Justia Intellectual Property Opinion Summaries

CAC’s patent includes both system and method claims directed to “provid[ing] financing for allowing a customer to purchase a product selected from an inventory of products maintained by a dealer.” In one embodiment, the products are vehicles for sale at a car dealership. The invention involves “maintaining a database of the dealer’s inventory,” gathering financing information from the customer, and “presenting a financing package to the dealer for each individual product in the dealer’s inventory.” Westlake petitioned for Covered Business Method (CBM) review, asserting that all claims were ineligible for patenting under 35 U.S.C. 101. Three months after the Board instituted review of some claims, the Supreme Court vacated precedent on which the Board had relied. In view of the developments in section 101 jurisprudence, Westlake filed a second petition, challenging the remaining claims. In its decision to institute review, the Board rejected CAC’s argument that the existence of the first CBM proceeding estopped Westlake from challenging claims the remaining claims under 35 U.S.C. 325(e)(1). The Board’s determination was based on the fact that the first proceeding had not yet resulted in a final written decision. The Federal Circuit agreed that estoppel did not apply and that the challenged claims were unpatentable. View "Credit Acceptance Corp. v. Westlake Services" on Justia Law

In 1999, Lyons and Gillette discussed possibly forming a veterinary specialist organization (VSO) for treating athletic animals. For American Veterinary Medical Association accreditation, veterinarians must form an organizing committee and submit a letter of intent. Lyons, Gillette, and others formed a committee. By 2002, the committee began using the mark as the name of the intended VSO. Lyons participated in drafting the letter of intent, the accreditation petition, and bylaws and articles of incorporation. Lyons left the committee and sought registration of the mark for “veterinary education services namely conducting classes, seminars, clinical seminars, conferences, workshops and internships and externships in veterinary sports medicine and veterinary rehabilitation,” based on actual use, alleging first use in commerce in 1996. In 2006, the PTO registered the mark. In 2010, the VSO, “American College of Veterinary Sports Medicine and Rehabilitation” received provisional recognition; it petitioned to cancel Lyons’s registration on grounds of priority of use and likelihood of confusion, 15 U.S.C. 1052(d), misrepresentation of source, 15 U.S.C. 1064, and fraud. Meanwhile, the district court dismissed an infringement action by Lyons and ordered the PTO to reject Lyons’s application for Principal Register registration, but declined to cancel her Supplemental Register registration. The Board later concluded that Lyons was not the mark’s owner and that her underlying application was void. The Federal Circuit affirmed. In ownership disputes surrounding service marks as between a departing member and a remnant group, the factors are: the parties’ objective intentions or expectations; who the public associates with the mark; and to whom the public looks to stand behind the quality of goods or services offered under the mark. View "Lyons v. American College of Veterinary Sports Medicine and Rehabilitation" on Justia Law

The District Court for the Northern District of Texas dismissed, for lack of personal jurisdiction, New World’s declaratory judgment complaint against FGTL, a wholly owned subsidiary of the automaker Ford Motor Company. FGTL had previously filed an infringement suit against New World in the Eastern District of Michigan. The Federal Circuit affirmed the dismissal of the declaratory judgment action. Both FGTL and the Ford Motor Company are incorporated in Delaware and headquartered in Michigan. FGTL does no business in Texas and neither maintains an office nor has any employees in Texas. FGTL does not make or sell automobiles or automotive products; it owns, manages, and licenses intellectual property for Ford. FTGL’s pertinent contacts with Texas are limited to the cease and desist letters. While those letters may be sufficient to constitute minimum contacts with the forum, they are not sufficient to satisfy the fairness part of the test for specific personal jurisdiction. View "New World International, Inc. v. Ford Global Technologies, LLC" on Justia Law

Skky’s patent describes a method for delivering audio and/or visual files to a wireless device, stating that existing devices required music or video clips to be either factory-installed, or downloaded through a direct Internet interface. The patent allows users to “browse, download, and listen to or watch sound or image files without the need for hand wired plug-in devices or a computer connection to the Internet.” The patent states that “a software system may be integrated with the existing hardware chip of a conventional cellular phone without the need for additional hardware.” In other embodiments, a separate accessory unit attached to the wireless device provides this functionality. On inter partes review, the Patent Board concluded that challenged claims would have been obvious in view of publications entitled “MP3: The Definitive Guide” and “OFDM/FM Frame Synchronization for Mobile Radio Data Communication.” The Board determined that “wireless device means” was not a means-plus-function term. Even assuming that the term was in means-plus-function format, however, the Board rejected Skky’s argument that the term requires multiple processors, wherein one is a specialized processor. The Federal Circuit affirmed, upholding the claim construction and the conclusion that the challenged claims are unpatentable as obvious. View "Skky, Inc. v. MindGeek, S.A.R.L." on Justia Law

In 2009, RNB and GAF entered into an agreement under which GAF would promote RNB’s “Roof N Box” product, a three-dimensional roofing model, to building construction contractors affiliated with GAF. The agreement required the parties to submit disputes “arising under” the agreement to arbitration. GAF terminated the agreement after about a year. In 2016, RNB, together with its founder and president, Evans, brought suit against GAF based on GAF’s activities in marketing its own product that competes with the Roof N Box. The complaint alleged design patent infringement, trade dress infringement, and unfair competition. GAF moved to dismiss or stay the action pending arbitration. The district court denied that motion. The Federal Circuit affirmed, stating that GAF’s assertion that the arbitration provision covers the claims stated in the complaint is “wholly groundless.” The complaint challenges actions whose wrongfulness is independent of the 2009 agreement’s existence. View "Evans v. Building Materials Corp." on Justia Law