Justia Intellectual Property Opinion Summaries

The dispute concerns patented methods and apparatuses for upgrading software in engine controllers by connecting an external device that can replace and restore software without losing the original version. The patent, with a priority date of March 30, 2001, was asserted by the patent owner against a competitor. The accused infringer responded by alleging that a non-party, Hypertech, had sold a device called the Power Programmer III (PP3) well before the patent’s critical date. The PP3 was alleged to have all features described in the asserted patent claims, based on contemporaneous sales records and analysis of its source code.The United States District Court for the District of Utah reviewed the case. The district court granted summary judgment of invalidity under pre-America Invents Act (AIA) 35 U.S.C. § 102(b), finding that the PP3 was on sale more than one year before the patent’s critical date and that it embodied every claim limitation of the asserted patent. In reaching this decision, the district court admitted deposition testimony from Hypertech’s CEO regarding sales records and the device’s code, holding that, at summary judgment, corporate representatives may testify beyond their personal knowledge. The court also found that the source code itself was not hearsay and, even if it were, could be admitted as a business record.On appeal, the United States Court of Appeals for the Federal Circuit affirmed. It held that the district court did not abuse its discretion in considering the evidence at summary judgment. The court further clarified that the on-sale bar under pre-AIA § 102(b) does not require a sale to publicly disclose the inner workings of the device; it is sufficient that the sale of a device embodying the patented invention occurred before the critical date. Accordingly, the Federal Circuit affirmed the invalidation of all asserted patent claims. View "DEFINITIVE HOLDINGS v. POWERTEQ " on Justia Law

VLSI Technology LLC brought a lawsuit against Intel Corporation, alleging infringement of multiple patents, including U.S. Patent No. 8,566,836. The patent concerns methods and apparatuses for selecting processor cores in multicore systems to execute tasks based on performance parameters, such as processing speed. VLSI asserted several claims from the patent, including both method and apparatus claims, and introduced expert damages theories to support its case.The United States District Court for the Northern District of California addressed several pretrial issues. It struck certain damages theories from VLSI’s expert Dr. Sullivan, concluding that VLSI had not adequately disclosed these theories in its damages contentions as required under local patent rules. The district court also granted Intel summary judgment of noninfringement on two grounds: first, that the alleged infringing acts occurred outside the United States (extraterritoriality), and second, by rejecting VLSI’s doctrine of equivalents (DOE) theory. The district court’s construction of claim terms, particularly importing an “upon identifying” limitation into an apparatus claim, was central to its resolution of the DOE issue.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the district court’s orders. The appellate court reversed the grant of summary judgment of noninfringement on extraterritoriality grounds, finding that a pretrial stipulation between the parties established a U.S. nexus for infringement, and that the district court erred in its analysis of the apparatus claims’ capability to perform the patented functions. The Federal Circuit also reversed the summary judgment for noninfringement under the DOE theory for certain apparatus claims, holding that the district court improperly construed the claims based on prosecution disclaimer. However, the appellate court affirmed the district court’s decision to strike Dr. Sullivan’s NPV and VPU damages theories, finding no abuse of discretion. The case was remanded for further proceedings. View "VLSI TECHNOLOGY LLC v. INTEL CORPORATION " on Justia Law

DISH Network L.L.C. held exclusive rights to broadcast certain Arabic-language television channels in the United States, secured through written agreements with foreign content producers. The defendants operated businesses that provided U.S. customers with unauthorized access to these channels through internet streaming devices and services, bypassing DISH’s authorization and payments. The defendants’ services relied on content delivery networks and encoders to capture, transcode, and transmit live broadcasts of the protected channels to their customers in the U.S.The United States District Court for the Middle District of Florida first considered cross-motions for summary judgment. It granted summary judgment for DISH regarding its ownership of valid copyrights but found factual disputes about infringement, leading to a bench trial. After trial, the district court ruled in favor of DISH, finding that the defendants' use of both content delivery networks and encoders constituted direct copyright infringement. The court awarded DISH a permanent injunction, $600,000 in statutory damages, attorney fees, and costs.On appeal, the United States Court of Appeals for the Eleventh Circuit reviewed the district court’s legal conclusions de novo and factual findings for clear error. The appellate court rejected all arguments by the defendants, including challenges to DISH’s ownership, the validity and transfer of the copyrights, and several evidentiary rulings. The court specifically found that the audiovisual works at issue were “Collective Works” under UAE law, supporting MBC’s initial ownership, and that the transfer of rights to DISH was uncontested by the original owner. The Eleventh Circuit held that sufficient evidence showed the defendants directly infringed DISH’s exclusive rights by operating encoders, and affirmed the district court’s judgment in all respects. View "Dish Network L.L.C. v. Fraifer" on Justia Law

Fuente Marketing Ltd., a family-owned company selling premium hand-rolled cigars, owns two registered standard character trademarks for the letter X in connection with cigars and related products. Vaporous Technologies, LLC, designs and manufactures oral vaporizers and sought to register a mark featuring an abstract stick figure composed of intersecting lines forming a stylized X and a shaded circle above it, for use with various smoking-related goods. Fuente opposed this trademark application, alleging a likelihood of confusion with its own X marks.The United States Patent and Trademark Office, Trademark Trial and Appeal Board (TTAB), reviewed the opposition. The parties stipulated certain facts, including a description of Vaporous’s mark. The TTAB applied the In re E.I. DuPont DeNemours & Co. factors, finding that while the goods and trade channels overlapped and thus favored a likelihood of confusion, the dissimilarity of the marks weighed heavily against it. The Board found Fuente’s X marks conceptually strong but commercially weak and determined the relevant DuPont factors were either neutral or favored confusion, except for the critical mark similarity factor. Ultimately, the TTAB concluded that the marks were sufficiently distinct in commercial impression, appearance, and sound to avoid confusion and dismissed Fuente’s opposition.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the Board’s factual findings for substantial evidence and its legal conclusions de novo. The Federal Circuit affirmed the TTAB’s decision, holding that the dissimilarity between the marks was sufficient, even in light of other factors, to negate any likelihood of confusion. The court concluded that the Board’s findings were supported by substantial evidence and that Fuente had not shown any harmful legal error. The decision of the TTAB was therefore affirmed. View "FUENTE MARKETING LTD. v. VAPOROUS TECHNOLOGIES, LLC " on Justia Law

A dispute arose between a South Korean electronics manufacturer and a group of Delaware-based patent holding entities after the manufacturer paid $12.8 million to license certain patents in order to protect itself and its customers from infringement claims. Despite this agreement, the patent holders later sued two of the manufacturer’s major automotive customers in Texas, alleging infringement based on those customers’ use of the manufacturer’s telematics units. The customers settled with the patent holders and then sought indemnification from the manufacturer for their legal expenses and settlement payments, as contemplated by supply agreements between the manufacturer and its customers.The manufacturer initiated a breach of contract action in the Delaware Superior Court, alleging that the patent holders’ Texas lawsuits violated the license agreement, which was intended to provide “patent peace” for both the manufacturer and its customers. The parties disputed whether the telematics units at issue were covered by the license or excluded as “Foundry Products.” The Superior Court ruled on summary judgment that the telematics units were covered and not excluded. The jury found for the manufacturer, awarding over $17 million in damages. The court then capped damages at $12.8 million per the contract but, after trial, further reduced the award to $4.9 million based on a new argument by the patent holders about which entity had received the license fee. The court also denied prejudgment interest and costs.On appeal, the Supreme Court of the State of Delaware affirmed the findings that the telematics units were covered by the license and that sufficient evidence supported the manufacturer’s damages and indemnification obligations. It reversed the post-trial reduction of damages to $4.9 million, finding that argument was raised too late and prejudiced the manufacturer, reinstating the $12.8 million cap. The court also reversed the denial of prejudgment interest and costs, remanding for their calculation and award. View "LG Electronics Inc. v. Invention Investment Fund I, L.P." on Justia Law

A non-profit organization that develops and sells technical standards for use in industry brought suit against a for-profit company that operates an online library of building codes. The for-profit company published on its website the full text of several copyrighted standards developed by the non-profit, which had been incorporated by reference into the International Building Code. This building code, in turn, was adopted as law by the City of Philadelphia and other jurisdictions. The for-profit company made these incorporated standards freely available, though it also sold premium subscriptions for enhanced features. The non-profit derived significant revenue from licensing and selling its standards, including those incorporated into law, and did not authorize the copying.The case was first heard in the U.S. District Court for the Eastern District of Pennsylvania. After limited discovery and a hearing, the District Court denied the non-profit’s motion for a preliminary injunction, concluding that the for-profit company was likely to succeed on its fair use defense. The District Court found that the company’s publication of the standards for the purpose of public access to the law was transformative, even though the use was commercial in part, and that the standards, as incorporated into law, were primarily factual in nature. The District Court also found that copying the entire standards was reasonable because the law incorporated those standards in full, and that the effect on the market for the standards was at best equivocal.On appeal, the United States Court of Appeals for the Third Circuit affirmed the District Court’s denial of the preliminary injunction. The Third Circuit held that the for-profit company is likely to succeed on the merits of its fair use defense, as three of the four statutory fair use factors favored fair use and the fourth was equivocal. The order denying the preliminary injunction was affirmed. View "American Society for Testing & Materials v. UPCODES Inc" on Justia Law

A company owned a patent involving technology that allows mobile device applications to be downloaded and installed in the background, without requiring users to visit an application store. Another company, which had previously developed and marketed a product with similar features, initiated a post-grant review proceeding before the United States Patent and Trademark Office’s Patent Trial and Appeal Board, challenging the validity of the patent's original claims. During the proceeding, the patent owner sought to amend the claims by proposing substitute claims, which included additional limitations. The challenger argued that the substitute claims were also unpatentable.The Patent Trial and Appeal Board granted the patent owner’s revised motion to amend, finding that the challenger had not shown, by a preponderance of the evidence, that the substitute claims were unpatentable or patent ineligible. The Board also determined that the original claims were unpatentable based on a prior decision invalidating claims of a related parent patent. The challenger appealed the Board’s decision regarding the substitute claims to the United States Court of Appeals for the Federal Circuit.The United States Court of Appeals for the Federal Circuit considered whether the challenger had Article III standing to appeal. The court found that the challenger failed to demonstrate an injury in fact because it did not provide evidence showing concrete plans to engage in activities that would potentially infringe the substitute claims, nor did it sufficiently link its previous product features to the limitations in the new claims. As a result, the court held that the challenger lacked standing and dismissed the appeal for lack of jurisdiction. The court awarded costs to the patent owner. View "IRONSOURCE LTD. v. DIGITAL TURBINE, INC. " on Justia Law

Fortress Iron, LP developed a pre-assembled vertical cable railing system for outdoor spaces, collaborating with two Chinese companies for its manufacture and quality control. Fortress's owner originated the idea, and an employee prepared initial sketches. Employees of the quality control company, HuaPing Huang and Alfonso Lin, contributed critical refinements to the design. After incorporating these suggestions, Fortress filed for and obtained two patents, listing only its owner and employee as inventors, omitting Lin and Huang. Huang later left his company and could not be located.Fortress sued Digger Specialties, Inc. for patent infringement in the United States District Court for the Northern District of Indiana. During litigation, it emerged that Lin and Huang were coinventors. Fortress successfully added Lin to the patents under 35 U.S.C. § 256(a), but was unable to add Huang due to his unavailability. Fortress then moved for partial summary judgment to correct inventorship under 35 U.S.C. § 256(b), while Digger Specialties moved for summary judgment asserting patent invalidity due to incorrect inventorship. The district court denied Fortress’s motion to correct inventorship, holding that notice and an opportunity for hearing must be given to all parties concerned—including Huang—before correction could be ordered. The court granted summary judgment to Digger Specialties, holding the patents invalid for omission of an inventor.The United States Court of Appeals for the Federal Circuit affirmed the district court’s rulings. The Federal Circuit held that an omitted coinventor is a “party concerned” under 35 U.S.C. § 256(b) and must receive notice and an opportunity to be heard before inventorship can be corrected. As Fortress could not satisfy this statutory requirement, correction was unavailable and the patents were invalid. The Federal Circuit thus affirmed the grant of summary judgment of invalidity. View "FORTRESS IRON, LP v. DIGGER SPECIALTIES, INC. " on Justia Law

A company that designs and manufactures interactive technology products entered into reseller agreements with another company, granting the latter exclusive rights to sell its products in certain territories. Several years later, the manufacturer revoked the exclusivity, after which the reseller’s owner and his son developed a competing product. The manufacturer then terminated the reseller relationship. Subsequently, the reseller sued the manufacturer in South Carolina state court for various business torts and contract claims. The parties settled and executed a written agreement that broadly released and dismissed any and all claims and counterclaims that could have been brought in the litigation, including through a specific handwritten provision. Nevertheless, shortly after, the manufacturer initiated a federal lawsuit, alleging intellectual property violations related to the competing product.The state court dismissed the original action with prejudice, including all possible claims and counterclaims. In the federal action, the defendants argued that the settlement agreement and res judicata barred the new claims. The United States District Court for the District of South Carolina initially allowed certain claims to proceed, but after further evidence and reconsideration, it granted summary judgment for the defendants, finding the claims precluded by the settlement and the state court’s dismissal. A jury was then impaneled for trial on the defendants’ counterclaims.On appeal, the United States Court of Appeals for the Fourth Circuit affirmed the district court’s rulings. The Court of Appeals held that the manufacturer’s claims were barred by res judicata based on the settlement and state court order, as the language of the agreement and the parties’ intent encompassed the intellectual property claims. The appellate court also found no abuse of discretion in the district court’s evidentiary rulings, its reconsideration of summary judgment, or the conduct of the trial, and affirmed the judgment in full. View "Clear Touch Interactive, Inc. v. The Ockers Company" on Justia Law

A trademark holder brought an action against numerous foreign online vendors, alleging that they infringed her registered mark by selling counterfeit goods through e-commerce platforms such as Walmart.com and eBay.com. The vendors, all based in China, operated online storefronts that were accessible from the United States and offered shipping to U.S. customers, including those in Illinois. The plaintiff attached a “Schedule A” list to her complaint identifying the vendors. The defendants did not initially appear in the case.The United States District Court for the Northern District of Illinois, Eastern Division, entered a default judgment against the defendants. The court found personal jurisdiction over them on the basis that they operated online stores targeting U.S. consumers, offered shipping to Illinois, and had allegedly sold infringing products to Illinois residents. The evidence supporting the finding of Illinois sales included website screenshots showing that a product could be ordered and shipped to a Chicago address, but did not show that any actual sales to Illinois occurred. After the default judgment, the defendants appeared and moved to vacate the judgment, arguing lack of personal jurisdiction and improper service. The district court denied the motion, reaffirming its prior findings.Upon appeal, the United States Court of Appeals for the Seventh Circuit found that there was no evidence of any actual sales to Illinois residents. The court held that merely operating an online store accessible in Illinois and offering shipping to Illinois, without completed sales in the forum, is insufficient to establish personal jurisdiction. The district court’s findings to the contrary were clearly erroneous. The Seventh Circuit vacated the default judgment and remanded the case with instructions to dismiss for lack of personal jurisdiction. View "Liu v. Monthly" on Justia Law