Justia Intellectual Property Opinion Summaries

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Koss Corporation (Koss) owns several patents related to wireless earphones. Koss filed a patent infringement lawsuit against Bose Corporation (Bose) in the Western District of Texas, alleging infringement of three patents. Bose challenged the venue and also filed for inter partes review (IPR) of the patents with the Patent Trial and Appeal Board (PTAB). Concurrently, Bose sought a declaratory judgment of noninfringement in the District of Massachusetts. The Texas court dismissed Koss's case for improper venue, leading Koss to file counterclaims in Massachusetts. The Massachusetts court stayed the case pending the IPR outcomes.In parallel, Koss's infringement action against Plantronics, Inc. was transferred to the Northern District of California. Plantronics moved to dismiss the case, arguing that the patents were invalid under 35 U.S.C. § 101. The California court agreed, invalidating all claims of the patents. Koss amended its complaint but eventually stipulated to dismiss the case with prejudice, without appealing the invalidation order.The United States Court of Appeals for the Federal Circuit reviewed the PTAB's decisions on the IPRs. However, since the California court had already invalidated all claims of the patents and Koss did not appeal this decision, the Federal Circuit found the appeals moot. The court held that the invalidation order from the California court was final and precluded any further action on the patents, leading to the dismissal of the appeals. View "KOSS CORPORATION v. BOSE CORPORATION " on Justia Law

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Miller Mendel, Inc. sued the City of Anna, Texas, alleging that the City’s use of the Guardian Alliance Technologies software platform infringed claims 1, 5, and 15 of U.S. Patent No. 10,043,188, which relates to a software system for managing pre-employment background investigations. The United States District Court for the Eastern District of Texas granted the City’s motion for judgment on the pleadings, concluding that the asserted claims do not claim patent-eligible subject matter under 35 U.S.C. § 101. The district court also denied the City’s motion for attorneys’ fees.The district court found that the claims were directed to the abstract idea of performing a background check and did not contain an inventive concept that would transform the abstract idea into a patent-eligible application. Miller Mendel’s motion for reconsideration was denied, with the court clarifying that its decision only invalidated claims 1, 5, and 15. The City’s motion for attorneys’ fees was denied on the grounds that the case was not exceptional.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court’s decision. The Federal Circuit agreed that the claims were directed to an abstract idea and lacked an inventive concept. The court also upheld the district court’s decision to limit its invalidity finding to claims 1, 5, and 15, as Miller Mendel had narrowed the scope of the asserted claims before the court ruled on the motion. Additionally, the Federal Circuit found no abuse of discretion in the district court’s denial of attorneys’ fees, concluding that Miller Mendel’s litigation conduct did not make the case exceptional. View "MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS " on Justia Law

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The case involves the Canadian Standards Association (CSA), a Canadian not-for-profit corporation that holds Canadian copyrights for various model codes. CSA alleged that P.S. Knight Company, Limited, PS Knight Americas, Incorporated, and Gordon Knight (collectively, Knight) infringed its copyrights by selling competing versions of CSA’s codes. These codes had been incorporated by reference into Canadian statutes and regulations. Knight argued that his actions were permissible under U.S. copyright law, as the codes had become "the law" of Canada.The United States District Court for the Western District of Texas found in favor of CSA, granting its motion for summary judgment and issuing a permanent injunction against Knight. The district court held that Knight's copying of CSA’s codes constituted copyright infringement and declared Knight’s U.S. copyright registration invalid. Knight appealed the decision, arguing that the district court improperly applied the law.The United States Court of Appeals for the Fifth Circuit reviewed the case de novo. The court found that the district court had improperly applied the holding of Veeck v. Southern Building Code Congress International, Inc., which states that once model codes are enacted into law, they become "the law" and may be reproduced or distributed as such. The Fifth Circuit held that because CSA’s model codes had been incorporated into Canadian law, Knight’s copying of those codes did not constitute copyright infringement under U.S. law.The Fifth Circuit reversed the district court’s summary judgment decisions, vacated the grant of injunctive relief, and remanded the case with instructions to grant summary judgment in favor of Knight and to dismiss CSA’s copyright infringement claim. View "Canadian Standards Association v. P.S. Knight Company Limited" on Justia Law

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Backertop Licensing LLC and Lori LaPray appealed the U.S. District Court of Delaware’s orders requiring LaPray to appear in-person for testimony regarding potential fraud and imposing monetary sanctions for her failure to appear. The District Court identified potential misconduct in numerous related patent cases involving IP Edge and Mavexar, which allegedly created shell LLCs, assigned patents for little consideration, and directed litigation without disclosing their ongoing rights. The court was concerned that this arrangement concealed the real parties in interest and potentially perpetrated fraud on the court.The District Court ordered LaPray, the sole owner of Backertop, to produce documents and appear in-person to address these concerns. LaPray moved to set aside the order, citing travel difficulties and requesting to appear telephonically, which the court denied. The court rescheduled the hearing to accommodate her schedule but maintained the requirement for in-person testimony to assess her credibility. LaPray did not attend the rescheduled hearing, leading the court to hold her in civil contempt and impose a daily fine until she appeared.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the District Court’s orders were within its inherent authority and not an abuse of discretion. The court found that Federal Rule of Civil Procedure 45, which limits the geographic range of subpoenas, did not apply to the court’s sua sponte orders. The court affirmed the District Court’s orders, emphasizing the necessity of in-person testimony to investigate potential misconduct and assess credibility. The monetary sanctions for LaPray’s failure to appear were also upheld. View "BACKERTOP LICENSING LLC v. CANARY CONNECT, INC. " on Justia Law

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Natera, Inc. and NeoGenomics Laboratories, Inc. are healthcare companies in the oncology testing industry. Natera owns two patents, U.S. Patent No. 11,519,035 and U.S. Patent No. 11,530,454, which cover methods for amplifying and sequencing DNA to detect cancer relapse. Natera uses these methods in its Signatera product, while NeoGenomics offers a competing product called RaDaR. Natera sued NeoGenomics, alleging that RaDaR infringed its patents and sought a preliminary injunction to stop NeoGenomics from using, selling, or promoting RaDaR.The United States District Court for the Middle District of North Carolina granted the preliminary injunction, finding that Natera was likely to succeed on the merits of its infringement claim for the ’035 patent. The court did not address the ’454 patent. The district court determined that Natera demonstrated a likelihood of irreparable harm due to direct competition in a two-player market, and that the balance of equities and public interest favored the injunction. The injunction was tailored to allow ongoing use of RaDaR for existing patients and certain clinical trials.The United States Court of Appeals for the Federal Circuit reviewed the district court’s decision. The Federal Circuit affirmed the preliminary injunction, agreeing that Natera showed a likelihood of success on the merits and that NeoGenomics did not raise a substantial question of validity. The court found no error in the district court’s handling of claim construction, irreparable harm analysis, or public interest considerations. The Federal Circuit concluded that the district court did not abuse its discretion in granting the preliminary injunction. View "Natera, Inc. v. NeoGenomics Laboratories, Inc." on Justia Law

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Dr. John Insall, an orthopedic surgeon, developed and patented knee replacement devices, which he licensed to Zimmer Biomet Holdings, Inc. In return, Zimmer agreed to pay royalties to Insall, and later to his estate after his death. When Insall’s last patent expired in 2018, Zimmer ceased royalty payments, claiming the obligation had ended. The dispute was submitted to arbitration, where the Estate prevailed. Zimmer then sought to vacate the arbitration award in district court, arguing that continuing royalty payments violated public policy. The district court confirmed the arbitration award.The United States District Court for the Northern District of Illinois reviewed the case. Zimmer argued that the arbitration award should be vacated based on public policy grounds, citing Supreme Court decisions in Brulotte v. Thys Co. and Kimble v. Marvel Entertainment, LLC, which prohibit collecting royalties on expired patents. The district court rejected Zimmer’s argument and confirmed the arbitration award, leading to Zimmer’s appeal.The United States Court of Appeals for the Seventh Circuit reviewed the case. The court emphasized the limited scope of judicial review over arbitration awards under the Federal Arbitration Act (FAA). The court found that the arbitration panel had correctly interpreted the 1998 amendments to the agreement, which untethered the royalty payments from the patents themselves, making them based on the marketing and branding of the NexGen Knee products. Consequently, the court held that the arbitration award did not violate public policy as outlined in Brulotte and Kimble. The Seventh Circuit affirmed the district court’s decision and confirmed the arbitration award in favor of Insall’s Estate. View "Zimmer Biomet Holdings, Inc. v. Insall" on Justia Law

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Lontex Corporation, a small Pennsylvania business, holds a registered trademark for “Cool Compression” used in its athletic compression apparel. Lontex sued Nike, Inc. for trademark infringement after discovering Nike's use of the phrase “Cool Compression” in its product names and marketing materials. Nike had rebranded a line of its athletic clothing as “Nike Pro” and used the phrase “Cool Compression” in product names on its website and catalogs. Lontex sent a cease-and-desist letter to Nike in 2016, but Nike continued using the phrase for some time.The United States District Court for the Eastern District of Pennsylvania held a trial where the jury found Nike liable for willful trademark infringement and contributory infringement, awarding Lontex $142,000 in compensatory damages and $365,000 in punitive damages. The District Court also trebled the compensatory damages to $426,000 and awarded Lontex nearly $5 million in attorney’s fees, deeming the case “exceptional” under the Lanham Act. Nike appealed the findings and the damages awarded, while Lontex cross-appealed the dismissal of its counterfeiting claim and the denial of profit disgorgement.The United States Court of Appeals for the Third Circuit reviewed the case and affirmed the District Court’s findings on trademark infringement, willfulness, and the trebling of damages. The Court held that a reasonable jury could find Nike’s continued use of “Cool Compression” after receiving the cease-and-desist letter as willful infringement. However, the Court vacated the award of attorney’s fees, finding that the District Court relied on broad policy considerations rather than specific facts of the case. The Court remanded the issue of attorney’s fees for further proceedings. The Court also upheld the dismissal of Lontex’s counterfeiting claim and the denial of profit disgorgement. View "Lontex Corp v. Nike Inc" on Justia Law

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This case involves a dispute between Gibson, Inc., a Delaware corporation, and Armadillo Distribution Enterprises, Inc., a Florida corporation, along with Concordia Investment Partners, L.L.C. Gibson, a well-known guitar manufacturer, brought trademark-infringement and counterfeiting claims against Armadillo and Concordia, alleging that they infringed on Gibson's trademarked guitar body shapes, headstock shape, and word marks. After a ten-day trial, the jury found in favor of Gibson on several counts of infringement and counterfeiting but also found that the doctrine of laches applied to limit Gibson’s recovery of damages.The district court had excluded decades of third-party-use evidence that Armadillo and Concordia submitted in support of their genericness defense and counterclaim. Armadillo and Concordia appealed this exclusion order, arguing that the evidence was relevant to their defense that Gibson's trademarks were generic and thus not entitled to protection.The United States Court of Appeals for the Fifth Circuit reversed the district court's decision. The appellate court held that the district court abused its discretion by excluding all pre-1992 third-party-use evidence without examining its possible relevance. The court noted that third-party-use evidence is often relevant to show the genericness of a mark, and a mark that is generic is not entitled to trademark protection. The court concluded that the district court's error affected Armadillo’s substantial rights to put on its primary defense to the infringement and counterfeiting claims against it. Therefore, the court remanded the case for a new trial. View "Gibson, Inc. v. Armadillo Distribution Enterprises, Inc." on Justia Law

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This case involves a dispute between Motorola Solutions, Inc. and Hytera Communications Corporation Ltd., two global competitors in the market for two-way radio systems. After struggling to develop its own competing products, Hytera poached three engineers from Motorola, who, before leaving Motorola, downloaded thousands of documents and files containing Motorola's trade secrets and copyrighted source code. Using this stolen material, Hytera launched a line of radios that were functionally indistinguishable from Motorola's radios. In 2017, Motorola sued Hytera for copyright infringement and trade secret misappropriation.The jury found that Hytera had violated both the Defend Trade Secrets Act of 2016 (DTSA) and the Copyright Act, awarding compensatory and punitive damages totaling $764.6 million. The district court later reduced the award to $543.7 million and denied Motorola’s request for a permanent injunction. Both parties appealed.The United States Court of Appeals for the Seventh Circuit held that the district court must recalculate copyright damages, which will need to be reduced substantially from the original award of $136.3 million. The court affirmed the district court’s award of $135.8 million in compensatory damages and $271.6 million in punitive damages under the DTSA. The court also found that the district court erred in denying Motorola’s motion for reconsideration of the denial of permanent injunctive relief. The case was remanded for the district court to reconsider the issue of permanent injunctive relief. View "Motorola Solutions, Inc. v. Hytera Communications Corporation Ltd." on Justia Law

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Ascension Data & Analytics, Rocktop Partners, and Rocktop Holdings II (collectively, "Ascension") entered into a contract with Pairprep, Inc. for data extraction services. The contract was terminated due to an alleged data breach and Pairprep's failure to extract reliable data. Ascension then contracted with another vendor, Altada Technologies Solutions, but that contract was also terminated early due to Altada's financial crisis. Ascension initiated arbitration proceedings against Pairprep to recover remediation costs incurred as a result of the data breach. Pairprep counterclaimed, alleging breach of contract and violation of the federal Defend Trade Secrets Act. The arbitration panel rejected Ascension's defenses and granted Pairprep a monetary award.Ascension filed an application in the Northern District of Texas to vacate the arbitration award, arguing that Pairprep's counterclaims were barred by res judicata due to a previous dismissal of identical claims against Altada. Pairprep filed an application to confirm the arbitral award in a Texas state court, which was granted. The district court dismissed Ascension's application for lack of subject matter jurisdiction and denied its motion for preliminary injunctive relief.The United States Court of Appeals for the Fifth Circuit affirmed the district court's decision. The court applied the Supreme Court's decision in Badgerow v. Walters, which held that a district court must have an independent jurisdictional basis to consider applications to confirm, modify, or vacate arbitral awards under the Federal Arbitration Act. The court found that Ascension had not established an independent basis for subject matter jurisdiction, as the parties were not diverse and Ascension did not identify any federal law entitling it to relief. Therefore, the court concluded that the dispute over the enforceability of the arbitral award must be litigated in state court. View "Ascension Data v. Pairprep" on Justia Law