Justia Intellectual Property Opinion Summaries

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EIG, publisher of "Oil Daily," filed suit alleging numerous instances of copyright infringement and violations of the Digital Millennium Copyright Act (DMCA) against KA, a boutique investment firm. KA purchased an annual "Oil Daily" subscription for a partner, but the partner routinely shared access with fellow KA employees and other third parties in violation of his subscription agreements and copyright law. The Fifth Circuit held that failure to mitigate is not a complete defense to copyright or DMCA claims for statutory damages; the district court properly denied KA's referral motion; and the district court properly denied KA's post-offer attorney's fees under Rule 68. The court also held that remand was necessary to determine copyright damages because the court could not determine whether the jury intended to award EIG $15,000 per infringed work. Therefore, the court affirmed the district court's denial of KA's 17 U.S.C. 411(b) referral motion; vacated the judgment in full and instated an award of $1,062,500 for EIG's DMCA claims. The court remanded as to copyright damages, attorney's fees, and costs, with the clarification that non-prevailing copyright and DMCA defendants may not recover post-offer attorney's fees under Rule 68. View "Energy Intelligence Group, Inc. v. Kayne Anderson Capital Advisors, LP" on Justia Law

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ARM’s 320 patent describes an adaptor for use with Keurig® single-brew coffee machines or similar brewers, configured to effect operative compatibility between a single-serve beverage brewer [for use with cup-shaped cartridges] and beverage pods. ARM filed an International Trade Court (ITC) complaint against Eko and others. In proceedings involving others, the ITC found that several claims of the 320 patent were invalid for lack of written description. The Federal Circuit affirmed. The ITC made no invalidity determination concerning claims 8 and 19. Eko defaulted in the ITC with respect to ARM’s allegations that it infringed claims 8 and 19. The ITC issued a limited exclusion order and cease and desist order. Eko filed suit in the district court, seeking a declaratory judgment of noninfringement as to claims 8 and 19 and that the claims were invalid as obvious. Eko also asserted infringement of Eko’s 855 patent, which describes a reusable filter cartridge device for single-serve beverage brewing machines. The district court issued a Markman ruling construing various claim terms and granted Eko declaratory judgment of noninfringement. A jury found claims 8 and 19 of the 320 patent invalid as obvious. The court awarded Eko attorney’s fees associated with those judgments. The Federal Circuit affirmed the judgment of invalidity as to the 320 patent, the fee award, and the judgment of infringement as to the 855 patent. View "Eko Brands, LLC v. Adrian Rivera Maynez Enterprises, Inc." on Justia Law

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Genentech’s patent is directed to methods of purifying antibodies and other proteins containing a CH2/CH3 region from impurities by protein A affinity chromatography. Protein A affinity chromatography is a standard purification technique employed in the processing of therapeutic proteins, especially antibodies, which involves “using protein A . . . immobilized on a solid phase.” The Patent Trial and Appeal Board instituted inter partes review (IPR) and determined that all the challenged claims were unpatentable as anticipated or obvious in light of prior art references. The Federal Circuit affirmed, finding substantial evidence in support of the findings. The court also rejected Genentech’s argument that retroactive application of IPR to a patent issued prior to the passage of the America Invents Act violates the Fifth Amendment’s Takings Clause; pre-AIA patents were issued subject to both district court and Patent Office validity proceedings. Though IPR differs from district court and pre-AIA Patent Office reexamination proceedings, those differences are not sufficiently substantive or significant such that a “constitutional issue” is created when IPR is applied to pre-AIA patents. View "Genentech, Inc. v. Hospira, Inc." on Justia Law

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Audio’s patent describes a system for organizing audio files, by subject matter, into “program segments.” ’The system arranges the segments through a “session schedule” and allows a user to navigate through the schedule in various ways. Audio sued CBS, alleging infringement. Later that year, a third party sought inter partes review (IPR) of the patent under 35 U.S.C. 311–319. The Patent Trial and Appeal Board instituted review but the district court case proceeded to trial, with the issues limited to infringement and invalidity of claims 31–34. A jury found that CBS had infringed claims 31–34 and failed to establish by clear and convincing evidence that those claims were invalid. The jury awarded Audio $1,300,000. The Board issued a final written decision in the IPR, concluding that claims 31–35 are unpatentable. The district court stayed entry of its judgment until completion of direct review of the Board’s decision. The Federal Circuit affirmed the Board’s decision. The district court then entered a judgment in favor of CBS. The Federal Circuit affirmed, rejecting Audio’s argument that the courts lacked jurisdiction. To the extent that Audio challenged the district court’s determination of the consequences of the affirmed final written decision for the proper disposition of this case, Audio conceded that governing precedent required judgment for CBS. View "Personal Audio, LLC v. CBS Corp." on Justia Law

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Molon sued Merkle-Korff, for infringement of the 785 patent. Merkle-Korff filed counterclaims relating to Molon’s 915 and 726 patents. Molon unilaterally executed the 2006 Covenant, agreeing not to sue Merkle-Korff for infringement of the 915 and 726 patents. After the dismissal of the counterclaims, the parties entered into the 2007 Settlement. Merkle-Korff agreed to pay a lump sum for an exclusive license to multiple Molon patents including the 785, 915, and 726 patents, within the Kinetek Exclusive Market. The Settlement granted Merkle-Korff “the right, but not the duty, to pursue an infringement claim” and contains a statement that all prior covenants “concerning the subject matter hereof” are “merged” and “of no further force or effect.” Merkle-Korff later became Nidec. Molon sued, alleging that Nidec is infringing the 915 patent outside the licensed Market. Nidec argued that Molon is barred from enforcing the patent under the 2006 Covenant. Molon responded that the Covenant was extinguished by the 2007 Settlement. The court granted Nidec partial summary judgment after comparing the subject matters of the agreements. The Federal Circuit affirmed; the agreements concern different subject matter and do not merge. The 2006 Covenant gives Nidec a right to avoid infringement suits on two patents. The 2007 Settlement is in some ways broader, as an exclusive license, covering multiple patents and applications and providing Nidec with some enforcement rights, and in other ways narrower, being limited to a defined market. The 2006 Covenant remains in effect because it does not concern the same subject matter as the 2007 Settlement. View "Molon Motor & Coil Corp. v. Nidec Motor Corp." on Justia Law

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Southern Credentialing filed suit claiming that Hammond's ongoing use of credentialing forms infringed Southern Credentialing's copyrights. The district court granted summary judgment as to the existence of the copyrights and infringement, granting damages, attorney's fees and costs, as well as an injunction barring Hammond from infringing the copyrights. Both parties appealed. The Fifth Circuit held that Southern Credentialing has valid copyrights protecting the selection and arrangement of information in its credentialing forms. The court also held that the district court correctly concluded that Hammond infringed valid copyrights of Southern Credentialing and thus the court affirmed the permanent injunction barring future infringement. The court held that 17 U.S.C. 412 bars statutory damage awards when a defendant violates one of the six exclusive rights of a copyright holder preregistration and violates a different right in the same work after registration. In this case, although Southern Credentialing was unable to obtain statutory damages, it has obtained an injunction that will protect against future infringement. Accordingly, the court affirmed in part, reversed in part, and remanded for entry of an amended judgment. View "Southern Credentialing Support Services, LLC v. Hammond Surgical Hospital, LLC" on Justia Law

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Farmos developed and patented Dexmedetomidine, a compound that is effective as a sedative, in the 1980s, and conducted human studies using intravenous administration of 20 µg/mL dexmedetomidine hydrochloride. Farmos abandoned its testing based on adverse effects. In 1994, Farmos’s successor granted Abbott an exclusive license to make, use, and sell dexmedetomidine in the U.S. In 1999, Abbott received FDA approval for “Precedex Concentrate,” a 100 µg/mL concentration too strong to be directly administered to patients; the label provides dilution instructions. In 2002, the European Medicines Evaluation Agency authorized the use of Dexdomitor, a ready-to-use 500 µg/mL formulation of dexmedetomidine hydrochloride. Hospira’s 106 patent, entitled “Dexmedetomidine Premix Formulation,” is directed to a liquid for parenteral administration, “wherein the composition is disposed within a sealed container as a premixture.” Fresenius sought FDA approval for a generic ready-to-use dexmedetomidine product. Hospira sued for infringement. Fresenius stipulated to infringement of the 106 patent. The Federal Circuit upheld a finding that a claim in that patent is invalid as obvious over prior art. The patent states that the invention was based on “the discovery that dexmedetomidine prepared in a premixed formulation . . . remains stable and active after prolonged storage.” It does not recite any manufacturing limitations related to stability or an added component that enhances stability; it recites a composition, with a “wherein” clause that describes the stability of that recited composition, a result that was inherent in prior art. View "Hospira, Inc. v. Fresenius Kabi USA, LLC" on Justia Law

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Amgen holds an approved New Drug Application for Sensipar®, a formulation of cinacalcet hydrochloride used to treat secondary hyperparathyroidism in adult patients with chronic kidney disease who are on dialysis and to treat hypercalcemia in patients with parathyroid cancer and primary and secondary hyperparathyroidism. Amneal, Piramal, and Zydus each filed an Abbreviated New Drug Application (ANDA) seeking to enter the market with a generic version of Sensipar®. Amgen sued each ANDA filer, alleging that the proposed ANDA products would infringe its 405 patent, which is directed to a rapid dissolution formulation of cinacalcet. The district court entered a judgment of non-infringement. The Federal Circuit vacated in part, finding that the district court construed the claims incorrectly and erred in its analysis of infringement by Amneal. The court affirmed with respect to Piramal and Zydus, finding that the district court properly applied prosecution history estoppel to Amgen’s arguments regarding Piramal and otherwise did not err in its factual findings for Zydus. View "Amgen Inc. v. Amneal Pharmaceuticals LLC" on Justia Law

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VVV appealed the district court's dismiss of its trademark claims based on three marks and the denial of leave to amend its complaint. The Ninth Circuit assumed, without deciding, that the district court correctly applied the elements of claim preclusion to this case, but found that an exception to claim preclusion applied. The panel explained that an interparty proceeding before the TTAB is a limited proceeding involving registration of a trademark, and the TTAB has no authority to determine the right to use, or the broader questions of infringement, unfair competition, damages or injunctive relief. In this case, TTAB had no power to decide VVV's claims of infringement, dilution, and unfair competition or to grant either injunctive relief or damages. Therefore, the panel held that it would be unfair to preclude VVV from litigating these claims and seeking relief when barriers existed that prevented it from doing so in the first action. The panel reversed and remanded for the district court to consider, in the first instance, whether issue preclusion applied. The panel also reversed the denial of leave to amend the complaint, and affirmed the dismissal of plaintiff's claims as to the second and third marks. View "V.V.V. & Sons Edible Oils v. Meenakshi Overseas" on Justia Law

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The Ninth Circuit affirmed the district court's dismissal, for failure to state a claim, of an action brought by Great Minds, publisher of math curriculum Eureka Math. The complaint alleged a claim of copyright infringement against Office Depot. The panel held that Office Depot did not itself become a licensee of the "Creative Commons Attribution-NonCommercial-ShareAlike 4.0 International Public License" or otherwise infringe Great Minds' copyright by making copies of Eureka Math materials for a profit on behalf of school and school district licensees. In this case, there was no dispute that, if Office Depot were itself a licensee, commercial copying of Great Minds' material would fall outside the scope of the license and infringe Great Minds' copyright; under California law, the school and school district licensees' exercise of their rights under the license through the services provided by Office Depot did not result in Office Depot becoming a licensee; and the district court not abuse its discretion in denying leave to amend the complaint. View "Great Minds v. Office Depot, Inc." on Justia Law