Justia Intellectual Property Opinion Summaries

VidStream’s patent, titled: “Recording and Publishing Content on Social Media Websites,” has a priority date of May 2012. Twitter filed two petitions for inter partes review (IPR), with method claims 1–19 in one petition, and medium and system claims 20–35 in the other. Twitter cited the Bradford book as the primary reference for both petitions, combined with other references. With the petitions, Twitter filed copies of several pages of the Bradford book and explained their relevance to the claims. Twitter also filed a Bradford 2011 copyright page and copies of archived webpages from the Internet Archive, showing the Bradford book listed on a publicly accessible website bearing a November 2011 website date and website pages dated December 6, 2011, showing the Bradford book available for purchase from Amazon.The Patent Trial and Appeal Board held that claims 1–35 are unpatentable as obvious. The Federal Circuit affirmed the Board’s holding that Bradford is prior art. The Board permitted both sides to provide evidence concerning the reference date of the Bradford book; the evidence well supports its finding that Bradford was published and publicly accessible before the patent’s 2012 priority date. With Bradford as the primary reference, VidStream did not appeal the unpatentability of claims 1–35. View "VidStream LLC v. Twitter, Inc." on Justia Law

Rogers owned RJ Control. Elder owns Multiject, which engineers and sells accessories for plastic injection molding. In 2008, the parties entered into an oral agreement. Rogers developed a control system for injection molding. RJ updated that system design in 2013 (Design 3). The parties dispute the invoicing for Design 3. In 2014, Elder asked for copies of Design 3’s diagrams and software source code. Rogers disclosed that information. Days later, Elder indicated that Multiject would no longer need Rogers’s services and would instead use RSW for the assembly and wiring of the control systems. RSW's quote explicitly referenced Design 3’s software code and technical drawings without any changes. RSW apparently believed Multiject had permission to use the software and technical drawings.Almost two years later, Rogers obtained Copyright Certificates of Registration for the software code and the technical drawings. RJ filed suit. The district court granted the defendants summary judgment. The Sixth Circuit affirmed in part. The use of the Design 3 drawing to manufacture a control system is not an act of copyright infringement. Copyright protection extends to the drawing itself, 17 U.S.C. 106, but does not extend to the use of those drawings to create the described useful article. Patent law, with stricter standards requiring novelty, governs use protection. The court reversed with respect to the software code, finding that material questions of fact remain concerning whether the complex technology is properly protected under the Copyright Act. View "RJ Control Consultants, Inc. v. Multiject, LLC" on Justia Law

Vectura sued GSK in 2016, alleging direct infringement of claim 3 of the 991 patent, which concerns the production of “composite active particles” for use in pulmonary administration, such as in dry-powder inhalers. The composite active particles described in the patent consist of additive material that is adhered to particles of the active ingredient. The active ingredient produces the desired chemical or biological effect, while the additive particles promote the dispersion and delivery of the active ingredient into the lungs when the inhaler is activated.The Federal Circuit affirmed holdings that the patent was infringed and not invalid. The court rejected arguments that Vectura failed to present substantial evidence that the accused inhalers use additive material that “promotes the dispersion” of the active material, that the district court’s construction of the term “composite active particles” was erroneous, that there were flaws in the calculation of the royalty proposed by Vectura’s damages expert, and that Vectura made prejudicial references to GSK’s sales and advanced an improper “pennies on the dollar” argument in comparing Vectura’s royalty request to GSK’s sales. View "Vectura Ltd. v. GlaxoSmithKline, LLC" on Justia Law

Alleshouse and Yeh are named as the inventors on the 685 and 189 patents, which claim water-park attractions that individuals may ride as if surfing, and on the 433 patent, which claims nozzle configurations for regulating water flow in such attractions. Pacific, the company Alleshouse and Yeh formed to develop and market such attractions, is the assignee of the patents. Whitewater is the successor of Wave, which employed Alleshouse until just before he went into business with Yeh and the patented inventions were conceived. Whitewater sued Alleshouse, Yeh, and Pacific, claiming that Alleshouse had to assign each of the patents to Whitewater, as Wave’s successor, under the terms of Alleshouse’s employment contract with Wave. Whitewater also claimed that Yeh, who had not been employed by Whitewater or its predecessors and therefore was not under any alleged assignment duty, was improperly listed as an inventor on each of the patents.The district court held that Alleshouse breached the employment agreement, so Whitewater was entitled to an assignment of the patent interests, and Yeh was improperly joined as an inventor. The Federal Circuit reversed, The contract’s assignment provision is void under California law, (Labor Code 2870, 2872; Business and Professions Code 16600), so Whitewater lacks standing to contest inventorship. View "Whitewater West Industries Ltd. v. Alleshouse" on Justia Law

CFC appealed the district court's dismissal based on summary judgment of its complaint alleging trademark infringement, trademark dilution, and unfair competition by Energizer. CFC contends that its trademark for automobile air fresheners, consisting of the words "Black Ice," is infringed and diluted by Energizer's sale of products labeled with the words "Midnight Black Ice Storm" and that its trademark, consisting of the words "Bayside Breeze," is infringed and diluted by Energizer's sale of products labeled with the words "Boardwalk Breeze."The Second Circuit concluded that the record developed by CFC sufficed to withstand Energizer's motion for summary judgment with respect to CFC's mark "Black Ice" but not its mark "Bayside Breeze." Accordingly, the court reversed the grant of summary judgment for Energizer on CFC's federal trademark infringement claim with respect to its "Black Ice" mark; affirmed the grant of summary judgment for Energizer on CFC's federal trademark infringement claim with respect to the "Bayside Breeze" mark; affirmed the grant of summary judgment for Energizer on CFC's federal trademark dilution claim with respect to both marks; reversed the grant of summary judgment for Energizer on CFC's state law claims with respect to the "Black Ice" mark; and affirmed the grant of summary judgment for Energizer on CFC's state law claims with respect to the "Bayside Breeze" mark. The court remanded for further proceedings. View "Car-Freshner Corp. v. American Covers, LLC" on Justia Law

SIPCO’s patent explains communicating information from a previously unconnected, remote device to a central location by setting up a two-step communication path through intermediate nodes to use the nodes’ already-provided link (e.g., a public-switched telephone network) to the central location. The remote device communicates wirelessly to an intermediate node. The Patent Board found that the patent was not exempt from covered business method (CBM) review under the “technological invention” exception and found five claims patent-ineligible under 35 U.S.C. 101 and unpatentable for obviousness under section 103. The Federal Circuit vacated.The Supreme Court remanded for further consideration in light of the Court’s 2020 “Thryv” decision. The Federal Circuit then affirmed the Board’s obviousness determination and did not address the Board’s patent-ineligibility decision under section 101. The Thryv decision makes clear that the threshold determination that the patent qualifies for CBM review is non-appealable under 35 U.S.C. 324(e); SIPCO’s challenge is nothing more than a contention that the agency should have refused to institute CBM review View "SIPCO, LLC v. Emerson Electric Co." on Justia Law

Google’s 765 application relates to “distributed caching for video-on-demand systems, and in particular to a method and apparatus for transferring content within such video-on-demand systems.” The proposed invention presents a solution for determining how to stream content to set-top boxes and where to store said content among the content servers, be it at one or more video server offices or smaller, partial-content libraries at local servers (video home offices). The examiner rejected certain claims under 35 U.S.C. 103, as obvious in view of prior art. The Federal Circuit affirmed, declining to address certain of Google’s arguments as waived. View "In Re Google Technology Holdings LLC" on Justia Law

Fein was a consultant for Ferring Pharmaceuticals, involved in a project involving desmopressin, a synthetic analog of the naturally occurring hormone arginine vasopressin, which regulates the body’s retention of water. Fein suggested administration as a waterless orodispersible form to improve the bioavailability of the desmopressin. In 2002, Ferring filed a Great Britain Patent Application, covering an orodispersible desmopressin formulation but did not list any inventors. When Ferring experienced production delays, it undertook another clinical study with an intravenous desmopressin formulation. Fein was selected to oversee the U.S. study and suggested certain changes. After Ferring terminated Fein’s consulting agreement, both parties continued to test various formulations. Both Ferring and Fein filed patent applications. Fein’s company sold the right to commercialize a low-dose desmopressin intranasal spray.Ferring unsuccessfully requested reexamination of Fein’s patent, then filed a complaint asserting state law claims and claims for correction of inventorship of the Fein patents under 35 U.S.C. 256. The district court granted the defendants summary judgment, finding that conduct occurring before the issuance of Fein's patents could give rise to equitable estoppel of claims for correction of inventorship. The court noted Ferring’s inaction for over seven years following letters from Fein’s attorney. On counterclaims for correction of inventorship of Ferring’s patents, the court granted Ferring judgment. The Federal Circuit vacated and remanded for further development of the record, noting the fact-laden equitable issue and the need to avoid a rush to judgment. View "Ferring B.V. v. Allergan, Inc." on Justia Law

Bard and AngioDynamics both manufacture vascular access ports, devices implanted underneath a patient’s skin that allow the injection of fluid into the patient’s veins on a regular basis without starting an intravenous line each time. Vascular access ports were traditionally used to administer injections at low pressure and flow rates. Certain procedures, like computed tomography (CT) imaging, required the injection of fluids into patients at high pressure and high flow rates (power injection). As of 2005, vascular access ports were not FDA-approved for power injection but certain medical providers were using existing ports for power injection; in some cases, the pressure ruptured the port, seriously injuring the patient. Bard obtained FDA approval for PowerPort as the first vascular access port labeled for power injection and obtained the patents-in-suit. AngioDynamics then obtained FDA approval to market its own vascular access port products as suitable for power injection.Bard sued AngioDynamics for infringement. During the trial, the court granted judgment that the asserted claims were not infringed, were not willfully infringed, and were invalid as directed to printed matter. The Federal Circuit reversed. There was substantial evidence to support a jury finding of infringement and willfulness; the asserted claims are not directed solely to printed matter and are patent-eligible under 35 U.S.C. 101. A genuine dispute of material fact precludes summary judgment as to anticipation. View "C R Bard Inc. v. AngioDynamics, Inc." on Justia Law

Uniloc sued Apple for patent infringement in the Western District of Texas (WDTX). Apple moved to transfer the case to the Northern District of California (NDCA), arguing that it would be clearly more convenient to litigate the case there, 28 U.S.C. 1404(a). Apple moved to stay activity in the case unrelated to its transfer motion. The district court denied the stay motion without explanation, then held a hearing on Apple’s transfer motion and stated that it would deny the motion and issue a written order soon. After the hearing, but before issuing a written order, the court held a Markman hearing, issued its claim construction order, held a discovery hearing regarding protective order, and issued a corresponding discovery order.Apple filed a petition for a writ of mandamus, which the Federal Circuit granted. The “district court barreled ahead on the merits in significant respects” and clearly abused its discretion in denying transfer. The district court erred by failing to meaningfully consider the wealth of important information in NDCA and misapplied the law by giving too much significance to the fact that the inventors and patent prosecutor live closer to WDTX than NDCA and in concluding that judicial economy weighed against transfer because NDCA has more pending cases than WDTX. View "In Re Apple Inc." on Justia Law