Justia Intellectual Property Opinion Summaries

Doctor’s Best, Inc. (DB), a Delaware corporation, developed a new line of supplements branded as "Nature’s Day" and sought a U.S. trademark. Nature’s Way Products, LLC (NWP), a Wisconsin company owning the "Nature’s Way" trademark, claimed this infringed on their trademark. DB’s "Nature’s Day" products were manufactured and transported within the U.S. but sold exclusively abroad. DB sought a declaratory judgment of non-infringement, while NWP counterclaimed for trademark infringement under the Lanham Act.The United States District Court for the Central District of California granted summary judgment in favor of DB, concluding that NWP failed to show a likelihood of consumer confusion from DB’s domestic conduct. The court applied the extraterritoriality framework from Abitron Austria GmbH v. Hetronic International, Inc., determining that only DB’s U.S. transport of the products was actionable under the Lanham Act. The court found no genuine issue of material fact regarding the likelihood of consumer confusion from this conduct.The United States Court of Appeals for the Ninth Circuit affirmed the district court’s decision. The Ninth Circuit held that the district court correctly applied the Abitron framework to isolate DB’s domestic conduct and properly used the Sleekcraft factors to assess the likelihood of consumer confusion. The court agreed that no rational jury could find that DB’s domestic transport of "Nature’s Day" products infringed NWP’s trademarks. The court also upheld the district court’s denial of NWP’s request for additional discovery time, noting NWP’s lack of diligence in pursuing discovery. View "Doctor’s Best, Inc. v. Nature’s Way Products, LLC" on Justia Law

Shockwave Medical, Inc. owns U.S. Patent No. 8,956,371, which is directed to a method for treating atherosclerosis using intravascular lithotripsy (IVL). Cardiovascular Systems, Inc. (CSI) filed an inter partes review (IPR) petition challenging all 17 claims of the '371 patent as obvious over various prior art combinations. The Patent Trial and Appeal Board (Board) found claims 1-4 and 6-17 unpatentable as obvious but upheld the patentability of claim 5.The Board's decision was appealed by Shockwave regarding claims 1-4 and 6-17, and cross-appealed by CSI regarding claim 5. The United States Court of Appeals for the Federal Circuit reviewed the case. Shockwave argued that the Board improperly relied on applicant admitted prior art (AAPA) and erred in its claim construction and factual findings. CSI argued that the Board failed to consider the combined teachings of the prior art in its analysis of claim 5.The Federal Circuit affirmed the Board's determination that claims 1-4 and 6-17 were unpatentable as obvious. The court found that the Board properly used AAPA as evidence of general background knowledge and that the Board's claim construction and factual findings were supported by substantial evidence. The court also found that Shockwave's secondary considerations evidence did not outweigh the evidence of obviousness.Regarding CSI's cross-appeal, the Federal Circuit reversed the Board's determination that claim 5 was not shown to be unpatentable. The court found that the Board failed to consider the combined teachings of the prior art and that the placement of electrodes as claimed in claim 5 would have been a routine design choice for an ordinarily skilled artisan.In conclusion, the Federal Circuit affirmed the Board's decision on claims 1-4 and 6-17 and reversed the decision on claim 5, finding it unpatentable as obvious. View "Shockwave Medical, Inc. v. Cardiovascular Systems, Inc." on Justia Law

Wudi Industrial (Shanghai) Co., Ltd. (Wudi) and Wai L. Wong, along with Wong’s business entity GT Omega Racing, Ltd. (collectively Wong), were involved in a trademark dispute over the use of the "GTRACING" and "GT OMEGA RACING" marks. Wudi registered the "GTRACING" trademark in 2017, and Wong initiated cancellation proceedings, claiming prior use of a similar mark. The Trademark Trial and Appeal Board ruled in favor of Wong in 2020. Wudi sought review in the Eastern District of Virginia, leading to a settlement agreement in 2021, which included geographic and product-based restrictions on Wudi’s use of the "GTRACING" mark, particularly in Europe.The district court granted a stay pending compliance with the settlement agreement. Wong later alleged that Wudi breached the agreement by violating social media restrictions within the European Carve-Out. The district court found Wudi in violation and ordered specific performance. Wudi appealed, and the Fourth Circuit remanded for further proceedings, requiring the district court to comply with procedural requirements for injunctive relief.On remand, the district court issued an injunction, finding that Wudi breached the settlement agreement by using prohibited terms on social media within the European Carve-Out. The court applied the eBay factors, concluding that Wong suffered irreparable harm, monetary damages were inadequate, the balance of hardships favored Wong, and the public interest supported enforcing the agreement.The United States Court of Appeals for the Fourth Circuit reviewed the case and affirmed the district court’s injunction. The court held that the district court had the authority to enforce the settlement agreement, the eBay factors were properly applied, and Wudi’s contentions regarding extraterritoriality, parol evidence, unclean hands, and attorney’s fees were without merit. The injunction was upheld, requiring Wudi to comply with the settlement agreement’s terms. View "Wudi Industrial (Shanghai) Co., Ltd. v. Wong" on Justia Law

BenShot, LLC, a family-owned business, sells a unique drinking glass design featuring a bullet "penetrating" the side. 2 Monkey Trading, LLC and Lucky Shot USA, LLC (the Debtors) sell similar glasses imported from China, falsely advertised as "Made in the United States." BenShot sued the Debtors in the Eastern District of Wisconsin for Lanham Act violations and Wisconsin common law. A jury found in favor of BenShot, awarding punitive damages and determining the Debtors acted maliciously or in intentional disregard of BenShot's rights.Following the jury verdict, the Debtors filed for bankruptcy under Subchapter V of Chapter 11. BenShot argued that the jury award was a non-dischargeable debt for willful and malicious injury under 11 U.S.C. §§ 523(a)(6) and 1192(2). The Debtors moved to dismiss, claiming § 523(a)(6) only applied to individual debtors, not corporate debtors like themselves. The United States Bankruptcy Court for the Middle District of Florida agreed with the Debtors and dismissed BenShot's complaint, relying on similar interpretations by other bankruptcy courts.The United States Court of Appeals for the Eleventh Circuit reviewed the case. The court held that under § 1192, both individual and corporate debtors cannot discharge any debts of the kind listed in § 523(a). The court found the plain language of § 1192 unambiguous, applying to both individual and corporate debtors, and that "debt" as defined in the Bankruptcy Code does not distinguish between individual or corporate debtors. The court reversed the bankruptcy court's order and remanded the case for further proceedings consistent with this opinion. View "Benshot, LLC v. 2 Monkey Trading, LLC" on Justia Law

Sysco Machinery Corporation, a Taiwanese company, accused DCS USA Corporation, a North Carolina company, of business torts related to their manufacturer-distributor relationship. Sysco alleged that after some of its employees left to form a competitor, Cymtek Solutions, Inc., DCS sold machines made by Cymtek using Sysco's confidential information. Sysco claimed these diverted contracts were worth millions of dollars.Sysco first filed suit in Taiwan, where it claims to have won a preliminary injunction against Cymtek. Sysco then filed a suit in the Eastern District of North Carolina, which it voluntarily dismissed, followed by a suit in the District of Massachusetts, which was dismissed. Finally, Sysco returned to the Eastern District of North Carolina, where it brought claims for trade secret misappropriation, copyright infringement, unfair and deceptive trade practices, and tortious interference with prospective economic advantage. The district court dismissed all claims under Rule 12(b)(6) for failure to state a claim and denied Sysco's post-judgment leave to amend its complaint.The United States Court of Appeals for the Fourth Circuit reviewed the case. The court affirmed the district court's dismissal of Sysco's trade secret misappropriation claim, finding that Sysco did not plausibly allege the existence of a valid trade secret or that DCS misappropriated it. The court also affirmed the dismissal of Sysco's other claims, noting that Sysco did not sufficiently develop its arguments for copyright infringement, unfair and deceptive trade practices, and tortious interference with prospective economic advantage. Finally, the court upheld the district court's denial of Sysco's motion to alter or amend the judgment and for leave to amend the complaint, citing Sysco's repeated failure to state a claim and the potential prejudice to DCS. View "Sysco Machinery Corp. v. DCS USA Corp." on Justia Law

Brainchild Surgical Devices, LLC, a medical device developer, entered into a contract with CPA Global Limited for patent renewal services. Brainchild alleged that CPA overcharged it by marking up fees beyond the actual costs and sued for breach of contract and fraud. The district court excluded Brainchild’s expert witnesses, granted summary judgment for CPA on the breach of contract claim, dismissed the fraud claim, and denied leave to amend the fraud claim.The United States District Court for the Eastern District of Virginia dismissed Brainchild’s fraud claim for lack of particularity and denied leave to amend. The court granted summary judgment for CPA on the breach of contract claim, finding that Brainchild’s theories were inconsistent with the contract’s terms. The court excluded Brainchild’s expert witnesses, David Cass and John Keogh, for offering legal conclusions and lacking qualifications.The United States Court of Appeals for the Fourth Circuit reviewed the case. The court affirmed the district court’s exclusion of Cass’ testimony due to lack of qualification and improper legal conclusions. The court also affirmed the exclusion of Keogh’s testimony for failing to disclose the bases of his opinions and offering legal conclusions but reversed the decision to disqualify him based on confidential information. The court agreed with the district court that Brainchild’s pass-through cost and implied covenant of good faith theories failed to overcome summary judgment. However, the court reversed the summary judgment for CPA on the theory that CPA applied Country Charges unrelated to the required personnel, infrastructure, and third parties for renewals in particular jurisdictions. The case was remanded for further proceedings on this theory. The court also affirmed the denial of leave to amend the fraud claim. View "Brainchild Surgical Devices, LLC v. CPA Global Limited" on Justia Law

Janssen Pharmaceuticals, Inc. and Janssen Pharmaceutica NV (collectively, Janssen) sued Teva Pharmaceuticals USA, Inc. (Teva) in 2018, alleging infringement of Janssen’s U.S. Patent No. 9,439,906, which describes dosing regimens for long-acting injectable antipsychotic medications. Teva admitted to infringement but contested the patent’s validity, arguing that all claims were invalid for obviousness and some for indefiniteness.The United States District Court for the District of New Jersey held a bench trial and ruled that Teva had not proven the claims invalid. Teva appealed, and the United States Court of Appeals for the Federal Circuit affirmed the district court’s rejection of the indefiniteness challenge but vacated the obviousness ruling, remanding for further proceedings. On remand, the district court again found that Teva had not proven the claims invalid for obviousness, leading to Teva’s current appeal.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court’s decision. The court held that Teva did not prove by clear and convincing evidence that a skilled artisan would have been motivated to combine or modify the prior art to achieve the claimed invention with a reasonable expectation of success. The court also rejected Teva’s argument for a presumption of obviousness based on overlapping ranges, finding that the specific combination of dosages and timing in the claimed regimen was not sufficiently addressed by the prior art. The court upheld the district court’s findings on the lack of motivation to combine references and the lack of reasonable expectation of success, as well as the non-obviousness of the claims related to renal impairment and particle size. View "JANSSEN PHARMACEUTICALS, INC. v. TEVA PHARMACEUTICALS USA, INC. " on Justia Law

Tammy Livingston, individually and as a beneficiary and co-trustee of the Livingston Music Interest Trust, sued her mother, Travilyn Livingston, over the termination of copyright assignments and associated royalties for songs authored by Jay Livingston. Jay had assigned his copyright interests in several songs to a music publishing company owned by Travilyn. Travilyn later invoked her statutory right to terminate these copyright grants and filed termination notices with the U.S. Copyright Office. Tammy challenged these terminations, claiming her rights as a beneficiary were affected.The United States District Court for the Middle District of Tennessee dismissed Tammy's complaint, holding that it failed to state a claim. Tammy appealed the decision, arguing that the termination notices were ineffective, defective, or invalid, and that she retained a state law right to receive royalties from the songs covered by the terminated agreements.The United States Court of Appeals for the Sixth Circuit reviewed the case and affirmed the district court's dismissal. The court held that the 2003 California probate court order, which declared that the Family Trust held no ownership interests in Jay's copyrights, precluded Tammy's claims. The court also found that Jay had validly executed the copyright grants as an individual, not as a trustee, and that Travilyn owned Jay Livingston Music at the time of the assignments. Additionally, the court rejected Tammy's arguments regarding the termination notices' compliance with federal requirements, noting that she failed to plead specific factual allegations for most of the notices. Finally, the court held that Tammy did not identify a state law basis for her claim to royalties, thus failing to meet the pleading standards under Civil Rule 12(b)(6). View "Livingston v. Jay Livingston Music, Inc." on Justia Law

Egenera, Inc. alleged that Cisco Systems, Inc. infringed its U.S. Patent No. 7,231,430, which describes a digitalized processing platform for deploying virtual systems through configuration commands. The patent aims to improve conventional server systems by allowing virtual management of processing resources without physical rewiring. Egenera claimed that Cisco's Unified Computing System (UCS) infringed claims 1, 3-5, and 7-8 of the patent. The district court granted summary judgment of noninfringement for claims 1 and 5 and, following a jury trial, entered judgment of noninfringement for claims 3 and 7.The United States District Court for the District of Massachusetts found that Cisco's UCS did not infringe the asserted claims. The court granted summary judgment of noninfringement for claims 1 and 5, concluding that the UCS CPUs did not emulate Ethernet functionality as required by the claims. The jury found noninfringement for claims 3 and 7, and the district court denied Egenera's post-trial motions for judgment as a matter of law (JMOL) or a new trial.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court's decisions. The appellate court agreed that Egenera failed to present sufficient evidence to show that the UCS CPUs emulated Ethernet functionality, as required by claims 1 and 5. The court also found that substantial evidence supported the jury's verdict of noninfringement for claims 3 and 7, particularly regarding the network topology limitation. Additionally, the appellate court upheld the district court's denial of Egenera's motion for a new trial, finding no abuse of discretion in the court's handling of jury instructions, evidentiary rulings, and closing arguments. View "EGENERA, INC. v. CISCO SYSTEMS, INC. " on Justia Law

In 1991, three singers—Di Reed, Tonya Harris, and Joi Marshall—formed the vocal group Jade, which achieved significant success in the early 1990s. The group disbanded in 1995, and the members pursued individual careers. In 2018, the three agreed to a reunion tour and jointly applied for the "JADE" service mark, which was approved in 2019. However, the reunion tour did not materialize, and in 2021, Marshall and Harris performed with another singer, Myracle Holloway, under the JADE mark, leading Reed to file a lawsuit.Reed sued Marshall, Harris, and Holloway in the Southern District of Texas, alleging Lanham Act violations, including trademark infringement, dilution, and unfair competition, as well as Texas state law claims. The district court granted summary judgment for the defendants, concluding that Reed could not allege Lanham Act claims against her co-owners of the mark or Holloway, who performed with their permission.The United States Court of Appeals for the Fifth Circuit reviewed the case. The court held that the Lanham Act does not authorize claims between co-owners of a trademark. It affirmed the district court's summary judgment, stating that co-owners of a mark cannot sue each other for infringement or dilution under the Lanham Act. The court also found that Reed's unfair competition claims could not survive summary judgment and that there was no supplemental jurisdiction over the Texas law claims. The court emphasized that co-owners have the right to use the mark as they please, and a valid licensee of one co-owner cannot be liable to another co-owner for infringement. View "Reed v. Marshall" on Justia Law