Justia Intellectual Property Opinion Summaries

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Brazos filed lawsuits in the Western District of Texas charging Juniper, a Delaware corporation headquartered in California, with infringing patents that had been assigned to Brazos. Juniper moved to transfer the case to the Northern District of California, 28 U.S.C. 1404(a). Juniper argued that Brazos “describes itself as a patent assertion entity” that “does not seem to conduct any business” from its recently-opened office in Waco other than filing patent lawsuits. The assignment agreement by which Brazos received much of its patent portfolio lists a California address for Brazos; only one of the officers listed on its website resides in Texas. Brazos’s CEO and its president reside in California. The accused products were primarily designed, developed, marketed, and sold from Juniper’s headquarters within the Northern District of California; potential witnesses who would be expected to testify as to the structure, function, marketing, and sales of the accused products are located in California. Juniper had a small office in Austin, Texas.The Federal Circuit vacated the denial of the motion to transfer and granted the petition. The “center of gravity of the action” was clearly in California: several of the most important factors strongly favor the transferee court. No factor favors retaining the case in Texas. View "In Re Juniper Networks, Inc." on Justia Law

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Hepp hosts FOX 29’s Good Day Philadelphia. In 2018, Hepp was told by coworkers that her photograph was making its way around the internet. The image depicts Hepp in a convenience store, smiling, and was taken without Hepp’s knowledge or consent. She never authorized the image to be used in online advertisements. Hepp alleged each use violated her right of publicity under Pennsylvania law. A dating app advertisement featuring the picture appeared on Facebook. A Reddit thread linked to an Imgur post of the photo. Hepp sued, citing 42 PA. CONS. STAT. 8316, and common law. The district court dismissed Hepp’s case, holding that the companies were entitled to immunity under the Communications Decency Act of 1996, which bars many claims against internet service providers, 47 U.S.C. 230(c). The Third Circuit reversed, citing an exclusion in 230(e)(2) limitation for “any law pertaining to intellectual property.” Hepp’s claims are encompassed within the intellectual property exclusion. View "Hepp v. Facebook" on Justia Law

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The Patent Trial and Appeal Board instituted inter partes review proceedings, involving MaxPower patents. MaxPower sought a writ of mandamus to review those decisions. The Federal Circuit denied the petition. A decision to institute IPR proceedings, like a decision not to institute, is “nonappealable” under 35 U.S.C. 314(d). The court rejected MaxPower’s argument that the collateral order doctrine warranted immediate review because its challenge implicates questions of whether the Board can institute proceedings that are subject to arbitration; that doctrine only allows appeal when an order “affect[s] rights that will be irretrievably lost in the absence of an immediate appeal.” MaxPower can meaningfully raise its arbitration-related challenges after the Board’s final decisions. The court also rejected MaxPower’s argument that its appeals are authorized under 9 U.S.C. 16(a)(1), which states that an appeal may be taken from an order “refusing a stay of any action under section 3 of this title,” “denying a petition under section 4 of this title to order arbitration to proceed,” “denying an application under section 206 of this title to compel arbitration,” “confirming or denying confirmation of an award or partial award,” or “modifying, correcting, or vacating an award.” MaxPower has not shown that this mandamus petition is not merely a “means of avoiding the statutory prohibition on appellate review of agency institution decisions.” View "In Re MaxPower Semiconductor, Inc." on Justia Law

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In 1969, Beasley founded a band, “The Ebonys,” one of many bands that created the “Philadelphia Sound.” The Ebonys achieved some commercial success in the 1970s but never reached the notoriety of similar artists such as The O’Jays. Beasley alleges that The Ebonys have performed continuously. Howard joined the band in the mid-1990s. Beasley obtained a New Jersey state service mark for THE EBONYS in 1997. Beasley and his bandmates performed with Howard for several years before parting ways. Each artist claimed the Ebonys name. In 2012, Howard registered THE EBONYS with the Patent & Trademark Office (PTO). Beasley alleges that Howard’s registration has interfered with his business; he has not been able to register a band website that uses “the Ebonys” in its domain name, Howard has kept concert venues from booking Beasley’s performances, Howard has tried to collect royalties from Beasley’s recordings, and Howard has claimed to be the Ebonys’s true founder. Beasley filed unsuccessful petitions with the Trademark Trial and Appeal Board (TTAB) to cancel the mark, contending that Howard defrauded the PTO. The district court relied on claim preclusion to dismiss Beasley’s subsequent complaint. The Third Circuit remanded for a determination of the scope of Beasley’s claims. Trademark cancellation proceedings before TTAB do not have claim preclusive effect against federal trademark infringement lawsuits. TTAB’s limited jurisdiction does not allow trademark owners to pursue infringement actions or the full scope of infringement remedies. The court affirmed the dismissal of any claim that Howard defrauded the PTO. View "Beasley v. Howard" on Justia Law

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Hamilton filed suit against Vortic and its founder for selling wristwatches that featured restored antique pocket watch parts with Hamilton's trademark. The district court entered judgment in favor of defendants, finding that Vortic's use of the mark was not likely to cause consumer confusion.The Second Circuit confirmed that a plaintiff in a trademark infringement suit bears the burden of proving that a defendant's use of its mark is likely to mislead consumers, even when Champion Spark Plug Co. v. Sanders, 331 U.S. 125 (1947), is implicated, and that no particular order of analysis is required, provided that the district court considers all appropriate factors in light of the circumstances presented. The court affirmed the district court's judgment in this case, concluding that the district court properly placed the burden of proving trademark infringement on Hamilton, and correctly analyzed the relevant considerations under Polaroid Corp. v. Polarad Electronics Corp., 287 F.2d 492 (2d Cir. 1961), and Champion. Furthermore, the district court correctly applied Champion and Polaroid to these factual findings to conclude that there was no likelihood of consumer confusion. Finally, the district court properly concluded that defendants were entitled to judgment on the remaining claims. View "Hamilton International Ltd. v. Vortic LLC" on Justia Law

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The Ninth Circuit wrote to clarify the role that de minimis copying plays in statutory copyright. The de minimis concept is properly used to analyze whether so little of a copyrighted work has been copied that the allegedly infringing work is not substantially similar to the copyrighted work and is thus non-infringing. However, once infringement is established, that is, ownership and violation of one of the exclusive rights in copyright under 17 U.S.C. 106, de minimis use of the infringing work is not a defense to an infringement action.The panel reversed the district court's grant of summary judgment for defendants based on a putative de minimis use defense in a copyright case involving plaintiff's photograph of the Indianapolis skyline. The panel applied the Perfect 10 server test, concluding that Wilmott's server was continuously transmitting the image to those who used the specific pinpoint address or were conducting reverse image searches using the same or similar photo. Therefore, Wilmott transmitted and displayed the photo without plaintiff's permission. Furthermore, Wilmott's display was public by virtue of the way it operated its servers and its website. The panel also concluded that the "degree of copying" was total because the infringing work was an identical copy of the copyrighted Indianapolis photo. Accordingly, there is no place for an inquiry as to whether there was de minimis copying. On remand, the district court must consider Wilmott's remaining defenses, and it can address the questions surrounding plaintiff's ownership of the Indianapolis photo, in addition to the other defenses raised by Wilmott. View "Bell v. Wilmott Storage Services, LLC" on Justia Law

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Epinephrine (adrenaline), a hormone that has been on the market since approximately 1938, is used for various medical purposes. It degrades by racemization and oxidation. A 1986 publication taught that “there is an optimum pH at which racemization and oxidation can be balanced to minimize loss of intact drug by these two routes.” In 2012, Belcher submitted New Drug Application (NDA) for a 1 mg/mL injectable l-epinephrine formulation. The NDA was literature-based; Belcher did not perform any studies on its epinephrine formulation. Belcher responded to FDA inquiries concerning pH levels and racemization. In 2014, Belcher filed an application entitled “More Potent and Less Toxic Formulations of Epinephrine and Methods of Medical Use,” resulting in the 197. Hospira then submitted an NDA seeking approval of a 0.1 mg/mL injectable l-epinephrine formulation, including a Paragraph IV certification (21 U.S.C. 355(b)(2)(A)(iv)) alleging that the patent’s claims are invalid, unenforceable, and/or not infringed. Belcher sued Hospira for infringement.The Federal Circuit affirmed a finding that the patent was unenforceable for inequitable conduct. Belcher’s Chief Science Officer withheld material information about the pH range and the impurity levels from the Patent and Trademark Office. Belcher’s alleged critical improvement over the prior art was already within the public domain, just not before the examiner. Belcher’s officer acted with intent to deceive. View "Belcher Pharmaceuticals, LLC v. Hospira, Inc." on Justia Law

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Lubby’s patent is titled “Personal Vaporizer.” “Personal vaporizers are handheld devices that vaporize a vaporizing medium such as a liquid solution or a wax.” The patent relates to personal vaporizers that “will resist leaking, particularly during periods of nonuse.” Lubby and Vaporous Technologies, a nonexclusive licensee of the patent, sued Chung for infringement. The district court found Chung liable and awarded damages of $863,936.10.The Federal Circuit affirmed in part. There was evidence to support the jury’s verdict that Chung directly infringed the patent but the district court erred in awarding damages for the sales of infringing products before the commencement of the suit, which is the date Chung received actual notice of the patent under 35 U.S.C. 287. The court remanded for a new trial to determine the number of infringing products sold after the commencement of the suit and for the determination of a reasonable royalty rate for the sale of these units. View "Lubby Holdings LLC v. Chung" on Justia Law

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Schiedmayer makes and sells celestas, keyboard instruments that resemble small pianos. and is the successor to a line of German companies that have sold keyboard musical instruments under the Schiedmayer name for nearly 300 years. In 1980, Georg Schiedmayer, the owner of Schiedmayer & Soehne, stopped making pianos and renamed the company Schiedmayer GmbH, then briefly entered into a joint venture with Ibach. The “Schiedmayer” trademark was not sold, assigned, or otherwise transferred to Ibach or any other entity. but Ibach entered into an agreement with Kawai under which Kawai produced pianos carrying the Schiedmayer name. Georg’s widow, Elianne, became the sole owner of Schiedmayer, and, in 1995, founded a new company that became Schiedmayer Celesta.In 2002, the owner of Piano Factory retail outlets, believing that the “Schiedmayer” mark had been abandoned for pianos, acquired the domain name “schiedmayer.com.” The Patent and Trademark Office issued a registration for the “Schiedmaryer” mark in 2007. Piano Factory assigned the registration to Sweet 16, which purchased “no-name” pianos from China and affixed labels on them, including the Schiedmayer label. Schiedmayer Celesta filed a cancellation petition with the Trademark Trial and Appeal Board, citing the Lanham Act, 15 U.S.C. 1052(a). The Federal Circuit affirmed the cancellation of the mark. All of the relevant factors—similarity of the goods, recognition among particular consumers, and intent in using the mark—support the Board’s finding that the name was sufficiently well known among consumers of Sweet 16’s products that a connection with Schiedmayer would be presumed. View "Piano Factory Group, Inc. v. Schiedmayer Celesta GmbH" on Justia Law

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The European Telecommunications Standards Institute (ETSI) established many global standards for 3G, 4G, and 5G cellular communications technology. ETSI members that own standard-essential patents must provide “an irrevocable undertaking in writing that [they are] prepared to grant irrevocable licenses on fair, reasonable and non-discriminatory (FRAND)” terms. Ericsson holds patents that are considered essential to the ETSI standards and agreed to grant licenses to other companies to use its standard-essential patents on FRAND terms. HTC produces mobile devices that implement those standards; to manufacture standard-compliant mobile devices, HTC has to obtain a license to use Ericsson’s patents. Ericsson and HTC have previously entered into three cross-license agreements for their respective patents. Negotiations to renew one of those agreements failed.HTC filed suit, alleging that Ericsson had breached its commitment to provide a license on FRAND terms and had failed to negotiate in good faith. The jury found in favor of the defendants. The district court entered a separate declaratory judgment that the defendants had affirmatively complied with their contractual obligations. The Fifth Circuit affirmed, rejecting challenges to the district court’s exclusion of HTC’s requested jury instructions, its declaratory judgment that Ericsson had complied with its obligation to provide HTC a license on FRAND terms, and the exclusion of certain expert testimonial evidence as hearsay. View "HTC Corp. v. Telefonaktiebolaget LM Ericsson" on Justia Law