Justia Intellectual Property Opinion Summaries
Apple Inc. v. Qualcomm Inc.
Qualcomm sued Apple in the Southern District of California for infringing claims of two patents. Apple sought inter partes review. The Patent Trial and Appeal Board held Apple did not prove that claims in the two patents would have been obvious. Before the filing of appeals, Apple and Qualcomm settled all litigation between the two companies worldwide. Based on that settlement, the parties jointly moved to dismiss Qualcomm’s district court action with prejudice, which the district court granted.The Federal Circuit dismissed appeals from the inter partes review for lack of standing. Apple has not alleged that the validity of the patents will affect its contract rights (ongoing royalty obligations) in the settlement. The possibility of a future suit is too speculative to confer standing, as is the likelihood that 35 U.S.C. 315(e) would estop Apple from arguing that the patents would have been obvious in future disputes. Apple has failed to show an injury in fact based on potential future allegations that its products infringe the patents. View "Apple Inc. v. Qualcomm Inc." on Justia Law
Wi-LAN Inc. v. Sharp Electronics Corp.
Wi-LAN’s 654 patent concerns “methods to display interlaced video on [a] noninterlaced monitor” Interlaced video. Television sets use interlaced video formats to prevent a “flicker” effect that results from the difference in the frame rate of the television set and the frame rate in which a program was filmed. Wi-LAN’s 250 patent, “relates generally to multimedia encoders and specifically [to] an integrated multimedia stream multiplexer,” which receives separate audio and video data streams and combines them into a single multimedia data stream. The 250 patent is directed to a system for dynamically adjusting the bit rates of the input audio and video data streams to obtain a combined multimedia data stream with an optimal bit rate. Vizio and Sharp sold “smart” television sets. Wi-LAN alleged direct and induced infringement of the patents against both.For the 250 patent, the district court construed the terms “output multimedia data stream” and “a multimedia processor, coupled to the data rate analyzer” and entered a stipulated judgment of noninfringement. The court reasoned that Wi-LAN knew that it could not establish infringement without establishing that the source code of Sharp’s and Vizio’s systems actually practiced the patented method and lacked sufficient admissible evidence to prove direct infringement of the 654 patent. The Federal Circuit affirmed, upholding the construction of the claim terms. With respect to the 654 patent, a source code printout did not constitute a business record admissible under Rule 803(6). View "Wi-LAN Inc. v. Sharp Electronics Corp." on Justia Law
Google LLC v. Oracle America, Inc.
Oracle owns a copyright in Java SE, a computer platform. Google acquired Android and sought to build a new software platform for mobile devices. To allow millions of programmers familiar with Java to work with its new platform, Google copied roughly 11,500 lines of code from Java SE. The copied lines allow programmers to call upon prewritten computing tasks for use in their own programs. The Federal Circuit held that the copied lines were copyrightable and reversed a jury’s finding of fair use.The Supreme Court reversed. Google’s copying of code lines needed to allow programmers to put their talents to work in a transformative program was fair use as a matter of law. Copyright protection cannot extend to “any idea, procedure, process, system, method of operation, concept, principle, or discovery,” 17 U.S.C. 102(b), and a copyright holder may not prevent another from making a “fair use” of a copyrighted work.Assuming that the copied lines can be copyrighted, the Court focused on “fair use.” The “right of trial by jury” does not include the right to have a jury resolve a fair use defense. Unlike other types of code, much of the copied material's value derives from the investment of users (computer programmers) who have learned the system; application of fair use here is unlikely to undermine the general copyright protection for computer programs. The “purpose and character” of this use is transformative. Google copied only about 0.4 percent of the entire program at issue and that was tethered to a valid, transformative, purpose. Google’s new smartphone platform is not a market substitute for Java SE; the copyright holder would benefit from the reimplementation of its interface into a different market. Enforcing the copyright on these facts risks causing creativity-related harms to the public. View "Google LLC v. Oracle America, Inc." on Justia Law
The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith
The Second Circuit reversed the district court's grant of summary judgment to the Foundation on its complaint for a declaratory judgment of fair use and the district court's dismissal of defendant's counterclaim for copyright infringement. This case involves visual art works by Andy Warhol based on a 1981 photograph of the musical artist Prince that was taken by defendant, Lynn Goldsmith, in her studio, and in which she holds copyright.The court concluded that the district court erred in its assessment and application of the fair-use factors and that the works in question do not qualify as fair use as a matter of law. In this case, the court considered each of the four factors and found that each favors defendant. Furthermore, although the factors are not exclusive, the Foundation has not identified any additional relevant considerations unique to this case that the court should take into account. The court likewise concluded that the Prince Series works are substantially similar to the Goldsmith Photograph as a matter of law. Accordingly, the court remanded for further proceedings. View "The Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith" on Justia Law
In Re Board of Trustees of the Leland Stanford Junior University
Stanford’s 2012 patent application is directed to computerized statistical methods for determining haplotype phase. A haplotype phase acts as an indication of the parent from whom a gene has been inherited. The written description explains that accurately estimating haplotype phase based on genotype data obtained through sequencing an individual’s genome “plays pivotal roles in population and medical genetic studies.” The application is directed to methods for inferring haplotype phase in a collection of unrelated individuals.The Federal Circuit affirmed the Patent Trial and Appeal Board’s final rejection of the patent claims, applying the two-step “Alice” analysis to determine patent eligibility under 35 U.S.C. 101 and finding that the claims involve patent-ineligible subject matter. The rejected claims are drawn to abstract mathematical calculations and statistical modeling, and similar subject matter that is not patent-eligible. The improvement in computational accuracy alleged by Stanford does not qualify as an improvement to a technological process; rather, it is merely an enhancement to the abstract mathematical calculation of haplotype phase itself. View "In Re Board of Trustees of the Leland Stanford Junior University" on Justia Law
Snyder’s-Lance, Inc. v. Frito-Lay North America, Inc.
The waiver language in 15 U.S.C. 1071 relates only to the choice of review options for the decision appealed from. The Fourth Circuit held that a party seeking review of a subsequent Trademark Board decision may seek review in either the Federal Circuit or the district court, even if the Trademark Board's initial decision was reviewed by the Federal Circuit.In this case, the parties' dispute concerns the registration of the mark "PRETZEL CRISPS." Plaintiff sought to register the mark in 2004, but the trademark examiner denied registration. Plaintiffs reapplied for registration in 2009, but Frito-Lay opposed the registration and argued that "PRETZEL CRISPS" was generic for pretzel crackers and not registrable. The Trademark Board sided with Frito-Lay in 2014. Plaintiffs opted for the section 1071(a) route and appealed the Trademark Board's 2014 decision to the Federal Circuit. The Federal Circuit agreed with plaintiffs in 2015, remanding to the Trademark Board. On remand in 2017, the Trademark Board again concluded that "PRETZEL CRISPS" was generic, and alternatively concluded that "PRETZEL CRISPS" lacked distinctiveness. Plaintiffs sought review of the Trademark Board's 2017 decision, but the district court dismissed the case without prejudice for lack of subject matter jurisdiction. The Fourth Circuit reversed the district court's judgment dismissing the case for lack of subject matter jurisdiction and remanded for further proceedings. The court explained that the statutory text of the Lanham Act, while ambiguous, favors plaintiffs' argument in favor of jurisdiction. Furthermore, this conclusion is bolstered by legislative history, the court's sister circuits' holdings in similar cases, and policy considerations. The court remanded for further proceedings. View "Snyder's-Lance, Inc. v. Frito-Lay North America, Inc." on Justia Law
United States v. Shi
Drill riser buoyancy modules (DRBMs) are the high-tech equivalent of water wings for the miles of steel pipe that extend from drillships to the ocean floor and carry oil from natural deposits tens of thousands of feet below the surface. In 2012, only four major companies in the world produced DRBMs. CBMF was sponsored by China to develop DRBM technology. CBMF partnered with Shi, a Ph.D. with 25 years of experience in offshore structural design. Shi visited factories where DRBM was being produced; the manufacturers took precautions to protect their information. Shi hired former employees of those companies, making clear that they were to provide their former employers’ nonpublic information. CBMF was successful in duplicating the technology. At a pitch meeting by Shi to representatives of a company Shi believed to be Lockheed Martin, FBI agents arrested Shi.Three coconspirators pled guilty to conspiracy to commit theft of trade secrets, 18 U.S.C. 1832; one absconded, and a CBMF employee remained in China. CBMF never appeared, leaving Shi as the only defendant at trial. The D.C. Circuit affirmed Shi's conviction as supported by substantial evidence. The information at issue was not publicly available; it came from a competitor. Shi joined an agreement to acquire and use trade secret information and believed the documents he received contained trade secrets. View "United States v. Shi" on Justia Law
DePuy Synthes Products, Inc. v. Veterinary Orthopedic Implants, Inc.
The parties compete in the market for veterinary orthopedic implants. DePuy sued VOI, alleging patent infringement. The district court entered the parties’ joint proposed protective order, designating certain information as “Confidential Material” and “Highly Confidential Material—Attorney Eyes Only.” The information designated “Highly Confidential” encompassed “supplier . . . names and identifying information.” DePuy filed under seal an unopposed motion for leave to amend the complaint to join as a defendant the manufacturer of VOI’s accused products, disclosing the manufacturer’s identity and information about the business relationship between the manufacturer and VOI.According to VOI, the manufacturer identity and other information are Highly Confidential and constitute trade secrets, so that it was necessary to file the amended complaint under seal, with only a redacted version publicly available. DePuy argued that the manufacturer’s public website advertises its business; that VOI and the manufacturer have no confidentiality agreement; that the manufacturer ships its products to VOI using a public carrier; and that a third party was aware that the manufacturer supplied products to VOI.The district court ordered that the amended complaint be filed on the public record without redaction of either the manufacturer's identity or other information. The order did not specifically analyze the other information. The Federal Circuit affirmed. The district court did not abuse its discretion in performing its obligation to ensure public access to court documents. View "DePuy Synthes Products, Inc. v. Veterinary Orthopedic Implants, Inc." on Justia Law
Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V.
Janssen sued Mylan for infringing claims in the 906 patent. Less than six months later, Mylan petitioned for inter partes review (IPR) of that patent, raising four grounds for the unpatentability under 35 U.S.C. 103. Opposing institution, Janssen claimed IPR would be an inefficient use of Patent Trial and Appeal Board resources because of two co-pending district court actions: the suit against Mylan and another suit against Teva. The Board agreed and denied the petition. Applying its six-factor standard, the Board found substantial overlap between the issues raised in Mylan’s IPR petition and the co-pending district court actions and that both actions would likely reach final judgment before any final written decision. The Teva trial date was only weeks away.Mylan argued that the Board’s determination, based on the timing of separate litigation to which Petitioner is not a party, undermines its constitutional and other due process rights and that the Board’s continued adoption and application of non-statutory institution standards through ad hoc proceedings lie in contrast to congressional intent. The Federal Circuit denied relief, stating that it lacks jurisdiction over appeals from decisions denying institution. Although the court has jurisdiction over mandamus petitions challenging such decisions, Mylan has not shown it is entitled to such an extraordinary remedy. View "Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V." on Justia Law
In Re Board of Trustees of the Leland Stanford Junior University
Stanford’s 925 application is directed to methods and computing systems for determining haplotype phase--an indication of the parent from whom a gene has been inherited. Improved haplotype phasing techniques “promise to revolutionize personalized health care by tailoring risk modification, medications, and health surveillance to patients’ individual genetic backgrounds.” Achieving the understanding necessary to accomplish those goals requires “interpretation of massive amounts of genetic data produced with each genome sequence.” The 925 application describes a method for receiving genotype and pedigree data and processing the data by performing mathematical calculations and statistical modeling to arrive at a haplotype phase determination.The Federal Circuit affirmed the Patent Trial and Appeal Board in rejecting the claims as patent-ineligible under 35 U.S.C. 101 because they are drawn to abstract mathematical calculations and statistical modeling, and similar subject matter that is not patent-eligible. Claim 1 recites no steps that practically apply the claimed mathematical algorithm; instead, claim 1 ends at storing the haplotype phase and “providing” it “in response to a request.” Simply storing information and providing it upon request does not alone transform the abstract idea into patent-eligible subject matter. View "In Re Board of Trustees of the Leland Stanford Junior University" on Justia Law