Justia Intellectual Property Opinion Summaries

Akamai Technologies, Inc. filed suit in the United States District Court for the Central District of California seeking a declaratory judgment of noninfringement regarding two patents owned by AMHC, Inc. and its subsidiary, MediaPointe, Inc. These patents describe systems and methods for efficiently routing streamed media content over the Internet using an “intelligent distribution network.” After Akamai initiated litigation, MediaPointe counterclaimed for infringement, and Akamai further sought a declaratory judgment of invalidity.During claim construction, the district court issued an order finding that certain claims containing the terms “optimal” and “best” were invalid for indefiniteness. For the remaining asserted claims, the district court granted Akamai summary judgment of noninfringement. The court excluded key portions of MediaPointe’s expert testimony as untimely, and also found that, even considering that testimony, MediaPointe’s evidence did not create a genuine dispute regarding infringement. Specifically, the court determined that the accused Akamai system did not meet the required limitation of “receiving an initial request for media content” as understood in the context of the patents.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed both the invalidity and noninfringement judgments. The court held that the “optimal” and “best” claim terms were indefinite because the intrinsic record failed to provide objective boundaries for determining what is “optimal” or “best.” The court also concluded that, even with the excluded expert testimony included, MediaPointe had not presented sufficient evidence to create a genuine dispute of material fact regarding infringement. The Federal Circuit affirmed the district court’s judgment. View "AKAMAI TECHNOLOGIES, INC. v. MEDIAPOINTE, INC. " on Justia Law

EscapeX IP, LLC brought a patent infringement suit against Google LLC, alleging that Google’s YouTube Music product infringed its ’113 patent. After Google responded, pointing out factual deficiencies in EscapeX’s claims and highlighting that the accused features either did not exist or predated the patent, EscapeX amended its complaint to target a different Google product. Google repeatedly notified EscapeX that its claims were baseless and requested dismissal, but EscapeX did not respond. The case was transferred from the Western District of Texas to the Northern District of California. Meanwhile, a separate court found all claims of the ’113 patent ineligible under 35 U.S.C. § 101, which EscapeX did not appeal.Upon transfer, EscapeX attempted to file a joint stipulation of dismissal without Google’s consent, misstating that both parties would bear their own fees. Google demanded withdrawal, and a corrected stipulation was later filed. Google moved for attorneys’ fees under 35 U.S.C. § 285, arguing EscapeX’s claims were frivolous and that EscapeX had unreasonably prolonged litigation. The United States District Court for the Northern District of California found Google to be the prevailing party, determined EscapeX’s case was exceptional due to its lack of adequate pre-suit investigation and frivolous claims, and awarded Google attorneys’ fees and costs. EscapeX then moved to amend the judgment under Rule 59(e), presenting new declarations as “new evidence,” but the district court denied the motion, finding the evidence was not newly discovered.Google sought additional attorneys’ fees under 28 U.S.C. § 1927 for costs incurred opposing EscapeX’s Rule 59(e) motion. The district court found EscapeX’s motion frivolous and sanctioned EscapeX and its attorneys jointly and severally. On appeal, the United States Court of Appeals for the Federal Circuit affirmed all of the district court’s orders. The main holdings were that the case was exceptional under § 285, supporting an award of attorneys’ fees, and that sanctions under § 1927 for frivolous litigation conduct were appropriate. View "ESCAPEX IP, LLC v. GOOGLE LLC " on Justia Law

After separating from his wife Monique in 2016, Brett, a sculptor, was ordered in a dissolution proceeding to pay spousal and child support. Brett accumulated approximately $2 million in unpaid support obligations and, according to his own testimony, held no assets apart from a copyright in certain works associated with Michael Jackson. Monique moved to have a receiver appointed and to compel Brett to assign the copyright to the receiver for purposes of monetization to satisfy the outstanding support debt.The Superior Court of Los Angeles County granted Monique’s request, appointing a receiver and ordering Brett to assign his copyright to that receiver. Brett did not dispute his debt or the fact that his copyright was his only asset but argued that existing law did not authorize courts to compel the assignment of a copyright, contending that such authority existed only for patents. He timely appealed from this order.The California Court of Appeal, Second Appellate District, Division One, reviewed the case. The court held that, under Code of Civil Procedure section 695.010, subdivision (a), all property of a judgment debtor, including copyrights, is subject to enforcement of a money judgment unless a specific exception applies. The court found no exception for copyrights. It further reasoned that although no published California case had previously addressed forced assignment of copyrights, statutes and past cases regarding other intellectual property, such as patents, supported the trial court’s authority. The court also found persuasive support in analogous federal and out-of-state decisions. Consequently, the Court of Appeal affirmed the trial court’s order compelling Brett to assign his copyright to the receiver and denied Monique’s request for appellate sanctions. Respondent was awarded costs on appeal. View "In re Marriage of Strong" on Justia Law

Computer Sciences Corporation (CSC), an American technology services provider, licensed two insurance software platforms, Vantage and CyberLife, to Transamerica, an insurance company. Tata Consultancy Services (TCS), a technology consulting firm, was later engaged by Transamerica as a third-party consultant to maintain CSC’s platforms. CSC and Transamerica signed a Third-Party Addendum allowing TCS access to CSC’s software “solely for the benefit” of Transamerica. During this period, TCS sought to develop its own insurance platform, BaNCS, and won a $2.6 billion contract to transition Transamerica’s business to BaNCS. Evidence arose that TCS used CSC’s confidential information, including source code and technical manuals, for its BaNCS development, prompting CSC to allege trade secret misappropriation when a CSC employee discovered TCS sharing proprietary materials internally.CSC sued TCS in the United States District Court for the Northern District of Texas under the Defend Trade Secrets Act (DTSA). After an eight-day trial with an advisory jury, the jury found in favor of CSC, recommending substantial damages. The district court found TCS liable, awarding CSC $56 million in compensatory damages (based on unjust enrichment), $112 million in exemplary damages, and imposing a permanent injunction barring TCS’s use of CSC’s trade secrets and BaNCS versions developed with misappropriated material.On appeal, the United States Court of Appeals for the Fifth Circuit affirmed the district court’s findings that TCS’s use was unauthorized under the relevant contracts and that TCS had the requisite mens rea, including willful and malicious misappropriation. The Fifth Circuit also affirmed the damages awards and the exemplary damages ratio. However, the court vacated the injunction in part, remanding for the district court to revise it: the injunction’s prohibition on TCS’s future use of BaNCS material developed post-misappropriation was found duplicative of the damages, and the definition of parties bound by the injunction was ordered to be clarified in line with Federal Rule of Civil Procedure 65(d)(2). View "Computer Sciences v. Tata Consultancy" on Justia Law

A corporation, formed as a captive insurance company in North Carolina, was owned by three shareholders who also served as its directors. The majority shareholder, who was not involved in daily operations, alleged that the two minority shareholders, who managed the company, and a Chief Technology Officer (CTO) hired to develop proprietary software, conspired to create a competing insurance entity. The proprietary software in question was designed to analyze medical records and price insurance contracts more effectively, and was claimed to be confidential and of significant economic value. All employees, including the CTO and the minority shareholders, were required to sign employment contracts containing confidentiality and invention provisions, which specified that inventions and confidential information developed during employment would be the exclusive property of the company.The plaintiffs filed suit in the United States District Court for the Eastern District of North Carolina, alleging, among other claims, that the defendants misappropriated trade secrets in violation of the Defend Trade Secrets Act (DTSA). The defendants moved for judgment on the pleadings. The district court granted the motion as to the DTSA claim, finding that the plaintiffs had not sufficiently alleged that they took reasonable measures to protect the secrecy of the proprietary software. The court declined to exercise supplemental jurisdiction over the remaining state law claims. The plaintiffs appealed the dismissal of the DTSA claim.The United States Court of Appeals for the Fourth Circuit reviewed the district court’s decision de novo. The Fourth Circuit held that the plaintiffs had plausibly alleged ownership of a trade secret, reasonable measures to protect its secrecy through confidentiality agreements, and misappropriation by the defendants. The court concluded that, at the pleading stage, the existence of confidentiality and invention provisions was sufficient to allege reasonable efforts to maintain secrecy. The Fourth Circuit reversed the district court’s dismissal of the DTSA claim and remanded for further proceedings. View "Samuel Sherbrooke Corporate, Ltd v. Mayer" on Justia Law

Duke University and Allergan Sales, LLC own a patent relating to methods for treating hair loss using certain prostaglandin F (PGF) analogs. The patent describes a method of growing hair by topically applying a composition containing a PGF analog with specific structural features. Allergan markets Latisse®, a product containing bimatoprost, a PGF analog, for eyelash hair growth. Sandoz manufactures a generic version of Latisse®. Allergan sued Sandoz for patent infringement, specifically asserting claim 30 of the patent, which covers a subgenus of PGF analogs with defined chemical characteristics.In the United States District Court for the District of Colorado, Sandoz stipulated to infringement but challenged the validity of claim 30, arguing it lacked adequate written description, was obvious, and not enabled. After a jury trial, the jury found in favor of Allergan on all grounds, concluding Sandoz had not proven invalidity and awarding damages. Sandoz moved for judgment as a matter of law and for a new trial, both of which the district court denied. Sandoz then appealed.The United States Court of Appeals for the Federal Circuit reviewed the district court’s denial of judgment as a matter of law de novo, applying Tenth Circuit standards. The Federal Circuit held that no reasonable jury could have found that claim 30 was adequately described in the patent specification. The court found that the specification broadly described billions of compounds, while claim 30 covered a much narrower subgenus, and the patent failed to provide sufficient guidance (“blaze marks”) to direct a skilled artisan to the claimed compounds. The court concluded that the written description requirement of 35 U.S.C. § 112(a) was not met and reversed the district court’s judgment, holding claim 30 invalid for lack of adequate written description. View "DUKE UNIVERSITY v. SANDOZ INC. " on Justia Law

This case concerns a dispute between two companies over alleged infringement of two patents related to illuminated school bus signs. The plaintiff, Smartrend Manufacturing Group (SMG), Inc., claimed that Opti-Luxx Inc. infringed both a design patent (D930) and a utility patent (’491) with its single-piece illuminated school bus sign, which features a rigid plastic housing, an LED light board, and a yellow lens with black lettering. The design patent describes certain features as “transparent,” while the utility patent claims a sign with a “frame” that is separate from the sign panel.The United States District Court for the Western District of Michigan held a jury trial, where the jury found that Opti-Luxx infringed both patents. The district court denied Opti-Luxx’s motion for judgment as a matter of law (JMOL) and issued a permanent injunction against Opti-Luxx. The court construed the term “transparency” in the design patent to mean both “transparent” and “translucent,” and determined that the “frame” in the utility patent must be a separate and distinct component. The trial on the utility patent proceeded under the doctrine of equivalents, as the accused product did not literally have a separate frame.On appeal, the United States Court of Appeals for the Federal Circuit found that Opti-Luxx had forfeited its objection to the plaintiff’s expert testimony regarding the design patent. However, the appellate court held that the district court erred in construing “transparency” to include “translucent,” and ordered a new trial on infringement of the design patent. Regarding the utility patent, the appellate court concluded that no reasonable jury could have found infringement under the doctrine of equivalents, as the accused product did not perform the required functions of a separate frame. The Federal Circuit reversed the judgment of infringement for the utility patent, vacated the judgment and injunction for the design patent, and remanded for further proceedings. View "SMARTREND MANUFACTURING GROUP (SMG), INC. v. OPTI-LUXX INC. " on Justia Law

A company developed a specialized vehicle-mounted stairway, with design work primarily performed by the founder’s son, who was promised equity in the business but never received it due to the majority owner’s repeated refusals. The son, with his father’s assistance, eventually obtained a patent for the design, which he used as leverage to seek compensation. Negotiations between the parties failed, leading to the father’s removal as company president and the company filing suit against both the father and son. The company alleged breach of fiduciary duty, misappropriation of trade secrets, business conspiracy, unjust enrichment, fraud, and breach of contract, while the son counterclaimed for patent infringement.The United States District Court for the Eastern District of Virginia granted summary judgment to the father and son on all claims except a breach of contract claim against the father and the son’s patent counterclaim. The court found most claims time-barred or unsupported by evidence, and later, the company voluntarily dismissed its remaining claim. The son’s patent was invalidated by a jury. The district court also awarded attorneys’ fees and costs to the father as the prevailing party under the company’s operating agreement.The United States Court of Appeals for the Fourth Circuit reviewed the case de novo and affirmed the district court’s rulings. The appellate court held that the company’s claims were either time-barred under the applicable statutes of limitations or failed on the merits, as there was no evidence the son benefited from the patent or that he had signed a non-disclosure agreement. The court also affirmed the award of attorneys’ fees and costs to the father, finding no error in the district court’s application of Delaware law or its determination of the prevailing party. View "Mission Integrated Technologies, LLC v. Clemente" on Justia Law

Canatex Completion Solutions, Inc. owns a patent for a “releasable connection” device used in oil and gas wells, which consists of two parts that can be disconnected downhole if necessary. Canatex alleged that several companies infringed its patent, specifically claims 1, 4–13, and 15–19. The dispute centered on the claim language “the connection profile of the second part,” which appears in the independent claims and the specification. Canatex argued that this was a clerical error and that a person skilled in the art would recognize the intended meaning as “the connection profile of the first part,” since only the first part’s connection profile is described and depicted in the patent.The United States District Court for the Southern District of Texas reviewed the case. During claim construction, the defendants argued that the claims were indefinite due to the lack of an antecedent basis for the disputed phrase. The district court agreed, finding the error was not evident from the face of the patent and that the correction was not as simple as Canatex suggested. The court held all asserted claims invalid for indefiniteness and entered final judgment based on a joint stipulation.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the district court’s claim construction de novo. The appellate court held that the error in the claim language was evident on the face of the patent and that the only reasonable correction, based on the intrinsic evidence, was to change “second” to “first.” The Federal Circuit reversed the district court’s judgment, ruling that judicial correction of the claim was appropriate under the demanding standard for such corrections, and remanded the case for further proceedings consistent with the corrected claims. View "CANATEX COMPLETION SOLUTIONS, INC. v. WELLMATICS, LLC " on Justia Law

The case concerns the validity of certain claims in two patents owned by a pharmaceutical company, which relate to methods of treating multiple sclerosis (MS) using oral administration of cladribine according to a specific dosing regimen. Before the patents’ priority date, cladribine was already known as a treatment for MS, but was typically administered intravenously or subcutaneously due to safety concerns. The patent owner, in partnership with another company, developed an oral formulation and dosing schedule for cladribine. During this collaboration, confidential information was exchanged, and a third party later filed a patent application (the Bodor reference) disclosing a similar dosing regimen. Another prior publication (Stelmasiak) described different cladribine regimens for MS.The Patent Trial and Appeal Board (PTAB) reviewed two inter partes review petitions challenging the patents’ claims as obvious over the combination of the Bodor and Stelmasiak references. The Board determined that the Bodor reference qualified as prior art, finding no complete overlap in inventors between the patents and the reference, and concluded that the patent owner failed to show that all named inventors of the patents contributed to the relevant disclosure in Bodor. The Board also found that the combination of Bodor and Stelmasiak rendered all challenged claims obvious, and rejected arguments that the claims required weight-based dosing or that the prior art failed to teach the claimed regimen.On appeal, the United States Court of Appeals for the Federal Circuit affirmed the Board’s decisions. The court clarified that, under pre-AIA law, a reference is “by another” and thus prior art unless the inventive entity is identical to that of the challenged patent. The court held that the Board did not err in its legal analysis, factual findings, or claim construction, and that substantial evidence supported the Board’s obviousness determination. The Board’s unpatentability findings were affirmed. View "MERCK SERONO S.A. v. HOPEWELL PHARMA VENTURES, INC. " on Justia Law