Justia Intellectual Property Opinion Summaries
Premier Dealer Services, Inc. v. Allegiance Administrators, LLC
In a case before the United States Court of Appeals for the Sixth Circuit, Premier Dealer Services, a developer and administrator of automobile dealers’ aftermarket products, sued Allegiance Administrators for infringing its copyright. The issue stemmed from Premier's creation of a Lifetime Powertrain Loyalty Program, which included a loyalty certificate that set out the program's terms and conditions. Premier had registered this certificate for copyright protection. When Allegiance started working with a former Premier client, it used Premier’s Lifetime Powertrain Loyalty Program certificates in its own plan, with minor modifications in the contact information.In the lawsuit, the district court ruled that Allegiance had infringed Premier’s copyright, ordered Allegiance to give up any profits from using the certificates, and awarded Premier attorney’s fees. On appeal, the Sixth Circuit affirmed the decision of the lower court.The appellate court held that Premier's certificate was "original" and thus protected by copyright. The court clarified that originality in copyright law has a low threshold, requiring only that the author independently created a work with some minimal degree of creativity. The court rejected Allegiance's argument that the certificates were scenes a faire—stock or standard phrases that necessarily follow from a common theme or setting, which are not protectable by copyright. The court found that Allegiance had not provided sufficient evidence that industry standards or other external constraints dictated the content of the certificates.Regarding the disgorgement of profits, the court agreed with the lower court's calculations. It noted that Premier had successfully shown a reasonable relationship between Allegiance’s infringement and its gross revenues. The burden then shifted to Allegiance to demonstrate which part of its gross revenues did not result from the infringement, but Allegiance failed to fulfill this burden.Finally, the court upheld the award of attorney’s fees to Premier, finding that the lower court did not abuse its discretion in characterizing Allegiance's arguments as unreasonable and contrary to settled law. View "Premier Dealer Services, Inc. v. Allegiance Administrators, LLC" on Justia Law
FRESHUB, INC. v. AMAZON.COM, INC.
In this case, Freshub, Ltd., and Freshub, Inc. (collectively, Freshub) filed a lawsuit against Amazon.com, Inc., and its subsidiaries (collectively, Amazon) in the Western District of Texas, alleging that Amazon infringed on its patents related to voice-processing technology. Amazon denied the infringement and asserted that the patent should be deemed unenforceable due to alleged inequitable conduct committed by Freshub's parent company, Ikan Holdings LLC. The jury found that Amazon did not infringe the asserted claims of Freshub's patents. Freshub appealed the verdict, and Amazon cross-appealed the court's finding that it failed to prove the asserted inequitable conduct.The United States Court of Appeals for the Federal Circuit upheld the district court's decisions. The court held that substantial evidence supported the jury's finding that Amazon did not infringe the asserted claims of Freshub’s patents. The court also found that the district court did not abuse its discretion in denying Freshub's motion for a new trial based on alleged prejudicial statements made by Amazon at trial. Furthermore, the court agreed with the district court's determination that Amazon failed to prove by clear and convincing evidence that Ikan’s counsel made a false statement to the United States Patent and Trademark Office with the specific intent to deceive, thereby rejecting Amazon’s inequitable conduct defense. View "FRESHUB, INC. v. AMAZON.COM, INC. " on Justia Law
Sony Music Entertainment v. Cox Communications, Incorporated
In this case, Sony Music Entertainment and numerous other record companies and music publishers sued Cox Communications, alleging that Cox's customers used its internet service to infringe their copyrights. The plaintiffs argued that Cox should be held accountable for its customers' copyright infringement. A jury found Cox liable for both willful contributory and vicarious infringement of over 10,000 copyrighted works owned by the plaintiffs and awarded $1 billion in statutory damages.The United States Court of Appeals for the Fourth Circuit held that Cox was not vicariously liable for its customers' copyright infringement because Cox did not profit from its subscribers’ acts of infringement, a legal prerequisite for vicarious liability. However, the court affirmed the jury’s finding of willful contributory infringement because Cox knew of the infringing activity and materially contributed to it.The court vacated the $1 billion damages award and remanded the case for a new trial on damages, holding that the jury’s finding of vicarious liability could have influenced its assessment of statutory damages. The court did not vacate the contributory infringement verdict. View "Sony Music Entertainment v. Cox Communications, Incorporated" on Justia Law
PROMPTU SYSTEMS CORPORATION v. COMCAST CORPORATION
Promptu Systems Corp. sued Comcast Corp. alleging that Comcast infringed on its U.S. Patent Nos. 7,047,196 and 7,260,538. The patents cover a method of using speech recognition services in combination with cable television or video delivery. The case was litigated in the United States District Court for the Eastern District of Pennsylvania. The district court adopted claim constructions that were mostly in line with Comcast's proposals. As a result, Promptu and Comcast agreed to dismiss Promptu's patent-infringement claim and state-law claims with prejudice. Promptu also agreed to a final judgment of no infringement by Comcast of the ’196 and ’538 patents, based on the claim constructions adopted by the district court.Promptu appealed the judgment, challenging several of the underlying claim constructions. The United States Court of Appeals for the Federal Circuit found that the district court incorrectly construed certain claim terms and therefore vacated the judgment and remanded the case for further proceedings. The court held that the district court's constructions of the terms "back channel," "multiplicity of received identified speech channels," "speech recognition system coupled to a wireline node," and "centralized processing station" were not accurate. The court provided detailed analysis and reasoning for these conclusions. The court did not rule on the merits of the infringement claims, but instead remanded the case for further proceedings based on the corrected claim constructions. View "PROMPTU SYSTEMS CORPORATION v. COMCAST CORPORATION " on Justia Law
NATERRA INTERNATIONAL, INC. v. BENSALEM
The United States Court of Appeals for the Federal Circuit reviewed a decision by the Trademark Trial and Appeal Board denying Naterra International, Inc.'s petition for cancellation of Samah Bensalem's BABIES’ MAGIC TEA standard character mark registration. Naterra argued that there was a likelihood of confusion between its BABY MAGIC mark and Bensalem’s BABIES’ MAGIC TEA mark. The Court examined several factors, including the similarity of the marks, the nature of the goods, and the trade channels. The Court found that the Board erred in its assessment of the similarity of the marks and the trade channels and failed to properly evaluate relevant evidence about the nature of the goods. Therefore, the Court vacated the Board's decision and remanded the case for further proceedings. The Court also found the Board did not err in its assessment of the fame of Naterra's mark. View "NATERRA INTERNATIONAL, INC. v. BENSALEM " on Justia Law
Smartsky Networks, LLC v. DAG Wireless, LTD.
In a dispute between SmartSky Networks, LLC and DAG Wireless, Ltd., DAG Wireless USA, LLC, Laslo Gross, Susan Gross, Wireless Systems Solutions, LLC, and David D. Gross over alleged breach of contract, trade secret misappropriation, and deceptive trade practices, the United States Court of Appeals for the Fourth Circuit ruled that the district court did not have the jurisdiction to enforce an arbitration award. Initially, the case was stayed by the district court pending arbitration. The arbitration tribunal found in favor of SmartSky and issued an award, which SmartSky sought to enforce in district court. The defendants-appellants argued that, based on the Supreme Court decision in Badgerow v. Walters, the district court lacked subject matter jurisdiction to enforce the arbitration award. The Fourth Circuit agreed, noting that a court must have a basis for subject matter jurisdiction independent from the Federal Arbitration Act (FAA) and apparent on the face of the application to enforce or vacate an arbitration award. The court concluded that the district court did not have an independent basis of subject matter jurisdiction to confirm the arbitration award. As such, the court reversed and remanded the case to the district court for further proceedings. View "Smartsky Networks, LLC v. DAG Wireless, LTD." on Justia Law
In Re CHESTEK PLLC
In 2020, the law firm Chestek PLLC applied for a trademark for the mark "CHESTEK LEGAL" but provided only a P.O. box as its domicile address. The United States Patent and Trademark Office (USPTO) refused the application because it did not comply with the domicile address requirement. Chestek argued that the rules enforcing this requirement were improperly promulgated under the Administrative Procedure Act (APA). The Trademark Trial and Appeal Board affirmed the examiner's refusal. On appeal to the United States Court of Appeals for the Federal Circuit, Chestek argued that the domicile address requirement was improperly promulgated for two reasons: the USPTO was required to comply with the requirements of notice-and-comment rulemaking under 5 U.S.C. § 553 but failed to do so because the proposed rule did not provide notice of the domicile address requirement adopted in the final rule, and the domicile address requirement is arbitrary and capricious because the final rule failed to offer a satisfactory explanation for the domicile address requirement and failed to consider important aspects of the problem it purports to address, such as privacy. The Federal Circuit found the domicile address requirement to be a procedural rule that is exempt from notice-and-comment rulemaking. Furthermore, the USPTO's decision to require the address provided by all applicants to be a domicile address was not arbitrary or capricious for failure to provide a reasoned justification. The court affirmed the Board's refusal to register Chestek's mark. View "In Re CHESTEK PLLC " on Justia Law
BioCorRx, Inc. v. VDM Biochemicals, Inc.
In this case, BioCorRx, Inc., a publicly traded company engaged in providing addiction treatment services and related medication, was involved in a dispute with VDM Biochemicals, Inc., a company specializing in chemical synthesis and distribution. The dispute arose from a business relationship in which BioCorRx intended to partner with VDM to develop and commercialize a compound for treating opioid overdose, known as VDM-001. BioCorRx issued several press releases, allegedly making misrepresentations and improperly disclosing confidential information about the development of VDM-001. VDM filed a cross-complaint against BioCorRx and its president, Brady Granier, for breach of contract, fraud, and violation of trade secrets among other claims. In response, BioCorRx and Granier filed a motion to strike the allegations based on the anti-SLAPP statute, arguing that the press releases were protected speech under the statute.The Court of Appeal of the State of California, Fourth Appellate District, Division Three, ruled that the press releases fell within the commercial speech exemption of the anti-SLAPP statute, as they were representations about BioCorRx’s business operations made to promote its goods and services to investors. As such, these statements were not protected by the anti-SLAPP statute. Consequently, the court reversed the portion of the trial court’s order granting the anti-SLAPP motion as to the press releases. However, the court affirmed the portion of the order granting the anti-SLAPP motion as to Brady Granier, BioCorRx’s president, due to insufficient argument presented against this part of the ruling. View "BioCorRx, Inc. v. VDM Biochemicals, Inc." on Justia Law
RAI Strategic Holdings, Inc. v. Philip Morris Products S.A.
This case concerns a patent dispute between RAI Strategic Holdings, Inc. (RAI) and Philip Morris Products S.A. (Philip Morris) about an electrically powered smoking article. The United States Court of Appeals for the Federal Circuit affirmed in part, vacated in part, and remanded the decision of the Patent Trial and Appeal Board (Board).RAI owns a patent for electrically powered smoking articles that heat tobacco or other substances without significant combustion. Philip Morris filed a petition to review the patent, asserting that the claims were invalid due to a lack of written description and obviousness over prior art. The Board agreed with Philip Morris and held certain claims of the patent unpatentable.On appeal, RAI argued that the Board erred by finding that some claims lacked adequate written description support and that other claims were obvious. The Court of Appeals agreed with RAI regarding the written-description issue. It found that the patent specification did provide adequate written description support for the disputed claims, as it disclosed the end points of the claimed range and there were no inconsistent statements regarding the range. Thus, the Court of Appeals vacated the Board's decision on this issue and remanded for further consideration.However, the Court of Appeals affirmed the Board’s decision regarding the obviousness issue. It found substantial evidence to support the Board's finding that a person of ordinary skill in the art would have been motivated to combine prior art references, making the claims obvious. Specifically, the Court found that the Board reasonably concluded that a skilled artisan would have been motivated to replace the heating element in Robinson's smoking article with the heating element taught by Greim. Therefore, the Court affirmed the Board’s finding that these claims were unpatentable as obvious. View "RAI Strategic Holdings, Inc. v. Philip Morris Products S.A." on Justia Law
University of South Florida Board of Trustees v. United States
In this case, the University of South Florida Board of Trustees (USF) sued the United States, claiming that the latter infringed a patent owned by USF regarding genetically modified mice for Alzheimer's Disease research. The USF contended that The Jackson Laboratory, with the government's authorization and consent, had been producing and using mice covered by the patent for the government. The government countered the claim by asserting it had a license to practice the patent under a provision of the Bayh-Dole Act, which addresses patent rights in work funded by the federal government. The United States Court of Appeals for the Federal Circuit determined that the provision does apply and therefore affirmed the judgment of noninfringement. The court confirmed that the April 1997 work, the first actual reduction to practice of the invention, was "in the performance of work under a funding agreement." The court also rejected USF's contention that a funding agreement must be in place at the time of the relevant work, clarifying that the Act can cover work already performed before a funding agreement is executed or becomes effective. View "University of South Florida Board of Trustees v. United States" on Justia Law