Justia Intellectual Property Opinion Summaries

Two pharmaceutical companies developing treatments for achondroplasia, a genetic disorder, became involved in litigation after one company (Ascendis) filed a New Drug Application (NDA) for its product. The other company (BioMarin), holding a relevant patent, filed a complaint with the United States International Trade Commission (ITC) alleging patent infringement by Ascendis’s product. Shortly afterward, Ascendis filed a declaratory judgment action in the United States District Court for the Northern District of California, seeking a judgment of non-infringement and arguing that its activities were protected under the statutory “safe harbor” for regulatory approval.More than thirty days after filing its district court complaint, Ascendis moved for an expedited hearing. BioMarin responded by seeking to dismiss or stay the district court action pending the ITC’s investigation. Ascendis voluntarily dismissed its complaint without prejudice and promptly refiled a nearly identical complaint, this time moving for a mandatory stay under 28 U.S.C. § 1659(a)(2), which requires a district court to stay its proceedings if requested within thirty days of the action’s filing or of being named as a respondent in the ITC. BioMarin opposed, contending Ascendis’s request was untimely, and sought a discretionary stay instead.The United States District Court for the Northern District of California granted BioMarin’s motion for a discretionary stay and denied Ascendis’s motion for a mandatory stay as moot. On appeal, the United States Court of Appeals for the Federal Circuit held that § 1659(a)(2) does not permit a litigant to restart the thirty-day period for a mandatory stay by voluntarily dismissing and refiling a substantially identical action. The court reasoned that the statutory deadline applies to the original action and that allowing refiling would circumvent the statute’s purpose. The Federal Circuit affirmed the district court’s decision. View "ASCENDIS PHARMA A/S v. BIOMARIN PHARMACEUTICAL INC. " on Justia Law

Several major music copyright owners, including a leading entertainment company, sought to hold an Internet service provider responsible for copyright infringement committed by its subscribers. The service provider, which serves millions of customers, was notified by a monitoring company of over 160,000 instances where its subscribers’ IP addresses were linked to alleged copyright violations such as illegal music file sharing. Although the provider had policies prohibiting infringement and took steps such as issuing warnings and suspending service, the copyright holders argued these measures were inadequate and brought suit seeking to impose liability on the provider for continuing to serve known infringers.The case was tried in the United States District Court for the Eastern District of Virginia. There, the jury found in favor of the copyright owners on both contributory and vicarious liability, and determined the provider’s infringement was willful, awarding $1 billion in statutory damages. After the District Court denied the provider’s post-trial motion, the United States Court of Appeals for the Fourth Circuit affirmed the finding of contributory liability, reasoning that supplying a service with knowledge it would be used for infringement was sufficient. The Fourth Circuit, however, reversed as to vicarious liability and remanded for a new determination of damages.The Supreme Court of the United States reviewed the case concerning contributory liability. The Court held that a service provider is contributorily liable for a user’s infringement only if it either induced the infringement or provided a service tailored for infringement. Because the provider neither encouraged infringement nor offered a service primarily designed for infringement—since Internet access has substantial lawful uses—the provider was not contributorily liable. The Supreme Court reversed the Fourth Circuit’s judgment on contributory liability and remanded the case for further proceedings. View "Cox Communications, Inc. v. Sony Music Entertainment" on Justia Law

Gregory Parzych served as president of ZipBy USA, LLC, a parking technology company, after previously founding and selling a similar company, TCS. While employed by ZipBy, Parzych entered into several agreements restricting conflicts of interest and disclosure of confidential information. In 2020, Parzych learned that TCS might be for sale. He advised ZipBy’s owner against pursuing the acquisition, then secretly attempted to purchase TCS for himself via a shell company, using financial information he had obtained as a ZipBy executive. ZipBy discovered his actions, terminated his employment, and, along with affiliates, sued Parzych for breach of fiduciary duty, breach of contract, misappropriation of trade secrets, trademark infringement, and false designation.After a jury trial in the United States District Court for the District of Massachusetts, the jury found for ZipBy on all claims, awarding compensatory and exemplary damages. The district court later granted judgment as a matter of law for Parzych on the trade secret claims, striking the exemplary damages but upholding the other verdicts and damages. The court also entered a permanent injunction barring Parzych from acquiring TCS and awarded ZipBy a portion of its attorneys’ fees. Parzych appealed, contesting evidentiary rulings, denial of a trial continuance, and the fee award, while ZipBy cross-appealed the judgment on the trade secret claims.The United States Court of Appeals for the First Circuit affirmed the district court’s judgment. It held that the district court did not abuse its discretion in admitting ZipBy’s expert lost-profits testimony, excluding late-disclosed evidence, or denying a trial continuance due to counsel’s COVID-19 infection. The appellate court agreed with the district court’s judgment as a matter of law against ZipBy’s trade secret claims, finding insufficient evidence that Parzych’s actions constituted trade secret misappropriation. Finally, the fee award was affirmed as a reasonable enforcement of the IP Agreement’s fee-shifting provision. View "ZipBy USA LLC v. Parzych" on Justia Law

Fetch! Pet Care, Inc., a nationwide franchisor of pet-care services, alleged that a group of former franchisees coordinated to exit their franchise agreements and start competing businesses, allegedly misappropriating Fetch!’s branding, client lists, intellectual property, and trade secrets. The franchisees contended that the newer “2.0” franchise model imposed high fees, delivered poor support, and led to high attrition, while some “1.0” franchisees claimed they were forced out of the system unexpectedly, leaving them no choice but to start their own businesses. A franchisee association was formed, and many franchisees sent rescission notices and pursued arbitration. Fetch! responded by filing suit for breach of contract, trademark infringement, and misappropriation of trade secrets, and sought injunctive relief to prevent the franchisees from operating competing businesses or using its intellectual property.The United States District Court for the Eastern District of Michigan held evidentiary hearings and granted Fetch!’s motion for a temporary restraining order and preliminary injunction in part, ordering defendants to stop using Fetch!’s trademarks and cease communication with current Fetch! franchisees, but denied broader injunctive relief. The court reasoned that a full injunction could harm ongoing arbitration proceedings and found sufficient evidence to invoke the doctrine of unclean hands against Fetch!, based on allegedly deceptive conduct in selling franchises. Fetch! timely appealed the district court’s order.The United States Court of Appeals for the Sixth Circuit reviewed the district court’s application of the unclean hands doctrine for abuse of discretion and affirmed. The appellate court held that the district court acted within its discretion in denying broad injunctive relief based on Fetch!’s bad faith and deceptive marketing practices as an underlying cause of franchisee conduct. The court clarified standards for irreparable harm and affirmed the partial denial of preliminary injunction, relying on the doctrine of unclean hands rather than other defenses. View "Fetch! Pet Care, Inc. v. Atomic Pawz Inc." on Justia Law

Apple Inc. launched the Apple Watch Series 6, featuring technology to estimate the wearer’s blood oxygenation level. Masimo Corporation and Cercacor Laboratories, Inc. alleged that Apple’s importation and sale of the device infringed on several Masimo patents related to wearable blood oxygen measurement technology. Masimo filed a complaint with the United States International Trade Commission, asserting that Apple’s actions violated § 337 of the Tariff Act of 1930, which prohibits importation of infringing articles if a related domestic industry exists. The patents at issue, called the Poeze Patents, cover user-worn devices utilizing optical emitters and photodetectors for physiological measurements.Following an investigation, an administrative law judge (ALJ) conducted a hearing and concluded that Masimo had established a domestic industry, Apple’s devices infringed some asserted claims, and several claims were not proven invalid. The ALJ found Masimo was not barred from enforcement by prosecution history laches. The ALJ’s decision led to a limited exclusion order barring importation of infringing Apple Watches. Both Apple and Masimo sought review by the Commission. The Commission affirmed the finding of infringement and the existence of a domestic industry, as to certain claims, and maintained the exclusion order.Upon appeal, the United States Court of Appeals for the Federal Circuit reviewed the Commission’s determinations under the Administrative Procedure Act, affirming its findings as reasonable and supported by substantial evidence. The Federal Circuit held that Masimo satisfied both the technical and economic prongs of the domestic industry requirement, that the Apple Watch infringed valid claims of the asserted patents, and that Apple failed to prove invalidity or prosecution laches. The Commission’s judgment and the exclusion order were affirmed. View "APPLE INC. v. INTERNATIONAL TRADE COMMISSION" on Justia Law

Columbia University sued Gen Digital Inc., which markets Norton antivirus software, alleging infringement of certain claims in two patents related to methods for detecting anomalous program executions. These patents described techniques using an emulator to execute portions of software and compare function calls against models created from multiple computers, aiming to detect malicious activity. Columbia also sought to correct inventorship on a third patent owned by Norton. Norton’s products, including the SONAR/BASH feature, were sold both domestically and internationally. Columbia claimed that these products infringed the asserted patent claims by utilizing the patented detection methods.The United States District Court for the Eastern District of Virginia construed disputed claim terms largely in Columbia’s favor and denied Norton’s motion for judgment on the pleadings under 35 U.S.C. § 101, ruling that the claims were not directed to an abstract idea at Alice step one. Prior to trial, the district court struck Norton’s § 101 defense. At trial, the jury found willful infringement of four claims and awarded substantial damages, including damages based on Norton’s foreign sales. The district court denied Norton’s post-trial motions for judgment as a matter of law regarding infringement, willfulness, and foreign sales damages. It also awarded enhanced damages and attorneys’ fees, partly relying on a contempt finding against Norton’s counsel.On appeal, the United States Court of Appeals for the Federal Circuit vacated the district court’s judgment. The Federal Circuit held that the asserted claims are abstract at Alice step one and remanded for the district court to address step two. The court found no error in claim construction or in the denial of judgment as a matter of law for infringement and willfulness, but concluded that damages for foreign sales were improperly awarded. The contempt finding having been reversed in a companion case, the enhanced damages and attorneys’ fees awards must also be reconsidered. The disposition was reversed in part, vacated in part, and remanded. View "TRUSTEES OF COLUMBIA UNIVERSITY v. GEN DIGITAL INC. " on Justia Law

An inventor and his exclusive licensee filed a lawsuit alleging patent infringement against a manufacturer, asserting claims of a patent related to an apparatus for maintaining a crop harvester’s header at a designated height above the soil. The patent described a device using a controller interface, head controller, and hydraulic control system. The parties agreed that the “control means” term in the patent invoked means-plus-function claiming under 35 U.S.C. § 112(f), and further agreed on the basic claimed function and the corresponding structures described in the specification. However, they disagreed over whether the specification sufficiently disclosed the structure for “control means,” particularly regarding whether the disclosure required an algorithm for microprocessor-based controllers.After the case was transferred from the United States District Court for the Northern District of Indiana to the United States District Court for the Southern District of Iowa, the district court concluded that the patent’s “control means” limitation was indefinite. The district court found that the only sufficiently disclosed controllers were microprocessor-based versions, which would require a disclosed algorithm that the patent did not provide. The court excluded an earlier version of the controller that used logic circuitry, not a microprocessor, from the corresponding structure. Based on this, the district court held the asserted claims invalid as indefinite and entered judgment for the defendant.On appeal, the United States Court of Appeals for the Federal Circuit reversed. The appellate court held that the district court erred by excluding the non-microprocessor-based controller from the corresponding structure, as it performed the claimed function and did not trigger the algorithm disclosure requirement. The Federal Circuit clarified that a means-plus-function limitation need only be supported by one embodiment of corresponding structure. Therefore, the judgment of indefiniteness and invalidity was reversed, and the case was remanded for further proceedings. Costs were assessed against the manufacturer. View "GRAMM v. DEERE & COMPANY" on Justia Law

Implicit, LLC owned two patents that named Edward Balassanian and Scott Bradley as the only inventors. Both men worked for BeComm Corporation, Implicit’s predecessor. Sonos, Inc. filed petitions for inter partes review (IPR) with the Patent Trial and Appeal Board, arguing that the claims in both patents were unpatentable due to prior art, specifically referencing a patent by Janevski. Implicit responded that the inventions were conceived and reduced to practice before the Janevski filing date, involving work by engineer Guy Carpenter. The Board found Implicit’s evidence insufficient to establish Carpenter’s role or that any reduction to practice benefited the named inventors, and determined the challenged claims were unpatentable.After the Board’s final written decisions in 2019, Implicit appealed to the United States Court of Appeals for the Federal Circuit, raising Appointments Clause challenges based on Arthrex, Inc. v. Smith & Nephew, Inc. The Federal Circuit vacated and remanded for proceedings consistent with Arthrex. After the Supreme Court’s decision in United States v. Arthrex, Inc., the case was again remanded to allow for Director Review, which was denied. During this period, Implicit sought and obtained certificates of correction to add Carpenter as an inventor. The case was remanded to the Board to consider whether these corrections affected the prior IPR decisions. The Board held that judicial estoppel, waiver, and forfeiture barred Implicit from relying on the corrections to revisit the prior decisions.Upon appeal, the United States Court of Appeals for the Federal Circuit held that forfeiture can apply even when inventorship is corrected under 35 U.S.C. § 256. The court found no abuse of discretion by the Board in determining that Implicit forfeited its new inventorship arguments by waiting until after final decisions to seek correction. The Federal Circuit affirmed the Board’s decisions. View "IMPLICIT, LLC v. SONOS, INC. " on Justia Law

Exafer Ltd. owns two patents related to optimizing communication paths in virtual network environments. Exafer brought suit against Microsoft, alleging that Microsoft’s Azure Platform, specifically its Smart Network Interface Cards and Virtual Filtering Platform Fastpath technology, infringed these patents. To support its damages claim, Exafer submitted expert reports quantifying the technical and financial benefits Microsoft allegedly obtained through the accused features. The damages expert, Mr. Blok, based his analysis on the value of additional virtual machine hours made possible by the accused features.The United States District Court for the Western District of Texas excluded Mr. Blok’s damages testimony, reasoning that his use of unaccused virtual machines as the royalty base improperly included non-infringing activities, relying on Enplas Display Device Corp. v. Seoul Semiconductor Co. The district court also denied Exafer’s motion to reopen discovery to present an alternative damages theory and granted Microsoft’s motion for summary judgment due to an absence of a remedy, entering final judgment against Exafer.On appeal, the United States Court of Appeals for the Federal Circuit held that the district court abused its discretion in excluding the damages expert’s testimony. The appellate court found that Mr. Blok’s methodology—linking the value of the accused features to the additional virtual machine hours they enabled—was sufficiently tied to the patented inventions and did not improperly expand the patent’s scope. The court clarified that there is no categorical bar against using an unaccused product as the royalty base if there is a causal connection to the alleged infringement. The Federal Circuit reversed the district court’s exclusion of Mr. Blok’s testimony, vacated the orders denying reopening of discovery and granting summary judgment, and remanded the case for further proceedings. View "EXAFER LTD v. MICROSOFT CORPORATION " on Justia Law

The dispute involves two patents held by Magnolia Medical Technologies concerning devices that improve the accuracy of blood tests by reducing contamination from skin microbes. When a blood sample is drawn, contaminants are most likely present in the initial portion, which can cause false positives and unnecessary treatments. Magnolia’s patents aim to sequester this initial blood volume, improving test reliability. Kurin, Inc. manufactures the Kurin Lock, a device that separates the initial blood draw using a porous plug that functions first as a vent and then as a seal.The United States District Court for the District of Delaware initially addressed claim construction. Regarding Magnolia’s U.S. Patent 9,855,001, the court determined that the term “diverter” was a means-plus-function limitation under 35 U.S.C. § 112(f), restricting infringement to devices with corresponding structures detailed in the patent specification. The parties stipulated that the Kurin Lock did not infringe the ’001 patent based on this construction. For U.S. Patent 10,039,483, the case proceeded to trial on the claims related to “vent” and “seal” limitations. The jury found that Kurin Lock infringed these claims. However, Kurin moved for judgment as a matter of law (JMOL), arguing that the Kurin Lock did not have two separate structures corresponding to the “vent” and “seal” as required.The United States Court of Appeals for the Federal Circuit reviewed the district court's claim constructions and JMOL grant. The court held that the district court did not err in construing “diverter” as a means-plus-function term for the ’001 patent. It also affirmed that, under the plain and ordinary meaning and precedent, the ’483 patent required separate structures for “vent” and “seal,” which the Kurin Lock did not possess. The Federal Circuit affirmed the district court’s judgment in favor of Kurin, finding no infringement. View "MAGNOLIA MEDICAL TECHNOLOGIES, INC. v. KURIN, INC. " on Justia Law