Justia Intellectual Property Opinion Summaries

Siny sought to register the mark CASALANA in standard characters for “Knit pile fabric made with wool for use as a textile in the manufacture of outerwear, gloves, apparel, and accessories” based on use in commerce under the Lanham Act, 15 U.S.C. 1051(a). Siny submitted a specimen consisting of a webpage printout. The examining attorney refused registration because the specimen “appear[ed] to be mere advertising material,” that did not include a means for ordering the goods. Siny submitted the same webpage with additional text stating, “For sales information:” followed by a phone number and email address. The examining attorney found that the text alone was insufficient for consumers to make a purchase, noting the absence of necessary ordering information, such as minimum quantities, cost, payment options, or shipping information. The Trademark Board and Federal Circuit affirmed. For a mark to be in use in commerce on goods, it may be “placed in any manner on the goods or their containers or the displays associated therewith or on the tags or labels affixed thereto.” The Webpage Specimen was not placed on the goods or their containers, tags, or labels and did not cross the line from mere advertising to an acceptable display associated with the goods. While some details must be worked out by telephone, if virtually all important aspects of the transaction must be determined from information extraneous to the webpage, the webpage is not a point of sale. View "In re: Siny Corp." on Justia Law

Omega sued CalAmp for infringement of patents that generally relate to multi-vehicle compatible systems that can remotely control various vehicle functions (for example, remote vehicle starting), and read the status of various vehicle devices (for example, battery health). The systems can also be used to notify the driver, or the driver’s employer, if certain conditions occur (for example, speeding). CalAmp operates in the telematics industry, assisting businesses and government entities monitor and collect data for their assets (for example, a fleet of vehicles). CalAmp sells its Location Messaging Unit products, which are multi-vehicle compatible devices that include a GPS receiver for vehicle tracking. The Federal Circuit upheld a finding that the patents are not invalid; reversed-in-part, vacated-in-part, and remanded as to direct infringement; and vacated and remanded for a new trial on indirect infringement, compensatory damages, willful infringement, enhanced damages, and attorney’s fees. View "Omega Patents, LLC v. CalAmp Corp." on Justia Law

The Eighth Circuit affirmed the district court's grant of summary judgment for Iowa Parts in a trademark secrets and intellectual property action brought by CMI. The court held that CMI could not establish its burden of proving that the discovery rule saves its statutory cause of action because it was on inquiry notice that Iowa Parts was making its component parts, possibly with its engineering documents and other trade secrets, starting in 2002 and continuing thereafter. The court also held that CMI was on notice of a possible problem as early as 2002 on the conversion claim. Finally, the district court properly granted summary judgment on the unjust enrichment claim where an equitable claim could not provide alternative relief. View "CMI Roadbuilding, Inc. v. Iowa Parts, Inc." on Justia Law

The Eleventh Circuit affirmed the district court's grant of summary judgment based on its finding that Kroma EU lacked standing to enforce the KROMA trademark. By Lee Tillett, Inc. was the owner and registrant of the mark and had the rights to use the KROMA mark in the United States. Some time after Tillett granted an exclusive license to Kroma EU, defendants (the Kardashian sisters) endorsed a cosmetic line called "Khroma Beauty," that was sold and manufactured by Boldface. The California district court subsequently granted Tillett's motion for a preliminary injunction against Boldface, finding that Tillett had demonstrated a likelihood of success on the trademark infringement claim.On appeal here, the court adopted the position taken by the district courts in this circuit and held that a licensee's right to sue to protect the mark largely depends on the rights granted to the licensee in the licensing agreement. The court held that the licensing agreement at issue did not give Kroma EU sufficient rights in the name to sue under the Lanham Act. In this case, the plain language of the licensing agreement demonstrated that the parties' intent was for Tillett to retain all ownership and enforcement rights; the agreement plainly authorized Tillett to file suit against infringers; and Kroma EU was limited in its available recourse. View "Kroma Makeup EU, LLC v. Boldface Licensing + Branding, Inc." on Justia Law

This case involved ten years of litigation regarding an attempt to simultaneously sell a restaurant and license associated intellectual property. The Fifth Circuit affirmed the district court's ruling that the Bill of Sale assigned all Camellia Grill Trademark rights to Hicham Khodr; affirmed the district court's ruling that the Bill of Sale assigned the trade dress associated with the Carrollton restaurant; affirmed the district court's finding that infringement damages were unwarranted; reversed the district court's denial of summary judgment on the trade-dress breach of contract claim and remanded for proceedings to determine if Khodr breached the License Agreement by using the alleged trade dress at the Chartres restaurant; and affirmed the district court's compensable damages ruling. View "Uptown Grill, LLC v. Camellia Grill Holdings, Inc." on Justia Law

SSI is an original equipment manufacturer (OEM): a manufacturer who resells another company’s products under its own name and branding. TEK sells tire repair kits to various OEMs and owns the 110 patent, which is directed to an emergency kit for repairing vehicle tires deflated by a puncture. When TEK filed the 110 patent, a common way to handle a flat tire was to simply replace it with a spare tire. Because the repair kit disclosed in the patent comprises a small compressor and a container of sealing liquid to mend the hole, it is intended to serve as a smaller, lighter, and less complicated alternative to conventional spare tires. TEK sued SSI for infringement. Following a remand, the district court found several claims infringed and not invalid, awarded $2,525,482 in lost profits and $255,388 in the form of a reasonable royalty for infringing sales for which TEK did not prove its entitlement to lost profits, and granted TEK a permanent injunction. The Federal Circuit vacated in part. The district court improperly restricted SSI’s efforts to present the jury with relevant evidence of invalidity. With respect to the other issues, the Federal Circuit affirmed, “if the patent is found to be not invalid on remand.” View "TEK Global, S.R.L. v. Sealant Systems International, Inc." on Justia Law

The patents at issue are listed in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book) for NUCYNTA® ER (extended release), a tapentadol hydrochloride tablet. The 364 patent is directed to the Form A polymorph of the chemical compound tapentadol hydrochloride and a method of treating pain and/or urinary incontinence and states that Form A “is very stable at ambient conditions and therefore useful for producing a pharmaceutical composition.” The 130 patent describes a method of using tapentadol and tapentadol hydrochloride for the treatment of polyneuropathic pain, which is caused by damage to multiple nerves. In an infringement suit, stemming from Abbreviated New Drug Application (ANDA) filings seeking to market generic versions of immediate and extended release tapentadol hydrochloride tablets, the Federal Circuit affirmed the district court in finding that the 364 patent is not invalid for obviousness or lack of utility (the defendants had stipulated to infringement) and that the ANDA filings do not infringe the 130 patent, which is not invalid as anticipated. View "Grunenthal GMBH v. Alkem Laboratories Limited" on Justia Law

ChargePoint’s patents pertain to charging stations for electric vehicles. At the time the patent application was filed, the charging process “typically require[d] hours and [was] often done overnight or while the electric vehicle [was] parked for a significant time.” Businesses such as restaurants, apartments, and shopping centers have installed electric vehicle charging stations for the convenience of their customers. During periods of high demand, utility companies sometimes reduce the power supply to certain customers based on a preplanned load prioritization scheme, (demand response). In addition to pulling electricity from a local electricity grid, electric vehicles may also supply electricity to the grid. Vehicle-to-grid transfer can be helpful during periods of high demand. ChargePoint contends that its inventors created networked charging stations, managed from a central location, allowing drivers to locate charging stations in advance, and allowing all users to interact intelligently with the electricity grid; the patents suggest that drivers can choose to transfer power from their vehicles to the power grid during periods of high demand. The Federal Circuit affirmed the dismissal of ChargePoint’s infringement suit. The eight asserted claims ChargePoint were ineligible for patenting under 35 U.S.C. 101, as directed to abstract ideas concerning communication. View "ChargePoint, Inc. v. SemaConnect, Inc." on Justia Law

Endo’s patent, entitled “Method of treating pain utilizing controlled release oxymorphone pharmaceutical compositions and instruction on dosing for renal impairment,” covers a method of using oxymorphone to treat pain in patients with impaired kidney function. Controlled-release dosage forms that maintain optimal levels of pain relief for longer periods are useful to patients and clinicians. Patients’ pain relief levels can be impacted by the way their body processes oxymorphone. The inventor discovered that patients with moderately or severely impaired kidney function need less oxymorphone than usual to achieve a similar level of pain management. The Federal Circuit reversed the district court’s conclusion that the claims were patent-ineligible under 35 U.S.C. 101. The district court incorrectly concluded that the claims at issue are directed to a natural law. The claims prescribe a regimen for specific patients, using a specific compound at specific doses to achieve a specific outcome. Claiming a new treatment for an ailment, albeit using a natural law, is not claiming the natural law. View "Endo Pharmaceuticals Inc. v. Teva Pharmaceuticals USA, Inc." on Justia Law

Arctic’s patents, both titled “Power Distribution Module for Personal Recreational Vehicle,” describe an assertedly inventive electrical-connection box having an array of receptacle openings that allow wires to be arranged and secured in various positions for distributing power to various electrical components, including components of a personal recreational vehicle. GEP petitioned the Patent Trial and Appeal Board for inter partes reviews of all claims of both patents under 35 U.S.C. 102 and 103. The Board determined that all claims of the patents are unpatentable. The Federal Circuit affirmed as to the 822 patent but reversed in part as to the 188 patent. The Board did not abuse its discretion in rejecting the deposition-transcript submission and correctly held preamble references to a vehicle in the claims at issue not to be limiting. The Board improperly determined that Boyd was prior art; the inventions antedated Boyd. View "Arctic Cat Inc. v. GEP Power Products, Inc." on Justia Law