Justia Intellectual Property Opinion Summaries

Astellas Pharma, Inc. and its affiliates (collectively, "Astellas") sued Sandoz Inc. and other defendants for patent infringement related to their attempts to market generic versions of Myrbetriq®, a drug used to treat overactive bladder. The patent in question, U.S. Patent 10,842,780, covers sustained-release formulations of mirabegron, which Astellas developed to mitigate the drug's undesirable "food effect."The United States District Court for the District of Delaware held a five-day bench trial focusing on issues of infringement and validity under 35 U.S.C. § 112. However, the district court, sua sponte, determined that claims 5, 20, and 25 of the '780 patent were invalid under 35 U.S.C. § 101, reasoning that the claims were directed to an ineligible natural law. This decision was made despite the fact that Sandoz had not raised a § 101 defense during the trial or in its post-trial briefing.The United States Court of Appeals for the Federal Circuit reviewed the case and found that the district court had abused its discretion by addressing a ground not raised by the parties, thereby disregarding the principle of party presentation. The Federal Circuit vacated the district court's judgment and remanded the case for adjudication of the issues properly raised by the parties, specifically infringement and validity under 35 U.S.C. § 112. The Federal Circuit also declined Astellas's request to reassign the case to a different judge, trusting that the district court could resolve the remaining issues impartially. View "ASTELLAS PHARMA, INC. v. SANDOZ INC. " on Justia Law

The plaintiff, a manufacturer of resinous flooring systems, sued a former employee, the defendant, for breaching a noncompete agreement, violating the Connecticut Uniform Trade Secrets Act (CUTSA), and breaching a common-law duty of confidentiality. The defendant, who had signed a noncompete agreement as a condition of continued employment, later established his own floor coating business and used the plaintiff’s proprietary information to develop competing products. The plaintiff alleged that the defendant also assisted competitors in developing their products.In a separate but related case, the trial court found the noncompete agreement unenforceable due to lack of consideration and ruled that the common-law duty of confidentiality claim was preempted by CUTSA. The court also determined that a payment made to the defendant after his resignation was severance pay, not compensation for reaffirming the noncompete agreement. Based on these findings, the trial court in the present case granted summary judgment for the defendant, applying collateral estoppel to preclude further consideration of the issues.The Connecticut Supreme Court reviewed the case and concluded that the trial court had incorrectly determined the noncompete agreement was unenforceable for lack of consideration. The Supreme Court reversed the trial court’s judgment on the breach of the noncompete agreement claim and remanded the case for further proceedings to determine whether the agreement was supported by adequate consideration. The court upheld the trial court’s findings that the severance payment was not consideration for reaffirming the noncompete agreement and that the common-law duty of confidentiality claim was preempted by CUTSA. These rulings were binding in the present case. The judgment was reversed in part and affirmed in part, with further proceedings required to determine the enforceability and potential breach of the noncompete agreement. View "Dur-A-Flex, Inc. v. Dy" on Justia Law

The plaintiff, a developer and manufacturer of resinous flooring systems, sued several individual and corporate defendants for misappropriation of trade secrets, among other claims. The key individual defendant, S, was a former employee who developed a product called Poly-Crete for the plaintiff. After resigning, S started his own business and developed similar products, allegedly using the plaintiff’s trade secrets. The plaintiff claimed that S and other defendants, including companies that tested and used S’s products, misappropriated its trade secrets.The trial court conducted a bench trial in three phases. In the first phase, the court found that the plaintiff’s formulas for Poly-Crete and other products were trade secrets but ruled that the noncompete agreement S signed was unenforceable due to lack of consideration. The court also found that the plaintiff’s common-law confidentiality claim was preempted by the Connecticut Uniform Trade Secrets Act (CUTSA).In the second phase, the court found that S and some defendants misappropriated the plaintiff’s trade secrets to create products like ProKrete and ProSpartic. However, it ruled that other defendants, including Indue, Krone, ECI, and Merrifield, did not misappropriate the trade secrets as they did not know or have reason to know about the misappropriation. The court also granted attorney’s fees to Krone and ECI, finding the plaintiff’s claims against them were made in bad faith.In the third phase, the court ordered the defendants who misappropriated the trade secrets to disgorge profits and enjoined them from using the trade secrets. The court also sanctioned the plaintiff for attempted spoliation of evidence by its president, F, who tried to remove incriminating photos from the company’s Facebook page during the trial.The Connecticut Supreme Court affirmed the trial court’s rulings on most issues but reversed the judgment regarding the enforceability of the noncompete agreement and the standard for determining misappropriation. The case was remanded for further proceedings on these issues. View "Dur-A-Flex, Inc. v. Dy" on Justia Law

American Girl, LLC, a manufacturer of dolls and related products, sued Zembrka, a Chinese entity operating through websites, for selling counterfeit American Girl products. American Girl alleged that Zembrka's websites sold and shipped counterfeit products to New York, using American Girl's trademarks. The case was filed in the United States District Court for the Southern District of New York.The District Court granted Zembrka's motion to dismiss for lack of personal jurisdiction, emphasizing that American Girl failed to show that Zembrka shipped the counterfeit products to New York. The court concluded that without evidence of shipment, the "transacting business" requirement under New York's long-arm statute, C.P.L.R. § 302(a)(1), was not met. American Girl's motion for reconsideration, which included new evidence of New York customers purchasing counterfeit products, was also denied.The United States Court of Appeals for the Second Circuit reviewed the case. The court found that American Girl had adequately demonstrated that Zembrka transacted business in New York. Evidence showed that Zembrka accepted orders from New York, sent order confirmations, and received payments, which constituted purposeful activity within the state. The court held that actual shipment of goods was not necessary to establish personal jurisdiction under § 302(a)(1). The court also determined that exercising jurisdiction over Zembrka was consistent with due process, given New York's strong interest in protecting its consumers and businesses from counterfeit goods.The Second Circuit reversed the District Court's dismissal and remanded the case for further proceedings. View "American Girl, LLC v. Zembrka" on Justia Law

The case involves Vascular Solutions LLC, Teleflex LLC, Arrow International LLC, and Teleflex Life Sciences LLC (collectively, Teleflex) suing Medtronic, Inc. and Medtronic Vascular, Inc. (collectively, Medtronic) for patent infringement. Teleflex asserted forty claims across seven patents related to a coaxial guide catheter. The District Court for the District of Minnesota conducted claim construction proceedings and found the term "substantially rigid portion/segment" to be indefinite, invalidating all asserted claims. The parties stipulated to final judgment based on this determination, leading Teleflex to appeal.Previously, in the District Court for the District of Minnesota, Teleflex sought a preliminary injunction, which was denied due to substantial questions of invalidity. The court stayed the case pending inter partes review (IPR) proceedings. The Patent Trial and Appeal Board (PTAB) found some claims unpatentable but upheld others. Teleflex then filed a second preliminary injunction request, which was also denied. The district court appointed an independent expert, Andrei Iancu, who proposed a construction for "substantially rigid portion/segment." The district court ultimately found the term indefinite and invalidated all claims.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the district court erred in determining the claims were mutually exclusive and indefinite. The Federal Circuit clarified that the boundary of the "substantially rigid portion/segment" does not need to be consistent across claims and can be understood functionally. The court vacated the district court's final judgment and remanded the case for further proceedings, instructing that the claims are not necessarily mutually exclusive and that the term "substantially rigid portion/segment" does not need a consistent boundary across different independent claims. View "Vascular Solutions LLC v. Medtronic, Inc." on Justia Law

Contour IP Holding LLC sued GoPro, Inc. for patent infringement, alleging that GoPro's point-of-view digital video cameras infringed on Contour's patents, specifically U.S. Patent Nos. 8,890,954 and 8,896,694. These patents relate to portable, point-of-view video cameras designed for hands-free use, with features allowing remote image acquisition control and viewing. The patents describe a system where the camera generates high and low-quality video streams in parallel, with the low-quality stream being wirelessly transmitted to a remote device for real-time viewing and adjustment.The United States District Court for the Northern District of California initially construed the term "generate" in the patents to mean "record in parallel from the video image data." Later, GoPro moved for summary judgment, arguing that the claims were patent ineligible under 35 U.S.C. § 101. The district court agreed, finding that the claims were directed to the abstract idea of creating and transmitting video at different resolutions and adjusting the video’s settings remotely. The court concluded that the claims did not include an inventive concept sufficient to transform the abstract idea into a patent-eligible application and entered judgment against Contour.The United States Court of Appeals for the Federal Circuit reviewed the case and reversed the district court's decision. The Federal Circuit held that the claims were not directed to an abstract idea but to a specific technological improvement in POV camera technology. The court found that the claims described a specific means of generating high and low-quality video streams in parallel and wirelessly transmitting the low-quality stream to a remote device, which provided a technological solution to a technological problem. Therefore, the claims were patent eligible under 35 U.S.C. § 101. The case was remanded for further proceedings. View "CONTOUR IP HOLDING LLC v. GOPRO, INC. " on Justia Law

ParkerVision, Inc. sued Qualcomm Inc. in 2014, alleging infringement of patents related to wireless communications technology. This followed a 2011 lawsuit where ParkerVision claimed Qualcomm infringed on different but related patents. In the 2011 case, the court granted judgment as a matter of law (JMOL) of non-infringement, which was affirmed on appeal. In the 2014 case, the district court granted Qualcomm’s motion for summary judgment of non-infringement based on collateral estoppel from the 2011 case and excluded certain expert testimonies from ParkerVision.The district court for the Middle District of Florida granted Qualcomm’s motions, concluding that the claims in the 2014 case were materially similar to those in the 2011 case, thus applying collateral estoppel. The court also excluded ParkerVision’s expert testimonies on validity and infringement, deeming them unreliable due to a lack of testing and simulation.The United States Court of Appeals for the Federal Circuit reviewed the case. It vacated the summary judgment of non-infringement, finding that the district court erred by not conducting a proper claim construction to determine if the claims in the 2014 case were materially different from those in the 2011 case. The appellate court also reversed the exclusion of ParkerVision’s expert testimonies, ruling that the district court improperly required testing and simulation for the expert opinions to be considered reliable. The case was remanded for further proceedings to determine the proper scope of the claims and whether the differences in the claims would materially alter the question of infringement. View "PARKERVISION, INC. v. QUALCOMM INCORPORATED " on Justia Law

The case involves Internet Archive (IA), a nonprofit organization that creates digital copies of print books and makes them available online for free through its "Free Digital Library." IA maintains a one-to-one owned-to-loaned ratio, meaning it only allows as many digital checkouts as it has physical copies. In 2020, four major book publishers sued IA, alleging that its practices infringed their copyrights on 127 books. IA claimed its actions were protected under the fair use doctrine of the Copyright Act.The United States District Court for the Southern District of New York granted summary judgment in favor of the publishers, rejecting IA's fair use defense. The court found that IA's use of the books was non-transformative, commercial in nature, and that it usurped the market for the publishers' eBooks, causing market harm.The United States Court of Appeals for the Second Circuit reviewed the case. The court held that IA's use of the books was not transformative because it did not add new expression, meaning, or message to the original works. Instead, it served the same purpose as the originals, making them available to read. The court also found that IA's use was commercial, as it solicited donations and had a partnership with Better World Books, which provided some financial benefit. The court concluded that IA's practices harmed the publishers' market for eBooks and print books, as IA's free digital copies served as a substitute for the originals.The Second Circuit affirmed the district court's decision, holding that IA's Free Digital Library did not qualify as fair use under the Copyright Act. The court emphasized that allowing such widespread copying and distribution without compensation would undermine the incentives for authors to create new works. View "Hachette Book Group, Inc. v. Internet Archive" on Justia Law

Osseo Imaging, LLC sued Planmeca USA Inc. for patent infringement, alleging that Planmeca's ProMax 3D imaging systems infringed on Osseo's U.S. Patent Nos. 6,381,301, 6,944,262, and 8,498,374. These patents relate to orthopedic imaging systems that use X-ray beam techniques to create tomographic and/or densitometric models. The jury found that Planmeca infringed the asserted claims and that the claims were not invalid for obviousness.The United States District Court for the District of Delaware denied Planmeca's motion for judgment as a matter of law (JMOL) on both noninfringement and invalidity. Planmeca argued that Osseo's expert, Dr. Omid Kia, was not qualified to testify because he did not have the requisite experience at the time of the patents' invention. The district court rejected this argument, stating that there is no legal requirement for an expert to have acquired their expertise before the patent's effective date. The court also found that substantial evidence supported the jury's verdict.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court's decision. The appellate court held that Dr. Kia's testimony was admissible and that there is no requirement for an expert to have the requisite skill at the time of the invention. The court found that substantial evidence supported the jury's findings of infringement and nonobviousness. Specifically, the court noted that the evidence showed Planmeca's systems calculated Hounsfield Unit values representing bone density, merged information from multiple tomographic scans, and facilitated the comparison of densitometry models. The court also upheld the jury's finding that it would not have been obvious to combine the prior art references cited by Planmeca. Thus, the Federal Circuit affirmed the district court's denial of JMOL on all issues. View "OSSEO IMAGING, LLC v. PLANMECA USA INC. " on Justia Law

Dyax Corporation performed research for Ares Trading S.A. and licensed patents to Ares, including some held by Cambridge Antibody Technology (CAT Patents). Ares used Dyax’s research to develop a cancer drug, Bavencio, and agreed to pay royalties to Dyax based on the drug’s sales. The royalty obligation outlasted the lifespan of the CAT Patents. The District Court held that Ares’ royalty obligation was not unenforceable under Brulotte v. Thys Co., which prohibits royalties that extend beyond a patent’s expiration.The United States District Court for the District of Delaware found that Ares’ royalty obligation did not violate Brulotte because it was not calculated based on activity requiring the use of inventions covered by the CAT Patents after their expiration. The court characterized the royalties as deferred compensation for Dyax’s pre-expiration research. Additionally, the court noted that Ares’ royalty obligation could run until the latest-running patent covered in the agreement expired, which included patents other than the CAT Patents.The United States Court of Appeals for the Third Circuit affirmed the District Court’s decision. The Third Circuit held that Ares’ royalty obligation was not calculated based on activity requiring post-expiration use of the CAT Patents, and thus, Brulotte did not apply. The court emphasized that the royalties were based on sales of Bavencio, which did not require the use of the CAT Patents after their expiration. The court also rejected Ares’ argument that Dyax violated the implied covenant of good faith and fair dealing, noting that Ares received all the benefits promised under the agreement. The court concluded that Dyax did not breach any obligations under the agreement, and Ares’ royalty obligation remained enforceable. View "Ares Trading SA v. Dyax Corp" on Justia Law