, including the Firmware Upgrader, was in public use before the critical date, thus invalidating the patents. The court also held that the district court did not err in its jury instructions or in allowing Ingenico to introduce the prior art at trial. The court clarified that IPR estoppel under 35 U.S.C. § 315(e)(2) did not preclude Ingenico from using the DiskOnKey System to argue that the claimed invention was known or used by others, on sale, or in public use, as these grounds could not have been raised during the IPR.The Federal Circuit affirmed the district court's judgment, upholding the jury's verdict of invalidity. View "INGENICO INC. v. IOENGINE, LLC " on Justia Law