Justia Intellectual Property Opinion Summaries

The case concerns two individuals who previously worked for a consulting firm that provided proprietary software to several state agencies. After leaving the company, they joined a competitor and helped secure a contract to develop similar software for other states. In 2016, a whistleblower alleged that the defendants' new employer was using materials misappropriated from their former company. This triggered a multi-agency federal investigation that lasted approximately six years. By the time charges were brought, two potentially significant witnesses had died, and several state agencies had destroyed documents that might have been relevant to the defense.The United States District Court for the Southern District of West Virginia, after the defendants moved to dismiss, found that the loss of the witnesses' testimony and the destruction of documents resulted in substantial prejudice to the defendants. The district court concluded that the government's lengthy investigation did not sufficiently justify the preindictment delay, given the prejudice to the defense, and dismissed ten out of fourteen counts in the superseding indictment on due process grounds. The government appealed this dismissal.The United States Court of Appeals for the Fourth Circuit reviewed the case and held that, even assuming the defendants suffered actual and substantial prejudice, the government's preindictment delay was the result of a good faith, ongoing investigation and not motivated by bad faith or an attempt to gain a tactical advantage. The Fourth Circuit clarified that investigative delay, without improper motive, does not violate due process, even if it results in prejudice to the defendant. The court reversed the district court’s dismissal of the counts and remanded the case for further proceedings on all counts. View "US v. Minkkinen" on Justia Law

The case concerns a dispute between two companies involved in the production and sale of coiled tubing for the oil and gas industry. One company, having acquired assets and documents from a predecessor, developed a coiled tubing product and obtained several patents (the ’256, ’074, and ’075 patents) covering aspects of this technology. The predecessor’s documents disclosed a product with overlapping technical specifications compared to at least some claims of these patents. During the patent application process, the company submitted a related public reference to the Patent and Trademark Office (Chitwood), but did not disclose the predecessor’s internal documents (the CYMAX Documents) that contained additional details. Internal discussions reflected uncertainty among inventors and counsel about the relevance and necessity of disclosing these documents.After disputes arose in the marketplace over alleged patent infringement, the manufacturer of a competing product initiated litigation in the United States District Court for the Southern District of Texas, seeking a declaration of non-infringement. The patent holder counterclaimed for infringement and, as the case proceeded, the competitor amended its claims to include allegations of inequitable conduct (fraud on the Patent Office by withholding material information) and Walker Process fraud (antitrust liability for enforcing a patent obtained by fraud). The district court granted summary judgment to the competitor on the inequitable conduct claim, finding clear evidence of intent to deceive and materiality, and granted summary judgment to the patent holder on the Walker Process fraud claim, finding insufficient evidence of market power.On appeal, the United States Court of Appeals for the Federal Circuit vacated both summary judgment rulings. The appellate court held that genuine disputes of material fact precluded summary judgment on both inequitable conduct and Walker Process fraud. The court remanded for further proceedings, allowing both claims to proceed, and affirmed the denial of summary judgment for the patent holder on inequitable conduct. View "GLOBAL TUBING LLC v. TENARIS COILED TUBES LLC " on Justia Law

A major music performing rights organization, which licenses the public performance of musical works to concert promoters, was unable to reach agreement with a national association of concert promoters on the rates and revenue base for blanket licenses covering live performances. For the first time in their relationship, the rights organization petitioned the United States District Court for the Southern District of New York to set the licensing terms, as permitted under an antitrust consent decree applicable to the organization due to its significant market share. The promoters’ association, whose members include the two largest concert promoters in the United States, has historically secured blanket licenses from multiple performing rights organizations to avoid copyright infringement.The district court accepted the organization’s proposed rates for a retroactive period and set a new, higher rate for a more recent period. It also broadened the definition of “gross revenues” for calculating royalties, including new categories such as revenues from ticket service fees, VIP packages, and box suites, which had not traditionally been included. The promoters’ association appealed these decisions, arguing that both the rates and the expanded revenue base were unreasonable. The rights organization cross-appealed the denial of prejudgment interest on retroactive payments.The United States Court of Appeals for the Second Circuit reviewed the district court’s decisions. It held that the district court imposed unreasonable rates, in part because it adopted an unprecedented and administratively burdensome revenue base without justification and relied too heavily on benchmark agreements that were not sufficiently comparable to prior agreements with the association. The court also found no economic changes justifying a significant rate increase. While it found no abuse of discretion in denying prejudgment interest, it vacated the district court’s judgment and remanded for further proceedings consistent with its opinion. View "Broadcast Music, Inc. v. North American Concert Promoters Association" on Justia Law

The plaintiffs in this case, owners of a patent involving genetically engineered host cells containing recombinant DNA sequences, accused the defendants of infringing multiple claims of their patent. The technology at issue centers on human-made host cells that include a recombinant nucleic acid molecule encoding a specific adeno-associated virus (AAV) capsid protein, along with a heterologous non-AAV sequence. These recombinant molecules are created by artificially combining genetic material from different species, a process that does not occur in nature. The patented host cells are used in developing gene therapy products, including a product for treating Duchenne muscular dystrophy.The United States District Court for the District of Delaware reviewed cross-motions for summary judgment on the issue of patent eligibility under 35 U.S.C. § 101. The district court concluded that the asserted claims were ineligible for patent protection, reasoning that they were directed to a natural phenomenon. The court analogized the claims to those at issue in Supreme Court cases such as Funk Brothers Seed Co. v. Kalo Inoculant Co. and Association for Molecular Pathology v. Myriad Genetics, Inc., finding that merely combining natural sequences did not make the claimed invention patentable. The district court held that the claims lacked an inventive concept and granted summary judgment in favor of the defendants.The United States Court of Appeals for the Federal Circuit reviewed the decision de novo. The appellate court held that the patented host cells are not naturally occurring and possess markedly different characteristics from any product of nature, consistent with the Supreme Court’s guidance in Diamond v. Chakrabarty and Myriad Genetics. The Federal Circuit concluded that the claims are not directed to a natural phenomenon and are therefore patent-eligible under § 101. The court reversed the district court’s judgment and remanded the case for further proceedings. View "REGENXBIO INC. v. SAREPTA THERAPEUTICS, INC. " on Justia Law

This case concerns a patent dispute involving input devices for computers. The plaintiff, Genuine Enabling Technology LLC (GET), claimed that Sony’s PlayStation 3 and 4 controllers and consoles infringed several claims of U.S. Patent No. 6,219,730. The patent addresses the problem of limited computer resources by combining data streams from multiple input devices, such as keyboards and sensors, into a single stream. The contested claims include a means-plus-function limitation called “encoding means for synchronizing,” which requires synchronizing two input streams and encoding them into a combined data stream.The U.S. District Court for the District of Delaware handled the case initially. It interpreted the “encoding means” as a means-plus-function limitation and identified logic block 34 in Figure 4A of the patent as the corresponding structure. During litigation, GET’s expert, Dr. Fernald, failed to address most of the elements in logic block 34 when analyzing infringement, focusing primarily on the bit-rate clock signal. The district court excluded Dr. Fernald’s testimony on structural equivalence and ultimately granted Sony summary judgment of noninfringement, finding GET had not raised a genuine issue of material fact regarding infringement.The United States Court of Appeals for the Federal Circuit reviewed the district court’s grant of summary judgment de novo. The Federal Circuit affirmed the lower court’s decision, holding that GET’s infringement analysis was deficient because it did not adequately account for the full structure of logic block 34 required by the patent specification. The court emphasized that GET failed to explain why it was permissible to omit certain elements from its equivalence analysis. Thus, GET lacked sufficient evidence for a reasonable jury to find infringement. The district court’s exclusion of expert testimony and summary judgment were affirmed. View "GENUINE ENABLING TECHNOLOGY LLC v. SONY GROUP CORPORATION " on Justia Law

The dispute centers on a patented pre-lit artificial tree owned by Willis Electric Co., Ltd., which features separable, modular trunk portions that mechanically and electrically connect to one another, enabling attached lights to illuminate automatically regardless of trunk orientation. The prior art required separate mechanical and electrical connections, but Willis’ patent integrates both functions in a single step. Willis accused Polygroup of infringing claim 15 of its patent, specifically targeting Polygroup trees with the “Quick Set” feature that establishes simultaneous mechanical and electrical connections.After Willis initiated the lawsuit in the United States District Court for the District of Minnesota, Polygroup filed multiple inter partes review petitions at the Patent Trial and Appeal Board (PTAB) challenging various claims of Willis’ patent. The PTAB upheld claim 15, and the United States Court of Appeals for the Federal Circuit affirmed that finding. The district court proceedings continued with only claim 15 at issue. Polygroup filed a Daubert motion to exclude Willis’ damages expert, which was denied. At trial, the jury found claim 15 infringed and not invalid, awarding Willis over $42 million in damages. Polygroup then moved for judgment as a matter of law (JMOL) on obviousness and a new trial on damages, but the district court denied both motions.The United States Court of Appeals for the Federal Circuit reviewed the district court’s denial of JMOL and the motion for a new trial. The court held that substantial evidence supported the jury’s finding that a skilled artisan would not have been motivated to combine prior art with coaxial barrel connectors as claimed in claim 15, thus affirming nonobviousness. The court also held that the district court did not abuse its discretion in admitting the damages expert’s testimony, finding the methodology sufficiently reliable under Rule 702. As a result, the Federal Circuit affirmed the district court’s judgment in all respects. View "WILLIS ELECTRIC CO., LTD. v. POLYGROUP LTD." on Justia Law

A group of nine professional models brought suit against a nightclub in Greenville, South Carolina, alleging that the club took images from the models’ social media pages and used them in its promotional materials without their knowledge, consent, or compensation. The models claimed the advertising falsely implied their association, employment, or endorsement of the club. They asserted two claims under the Lanham Act as well as seven state law claims, including misappropriation of likeness.The defendant responded with a motion to dismiss all counts for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6), but did not challenge the sufficiency of the misappropriation of likeness claim. The plaintiffs did not respond to the motion within the time set by the District of South Carolina’s local rules. The United States District Court for the District of South Carolina granted the motion to dismiss as unopposed, dismissing the federal and most state law claims with prejudice and dismissing the misappropriation of likeness claim without prejudice, declining to exercise supplemental jurisdiction. The plaintiffs’ postjudgment motions for relief were denied by the district court.On appeal, the United States Court of Appeals for the Fourth Circuit held that a court may not grant a Rule 12(b)(6) motion solely because it is unopposed. The court emphasized that Rule 12(b)(6) requires an independent determination of whether the complaint states a plausible claim for relief, regardless of the parties’ failure to respond. Finding that the district court had not made such a determination, the Fourth Circuit vacated the judgment and remanded the case for further proceedings. The court did not reach the merits of the parties’ other arguments or the postjudgment orders. View "Guzman v. Acuarius Night Club LLC" on Justia Law

This case involves a challenge to the validity of a patent owned by DivX, LLC, which claims systems and methods for streaming partly encrypted media content. DivX sued Netflix, Inc. for patent infringement, leading Netflix to petition for inter partes review (IPR) before the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Netflix argued that the patent’s claims would have been obvious in view of specific prior-art references. The dispute centered on the proper construction of a claim limitation relating to the location of "encryption information" within the system described by the patent.After the IPR was instituted, the Patent Trial and Appeal Board first issued a final written decision holding that Netflix had not shown the claims were unpatentable, basing its conclusion on issues unrelated to claim construction. Netflix appealed that decision to the United States Court of Appeals for the Federal Circuit, which vacated and remanded. On remand, the Board adopted DivX’s proposed claim construction, holding that the limitation required the encryption information itself to be located within the requested portions of the selected stream of protected video, and again found in favor of DivX. Netflix appealed again.The United States Court of Appeals for the Federal Circuit reviewed the Board’s claim construction de novo. The appellate court held that the Board erred in its construction of the disputed limitation. The correct construction, the court explained, is that only the encrypted portions of the video frames, not the encryption information, must be located within the requested portions of the selected stream. The court found that, under this construction, the asserted prior art meets the limitation. The Federal Circuit therefore reversed the Board’s claim construction, vacated its decision, and remanded for further proceedings. View "NETFLIX, INC. v. DIVX, LLC " on Justia Law

Several technology companies challenged instructions issued by the Director of the United States Patent and Trademark Office (PTO) that guided the Patent Trial and Appeal Board (Board) in deciding whether to institute inter partes review (IPR) proceedings. These instructions, known collectively as the NHK-Fintiv instructions, outlined factors for the Board to consider when parallel patent litigation was occurring in district court. The challengers argued that these instructions resulted in too many denials of IPR petitions and were contrary to law, arbitrary and capricious, and issued without the required notice-and-comment rulemaking under the Administrative Procedure Act (APA).The United States District Court for the Northern District of California initially found all challenges to the PTO’s instructions to be judicially unreviewable. On appeal, the United States Court of Appeals for the Federal Circuit previously held that while the challenges based on statutory and arbitrary-and-capricious grounds were unreviewable, the claim regarding the lack of notice-and-comment rulemaking could proceed. On remand, the district court determined that the instructions were exempt from notice-and-comment requirements because they were “general statements of policy,” not substantive or legislative rules.The United States Court of Appeals for the Federal Circuit reviewed the district court’s decision de novo. The court agreed that the Director’s instructions were general statements of policy exempt from notice-and-comment rulemaking under 5 U.S.C. § 553(b). It emphasized that there is no statutory right to IPR institution, that the instructions do not bind the Director, and that the Director retains unreviewable discretion to institute or deny IPR. The court found that none of the legal standards or precedents cited by the challengers required a different result, and it affirmed the district court’s judgment rejecting the APA-based challenge. View "APPLE INC. v. SQUIRES " on Justia Law

Two companies that manufacture activated carbon honeycombs, used in automotive emission control systems, became embroiled in a legal dispute. One company holds a patent covering certain dual-stage fuel vapor canister systems, but not honeycombs used in air-intake systems. The other company began marketing a competing honeycomb product, prompting a patent infringement lawsuit. In response, the defendant challenged the validity of the patent, argued non-infringement, and asserted counterclaims alleging antitrust violations—specifically, that the patent holder unlawfully tied licenses for the patent to the purchase of its unpatented honeycomb products.The United States District Court for the District of Delaware first granted summary judgment that the patent was invalid due to prior invention. It then denied both parties’ motions for summary judgment on the antitrust and tortious interference counterclaims, finding a factual dispute about whether the honeycomb products had substantial non-infringing uses. At trial, the jury found the patent holder liable for unlawful tying under federal antitrust law, concluding that it had conditioned patent licenses on customers buying its honeycombs, and awarded significant damages. The district court denied the patent holder’s motions for judgment as a matter of law and for a new trial, confirming the jury’s findings that the honeycombs were staple goods with substantial non-infringing uses and that the conduct was not protected by immunity doctrines.On appeal, the United States Court of Appeals for the Federal Circuit affirmed the district court’s judgment. The Federal Circuit held that substantial evidence supported the jury’s findings that the honeycomb products had actual and substantial non-infringing uses, making them staple goods and removing the patent holder’s statutory defense against antitrust liability. The court also rejected the argument that the patent holder’s conduct was immunized from antitrust scrutiny, and upheld the damages award, finding no error in the district court’s rulings or the jury’s determinations. View "INGEVITY CORPORATION v. BASF CORPORATION " on Justia Law