Justia Intellectual Property Opinion Summaries

The plaintiff companies, which provide electrical construction and utility services in Kentucky, sued a former vice president and two related defendants after discovering that the former employee had transmitted confidential pricing and rate materials to a competitor, Kent Power, prior to his termination. The plaintiffs alleged that the competitor was seeking to obtain contracts with a major client, Louisville Gas & Electric (LG&E), and argued that the disclosures threatened their business interests. The defendants contended that the disputed LG&E contract involved transmission work which the plaintiff companies could not perform due to lack of equipment, although they were concerned Kent Power might later pursue distribution work, a major part of plaintiffs’ business.The United States District Court for the Western District of Kentucky granted a preliminary injunction. It found that the plaintiffs were likely to succeed on their trade secret claims and would suffer irreparable harm, reasoning that the relationship between Kent Power and LG&E could lead to significant competitive injury. The injunction restrained the defendants from using or disclosing plaintiffs’ confidential information, required forensic examination of the defendants’ devices, and prohibited Kent Power from working on the LG&E contract and from pursuing other business with United Electric customers. The defendants challenged the order’s breadth and the lack of forensic safeguards.The United States Court of Appeals for the Sixth Circuit reviewed the district court’s order for abuse of discretion. It held that the plaintiffs failed to demonstrate irreparable harm because there was no evidence that Kent Power had taken business from the plaintiffs or posed an imminent competitive threat. The court also determined that the forensic provisions of the injunction were overbroad and lacked necessary protections for the defendants’ confidential information. The Sixth Circuit vacated the preliminary injunction and remanded the case for further proceedings. View "UEC Holdings, Inc. v. Hatcher" on Justia Law

Programmers who published open-source code on GitHub sued GitHub, Microsoft, and various OpenAI entities, alleging that GitHub Copilot and Codex—AI tools trained on publicly available code from GitHub—reproduce portions of their code without attribution. These programmers claimed that the AI’s omission of copyright management information (CMI), such as attribution and license terms required by open-source licenses, violated the Digital Millennium Copyright Act (DMCA), specifically 17 U.S.C. § 1202(b). Plaintiffs alleged that Copilot’s outputs sometimes consist of verbatim or near-verbatim reproductions of their code, but the AI-generated outputs do not include the original CMI.The United States District Court for the Northern District of California reviewed the case and dismissed the DMCA claims under Rule 12(b)(6, first with leave to amend and then with prejudice, concluding that plaintiffs failed to allege that Copilot’s outputs were “identical” to their code and that only identical copies from which CMI had been removed could support a DMCA claim. The court allowed breach of contract claims to proceed. It certified the DMCA dismissal for interlocutory appeal under 28 U.S.C. § 1292(b), noting the issue of whether § 1202(b) imposes an identicality requirement.The United States Court of Appeals for the Ninth Circuit affirmed the district court’s dismissal. The court held that plaintiffs had Article III standing due to a plausible risk of injury. However, it determined that under their “output” theory, Copilot and Codex do not “remove or alter” CMI from copies of existing protected works; instead, they generate new works that never contained CMI. The court declined to consider the plaintiffs’ “input” theory as it was forfeited. The main holding is that generating new works without CMI does not violate § 1202(b) of the DMCA. View "DOE V. GITHUB, INC." on Justia Law

NCS Multistage Inc. sued Nine Energy Service, Inc. in the United States District Court for the Western District of Texas, alleging that Nine’s BreakThru Casing Flotation Device infringed various claims of U.S. Patent No. 10,465,445. The patent concerns a float tool for use in oil and gas wellbores, specifically a tool design to reduce friction encountered when running casing to great depths. Central to the dispute were the meanings of the claim terms “internal diameter” and “casing string,” as well as whether certain prior art sales and disclosures anticipated the patent.The district court construed “internal diameter” to refer both to an inner surface and a measured diameter, and construed “casing string” as pipe customarily having an outer diameter of at least 4.5 inches. Following trial, a jury found in favor of NCS on infringement and no invalidity, and the district court entered judgment accordingly, including an award of damages. Nine appealed, challenging the claim constructions, the exclusion of certain prior art, and evidentiary rulings regarding discovery disclosures.The United States Court of Appeals for the Federal Circuit held that the district court erred in its constructions of “internal diameter” and “casing string.” The Federal Circuit determined that “internal diameter” means a measured diameter, not also an inner surface, and that “casing string” should not be limited by a specific size. The appellate court further ruled that, under the controlling law, a private sale of a device does not constitute a public disclosure for prior art purposes, making certain prior art relevant. The court vacated the district court’s judgments of infringement, no invalidity, and damages, and remanded for a new trial with instructions consistent with its opinion. Costs were awarded to Nine. View "NCS MULTISTAGE INC. v. NINE ENERGY SERVICE, INC. " on Justia Law

TexasLDPC Inc. held an exclusive license to several patents and copyrights relating to LDPC code technology, originally developed by Dr. Kiran Gunnam while at Texas A&M University (A&M). After attempts to commercialize and sublicense the technology failed, TexasLDPC shifted its business focus exclusively to enforcing its rights through litigation. TexasLDPC filed suit in the United States District Court for the District of Delaware against Broadcom Inc., LSI Corporation, and Avago Technologies U.S. Inc. for infringement, without joining A&M, the patent owner.The District Court for the District of Delaware dismissed the suit, holding first that TexasLDPC’s license agreement with A&M had automatically terminated when TexasLDPC ceased its business operations by focusing solely on enforcement. Second, the court found that even if the agreement had not terminated, TexasLDPC could not proceed without joining A&M, as the agreement did not convey “all substantial rights” in the patents and copyrights. The court also determined A&M was a necessary party under Federal Rule of Civil Procedure 19(a) due to its interests and sovereign immunity, and dismissed the federal claims.The United States Court of Appeals for the Federal Circuit reviewed the case. It held that TexasLDPC’s exclusive license agreement had not terminated, as the contract contemplated enforcement as a legitimate business operation. The court also determined that the agreement conveyed “all substantial rights” in the asserted patents to TexasLDPC, enabling TexasLDPC to sue for infringement in its own name without joining A&M. Furthermore, A&M was not a necessary party under Rule 19(a). The Federal Circuit reversed the district court’s dismissal of the action. View "TEXASLDPC INC. v. BROADCOM INC. " on Justia Law

The case concerns a dispute over patents related to spinal implant technology. The plaintiff, a company that owns three patents describing various spinal implant systems and related tools, sued a medical device manufacturer, alleging that several of the manufacturer’s products infringed its patents. At issue were claims from three patents: one describing a tool for manipulating and inserting a “universal, intervertebral bone fusion spacer,” another covering a “universal, intervertebral combination internal screw guide and fixation apparatus,” and a third involving an expandable spinal implant system. The meaning of the word “universal” in the claims of two patents was especially significant, as was the question of whether this term in the preambles of the claims was limiting.The United States District Court for the Eastern District of Pennsylvania construed “universal” to mean a device designed to be inserted between vertebrae in any region of the spine using any surgical approach. The district court determined that the preambles containing “universal” were limiting, and, based on the agreed construction, granted summary judgment of noninfringement to the defendant for the two patents in question. A jury later found no infringement of the third patent, and the district court denied the plaintiff’s motion for judgment as a matter of law, finding that substantial evidence supported the jury’s verdict.The United States Court of Appeals for the Federal Circuit reviewed the district court’s claim constructions, summary judgment, and denial of judgment as a matter of law. The appellate court held that the district court correctly found the preambles to be limiting and properly construed the term “universal.” It also concluded that substantial evidence supported the jury’s verdict of noninfringement regarding the third patent. Accordingly, the Federal Circuit affirmed the district court’s decisions. View "MOSKOWITZ FAMILY LLC v. GLOBUS MEDICAL, INC. " on Justia Law

Ford hired Versata to develop software for vehicle configuration, resulting in two products: Automotive Configuration Manager (ACM) and Materials Cost Analytics (MCA). In 2004, the parties entered into a licensing agreement called the Master Subscription and Services Agreement (MSSA). When the MSSA expired in 2014 and negotiations failed, Ford developed its own software, PDO, while still licensing Versata’s products. Ford sought a declaratory judgment that it had not infringed Versata’s rights. Versata counterclaimed, alleging misappropriation of trade secrets (specifically three combination secrets within ACM) and breach of contract.The United States District Court for the Eastern District of Michigan excluded testimony from Versata’s damages expert regarding trade secret damages, limiting Versata to damages based on the parties’ licensing history. At trial, a jury found Ford liable for trade secret misappropriation (of ACM, not MCA) and breach of contract, awarding Versata $22,386,000 for misappropriation and $82,260,000 for breach. Post-trial, the district court reduced both awards, setting trade secret damages to $0 and breach damages to $3, reasoning that the jury lacked sufficient evidentiary basis for their calculations. The district court denied Ford’s motion for judgment as a matter of law on liability.The United States Court of Appeals for the Federal Circuit reviewed the case. It held that Versata was entitled to pursue unjust enrichment damages under both the Defend Trade Secrets Act and the Michigan Uniform Trade Secrets Act, and the district court erred in precluding this. The Federal Circuit vacated the district court's judgment on trade secret damages, remanding for a new trial with instructions to consider previously excluded damages models. For breach of contract, the Federal Circuit reversed the district court’s reduction and reinstated the jury’s $82,260,000 award. It affirmed the district court’s denial of Ford’s motion for judgment as a matter of law regarding liability for trade secret misappropriation. View "VERSATA SOFTWARE, LLC v. FORD MOTOR COMPANY " on Justia Law

A company that provides information to the diamond industry publishes a weekly price list for diamonds, categorizing them by attributes such as size, color, and clarity. This list, which the company claims is based on its expert opinion and proprietary methods, is distributed to paid subscribers. The company alleged that another business operating an online diamond marketplace copied prices from this list and displayed them on its website, showing the difference between its own prices and those in the list.The United States District Court for the Southern District of New York granted the defendant's motion to dismiss the complaint. The district court found that the “merger doctrine” applied, reasoning that the idea of the market price for diamonds based on their characteristics could only be expressed in one way—by the specific numbers listed—and that protecting these numbers would impermissibly grant copyright protection to an idea rather than its expression. The district court did not reach other arguments, such as whether the plaintiff had proper copyright registration or whether fair use applied.On appeal, the United States Court of Appeals for the Second Circuit reviewed the district court’s decision de novo. The appellate court held that the district court erred in applying the merger doctrine at the motion to dismiss stage, as there were unresolved factual questions about how the price list was created and whether the prices could only be expressed in one way. The appellate court concluded that, based on the complaint’s allegations, the list may reflect the plaintiff’s opinion and expert judgment, not just objective market facts. The Second Circuit vacated the district court’s judgment and remanded the case for further proceedings, including consideration of alternative grounds for dismissal. View "Rapaport v. Nivoda" on Justia Law

Netlist, Inc. owned a patent related to computer memory systems, specifically methods for improving the performance and capacity of memory boards using dual in-line memory modules. The patent described memory modules with buffers that are normally disabled to electrically isolate the memory devices from the controller, but which can be selectively enabled during data operations. Samsung Electronics Co., Ltd. first filed a petition for inter partes review, challenging the patent’s claims as obvious over two prior art references: Ellsberry and Halbert. Micron Technology, Inc. and related entities filed a similar petition and were later joined to Samsung’s proceeding. While Samsung settled with Netlist and withdrew from the appeal, Micron remained as appellee.The Patent Trial and Appeal Board of the United States Patent and Trademark Office reviewed the matter and determined, by a preponderance of the evidence, that all challenged claims of Netlist’s patent were obvious in view of the cited prior art. The Board found that the references taught enabling and disabling data paths through buffers in accordance with a latency parameter, and further found that the prior art disclosed the structural and functional limitations recited in the claims. The Board also addressed and rejected various procedural arguments, including those based on the Administrative Procedure Act.Netlist appealed to the United States Court of Appeals for the Federal Circuit. The court reviewed the Board’s factual findings for substantial evidence and its legal conclusions de novo. The Federal Circuit found that the Board’s determinations were supported by substantial evidence and that it had adequately explained its reasoning. The court affirmed the Board’s conclusion that all challenged claims were unpatentable as obvious, rejecting Netlist’s arguments on both substantive and procedural grounds. Costs were awarded against Netlist. View "NETLIST, INC. v. MICRON TECHNOLOGY, INC. " on Justia Law

Manufacturers of medical and digital devices, represented by two trade associations, challenged a regulation enacted by the Librarian of Congress under the Digital Millennium Copyright Act (DMCA). The regulation, known as the medical device repair exemption, allows certain third parties to circumvent technological protection measures on medical equipment software for the purpose of diagnosis, maintenance, or repair. The associations contended that this exemption threatened their copyrights by enabling independent service organizations to access and use software that, they argued, was primarily intended for repair and maintenance.The United States District Court for the District of Columbia initially dismissed some of the associations’ claims, including those under the Administrative Procedure Act (APA), on sovereign immunity grounds and found the rulemaking was within the Librarian’s authority and not unconstitutional. On appeal, the United States Court of Appeals for the District of Columbia Circuit reversed in part, directing the district court to evaluate the APA claims. After further rulemaking and additional arguments, including discussion of Supreme Court precedent and the renewal of the exemption, the district court granted summary judgment for the Librarian and Library of Congress. The court concluded that the exemption was consistent with the DMCA, the fair use doctrine, and was supported by the administrative record.On further appeal, the United States Court of Appeals for the District of Columbia Circuit affirmed the district court’s judgment. It held that the Librarian’s adoption and renewal of the medical device repair exemption were not arbitrary or capricious under the APA. The court found the Librarian’s application of the statutory fair use factors reasonable, including determinations that the use was transformative, the software was primarily functional, the amount of use was justified, and the exemption did not harm the market for the original works. The judgment for the Librarian and Library of Congress was affirmed. View "Medical Imaging & Technology Alliance v. Library of Congress" on Justia Law

This case involves a dispute over several patents relating to digital communication systems that use non-uniform constellations to increase data transmission capacity compared to traditional, uniform constellations operating within similar signal-to-noise ratio (SNR) bands. The plaintiff, Constellation Designs, LLC, alleged that several LG entities infringed claims from four patents by manufacturing and selling televisions compatible with the ATSC 3.0 standard, specifically protocol A/322, which governs over-the-air television broadcasting. The patents at issue cover two primary types of claims: those that recite methods for optimizing constellations based on parallel decode (PD) capacity (“optimization claims”), and those that recite specific, non-uniform constellations (“constellation claims”).The United States District Court for the Eastern District of Texas granted summary judgment to Constellation on patent eligibility for all asserted claims, finding them directed to a technical solution to a technical problem. At trial, a jury found the asserted claims not invalid, found infringement by LG’s accused televisions, awarded damages, and found willful infringement. LG moved for judgment as a matter of law (JMOL) on non-infringement and no damages, and sought to exclude Constellation’s damages expert, but the district court denied these motions. The court then entered final judgment and ongoing royalties.On appeal, the United States Court of Appeals for the Federal Circuit vacated the summary judgment of eligibility for the optimization claims, holding that these claims were ineligible under 35 U.S.C. § 101 because they were directed to the abstract idea of “optimizing” a constellation for PD capacity without specifying how to achieve this result. The court affirmed the eligibility of the constellation claims, finding them directed to a concrete technological solution. The Federal Circuit also affirmed the denial of JMOL on non-infringement and no damages, and the denial of the motion to exclude Constellation’s damages expert. The case was remanded for further proceedings consistent with these rulings. View "CONSTELLATION DESIGNS, LLC v. LG ELECTRONICS, INC. " on Justia Law