Justia Intellectual Property Opinion Summaries

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Valeant’s patent claims stable methylnaltrexone pharmaceutical preparations; methylnaltrexone, a quaternary amine opioid antagonist derivative, can be useful for reducing the side effects of opioids but is unstable in aqueous solution. The inventors discovered that when the pH of a methylnaltrexone solution is adjusted, the percentage of total degradants drops significantly. The patent is listed in the Orange Book for Relistor®, an injectable drug used to treat constipation as a side effect of taking opioid medication. Mylan filed an Abbreviated New Drug Application seeking FDA approval to market a generic version of Relistor®. Mylan conceded that its ANDA product would infringe claim 8 of the patent. The district court entered the parties’ stipulation to the construction of claim 8’s stability limitation: the phrase “the preparation is stable to storage for 24 months at about room temperature” means “the methylnaltrexone degradation products in the preparation do not exceed 2.0% of the total methylnaltrexone present in the preparation and the preparation is suitable for pharmaceutical use when stored for 24 months at room temperature” and granted summary judgment that claim 8 would not have been obvious. The court rejected Mylan’s expert testimony and cited references and Mylan’s theory that the claimed pH range would have been obvious to try. The Federal Circuit reversed. Mylar raised at least a prima facie case of obviousness. The district court’s obvious-to-try analysis is inconsistent with precedent. View "Valeant Pharmaceuticals International, Inc. v. Mylan Pharmaceuticals Inc." on Justia Law

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SF’s 329 patent is directed to an improved process for preparing high-molecular-weight polymers for use as super-absorbers in fields such as waste treatment and paper manufacturing. The district court entered summary judgment that certain claims were invalid as anticipated and that another was invalid as obvious. The court concluded that a process performed by a third party, Celanese’s “Sanwet® Process,” evidenced prior art knowledge and use of the patented invention under 35 U.S.C. 102(a), and constituted both a public-use bar and an on-sale bar to the patented invention under 35 U.S.C. 102(b). The Federal Circuit reversed. The district court misinterpreted section 102(a) and the public-use bar of section 102(b); under the proper legal standard, genuine issues of material fact precluded summary judgment. The “known or used” prong of 102(a) means “knowledge or use which is accessible to the public.” Members of the public had access to the plant, where they could view the shape of the conical taper; no evidence suggests that any of these guests was a skilled artisan. The parties dispute whether the remaining elements of the Sanwet® Process were known, and to the extent they were not, whether they were concealed from the public on these tours, in newspaper articles, and in the commemoration video. View "BASF Corp. v. SNF Holding Co." on Justia Law

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Forney sells welding and machining products in packaging that displays its proposed mark. Forney applied for a trademark based on use in commerce under the Lanham Act, 15 U.S.C. 1051(a). Forney sought to register the mark without showing acquired distinctiveness, identifying its mark as a “color mark.” Forney stated: “[t]he mark consists of a solid black stripe at the top. Below the solid black stripe is the color yellow which fades into the color red. These colors are located on the packaging and or labels.” The examining attorney refused registration, finding the mark “not inherently distinctive” and stating that “[s]uch marks are registrable only ... with sufficient proof of acquired distinctiveness.” Forney revised the description: “The mark consists of the colors red into yellow with a black banner located near the top as applied to packaging for the goods. The dotted lines merely depict placement of the mark on the packing backer card.” The examining attorney again refused registration. The Trademark Trial and Appeal Board affirmed, treating the proposed mark as a color mark consisting of multiple colors applied to product packaging. The Federal Circuit vacated. The Board erred in finding that a color mark can never be inherently distinctive in the trade dress context and that, even if a color mark could be inherently distinctive, it cannot be absent a well-defined peripheral shape or border. View "In Re: Forney Industries, Inc." on Justia Law

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The 968 patent is directed to replacement light-emitting diode (LED) light fixtures and seeks to minimize the need for customization by creating “low profile downlighting for retrofit applications” that accommodates various housing shapes and sizes. TCP petitioned for inter partes review of several claims. The Patent Trial and Appeal Board determined that TCP did not demonstrate by a preponderance of the evidence that claims 1–4, 6, 14, and 15 were anticipated by the “Chou” patent or that claims 3, 4, 7, 8, 11, 12, 16, 17, and 19–23 would have been obvious over Chou alone or in view of other prior art. The Board based its determinations exclusively on its finding that Chou does not disclose a single limitation (H/D limitation) in claims 1 and 20 of the 968 patent, the only independent claims at issue. The Federal Circuit vacated as to claims 2– 4, 6–8, 12, and 16. The Board’s determination that Chou does not disclose the H/D limitation in claim 1 of the 968 patent is not supported by substantial evidence. The Board’s conclusions regarding the H/D limitation resulted from an erroneous interpretation of the claim language and a misunderstanding of case law. The Board did not address any other arguments regarding the other limitations of claim 1 or of the rest of the challenged claims. View "Technical Consumer Products, Inc. v. Lighting Science Group Corp." on Justia Law

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Flexco sued for trade dress infringement and unfair competition, alleging that CAI infringed its registered and common law trade dress by promoting and selling conveyor belt fasteners with a product design that is confusingly similar to the product design of Flexco’s fasteners. Flexco cited the Lanham Act, 15 U.S.C. 1114 and 1125(a), and the Illinois Uniform Deceptive Trade Practices Act, 815 ILCS 510/2. CAI sought cancellation of Flexco’s registered trademarks and a declaratory judgment of invalidity, unenforceability, and noninfringement. The district court granted CAI summary judgment, holding that Flexco’s trade dress was functional. The Seventh Circuit affirmed. Flexco’s utility patent discloses the utilitarian benefits of the beveled center scallop and is strong evidence of the functionality of Flexco’s trade dress; that evidence is bolstered by Flexco’s own advertisements, internal communications, and statements to the Patent Office. Where functionality is established, there is no need to consider alternative design possibilities. View "Flexible Steel Lacing Co. v. Conveyor Accessories, Inc." on Justia Law

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Safeway and its proprietor filed suit against DPB and its owner, alleging federal trademark infringement under the Lanham Act and deceptive trade practices under Minnesota state law. Safeway claimed that DPB infringed two unregistered description trademarks -- "Rent My Party Bus" and "952 Limo Bus." The district court permanently enjoined defendants from using the trademarks or related domain names, keywords, or hashtags in connection with the advertisement, marketing, or sale of transportation services. However, the district court denied plaintiffs' requests for disgorgement of profits and attorney's fees. The Eighth Circuit affirmed, holding that the district court's finding of no actual confusion and thus, no unjust enrichment, was not clearly erroneous; the district court did not erroneously place the burden of proof on Safeway to prove unjust enrichment; and Safeway bore the burden of proving DPB's sales. The court also held that the district court's findings, when taken in their totality, support its conclusion that Safeway is not entitled to a disgorgement of profits based on deterrence. In this case, the district court actually found that DPB held a good faith belief in its right to use the trademarks. Finally, the district court did not abuse its discretion in denying Safeway's request for disgorgement of profits, and did not abuse its discretion in denying Safeway's request for attorney's fees. View "Safeway Transit LLC v. Discount Party Bus, Inc." on Justia Law

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Intellisoft sued Acer in California state court, asserting state law claims, including misappropriation of trade secrets. After more than three years of litigation, Acer sought to plead a patent inventorship counterclaim under federal law and thereafter removed the action to a federal district court, which denied Intellisoft’s motion to remand and later entered final judgment in favor of Acer. The Federal Circuit reversed. Removal was not proper under 28 U.S.C. 1441. Acer’s arguments do not establish that Intellisoft’s trade secret claim necessarily raised patent law issues. Intellisoft did not need to establish patent infringement to prove trade secrets misappropriation. A plaintiff’s reliance on a patent as evidence to support its state law claims does not necessarily require the resolution of a substantial patent question. Removal was not proper under section 1454, which requires that the claim supporting removal must be contained in an operative pleading. Acer’s cross-complaint was not operative, the counterclaim was never “asserted” under section 1454. View "Intellisoft, Ltd. v. Acer America Corp." on Justia Law

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Myco believed its competitor, BlephEx, made false and misleading statements about Myco’s product and whether it infringed BlephEx’s patent, entitled “Method and Device for Treating an Ocular Disorder.” The district court preliminarily enjoined BlephEx from making allegations of patent infringement and from threatening litigation against Myco’s potential customers. The Federal Circuit reversed. Federal law requires a showing of bad faith before a patentee can be enjoined from communicating his patent rights. A showing of “bad faith” must be supported by a finding that the claims asserted were objectively baseless. There was no adequate basis to conclude that allegations of patent infringement would be false or misleading. Even if the injunction were narrowly tailored to allegations of infringement and threats of litigation against Myco’s potential customers, the “medical practitioner immunity” provision of 35 U.S.C. 287(c) does not blanketly preclude a patent owner from stating that a medical practitioner’s performance of a medical activity infringes a patent. Myco asked the court to assume, without any supporting evidence, that a doctor would have interpreted general statements as an accusation of patent infringement and a threat of litigation against the doctor herself. View "Myco Industries, Inc. v. Blephex, LLC" on Justia Law

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Audrie, the Potts’ daughter, was sexually assaulted while unconscious from intoxication. Her assailants distributed intimate photographs of her. Audrie committed suicide. The Potts, as the registered successors-in-interest to “deceased personality” rights for Audrie under Civil Code 3344.1, authorized the use of Audrie’s name and likeness in a documentary. The Potts sued Lazarin under section 3344.1, claiming that Lazarin (who claims to be Audrie’s biological father) had used Audrie’s name and likeness "for the purpose of advertising services” without their consent. Lazarin admitted that he had displayed Audrie’s photograph “to change the law regarding parental rights” but argued that he had not acted to promote “goods or services.” The Potts submitted evidence that Lazarin solicited donations for a suicide prevention group, using Audrie’s name and photograph. Lazarin brought an unsuccessful special motion to strike the complaint under Code of Civil Procedure 425.16. The court of appeal reversed. Lazarin made a prima facie showing that the Potts’ suit was based on his “written or oral statement or writing made in a place open to the public or a public forum in connection with an issue of public interest.” The Potts failed to establish that there was a “probability” that they would “prevail” on their Civil Code section 3344.1 suit; they did not show that Lazarin “misappropriate[ed] the economic value generated by [Audrie’s] fame through the merchandising” of her name or likeness. View "Pott v. Lazarin" on Justia Law

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VIP filed suit seeking a declaration that its "Bad Spaniels Silly Squeaker" toy did not infringe JDPI's trademark rights or, in the alternative, that Jack Daniel's trade dress and bottle design were not entitled to trademark protection. JDPI counterclaimed and alleged claims of trademark infringement and dilution. The Ninth Circuit affirmed the district court's grant of summary judgment to JDPI on the issues of aesthetic functionality and distinctiveness. The court held that the district court correctly found that Jack Daniel's trade dress and bottle design are distinctive and aesthetically nonfunctional, and thus entitled to trademark protection; VIP also failed to rebut the presumption of nonfunctionality and distinctiveness of the Jack Daniel's bottle design; the district court correctly rejected VIP's nominative fair use defense; and the district court correctly rejected VIP's request for cancellation of the registered mark and rejected VIP's nominative fair use defense. However, the panel held that the dog toy is an expressive work entitled to First Amendment protection. In this case, the district court erred in finding trademark infringement without first requiring JDPI to satisfy at least one of the two Rogers prongs. Therefore, the panel reversed the district court's judgment as to the dilution claim, vacated the judgment on the trademark infringement claim, and remanded for further proceedings. View "VIP Products LLC v. Jack Daniel's Properties, Inc." on Justia Law