Justia Intellectual Property Opinion Summaries
Melendez v. Sirius XM Radio, Inc.
Plaintiff appealed from the district court’s judgment granting Defendant Sirius XM Radio, Inc. (“Sirius XM”)’s motion to dismiss Plaintiff’s claims with prejudice for violations of his right of publicity under California common and statutory law because his claims were preempted by the Copyright Act, 17 U.S.C. Section 301. The claims arise from Melendez’s performance under the moniker “Stuttering John” on The Howard Stern Show (the “HS Show”) from 1988 until 2004. On appeal, Plaintiff asserted that Sirius XM’s use of excerpts of him from the archival episodes in its online and on-air advertisements promoting the HS Show violates his right of publicity under California common and statutory law because his name and likeness have been exploited for Sirius XM’s commercial gain without his permission. The Second Circuit affirmed the district court’s judgment. The court held that Plaintiff failed to plausibly allege any use of his name or likeness that is separate from, or beyond, the rebroadcasting, in whole or in part, of the copyrightable material from the HS Show’s archives and, thus, his right of publicity claims are preempted by the Copyright Act. Moreover, because Plaintiff has failed to articulate any allegations that he could add in a second amended complaint that overcome preemption in this case, the court concluded that the district court correctly determined that any leave to re-plead would be futile and properly dismissed his claims with prejudice. View "Melendez v. Sirius XM Radio, Inc." on Justia Law
In Re Monolithic Power Systems, Inc.
Bel Power sued, alleging that Monolithic infringes Bel’s patents by selling certain power modules to original equipment manufacturers and other distributors and customers that use the products in their own electronic devices. Monolithic moved to dismiss or transfer for lack of venue under 28 U.S.C. 1406(a), arguing that, as a Delaware corporation, it does not “reside” in the Western District of Texas, that it does not own or lease any property in that district, and that the homes of four full-time remote employees in the Western District identified in the complaint to support venue do not constitute a “regular and established place of business.” Monolithic alternatively moved to transfer to the Northern District of California.The Federal Circuit upheld the denial of both requests. Monolithic viewed maintaining a business presence in the Western District as important, as evidenced by a history of soliciting employment in Austin to support local customers, even if none of its Western District employees were required to reside there. Monolithic provided certain Western District employees with lab equipment or products to be used in or distributed from their homes as part of their responsibilities. The convenience of parties and witnesses and the interests of justice did not weigh in favor of transfer under the multi-factor approach; Monolithic failed to demonstrate that California was clearly more convenient than the Western District. View "In Re Monolithic Power Systems, Inc." on Justia Law
Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.,
Merck’s 708 patent describes sitagliptin dihydrogen phosphate (sitagliptin DHP), which belongs to the class of dipeptidyl peptidase-IV (DP-IV) inhibitors that can be used for treating non-insulin-dependent (Type 2) diabetes. Mylan petitioned for inter partes review, arguing that claims 1–3, 17, 19, and 21–23 were anticipated by the Merck-owned 489 publication, and the equivalent 871 patent (collectively, Edmondson) Edmondson is directed to compounds that are DP-IV inhibitors, useful in the treatment or prevention of diseases in which the dipeptidyl peptidase-IV enzyme is involved, such as diabetes and particularly type 2 diabetes. Mylan also argued that claims 1–4, 17, 19, and 21–23 would have been obvious over Edmondson and two additional publications.The Federal Circuit affirmed the Patent and Trademark Office Patent Trial and Appeal Board holding that Mylan failed to show that claims 1–4, 17, 19, and 21–23 were anticipated or would have been obvious over the cited prior art at the time the alleged invention was made. Merck reduced to practice more than what is shown in Edmondson for the claimed subject matter. View "Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.," on Justia Law
Cooperative Entertainment, Inc. v. Kollective Technology, Inc. (
Cooperative’s ’452 patent relates to systems and methods of structuring a peer-to-peer (P2P) dynamic network for distributing large files, namely videos and video games. In prior art systems, video streaming was controlled by content distribution networks (CDNs), where the content was “distributed directly from the CDN server originating the content.” The 452 patent claims methods and systems for a network in which content distribution occurs “outside controlled networks and/or [CDNs],” i.e., outside a “static network of controlled systems,” using dynamic P2P networks comprising “peer nodes,” i.e., nodes consuming the same content contemporaneously, that transmit content directly to each other instead of receiving content from the CDN.The Federal Circuit reversed the dismissal of Cooperative’s infringement suit. The complaint contains several alleged inventive concepts which the specification touts as specific improvements in the distribution of data compared to the prior art, which should have precluded the district court’s holding on ineligibility (35 U.S.C. 101). One such concept is the required dynamic P2P network wherein multiple peer nodes consume the same content and are configured to communicate outside the CDNs. Another requires trace routes to be used in content segmentation. View "Cooperative Entertainment, Inc. v. Kollective Technology, Inc. (" on Justia Law
Provisur Technologies, Inc. v. Weber, Inc.
Provisur’s patent describes a method and system for “classifying slices or a portion cut from a food product according to an optical image of the slice.” Some food products, like bacon or cold cuts, are packaged and sold in groups of slices and “in accordance with a particular weight requirement.” Systems of conveyors and slicers create and gather these groups for packaging. The patent explains that, while slicing apparatuses and conveyor systems were known in the art, it remained “desirable to provide a system which would be directly responsive to the quality of cut slices and which would provide a compact and effective arrangement to classify slices based on fat content and fat deposits.” The patent describes an apparatus that includes a slicing station with a blade for removing slices from a food product.On inter partes review, the Patent Trial and Appeal Board concluded that Weber had proved unpatentable as obvious claims 1–10, 13, and 14 but not claims 11 or 12. The Federal Circuit vacated in part. The Board erred in deciding that claims 11 and 12 are not obvious; on remand, should the Board find the independent claims obvious after considering the surface-area limitations, claims 11 and 12 are also obvious in view of the Board’s determinations regarding claims 2, 6, and 7. View "Provisur Technologies, Inc. v. Weber, Inc." on Justia Law
Joe Hand Promotions, Inc. v. Griffith
A world-famous boxer and a famous MMA fighter faced one another in a legendary fight, produced by Showtime, which allowed individuals to live-stream the fight from Showtime’s website for $99.99. Showtime granted Mayweather the exclusive right to exhibit and distribute, and authorize the exhibition and distribution of, the fight. Mayweather enlisted JHP to issue commercial licenses. JHP sold commercial licenses to broadcast the event at bars and restaurants and collected fees, ranging from $3,700-$15,700. The fight was not registered as a copyrighted work when it first aired on August 26, 2017. Two months later, Showtime applied to register its copyright, as the sole author and claimant. Showtime later signed the Copyright Agreement, giving JHP the exclusive right to distribute and publicly perform the fight live and the exclusive right to sue anyone who live-streamed the fight without paying the licensing fee. JHP sued several restaurants and bars that aired the fight without paying.In an action for copyright infringement, 17 U.S.C. 106, 501, the district court granted the defendants summary judgment, finding that JHP did not own the copyright to the fight on the day it aired and that the “retroactive transfer" was ineffective. The Sixth Circuit reversed. The Copyright Agreement merely codified earlier transfers in the wake of the post hoc registration, there is no retroactivity issue. JHP owned the exclusive right to distribute and publicly display the fight on the day it aired. View "Joe Hand Promotions, Inc. v. Griffith" on Justia Law
Polaris Innovations Ltd. v. Brent
Polaris’s 993 patent, titled “Control Component for Controlling a Semiconductor Memory Component in a Semiconductor Memory Module,” explains that the control component can send both address signals and control signals through the same leads, allowing the control component to perform its functions with fewer leads. Its 505 patent involves a shared-resource system in which logical controls are used to manage resource requests.In inter partes review (IPR) proceedings, the Patent Trial and Appeal Board determined that all challenged claims are unpatentable. The Federal Circuit affirmed. Because the Board decided the merits before Polaris filed its motion to terminate the IPR Polaris’s motion was untimely. The Board properly exercised its discretion. The court rejected Polaris’s argument that the Board misconstrued the claim terms “memory chips” and “semiconductor memory component” within the claim phrase “wherein the semiconductor memory component comprises a plurality of memory chips.” Prior art discloses all claim limitations under the Board’s claim constructions. The Board correctly adopted Polaris’s expert’s definition of “single buffer” as the broadest reasonable interpretation consistent with the specification, which discloses that resource tags "may be located in disparate locations." Substantial evidence supports a finding that the prior art discloses a “resource tag buffer.” View "Polaris Innovations Ltd. v. Brent" on Justia Law
SawStop Holding LLC v. Vida;
Sawstop requested patent term adjustments (PTA) under 35 U.S.C. 154(b)(C), which grants day-for-day extensions for delays attributable to appellate review by the Patent Trial and Appeal Board or by a Federal court in a case in which the patent was issued under a decision in the review reversing an adverse determination of patentability.With respect to the application that led to the issuance of the 476 patent, the Board had affirmed the rejection of claim 11 on new grounds. On remand, SawStop filed amendments and a request for continued examination. The examiner eventually allowed claim 11. The PTO made no adjustment to the patent's term because “the patent only issue[d] after further prosecution” and amendment. The district court and Federal Circuit agreed. Because claim 11 was subject to a new ground of rejection on appeal, the application was not “issued under a decision in the review reversing an adverse determination of patentability.” With respect to the 796 patent, PTA had been granted for the delay incurred in the successful reversal of the rejection of claim 2 but was not granted for Sawstop’s appeal to the district court because the appeal did not “revers[e] an adverse determination of patentability.” Claim 1 remained subject to an outstanding provisional double patenting rejection and was unpatentable both before and after the appeal. Claim 1 was canceled and did not issue in the patent. View "SawStop Holding LLC v. Vida;" on Justia Law
Hyatt v. United States Patent and Trademark Office
During the GATT Bubble–a 1995 application “rush” by applicants who wanted their patent claims to be governed by the pre-35 U.S.C. 154(a)(2) patent term, Hyatt filed the 938 application, which claims priority to applications filed as early as 1983. The PTO completed an initial examination in 2003, but from 2003-2012, stayed the examination of many of Hyatt’s applications pending litigation. In 2013, an examiner instructed Hyatt to select claims for examination as part of efforts to manage Hyatt’s approximately 400 pending applications. Hyatt selected eight of approximately 200 claims in that application. Hyatt responded to a non-final rejection in 2015 with significant claim amendments. The Examiner determined that the amendments shifted seven claims to different species of computer systems and processes and issued a restriction requirement between the originally-selected claims and the amended claims, requiring Hyatt to prosecute his amended claims in a new application.The Federal Circuit affirmed summary judgment in favor of the PTO. Hyatt failed to disclose claims to a separate invention and attempted to file them years after 1995. Withholding these claims falls within the 37 C.F.R. 1.129 exception to the general rule prohibiting restriction: In an application that has been pending for at least three years as of June 8, 1995, no requirement for restriction shall be made or maintained in the application after June 8, 1995, except where the examiner has not made a requirement for restriction in the present or parent application before April 8, 1995, due to actions by the applicant. Hyatt’s amended claims are subject to the new patent term. View "Hyatt v. United States Patent and Trademark Office" on Justia Law
Anthony Campbell v. June James
Plaintiff wrote and recorded the song “Everything Be Lit,” which he later copyrighted. Then Plaintiff filed suit against several parties and Think It’s a Game Records (TIG) for copyright infringement based on one of Defendant’s recordings and release of a similar song “Everyday We Lit.” Two co-defendants failed to respond to the initial complaint and the district court entered a default against them. Plaintiff later filed an amended complaint, requesting among other forms of relief, actual profits, jointly and severally, from Defendants. One Defendant raised several issues on appeal, including that the district court erred in using Plaintiff’s amended complaint as the basis for the default judgment because the amended complaint stated a new claim for relief, and Plaintiff failed to serve the amended complaint on Defendant as required by the Federal Rules of Civil Procedure. The Eleventh Circuit agreed that the amended complaint stated a new claim for relief, and therefore, the district court erred in concluding that Plaintiff did not have to serve the amended complaint on Defendant. Accordingly, the court vacated the default judgment and remanded for further proceedings. The court explained that the Copyright Act did not put Defendant on notice that he could be subject to joint and several liability for actual damages and profits. Thus, Plaintiff’s claim for actual damages plus profits, jointly and severally, constituted a new claim for relief. View "Anthony Campbell v. June James" on Justia Law