Justia Intellectual Property Opinion Summaries

BearBox LLC and Austin Storms alleged that Lancium LLC and its co-founders, Michael T. McNamara and Dr. Raymond E. Cline, Jr., improperly used Storms' ideas and patented them. The dispute arose from a conversation at a Bitcoin mining conference and a follow-up email from Storms to McNamara containing BearBox's system details. BearBox claimed that Storms should be named as an inventor on Lancium's U.S. Patent No. 10,608,433.The United States District Court for the District of Delaware granted summary judgment to Lancium, dismissing BearBox's Louisiana state law conversion claim as preempted by federal patent law. The court also excluded BearBox's expert's supplemental report and denied BearBox's claim that Storms was either a sole or joint inventor of the '433 patent.The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the district court's judgment on all issues. It held that BearBox's conversion claim was preempted by federal patent law because it sought patent-like protection for unpatented technology. The court also upheld the exclusion of the expert's supplemental report, finding no abuse of discretion in the district court's decision. Finally, the court agreed with the district court's conclusion that BearBox failed to prove by clear and convincing evidence that Storms was a sole or joint inventor of the '433 patent. The court found that the information Storms shared with Lancium did not establish his contribution to the claimed invention and that Lancium had independently conceived the subject matter of the patent before Storms' communication. View "BEARBOX LLC v. LANCIUM LLC " on Justia Law

Plaintiffs, rightsholders of musical recordings affiliated with EMI, sued Vimeo, Inc. and Connected Ventures, LLC for copyright infringement, alleging that Vimeo users uploaded videos containing their copyrighted music without authorization. Vimeo claimed protection under the safe harbor provision of Section 512(c) of the Digital Millennium Copyright Act (DMCA), which shields service providers from liability for user-uploaded infringing content under certain conditions.The United States District Court for the Southern District of New York granted summary judgment in favor of Vimeo, finding that Vimeo was entitled to the DMCA safe harbor. The court concluded that Vimeo did not have actual or red flag knowledge of the infringing content and did not have the right and ability to control the infringing activity in a manner that would disqualify it from the safe harbor.The United States Court of Appeals for the Second Circuit reviewed the case. The court held that Vimeo employees did not have red flag knowledge of the infringing content because it was not obvious to an ordinary person without specialized knowledge of music or copyright law that the videos were infringing. The court also found that Vimeo did not exercise substantial influence over user activities to the extent required to lose the safe harbor protection. The court noted that Vimeo's actions, such as promoting certain videos and banning specific types of content, did not amount to the level of control that would disqualify it from the safe harbor.The Second Circuit affirmed the district court's judgment, holding that Vimeo was entitled to the DMCA safe harbor and dismissing Plaintiffs' claims of copyright infringement. View "Capitol Records v. Vimeo" on Justia Law

Novartis Pharmaceuticals Corporation developed a combination therapy of valsartan and sacubitril, marketed as Entresto®, for treating heart failure. The U.S. Patent 8,101,659 (the ’659 patent) protects this combination. In 2019, several generic manufacturers, including MSN Pharmaceuticals, filed Abbreviated New Drug Applications (ANDAs) to market generic versions of Entresto, prompting Novartis to sue for patent infringement.The United States District Court for the District of Delaware held a three-day bench trial. The court found that the claims of the ’659 patent were not invalid for obviousness, lack of enablement, or indefiniteness but were invalid for lack of written description. Specifically, the court determined that the patent did not adequately describe the combination of valsartan and sacubitril in a complex form, which was a later-discovered form of the combination.The United States Court of Appeals for the Federal Circuit reviewed the case. The court reversed the district court’s determination that the claims lacked an adequate written description, holding that the ’659 patent adequately described the claimed combination of valsartan and sacubitril administered "in combination." The court affirmed the district court’s findings that the claims were not invalid for lack of enablement or obviousness. The court concluded that the patent did not need to enable or describe the later-discovered complex form of the combination, as it was not claimed in the patent. The court also found no clear error in the district court’s determination that the prior art did not provide a motivation to combine valsartan and sacubitril with a reasonable expectation of success.Thus, the Federal Circuit affirmed in part and reversed in part, upholding the validity of the ’659 patent except for the written description finding, which it reversed. View "Novartis Pharmaceuticals Corporation v. Torrent Pharma Inc." on Justia Law

Bitmanagement Software GmBH ("Bitmanagement") developed software for rendering three-dimensional graphics, specifically "BS Contact Geo," which was used by the United States Navy ("Navy") in conjunction with its SPIDERS 3D platform. Initially, Bitmanagement provided the Navy with 100 seat licenses, allowing installation on 100 computers. In 2012, the Navy switched to a floating license, permitting installation on multiple computers but limiting simultaneous users to 20, monitored by a tracking application called Flexera. However, Flexera failed to limit usage, and the software was installed on over 429,000 Navy computers.The United States Court of Federal Claims initially found no liability for copyright infringement. Bitmanagement appealed, and the Federal Circuit held that the Navy's failure to use Flexera breached a material condition of the implied license, constituting copyright infringement. The case was remanded to the Court of Federal Claims to calculate damages. On remand, the court awarded Bitmanagement $154,400, based on a hypothetical negotiation for a combination of seat and floating licenses, rather than per-copy damages.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the lower court's decision. The Federal Circuit held that the Court of Federal Claims did not abuse its discretion in awarding damages based on the Navy's actual usage of the software rather than the number of copies made. The court found that the hypothetical negotiation would have resulted in a primarily usage-based licensing scheme, supported by the parties' past licensing practices and the evidence presented. The court also upheld the admission of the government's damages expert's testimony and found no error in the burden of proof allocation. View "BITMANAGEMENT SOFTWARE GMBH v. US " on Justia Law

Silverthorne Seismic, L.L.C. licensed seismic data to Casillas Petroleum Resource Partners II, L.L.C. and sent the data to Sterling Seismic Services, Ltd. for processing. Silverthorne alleged that Sterling sent unlicensed data to Casillas, which Casillas then showed to potential investors. Silverthorne sued Sterling for trade-secret misappropriation under the Defend Trade Secrets Act, seeking a reasonable royalty as a remedy.The United States District Court for the Southern District of Texas set the standard for calculating a reasonable royalty, adopting a definition from a previous case, University Computing Co. v. Lykes-Youngstown Corp. The district court certified this order for interlocutory appeal under 28 U.S.C. § 1292(b), concluding that the reasonable-royalty standard was a controlling question of law with substantial ground for difference of opinion and that an immediate appeal would materially advance the litigation. The district court stayed the proceedings pending the appeal, and an administrative panel of the United States Court of Appeals for the Fifth Circuit granted leave to appeal.The United States Court of Appeals for the Fifth Circuit reviewed the case and determined that granting leave to appeal was an error. The court found that the district court's order did not involve a controlling question of law and that the appeal would not materially advance the ultimate termination of the litigation. The court emphasized that the parties had not yet gone to trial, and Silverthorne had not proven liability, making the damages issue premature. The court vacated the order granting leave to appeal, dismissed the appeal for lack of jurisdiction, and remanded the case for further proceedings. View "Silverthorne v. Sterling Seismic" on Justia Law

CeramTec GmbH manufactures artificial hip components made from zirconia-toughened alumina (ZTA) ceramic, which contains chromium oxide (chromia) and is marketed under the name "Biolox Delta." The addition of chromia gives the ceramic a pink color. CeramTec held U.S. Patent 5,830,816 (the '816 patent) for the chemical composition of Biolox Delta until it expired in January 2013. In January 2012, CeramTec applied for trademarks for the pink color of its ceramic hip components, which were registered on the Supplemental Register in April 2013. CoorsTek Bioceramics LLC, a competitor, manufactures similar ceramic hip implants and filed a lawsuit and a cancellation petition with the Trademark Trial and Appeal Board (the Board) in 2014, arguing that the pink color was functional and should not be trademarked.The Board found in favor of CoorsTek, concluding that the pink color was functional for ceramic hip components. The Board analyzed the functionality under the four factors from In re Morton-Norwich Products, Inc., and found that CeramTec's patents and public communications disclosed the functional benefits of chromia, including increased hardness. The Board also found that there was no probative evidence of functionally equivalent designs and conflicting evidence regarding the cost of manufacturing. The Board rejected CeramTec's unclean hands defense, which argued that CoorsTek should be precluded from challenging the trademarks due to its previous statements about chromia's lack of material benefits.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the Board's decision. The court held that the Board's findings were supported by substantial evidence and that the Board correctly applied the burden of proof. The court also addressed CeramTec's arguments regarding the Board's analysis of the Morton-Norwich factors and the unclean hands defense, finding no reversible error. The court concluded that the pink color of CeramTec's ceramic hip components was functional and not eligible for trademark protection. View "CERAMTEC GMBH v. COORSTEK BIOCERAMICS LLC " on Justia Law

Honeywell International Inc., Telit Cinterion Deutschland GmbH, and Sierra Wireless, ULC (collectively, "Honeywell") appealed a decision by the Patent Trial and Appeal Board (PTAB) regarding U.S. Patent No. 7,319,718 (the '718 patent). The '718 patent involves a coding method for Channel Quality Indicator (CQI) in third-generation mobile communication systems. The PTAB had declined to hold claims 1, 2, 4-7, 9-13, and 15-23 of the '718 patent unpatentable as obvious.The PTAB found that Honeywell had not shown that a person of ordinary skill in the art would have been motivated to switch the last two bits in the basis sequence table of the Philips reference to provide more protection to the most significant bit (MSB). The PTAB also held that even if such a motivation existed, it had not been demonstrated that this change would be desirable. Honeywell argued that the PTAB's decision was based on multiple legal errors and was not supported by substantial evidence.The United States Court of Appeals for the Federal Circuit reviewed the PTAB's decision. The court found that the PTAB improperly based its conclusion on the '718 patent's primary motivation to maximize system throughput rather than minimizing root-mean-square error or bit error rate. The court noted that the motivation to modify a prior art reference need not be the same as the patentee's motivation. The court also found that the PTAB's finding that Honeywell had not shown a motivation to switch the bits was not supported by substantial evidence, as the Philips reference itself recognized the benefit of protecting the MSB.The court concluded that the PTAB's decision was based on a misunderstanding of the relevant standards for obviousness and anticipation. The court held that the PTAB erred in requiring a consensus among the working group members and in failing to recognize that the claimed modification needed only to be desirable, not the best or preferred approach. The decision of the PTAB was reversed. View "HONEYWELL INTERNATIONAL INC. v. 3G LICENSING, S.A. " on Justia Law

LegalForce RAPC Worldwide, P.C. ("LegalForce USA"), a California S corporation operating legal services websites, sued LegalForce, Inc. ("LegalForce Japan"), a Japanese corporation providing legal software services, for trademark infringement. LegalForce USA alleged that LegalForce Japan's U.S. expansion plans, website ownership, and advertising and selling of equity infringed its trademark. The district court dismissed the website claims for lack of jurisdiction and the expansion plan claims as unripe. The claims concerning equity were dismissed for failure to state a claim.The United States District Court for the Northern District of California dismissed all claims except those related to the advertising and selling of equity. The court held that it had jurisdiction over these claims but dismissed them for failure to state a claim, reasoning that advertising and selling equity is not connected to the sale of goods or services and thus cannot constitute trademark infringement. The court also found that LegalForce USA failed to justify an extraterritorial application of the Lanham Act.The United States Court of Appeals for the Ninth Circuit affirmed the district court's dismissal. The court held that using a trademark in connection with the sale of equity does not constitute using the mark in connection with "goods or services" under the Lanham Act. The court also affirmed that LegalForce Japan's services in Japan could not satisfy the "in connection with" goods or services requirement under the Lanham Act, as the relevant conduct occurred outside U.S. territory. The court concluded that the Lanham Act does not apply extraterritorially in this context. View "LEGALFORCE RAPC WORLDWIDE, PC V. LEGALFORCE, INC." on Justia Law

Sysco Machinery Corp. ("Sysco"), a Taiwanese company, sued two other Taiwanese companies, Cymtek Solutions, Inc. ("Cymtek") and Cymmetrik Enterprise Co. Ltd. ("Cymmetrik"), in the U.S. District Court for the District of Massachusetts. Sysco alleged that Cymtek and Cymmetrik infringed its copyrights and misappropriated its trade secrets related to a rotary die-cutting machine developed in Taiwan. The alleged infringing activities occurred in Taiwan, but Sysco claimed that the effects of these activities extended to the United States.Sysco initially pursued legal action in Taiwan's Intellectual Property and Commercial Court (IPCC) and obtained a preliminary injunction against Cymtek and its employees. However, the proceedings in Taiwan are ongoing. Sysco then filed a lawsuit in the U.S. District Court for the Eastern District of North Carolina, which it voluntarily dismissed. Subsequently, Sysco filed the current lawsuit in the District of Massachusetts, asserting claims of trade secret misappropriation, copyright infringement, unfair and deceptive acts, and tortious interference.The U.S. District Court for the District of Massachusetts dismissed the case under the doctrine of forum non conveniens, concluding that Taiwan was a more appropriate forum for the dispute. Sysco appealed the dismissal to the United States Court of Appeals for the First Circuit.The First Circuit reviewed the district court's decision for abuse of discretion and affirmed the dismissal. The court held that Taiwan was an adequate alternative forum, as it could exercise jurisdiction over the parties and provide sufficient remedies for the alleged intellectual property violations. The court also found that the private and public interest factors favored litigation in Taiwan, given that the majority of evidence and witnesses were located there, and the alleged infringing activities primarily occurred in Taiwan. The court concluded that the district court did not abuse its discretion in applying the doctrine of forum non conveniens. View "Sysco Machinery Corp. v. Cymtek Solutions, Inc." on Justia Law

Teva Branded Pharmaceutical Products R&D, Inc., Norton (Waterford) Ltd., and Teva Pharmaceuticals USA, Inc. (collectively, Teva) filed an NDA for their ProAir® HFA Inhalation Aerosol, which contains the active ingredient albuterol sulfate. Teva listed several patents in the FDA's Orange Book, including patents related to the inhaler's dose counter and canister. Amneal Pharmaceuticals of New York, LLC, Amneal Ireland Ltd., Amneal Pharmaceuticals LLC, and Amneal Pharmaceuticals, Inc. (collectively, Amneal) filed an ANDA to market a generic version of ProAir® HFA, asserting that their product did not infringe Teva's patents.The United States District Court for the District of New Jersey ruled in favor of Amneal, ordering Teva to delist its patents from the Orange Book. The court found that Teva's patents did not claim the active ingredient albuterol sulfate but were directed to components of the inhaler device. Teva appealed the decision, arguing that their patents were properly listed because they claimed parts of the NDA product.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court's decision. The Federal Circuit held that for a patent to be listed in the Orange Book, it must claim the drug for which the application was submitted and approved, which includes the active ingredient. The court rejected Teva's argument that a patent claims the drug if it reads on any part of the NDA product. The court concluded that Teva's patents, which claimed only the device components of the inhaler, did not meet the statutory requirement of claiming the drug, as they did not claim the active ingredient albuterol sulfate. Therefore, the court affirmed the order requiring Teva to delist its patents. View "TEVA BRANDED PHARMACEUTICAL PRODUCTS R&D, INC. v. AMNEAL PHARMACEUTICALS OF NEW YORK, LLC" on Justia Law