The patent describes an ATM, capable of performing banking transactions, including “automatically depositing a bundle of cashes and cheques inserted at once” by separating deposited bundles into individual banknotes; verifying the authenticity or abnormality of each note; sorting and processing the notes based on how each was verified; and preparing the notes for storage safes. One component recited in each of the nine claims is a “cheque standby unit.” The specification does not mention a “cheque standby unit,” but references a “cheque temporary standby unit” in three portions of the detailed description. The International Trade Commission found that Diebold violated section 337 of the Tariff Act of 1930 by importing ATM components that infringe the claims, all of which recite the term “cheque standby unit.” The Federal Circuit reversed, finding that the term “cheque standby unit” is a means-plus-function term subject to 35 U.S.C. 112, para. 6, which lacks corresponding structure disclosed in the specification. The claimed function is “holding the at least one authentic cheque to return the at least one authentic cheque to the user responsive to receiving user instructions canceling depositing of the at least one authentic cheque.” A person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim. View "Diebold Nixdorf, Inc. v. International Trade Commission" on Justia Law

BSG sued BuySeasons for infringement of three patents related to systems and methods for indexing information stored in wide access databases. The patents teach that the “self-evolving” aspect of the claimed invention addresses the shortcomings of prior art by enabling users to “add new parameters for use in describing items.” The district court dismissed the suit on grounds that none of the asserted patent claims were patent-eligible under 35 U.S.C. 101. The Federal Circuit affirmed. The asserted claims are directed to the abstract idea of considering historical usage information while inputting data. BSG does not purport to have invented database structures that allow database users to input item data as a series of parameters and values. The recitation of a database structure slightly more detailed than a generic database does not save the asserted claims; a claim is not patent eligible merely because it applies an abstract idea in a narrow way. The only alleged unconventional feature of BSG’s claims is the requirement that users are guided by summary comparison usage information or relative historical usage information but this simply restates an abstract idea. View "BSG Tech LLC v. BuySeasons, Inc." on Justia Law

Eight of Rembrandt’s at-issue patents address cable modem technology; the ninth involves over-the-air signals. Rembrandt filed multiple infringement suits against dozens of cable companies, cable equipment manufacturers, and broadcast networks. The cases were consolidated. After several years of litigation, the court entered final judgment against Rembrandt on all claims. Many of the defendants sought attorney fees under 35 U.S.C. 285. Nearly four years after the litigation ended, the court issued a brief order granting that motion, declaring the case exceptional, and granting the bulk of the requests for fees, including nearly all of the attorney fees incurred in the litigation: more than $51 million. The Federal Circuit affirmed the exceptional case designation but remanded, finding that the court erred by failing to analyze fully the connection between the fees awarded and Rembrandt’s misconduct. While the court’s findings that that Rembrandt: wrongfully gave fact witnesses payments contingent on the outcome of the litigation; engaged in, or failed to prevent, widespread document spoliation; and should have known that the revived patents were unenforceable, were “remarkably terse” and “shed little light on its justifications” none of those findings was based “on an erroneous view of the law or on a clearly erroneous assessment of the evidence. View "In re Rembrandt Technologies, LP Patent Litigation" on Justia Law

This appeal stemmed from a dispute between a paleta company in Mexico (Prolacto) and a paleta company in northern California (PLM) over a phrase "La Michoacana" and an image of a girl in traditional dress holding a paleta ("Indian Girl"). At issue was whether Prolacto or PLM owned the contested phrase and image and which paleta company unfairly competed or otherwise infringed the other's trademark rights. The DC Circuit held that Prolacto's false-association claim failed because Prolacto failed to establish a right to the "La Michoacana" mark or injury from PLM's use sufficient to establish false association in violation of Section 43(a) of the Lanham Act. Therefore, the court affirmed the district court's judgment for PLM on that claim. The court also affirmed the district court's conclusion that Prolacto failed to establish that PLM's use of the Tocumbo Statements and other advertising materials constituted false advertising in violation of Prolacto's rights under section 43(a)(1)(B). Finally, the court affirmed the district court's conclusion that Prolacto infringed PLM's use of its registered marks. The court found no merit in Prolacto's remaining arguments. View "Paleteria La Michoacana, Inc. v. Productos Lacteos Tocumbo S.A" on Justia Law

Bruce Munro and his studio appealed the district court's dismissal of his complaint against Lucy and the denial of his motion to amend his complaint. Munro's claims stemmed from Lucy's "Light Forest" exhibition and advertising campaign that infringed on Munro's works. The Eighth Circuit affirm the district court's decision to dismiss Munro's trade dress, fraud, and tortious interference claims as well as its denial of Munro's motion to amend these claims because the proposed amendments were futile. The court held, however, that Munro sufficiently pleaded a trademark claim so as to survive a motion to dismiss for failure to state a claim. Accordingly, the court reversed in part, affirmed in part, and remanded for further proceedings. View "Munro v. Lucy Activewear, Inc." on Justia Law

Yellowfin filed suit against Barker Boatworks and Kevin Barker, alleging claims for trade dress infringement and false designation of origin under Section 43(a) of the Lanham Act, common law unfair competition, common law trade dress infringement, and violation of Florida's Uniform Trade Secret Act (FUTSA). The Eleventh Circuit affirmed the district court's grant of summary judgment for defendants. The court, weighing the likelihood of confusion factors holistically, held that the district court did not err in holding that Yellowfin could not, as a matter of law, prove a likelihood of confusion between Barker Boatworks' trade dress and its own. Therefore, the court held that the district court properly rejected the rest of Yellowfin's claims related to trade dress and consumer confusion. The court rejected Yellowfin's claims under FUTSA and held that Yellowfin failed to show that Barker allegedly misappropriated Source Information and Customer Information trade secrets. View "Yellowfin Yachts, Inc. v. Barker Boatworks, LLC" on Justia Law

GKN’s patent describes a drivetrain for a four-wheel drive vehicle, consisting of primary and secondary drivetrains. The drivetrain can be switched between two-wheel drive mode and four-wheel drive mode. The claimed drivetrain operates to reduce the number of rotating components when the secondary drivetrain is disconnected. JTEKT petitioned for inter partes review (IPR). The Patent Trial and Appeal Board instituted IPR on all challenged claims. The IPR focused on whether claims 2 and 3, which specify that two side-shaft couplings connect the secondary axle rather than one side-shaft coupling to provide both transverse and longitudinal power distribution between the left and right wheels and the front and rear wheels, would have been obvious over prior art and whether claims 6 and 7 would have been obvious over prior art. The Board held that claims 6 and 7 would have been obvious but that JTEKT did not show that claims 2 and 3 would have been obvious. The Federal Circuit dismissed an appeal for lack of standing. While the fact that JTEKT has no product on the market does not preclude Article III standing, either in IPRs or in declaratory judgment actions, JTEKT has not established at this stage of the development that its product creates a concrete and substantial risk of infringement or will likely lead to infringement claims. View "JTEKT Corp. v. GKN Automotive Ltd." on Justia Law

Marcel filed suit against Lucky Brand under the Lanham Act for infringing on Marcel's "Get Lucky" trademark through its use of "Lucky" on its merchandise. Marcel also alleged that Lucky Brand did so in violation of an injunction entered in an earlier action between the parties. The district court dismissed the complaint, concluding that Marcel released its claims through a 2003 settlement agreement that resolved an earlier substantially similar litigation between the parties.  The Second Circuit vacated the judgment, holding that res judicata precluded Lucky Brand from raising its release defense in this case. The court held that under certain conditions parties may be barred by claim preclusion from litigating defenses that they could have asserted in an earlier action, and that the conditions here warranted application of that defense preclusion principle. Accordingly, the court remanded for further proceedings. View "Marcel Fashions Group, Inc. v. Lucky Brand Dungarees, Inc." on Justia Law

Advantek’s design patent covers a portable animal kennel that Advantek sells with the mark “Pet Gazebo.” Advantek sued its former manufacturer, Shanghai Walk-Long, Advantek’s former vice president, and others for patent infringement, breach of contract, and aiding and abetting breach of fiduciary duty, alleging that Walk-Long copied the Pet Gazebo and infringed the patent with their “Pet Companion.” The district court granted Walk-Long judgment on the pleadings, holding that prosecution history estoppel bars Advantek from enforcing the patent against the Pet Companion. The parties stipulated to the dismissal of the non-patent counts. The Federal Circuit reversed, concluding that prosecution history estoppel does not preclude enforcement of the patent against the accused kennel. Advantek elected to patent the ornamental design for a kennel with a particular skeletal structure. A competitor who sells a kennel embodying Advantek’s patented structural design infringes the patent, regardless of extra features, such as a cover, that the competitor might add to its kennel. Construed in the light most favorable to Advantek, the complaint can be read to accuse the skeletal structure of Walk-Long’s Pet Companion. View "Advantek Marketing, Inc. v. Shanghai Walk-Long Tools Co." on Justia Law

BioDelivery filed petitions for inter partes review (IPR) of Aquestive's Patent. The Patent Trial and Appeal Board (PTAB) instituted review of fewer than all of the asserted claims based upon fewer than all asserted grounds and issued final written decisions that sustained the patentability of all instituted claims on all instituted grounds and included a discussion of collateral estoppel between inter partes reexamination and IPR. On appeal, PTAB acknowledged error in its assumption that inter partes reexamination could give rise to collateral estoppel in IPR. After oral argument in the Federal Circuit, the Supreme Court issued its 2018 “SAS” decision, explaining that the petitioner, not the Director defines the contours of the IPR; if the Director institutes review, PTAB review must proceed “in accordance with or in conformance to the petition,” including “‘each claim challenged’ and ‘the grounds on which the challenge to each claim is based,’” BioDelivery requested remand to consider the patentability of the non-instituted claims. Aquestive and the Patent Office argued that BioDelivery had waived SAS-based relief by failing to raise any issue of non-instituted claims on appeal. The Federal Circuit granted a remand; waiver does not apply and the motion is not untimely. The PTO’s salutary decision concerning future action does not insulate earlier PTAB actions from remedy. View "BioDelivery Sciences International, Inc.. v. Aquestive Therapeutics, Inc." on Justia Law