Justia Intellectual Property Opinion Summaries

ON Semiconductor sought inter partes review (IPR) of several claims of Power’s 079 patent. The Patent Trial and Appeal Board determined that the IPR was not time-barred by 35 U.S.C. 315(b) and that the challenged claims were invalid. The Federal Circuit vacated. Power raised the same section 315(b) argument that it raised and litigated in a non-appealed IPR on a different patent, so ON established the basic requirements for issue preclusion. However, the lack-of-incentive-to-litigate exception applies and justifies rejecting ON’s issue preclusion argument. On the merits, the court concluded that section 315(b) requires consideration of privity and real-party-in-interest (RPI) relationships arising after filing but before institution. The court declined to construe section 315(b) in a way that would have the Board, when deciding whether to institute, ignore the existence of RPIs or privies who would benefit from having an IPR instituted simply because they were not RPIs or privies when the petition was filed. IPR was time-barred by because Fairchild, which challenged the patent in 2009 and merged with ON several years later, was an RPI at the time the IPR was instituted, even though it was not an RPI at the time the petition was filed. View "Power Integrations, Inc. v. Semiconductor Components Industries, LLC" on Justia Law

Bodum produces and sells what design magazines and art museums have recognized as an iconically designed houseware product—the Chambord French press coffee maker. Bodum sued Top for selling a French press that Bodum claimed infringes on its unregistered trade dress in the Chambord, 15 U.S.C. 1125(a)(1)(A). The court excluded evidence of various utility patents covering French press coffee makers and rejected Top’s argument that Bodum failed to prove the Chambord design was nonfunctional. A jury awarded Bodum $2 million in damages. The Seventh Circuit affirmed. Bodum presented sufficient evidence for the jury to have found Bodum’s claimed trade dress was non‐functional. The district court did not abuse its discretion in excluding evidence of utility patents that do not claim any of the features that comprise the claimed Chambord trade dress. View "Bodum USA, Inc. v. A Top New Casting Inc." on Justia Law

Elm owns the Challenged Patents, which share a specification and all relate to “stacked integrated circuit memory.” The Challenged Patents are the subject of co-pending litigation between Elm and Petitioners. The Patent Trial and Appeal Board instituted inter partes review and held that Petitioners did not establish the unpatentability of 105 claims across 11 patents. The Federal Circuit affirmed. Each challenged claim requires a low-tensile-stress dielectric, and substantial evidence supports the Board’s finding that a person of ordinary skill in the art would not have reasonably expected success in combining the prior art to meet this limitation. The court construed the term “substantially flexible” as largely able to bend without breaking and contains a circuit layer that is substantially flexible semiconductor substrate and a sufficiently low tensile stress dielectric material. View "Samsung Electronics Co., Ltd. v. Elm 3DS Innovations, LLC" on Justia Law

The U.S. Patent and Trademark Office has, on a few occasions, found that “capsule” was “merely descriptive” of cellphone cases, a finding that precludes registration on the Principal Register. The Office has also found otherwise and allowed Uncommon to register “capsule.” Rival case manufacturers still use the term. Uncommon sued Spigen for trademark infringement and unfair competition, 15 U.S.C. 1114, 1125(a). Spigen sought cancellation of the mark. In discovery, Spigen produced a survey to prove that consumers did not associate “capsule” with Uncommon’s cases, and disclosed the person who conducted the survey as a “non-testifying expert,” but without foundational expert testimony to explain the survey’s methodology, it was inadmissible, FRCP 26(a). The district court excused Spigen’s error and granted Spigen summary judgment on the merits. The Seventh Circuit affirmed. Spigen’s disclosure was inaccurate but harmless. Spigen carried its burden to defeat Uncommon’s presumption of inherent distinctiveness. Spigen demonstrated that there is no issue of material fact regarding the descriptiveness of the “capsule” mark. With the survey, there was no genuine issue of material fact as to the mark’s invalid registration. Nor was there an issue of fact regarding the unlikelihood of consumer confusion. View "Uncommon, LLC v. Spigen, Inc." on Justia Law

The Leahy-Smith America Invents Act (AIA) of 2011 created the Patent Trial and Appeal Board, 35 U.S.C. 6(c), which conducts administrative review proceedings that enable a “person” to challenge the validity of a patent post-issuance: “inter partes review,” “post-grant review,” and “covered-business-method review” (CBM review). The Board either confirms or cancels the patent claims. Any dissatisfied party may then seek judicial review in the Federal Circuit. A patent can also be reexamined either in federal court during a defense to an infringement suit or in an ex parte reexamination by the Patent Office.USPS introduced an enhanced service to process undeliverable mail, which Return Mail asserted infringed its patent. USPS petitioned for ex parte reexamination. The Patent Office confirmed the patent’s validity. Return Mail then sued, seeking compensation for the unauthorized use of its invention. USPS petitioned for CBM review. The Patent Board concluded that the subject matter of Return Mail’s claims was ineligible to be patented. The Federal Circuit affirmed.The Supreme Court reversed. The government is not a “person” capable of instituting AIA review proceedings. Absent an express definition of “person” in the patent statutes, the Court applied a longstanding interpretive presumption that "person" does not include the sovereign, citing common usage, and the Dictionary Act. There are many references to “person[s]” in the Patent Act and the AIA: Sometimes “person” plainly includes or excludes the government, but sometimes it might be read either way. The mere existence of some government-inclusive references and the government's ability to obtain a patent do not overcome the presumption that the government is not a “person” eligible to petition for AIA review. Congress may have had good reason to authorize the government to initiate a hands-off ex parte reexamination but not to become a party to the AIA’s full-blown adversarial proceeding. View "Return Mail, Inc. v. United States Postal Service" on Justia Law

The Ninth Circuit affirmed the district court's grant of summary judgment and award of attorney's fees to Sanctuary Clothing in an action brought by Fiesta, alleging that Sanctuary clothing copied its fabric design. The panel held that the district court did not err in finding that the design had been published prior to registration and therefore Fiesta's registration application contained an inaccuracy. Furthermore, Fiesta included inaccurate information on its application with knowledge that it was inaccurate. Therefore, the inaccuracy in the registration rendered it invalid as to the design under section 411(b)(1)(B) of the Copyright Act. The panel also held that the district court did not abuse its discretion in awarding attorney's fees to Sanctuary Clothing. View "Gold Value International Textile, Inc. v. Sanctuary Clothing, LLC" on Justia Law

The asserted patents were originally assigned to AMD, which later purported to transfer “all right, title and interest” in the patents to Lone Star, with several limitations. For example, Lone Star agreed to only assert the covered patents against “Unlicensed Third Party Entit[ies]” specifically listed in the agreement. New entities can only be added if both parties agree to add them. If Lone Star sues an unlisted entity, AMD has the right, without Lone Star’s approval, to sublicense the covered patents to the unlisted target. AMD can prevent Lone Star from assigning the patents or allowing them to enter the public domain. AMD and its customers can continue to practice the patents; AMD shares in any revenue Lone Star generates from the patents through “monetization efforts." Lone Star sued parties listed as Unlicensed Third Party Entities in the agreement, asserting infringement and alleging that AMD transferred “all right, title, and interest” in the asserted patents to Lone Star. The district court concluded that Lone Star does not own the patents and could not assert them. The Federal Circuit vacated the dismissal, while agreeing that Lone Star cannot assert the patents on its own. The court should not have dismissed the case without considering whether AMD should have been joined (Federal Rule of Civil Procedure 19. View "Lone Star Silicon Innovations, LLC v. Nanya Technology Corp." on Justia Law

Pabst’s patent, entitled “Analog Data Generating and Processing Device Having a Multi-Use Automatic Processor,” issued in 2015 and claims priority to a 1999 application through continuations of applications that issued as Pabst’s 399 and 449 patents. That same specification also gave rise to Papst’s 144 and 746 patents. The specification describes an interface device for communication between a data device (on one side of the interface) and a host computer (on the other). The interface device achieves high data transfer rates, without the need for a user-installed driver specific to the interface device, by using fast drivers that are already standard on the host computer for data transfer, such as a hard-drive driver. The interface device signals to the host device that the interface device is an input/output device for which the host already has such a driver. On inter partes review, Patent Trial and Appeal Board determined that claims 1– 38 and 43–45 are unpatentable for obviousness based on a combination of the Aytac patent, a publication setting forth standards for the Small Computer System Interface-2, and “admitted prior art.” The Federal Circuit affirmed, finding that Pabst’s arguments are barred by issue preclusion and fail on the merits. View "Pabst Licensing GMBH & Co. KG v. Samsung Electronics America, Inc." on Justia Law

Guitar Center, which sells musical instruments, created a new brand of woodwind and brass instruments produced by Eastman, “Ventus.” Barrington owns the trademark “Vento,” which is used in relation to instruments it sells. Barrington began using its mark in commerce in 2009 and achieved gross sales just under $700,000. Barrington filed for registration of its “Vento” mark in January 2010. In March 2011, Guitar Center began selling instruments using the “Ventus” mark, with gross sales totaling about $5 million. Barrington filed suit against Eastman, Music & Arts, Guitar Center, and Woodwind. A jury found that only Guitar Center's sales infringed and awarded Barrington the total amount of Guitar Center sales—$3,228. Barrington later discovered that Music & Arts and Woodwind were divisions of Guitar Center. Barrington moved the court to amend the damages award to $4,947,200, the total sales for the “Ventus” mark by all of the Guitar Center owned stores. The district court denied the Rule 59(e) motion. The Seventh Circuit affirmed. Barrington gave no reason to conclude that the jury’s verdict would be different if it were aware Music & Arts and Woodwind were merely divisions of Guitar Center; it found Music & Arts and Woodwind did not infringe on the “Ventus” mark and there was no basis to award Barrington their “Ventus” related sales. View "Barrington Music Products, Inc v. Music & Arts Center" on Justia Law

This consolidated appeal stemmed from the trusts' motion for a temporary restraining order and preliminary injunction enjoining the use of Phyllis Schafly's intellectual property. The Eighth Circuit affirmed the denial of preliminary injunctive relief under 28 U.S.C. 1292(a)(1) and held that the trusts would not be entitled to the traditional presumption of irreparable harm in trademark cases because they did not promptly seek preliminary injunctive relief concerning the trademark infringement, regardless of whether the presumption survived recent Supreme Court decisions emphasizing the movant's burden to show that irreparable injury was likely in the absence of an injunction. The court dismissed the appeal of the order staying litigation for lack of appellate jurisdiction, because the order was temporary and did not effectively end the litigation. View "Phyllis Schlafly Revocable Trust v. Cori" on Justia Law