Justia Intellectual Property Opinion Summaries
NBA Properties, Inc. v. HANWJH
NBA Properties owns the trademarks of the NBA and NBA teams. In 2020, a Properties investigator accessed HANWJH’s online Amazon store and purchased an item, designating an address in Illinois as the delivery destination. The product was delivered to the Illinois address. Properties sued, alleging trademark infringement and counterfeiting, 15 U.S.C. 1114 and false designation of origin, section 1125(a). Properties obtained a TRO and a temporary asset restraint on HANWJH’s bank account, then moved for default; despite having been served, HANWJH had not answered or otherwise defended the suit. HANWJH moved to dismiss, arguing that the court lacked personal jurisdiction over it because it did not expressly aim any conduct at Illinois. HANWJH maintained that it had never sold any other product to any consumer in Illinois nor had it any “offices, employees,” “real or personal property,” “bank accounts,” or any other commercial dealings with Illinois.The Seventh Circuit affirmed the denial of the motion to dismiss and the entry of judgment in favor of Properties. HANWJH shipped a product to Illinois after it structured its sales activity in such a manner as to invite orders from Illinois and developed the capacity to fill them. HANWJH’s listing of its product on Amazon.com and its sale of the product to counsel are related sufficiently to the harm of likelihood of confusion. Illinois has an interest in protecting its consumers from purchasing fraudulent merchandise. HANWJH alleges no unusual burden in defending the suit in Illinois. View "NBA Properties, Inc. v. HANWJH" on Justia Law
In Re Palo Alto Networks, Inc.
Centripetal filed an infringement complaint against PAN, which then filed an inter partes review (IPR) petition for one patent and a post-grant review (PGR) petition for another. While the petitions were pending, the Patent and Trademark Office (USPTO) updated its interim guidance, noting that the agency “does not accept requests for Director review of decisions on institution.” The Patent Trial and Appeal Board denied institution. PAN filed Requests for Director Rehearing. The agency responded that USPTO "does not accept requests for Director review of decisions on institution ... parties may only request Director review of final written decisions" issued in IPR and PGR and that PAN’s “rehearing requests will not revert to the Board panel and there will be no further review of the Board’s decision.”PAN sought mandamus relief. A newly-appointed Director updated the interim guidance to state that “the Office does not accept requests for Director review of institution decisions” but that “the Director has always retained and continues to retain the authority to review such decisions sua sponte.” The Director has since exercised that authority. PAN argues that the Director’s current policy was contrary to the Appointments Clause, as interpreted by the Supreme Court in “Arthrex,” (2021). The Federal Circuit denied the petition. That the Appointments Clause requires that a Presidentially-appointed, Senate-confirmed officer have review authority does not mean that a principal officer, once bestowed with such authority, cannot delegate it to other agency officers. View "In Re Palo Alto Networks, Inc." on Justia Law
Nichino America Inc v. Valent USA LLC
Since 2004, Nichino has offered a trademarked pesticide, “CENTAUR.” Valent trademarked a competing product, “SENSTAR,” in 2019, with a similar logo. Both pesticides are used by farmers in the same geographic areas against many of the same insects. SENSTAR is a liquid, a unique combination of two active chemicals. CENTAUR is manufactured as a solid, packed into bags and cases.Nichino sued for trademark infringement, seeking a preliminary injunction. The court applied the newly-effective Trademark Modernization Act of 2020 (TMA) Pub. Law 116-260, which establishes a rebuttable presumption of irreparable harm favoring a plaintiff who has shown a likelihood of success on the merits of an infringement claim. The district court found Nichino narrowly demonstrated its infringement claim would likely succeed, though “there is not an abundance of evidence of likelihood of confusion,” applied a 10-part, non-exhaustive analysis of likely confusion, then denied a preliminary injunction.The Third Circuit affirmed. The TMA’s rebuttable presumption requires courts considering a trademark injunction to assess the plaintiff’s evidence only as it relates to a likelihood of success on the merits. If that evidence does establish likely trademark infringement, the TMA is triggered, and the burden of production shifts to the defendant to introduce evidence sufficient for a reasonable factfinder to conclude that the consumer confusion is unlikely to cause irreparable harm. If a defendant successfully rebuts the TMA’s presumption by making this slight evidentiary showing, the presumption has no effect. View "Nichino America Inc v. Valent USA LLC" on Justia Law
Kamstrup A/S v. Axioma Metering UAB
Kamstrup’s 957 patent describes ultrasonic flow meters and housings. The specification discloses that the meters are used for “calculating a consumed quantity of water, heat, cooling, gas or the like.” Ultrasonic flow meters include “housing” to protect electronic components, such as a display or battery. The patent is directed to “an ultrasonic flow meter housing in the form of a monolithic polymer structure being cast in one piece.” It explains that “the present invention can be fabricated with a reduced number of steps compared to existing meters.Axioma petitioned for inter partes review of all 15 claims. The Federal Circuit affirmed the Patent Trial and Appeal Board in finding the challenged claims unpatentable as obvious or anticipated, construing “cast in one piece” as a product-by-process claim element. Kamstrup did not present any evidence showing that the claim element provided structural and functional differences distinguishing it from the prior art. View "Kamstrup A/S v. Axioma Metering UAB" on Justia Law
Victor Elias Photography, LLC v. Ice Portal, Inc.
Plaintiff, a commercial photographer, discovered infringing uses of his copyrighted images on the internet. Instead of pursuing the infringing parties, Plaintiff brought a lawsuit against Ice Portal, Inc. – now a division of Shiji (US), Inc. (“Shiji”) – which acts as an intermediary between the hotels that licensed Plaintiff’s photographs and online travel agents (“OTAs”) like Expedia and Travelocity.In optimizing the photographs for use by the OTAs, Shiji’s software allegedly removed certain copyright-related information that Plaintiff had embedded within the metadata of the photographs. Defendant claimed that Shiji, therefore, violated the Digital Millennium Copyright Act (“DMCA”). The district court correctly granted summary judgment to Shiji because Plaintiff did not show an essential element of its claim – namely, that Shiji knew, or had reasonable grounds to know, that its actions would induce, enable, facilitate, or conceal a copyright infringement. The Eleventh Circuit affirmed. The court held that Plaintiff did not meet its burden of coming forward with sufficient evidence demonstrating Section 1202(b)’s second scienter requirement, and judgment in Shiji’s favor was therefore appropriate. The court explained that the statute’s plain language requires some identifiable connection between the defendant’s actions and the infringement or the likelihood of infringement. To hold otherwise would create a standard under which the defendant would always know that its actions would “induce, enable, facilitate, or conceal” infringement because distributing protected images wrongly cleansed of CMI would always make infringement easier in some general sense. View "Victor Elias Photography, LLC v. Ice Portal, Inc." on Justia Law
LSI Corp. v. Regents of the University of Minnesota
The 601 patent addresses error rates related to recording data to computer storage devices. Dr. Moon, a UMN professor, and Dr. Brickner, a UMN graduate student, developed maximum transition-run coding to reduce error-prone patterns; their work became the basis for the 601 patent. UMN sued LSI for infringement. On inter partes review, the Patent Trial and Appeal Board concluded that claim 13 was unpatentable in view of prior art (Okada) and that claims 14 and 17 were not unpatentable in view of either Okada or the Tsang prior art reference; the Tsang reference was not prior art because it was not “by another” under 35 U.S.C. 102(e).The Federal Circuit affirmed. The Board properly found that the material in the Tsang patent that exceeded the disclosure of the Seagate Report was not relevant to the anticipation challenge to claims 14 and 17 and that summarizing the Seagate Report in Tsang did not make Tsang an inventor of the material. There is no contention that the Seagate Report can be relied upon as prior art to the 601 patent since Dr. Moon and Dr. Brickner are both listed as the only authors of the Seagate Report and as the only inventors of the 601 patent. View "LSI Corp. v. Regents of the University of Minnesota" on Justia Law
Hologic, Inc. v. Minerva Surgical, Inc.
The Federal Circuit previously affirmed summary judgment of no invalidity for claim 1 of the 348 patent in favor of Hologic, applying the doctrine of assignor estoppel against Minerva. The patent covers an endometrial ablation device for the treatment of uterine bleeding that eliminates the problem of “steam and liquid buildup at the ablation site.” The Supreme Court vacated, holding that assignor estoppel remains a valid doctrine, but that it comes with limits. On remand, the Federal Circuit again affirmed.Claim 1 is not “materially broader” than the claims assigned to Hologic such that assignor estoppel should not apply. Minerva is estopped from challenging the validity of claim 1. Minerva did not dispute that Truckai executed a broad assignment of his patent rights to NovaCept and later sold NovaCept to Hologic’s predecessor; that NovaCept received appreciable value for those patent rights; that Truckai founded Minerva and used his expertise to research, develop, and obtain FDA approval for Minerva’s Endometrial Ablation System; that his job responsibilities included bringing the System to market to compete with Hologic; and that he is in privity with Minerva. View "Hologic, Inc. v. Minerva Surgical, Inc." on Justia Law
In Re McDonald
In 2008, McDonald filed a patent application for methods and systems related to the display of search results. Several original claims did not recite a “processor” for conducting the claimed searches. The examiner rejected those claims as directed to patent-ineligible subject matter under 35 U.S.C. 101. McDonald amended the claims, adding a “processor” to certain claim limitations. The examiner withdrew the rejection. While the application leading to the 901 patent was pending, McDonald filed a continuation application, which resulted in the 111 patent; the claims in the continuation application included “processor” limitations. In 2015, McDonald filed a reissue application seeking to broaden the claims of the 111 patent, including amendments to remove the “processor” limitations. The examiner rejected multiple claims as obvious.The Patent Board affirmed, rejecting the reissue claims as being based on a defective reissue declaration lacking an error correctable by reissue and rejecting certain claims as impermissibly attempting to recapture subject matter that the patentee intentionally surrendered to overcome an eligibility rejection. The Federal Circuit affirmed. The Board properly applied the recapture rule; McDonald deliberately—not erroneously or inadvertently—added the “processor” limitations during the prosecution of the original claims to overcome the rejection. The error pinpointed in the Inventor Reissue Declaration—the existence of the allegedly unnecessary “processor” limitations—is uncorrectable because doing so would violate the recapture rule. View "In Re McDonald" on Justia Law
Thaler v. Vidal
The Federal Circuit affirmed the judgment of the United States Patent and Trademark Office (PTO) denying Plaintiff's patent applications, which failed to list any human as an inventor, holding that the Patent Act requires an "inventor" to be a natural person.Plaintiff, who developed and ran artificial intelligence systems that generate patentable inventions, sought patent protection for two putative inventions by filing two patent applications with the PTO, listing DABUS, "a collection of source code or programming and a software program," as the sole inventor. The PTO denied the petitions on the ground that "a machine does not qualify as an inventor." The district court affirmed, concluding that an "inventor" under the Patent Act must be an "individual" and that an "individual" is a natural person. The Federal Circuit affirmed, holding that the plain meaning of "inventor" in the Patent Act is limited to natural persons. View "Thaler v. Vidal" on Justia Law
Seife v. FDA, et al.
After the district court granted summary judgment in favor of two government agencies and a pharmaceutical company in this Freedom of Information Act ("FOIA") case. Plaintiff, a science writer and journalism professor, sought records from the government agencies relating to the pharmaceutical company's successful application for accelerated approval of a drug for the treatment of a neuromuscular disease. The agencies produced over 45,000 pages of documents, some of which were redacted under Exemption 4 of FOIA. The district court granted summary judgment for the agencies and the pharmaceutical company on the basis that the redacted information fell within Exemption 4 and publication would either cause foreseeable harm to the interests protected by Exemption 4 or was prohibited by law.Plaintiff appealed and the Second Circuit affirmed the district court’s ruling. The court held that the interests protected by Exemption 4 are the submitter's commercial or financial interests in the information that is of a type held in confidence and not disclosed to any member of the public by the person to whom it belongs. Defendants' declarations show that the release of the information Plaintiff seeks would foreseeably harm the pharmaceutical company’s interests and Plaintiff does not raise a genuine dispute as to that showing. View "Seife v. FDA, et al." on Justia Law