Justia Intellectual Property Opinion Summaries

A technology company developed a healthcare revenue management software platform and, in 2014, licensed a white-labeled version to a bank. The bank branded this software as its own and used it to provide services to its customers. The licensing agreement gave the bank access to confidential software and data, while prohibiting reverse engineering, copying, or creating derivative works. In 2018, the bank began developing its own software that performed similar functions. The technology company later noticed a decline in users of its platform and suspected the bank had breached the contract by reverse engineering and copying its software. The company then sought a preliminary injunction to stop the bank from using its new platform and from misusing the information gained through the contract.The United States District Court for the Western District of Missouri reviewed the request for a preliminary injunction. The district court found that the technology company failed to show that it would suffer irreparable harm absent injunctive relief, ruling that any potential financial losses could be compensated with money damages and that claims of reputational harm were too speculative. The court also determined that the contract’s clause permitting injunctive relief was not, by itself, sufficient to require an injunction.On appeal, the United States Court of Appeals for the Eighth Circuit affirmed the district court’s decision. The appellate court held that the district court did not clearly err in finding the alleged harms compensable with money damages or too speculative, nor did it abuse its discretion by giving limited weight to the contract’s injunctive relief provision. The court emphasized that failure to demonstrate likely irreparable harm is, by itself, a sufficient ground to deny a preliminary injunction. Accordingly, the denial of the preliminary injunction was affirmed. View "RMS v. Commerce Bank" on Justia Law

An American artist created a Styrofoam sculpture in Italy in the late 1980s and sold it to a production company owned by a well-known Italian adult film star and politician. About a year later, another artist, internationally recognized for his “appropriation” style, used the sculpture as a set for a series of photographs with the film star, which were subsequently incorporated into several pieces of art. These works were widely exhibited and publicized in Italy and internationally beginning around 1989. The sculptor claims he did not become aware of the alleged infringement until he saw a news article about the works in 2019. He obtained a U.S. copyright registration for the sculpture in 2020 and filed suit against the appropriation artist and his company in December 2021, later adding the artist’s LLC as a defendant.The United States District Court for the Southern District of New York considered cross-motions for summary judgment. It granted the defendants’ motion, holding that the copyright infringement claim was time-barred because the plaintiff, given his immersion in Italian culture and proximity to the events, should have discovered the alleged infringement well before 2019. The court further ruled that, because the copyright claim was untimely, the related Digital Millennium Copyright Act (DMCA) claim and a request for reconsideration of the damages period were moot.On appeal, the United States Court of Appeals for the Second Circuit reviewed the district court’s decision de novo. The Second Circuit affirmed the lower court’s judgment, holding that the copyright infringement claim was time-barred under the discovery rule, as a reasonably diligent copyright holder in the plaintiff’s position would have discovered the alleged infringement more than three years before filing suit. The appellate court also declined to consider the plaintiff’s argument regarding the independent accrual of the DMCA claim, as it was neither properly preserved nor adequately presented on appeal. View "Hayden v. Koons" on Justia Law

The dispute centers on the government’s use of TETRA® software, developed by 4DD Holdings, LLC. The Department of Defense and Department of Veterans Affairs sought to improve data interoperability for healthcare records and decided to purchase commercial software. After a competitive process, Systems Made Simple (SMS), the government’s contractor, selected TETRA. The government acquired licenses for specific numbers of TETRA’s components through an authorized reseller, Immix Technology, Inc., with explicit restrictions on copying. However, SMS exceeded license limits by making thousands of unauthorized copies during development and testing. 4DD discovered these excess copies and initiated negotiations, ultimately settling for payment for additional cores at the previously agreed license rate. The government later ended its use of TETRA.The United States Court of Federal Claims reviewed the case after 4DD filed suit for copyright infringement. During discovery, evidence destruction by the government led to sanctions. Following a bench trial, the court found the government had significantly exceeded its licenses and assessed damages using a hypothetical negotiation approach, considering factors like the existence of alternative software and the nature of the use, instead of defaulting to the rates in the licensing agreements. The court awarded $12,683,065.86 in damages, including compensatory and non-compensatory (statutory) damages.The United States Court of Appeals for the Federal Circuit examined whether damages should be calculated by reference to the license rates or through a hypothetical negotiation. The court held that neither statute nor precedent compels using the license agreement rates for damages; courts may use hypothetical negotiations when material differences exist between licensed and infringing uses. However, the trial court erred by considering unforeseeable future events (like TETRA’s cancellation) in its damages analysis and by awarding non-compensatory statutory damages against the government. The Federal Circuit affirmed in part, vacated in part, and remanded for further proceedings. View "4DD HOLDINGS, LLC v. US " on Justia Law

Senior engineers left their positions at a technology company to join a competitor, bringing with them thousands of confidential documents related to product development, research strategies, and technical know-how. Within days, the competitor was able to deliver complete designs for new product lines using this information. The original employer soon discovered the transfer of trade secrets and filed suit, alleging violations under the federal Defend Trade Secrets Act (DTSA) and initially, the California Uniform Trade Secrets Act (UTSA). Before trial, the case was narrowed to focus on five specific trade secrets, and the plaintiff ultimately dropped the state law claims, proceeding only under the DTSA.The United States District Court for the Northern District of California presided over a jury trial. The jury found that the defendant had misappropriated three trade secrets, awarding $20 million in compensatory damages and $20 million in punitive damages. The court also granted a permanent injunction against the defendant’s use of the trade secrets and awarded over $17 million in attorney fees. However, the court had instructed the jury that the defendant bore the burden of proving that the trade secrets were readily ascertainable by proper means, an element relevant under the California UTSA but not under the DTSA.The United States Court of Appeals for the Ninth Circuit reviewed the case. It held that the district court erred by instructing the jury that the defendant bore the burden of disproving that the trade secrets were readily ascertainable, a burden that should have remained with the plaintiff under the DTSA. The appellate court found that this error was neither invited by the defendant nor harmless, given conflicting evidence and the potential impact on the verdict and damages calculation. The Ninth Circuit reversed the district court’s judgment and remanded for a new trial on liability and damages for the trade secrets the jury found had been misappropriated. View "COMET TECHNOLOGIES USA, INC. V. XP POWER, LLC" on Justia Law

Several senior engineers departed from a semiconductor component manufacturer in 2018, joining a competing firm and bringing with them thousands of confidential documents detailing product designs, research strategies, and proprietary technologies. Within days, the new employer had complete product designs and development plans based on the stolen information. The original employer discovered the theft and initiated a lawsuit for trade secret misappropriation under the federal Defend Trade Secrets Act (DTSA), eventually narrowing the claims to five specific alleged trade secrets and dismissing related state law claims. The case focused on whether the stolen information qualified as trade secrets and the extent of damages.The United States District Court for the Northern District of California presided over a jury trial. The jury found that the defendant had misappropriated several of the alleged trade secrets and awarded $40 million in compensatory and punitive damages. The court granted a permanent injunction barring further use or disclosure of the trade secrets and later approved an attorney fee award exceeding $17 million. The defendant appealed, challenging both the trial conduct and the judgment, while the plaintiff cross-appealed regarding damages for one trade secret.The United States Court of Appeals for the Ninth Circuit reviewed the case and held that the district court erred in instructing the jury that the defendant bore the burden of disproving that the trade secrets were not readily ascertainable by proper means. The DTSA requires the plaintiff to prove this element. The appellate court found that the error was not harmless given conflicting evidence and the impact on damages. Accordingly, the Ninth Circuit reversed the district court’s judgment, including the damages, injunction, and attorney fees, and remanded for a new trial on liability and damages for the relevant trade secrets. View "COMET TECHNOLOGIES USA, INC. V. XP POWER, LLC" on Justia Law

This case concerns a dispute over the alleged infringement of a patent related to an insulated overhead door. Cold Chain, LLC owns U.S. Patent No. 9,151,084, and Ridge Corporation became its exclusive licensee in February 2023. Ridge alleged that Kirk NationaLease Co., Truck & Trailer Parts Solutions, Inc., and Altum LLC infringed claims of the patent by manufacturing and selling a roll-up door. Ridge also brought claims for patent inducement, contributory infringement, tortious interference with business relationships, and false patent marking. The accused product is constructed as a “sandwich” panel with two thermoplastic membranes surrounding a foam layer, which is modified to traverse curved tracks.The United States District Court for the Southern District of Ohio initially granted Ridge’s motion for a preliminary injunction, enjoining the defendants from certain activities related to the accused door. The United States Court of Appeals for the Federal Circuit vacated that injunction, finding Ridge lacked standing as it was not an exclusive licensee with all substantial rights. Ridge then amended its complaint, adding Cold Chain as a plaintiff, and the district court again granted a preliminary injunction, concluding the plaintiffs had a strong likelihood of success on the merits.Upon review, the United States Court of Appeals for the Federal Circuit reversed the district court’s order. The court held that the defendants raised substantial questions regarding whether the accused door met three distinct claim limitations: flexibility along the entire length, the foam forming the second outermost surface, and whether the door qualifies as an “insulated overhead door.” The court also found the plaintiffs failed to demonstrate irreparable harm. The preliminary injunction was therefore reversed and the case remanded for further proceedings. View "RIDGE CORP. v. KIRK NATIONALEASE CO. " on Justia Law

A North Carolina software company initiated a lawsuit in the United States District Court for the Western District of North Carolina against its former business partner, a Dutch entity, after their business relationship dissolved. The plaintiff alleged copyright and trademark infringement, misappropriation of trade secrets, and various state law violations. Shortly after the complaint, the plaintiff obtained a preliminary injunction limiting the defendant’s business activities. Meanwhile, the defendant commenced related litigation in the Netherlands. During those Dutch proceedings, the defendant’s American attorney, Pressly Millen, submitted an affidavit that the plaintiff claimed misrepresented the scope and timing of the U.S. litigation.The Dutch court initially denied the plaintiff’s request to stay the Dutch proceedings, partly relying on representations from the defendant’s counsel. The plaintiff returned to the North Carolina court, seeking an order requiring the defendant to correct these alleged misrepresentations in the Dutch court. The district court ordered the defendant to submit both its order and a corrective statement to the Dutch court. The defendant submitted the order but did not file the separate corrective statement. Later, the Dutch court stayed its proceedings. The plaintiff then moved for contempt sanctions in the North Carolina court against the defendant and its attorneys for failing to comply fully with the correction order. Following a show cause hearing, the district court held the defendant and Millen in civil contempt, sanctioning Millen by suspending his ability to practice in the district, though not holding him jointly liable for monetary sanctions.On appeal, the United States Court of Appeals for the Fourth Circuit found that it had jurisdiction to review the contempt order against Millen, a nonparty. The appellate court held that the district court abused its discretion by imposing civil contempt sanctions on Millen without clear and convincing evidence that the plaintiff was harmed by Millen’s failure to submit the separate statement. The court vacated the civil contempt adjudication and sanction against Millen. View "Dmarcian, Inc. v. Millen" on Justia Law

An American software company based in North Carolina and a Dutch company entered into a business relationship that later soured. The American company alleged that the Dutch company stole its brand name, software code, and customer base. The Dutch company operated a website nearly identical to the American company’s, using its name, logo, and marketing materials, and targeted American customers, even convincing at least one U.S. company to switch providers. Disputes between the parties also led to reciprocal lawsuits in both the United States and the Netherlands, with overlapping subject matter.The United States District Court for the Western District of North Carolina initially issued a preliminary injunction against the Dutch company, finding the American company was likely to succeed on its copyright, trademark, trade secret, and tortious interference claims. After the Supreme Court’s decision in Abitron Austria GmbH v. Hetronic International, Inc. altered the standard for the extraterritorial application of the Lanham Act, the district court modified its injunction to comply with the new “conduct-focused” approach and dismissed the copyright claim. The district court also ordered the Dutch company to correct statements made to the Dutch court and later held the company in civil contempt for failing to comply fully, imposing a monetary sanction.The United States Court of Appeals for the Fourth Circuit reviewed the case. Applying the Supreme Court’s new guidance from Abitron, the Fourth Circuit affirmed the second amended preliminary injunction, holding that the Dutch company’s conduct constituted infringing use in U.S. commerce under the Lanham Act, and that the Defend Trade Secrets Act’s express extraterritorial provision was satisfied by acts in furtherance of misappropriation occurring in the United States. The court dismissed the appeals from the correction and contempt orders for lack of appellate jurisdiction. View "Dmarcian, Inc. v. DMARC Advisor BV" on Justia Law

The matter concerns a patent covering methods for generating digital images using an external visual server, offloading intensive image processing from a client device to a server that generates, compresses, and transmits images back to the client for display. The patent’s claimed improvement over prior art is the complete transfer of visual processing to the external server, so that the client only handles user input and image decompression. Sony sought inter partes review of twelve claims in the patent, arguing they were obvious in light of prior art, particularly a patent (“Wiltshire”) that described a server-based gaming system transmitting compressed images to clients.Previously, the Patent Trial and Appeal Board (the Board) initially found the claims not unpatentable, concluding Wiltshire did not disclose “generating” images at the server as required by the claims. On Sony’s appeal, the United States Court of Appeals for the Federal Circuit vacated that decision, holding that Wiltshire did disclose generating new images at the server, especially since it referenced games such as Doom that require real-time image generation. The Federal Circuit remanded for further proceedings. On remand, the Board found that Wiltshire, in combination with another reference (“Saha”) disclosing MPEG compression, taught all claim limitations, including the necessary image compression and transmission steps, and held all challenged claims unpatentable as obvious.On appeal, the United States Court of Appeals for the Federal Circuit reviewed whether the Board had exceeded the scope of its mandate or lacked substantial evidence for its findings. The Federal Circuit held that the Board properly followed its mandate, did not improperly revisit issues, and that substantial evidence supported the Board’s finding that the prior art disclosed all elements of the challenged claims. The court affirmed the Board’s decision, holding the claims unpatentable as obvious. View "INTELLECTUAL PIXELS LIMITED v. SONY INTERACTIVE ENTERTAINMENT LLC " on Justia Law

The dispute centered on two patents owned by Wyeth that claim methods of treating non-small cell lung cancer (NSCLC) resistant to two specific drugs, gefitinib and erlotinib, by administering “irreversible” EGFR inhibitors. The patents require the daily administration of a “unit dosage” of an irreversible EGFR inhibitor that covalently binds to specific amino acids in the EGFR protein. The patent specifications list three example compounds, describe in vitro test results, and provide general dosage ranges. However, the specifications do not include any working examples of dosing regimens administered to human patients, nor do they explain how to reliably determine a therapeutically effective and safe dosage for such patients.In the United States District Court for the District of Delaware, Wyeth sued AstraZeneca for alleged infringement based on AstraZeneca’s marketing of an irreversible EGFR inhibitor. After a jury found in Wyeth’s favor, determining the asserted patent claims were not invalid and awarding damages, AstraZeneca renewed its motion for judgment as a matter of law (JMOL), arguing that the patents were invalid for lack of enablement. The district court granted JMOL, concluding that the patents did not provide sufficient guidance for a skilled artisan to determine a suitable daily unit dosage for patients without undue experimentation, especially given the evidence that some disclosed dosage ranges would be toxic in humans.The United States Court of Appeals for the Federal Circuit affirmed the district court’s judgment. The Federal Circuit held that the asserted claims were invalid for lack of enablement under 35 U.S.C. § 112(a). The court concluded that the patent specifications failed to teach skilled artisans how to determine, without undue experimentation, daily unit dosages that would be therapeutically effective and safe for patients across the full scope of the claimed compounds. View "WYETH LLC v. ASTRAZENECA PHARMACEUTICALS LP " on Justia Law