Justia Intellectual Property Opinion Summaries

Spineology’s patent describes an “expandable reamer” for use in orthopedic surgery. Wright manufactures a reamer known as the X-REAM®. In 2015, Spineology sued Wright, alleging the X-REAM® infringes its patent. The district court refused to adopt either party’s construction of the term “body” but construed “body” consistent with Wright’s noninfringement position and granted Wright summary judgment. Wright then sought attorney fees, 35 U.S.C. 285, arguing Spineology’s proposed construction of “body,” its damages theories, and its litigation conduct rendered the case “exceptional.” The Federal Circuit affirmed the denial of the motion. While ultimately the court rejected Spineology’s proposed construction, the attempt was not so meritless as to render the case exceptional. The court determined “the arguments made by Spineology to support its damages theory . . . are not so meritless as to render the case exceptional” and “[n]othing about this case stands out from others with respect to the substantive strength of Spineology’s litigating position or the manner in which the case was litigated.” View "Spineology, Inc. v. Wright Medical Technology Inc." on Justia Law

Defendants appealed the district court's judgment for plaintiffs, finding copyright infringement. Defendants created an Internet platform designed to enable the lawful resale, under the first sale doctrine, of lawfully purchased digital music files, and had hosted resales of such files on the platform.The Second Circuit held that defendants infringed plaintiffs' exclusive rights under 17 U.S.C. 106(1) to reproduce their copyrighted works. In this case, the operation of ReDigi version 1.0 in effectuating a resale resulted in the making of at least one unauthorized reproduction. Such unauthorized reproduction violated the right holder's exclusive reproduction rights under section 106(1) and was not excused as fair use. The court declined to make a decision as to whether ReDigi also infringed plaintiffs' exclusive rights under 17 U.S.C. 106(3) to distribute their works. View "Capitol Records, LLC v. ReDigi Inc." on Justia Law

In December 2015, Apple filed two petitions for inter partes review of the 696 patent, challenging certain claims as obvious. VirnetX filed responses arguing that prior art reference RFC 2401 was not a printed publication under 35 U.S.C. 102(b) as of November 1998. The Patent Board found that RFC 2401 was a printed publication and concluded that the 696 patent was unpatentable as obvious. During the pendency of VirnetX’s appeal, the Federal Circuit decided another case between the parties (VirnetX I), upholding the Board’s decision that RFC 2401 was a printed publication as of November 1998. The Federal Circuit then held that VirnetX is collaterally estopped by the VirnetX I judgment from relitigating the printed publication issue. VirnetX did not preserve an issue of whether inter partes review procedures apply retroactively to patents that were filed before Congress enacted the America Invents Act. View "VirnetX Inc. v. Apple, Inc." on Justia Law

Laerdal, which manufactures and distributes medical devices, filed a complaint at the International Trade Commission asserting violations of 19 U.S.C. 1337 by infringement of Laerdal’s patents, trademarks, trade dress, and copyrights by importing, selling for importation, or selling within the U.S. certain medical devices. The Commission investigated Laerdal’s trade dress claims, one patent claim, two copyright claims, and one trademark claim, excluding all others. Despite being served with notice, no respondent responded. An ALJ issued the Order to Show Cause. Respondents did not respond. An ALJ issued an initial determination finding all respondents in default. Laerdal modified its requested relief to immediate entry of limited exclusion orders and cease and desist orders. The Commission requested briefing on remedies, the public interest, and bonding. The Commission's final determination granted Laerdal limited exclusion orders against three respondents and a cease and desist order against one, based on patent and trademark claims; it issued no relief on trade dress and copyright claims, finding Laerdal’s allegations inadequate. As to trade dress claims, the Commission found that Laerdal failed to plead sufficiently that it suffered the requisite harm, the specific elements that constitute its trade dresses, and that its trade dresses were not functional; despite approving the ALJ’s initial determination of default and despite requesting supplemental briefing solely related remedy, the Commission issued no relief on those claims. The Federal Circuit vacated. The Commission violated 19 U.S.C. 1337(g)(1) by terminating the investigation and issuing no relief for its trade dress claims against defaulting respondents. View "Laerdal Medical Corp. v. International Trade Commission" on Justia Law

When the patent owner filed for the 772 patent, the law defined the patent term as 17 years from the date the patent issued. The law was later amended to define the patent term as expiring 20 years from the patent’s earliest effective filing date, Uruguay Round Agreements Act of 1994 (URAA), 108 Stat. 4983. The owner then filed for the related 990 patent. The change in law caused the second patent to expire earlier than the first patent. The owner concedes that the claimed inventions in the two related patents are obvious variants of each other. The district court invalidated the 772 patent based on obviousness-type double patent; the invalidating reference, the 990 patent, was filed and issued after, but expired before, the 772 patent. The Federal Circuit reversed. The patents are governed by different patent term statutory regimes; the correct framework is to apply the traditional obviousness-type double patenting practices extant in the pre-URAA era to the pre-URAA patent and look to that patent’s issuance date as the reference point for obviousness-type double patenting. Under this framework, and because a change in patent term law should not truncate the term statutorily assigned to the pre-URAA 772 patent, the 990 patent is not a proper double patenting reference. View "Novartis Pharmaceuticals Corp. v. Breckenridge Pharmaceutical, Inc." on Justia Law

Ezra filed an Abbreviated New Drug Application (ANDA) for a generic version of Novartis’s multiple sclerosis drug, Gilenya®. Novartis sued for infringement, asserting the 229 patent. Because the 229 patent was filed before the 1994 Uruguay Round Agreements Act (URAA), its patent term was 17 years. It was set to expire in 2014. Novartis secured a patent term extension (PTE) of five years, 35 U.S.C. 156. Section 156 was enacted to restore the value of the patent term that an owner loses because the product cannot be commercially marketed without regulatory, e.g., FDA, approval. Multiple patents may cover the same product, but only one patent’s term can be extended. Novartis also owned the 565 patent covering Gilenya® and sought PTE on the 229 patent, which now expires in February 2019. Because the 565 patent issued from an application filed after the URAA, its 20-year term expired in 2017. The court denied Ezra’s motion for judgment on the pleadings, where Ezra argued that the extension of the 229 patent’s term beyond the life of the 565 patent de facto extended the life of the 565 patent and rendered the 229 patent invalid for double patenting; the two patents' claims are not patentably distinct. Ezra stipulated that its ANDA product infringes and dropped the double patenting issues. The court found the 229 patent valid, unexpired, enforceable, and infringed, and enjoined Ezra’s ANDA product until the 2019 expiration. The Federal Circuit affirmed. Obviousness-type double patenting does not invalidate an otherwise valid PTE. View "Novartis AG v. Ezra Ventures LLC" on Justia Law

Maxchief has its principal place of business in China and distributes one of the plastic tables it manufactures (UT-18) exclusively through Meco, which is located in Tennessee. Meco sells the UT-18 tables to retailers. Wok competes with Maxchief in the market for plastic folding tables, and also has its principal place of business in China. Wok owns patents directed to folding tables. Wok sued Maxchief’s customer, Staples, in the Central District of California, alleging that Staples’ sale of Maxchief’s UT-18 table infringed the Wok patents. Staples requested that Meco defend and indemnify Staples. Meco requested that Maxchief defend and indemnify Meco and Staples. The Staples action is stayed pending the outcome of this case. Maxchief then sued Wok in the Eastern District of Tennessee, seeking declarations of non-infringement or invalidity of all claims of the Wok patents and alleging tortious interference with business relations under Tennessee state law. The district court dismissed the declaratory judgment claim for lack of personal jurisdiction. With respect to the state law tortious interference claim, the district court concluded it lacked subject matter jurisdiction. The Federal Circuit affirmed. Wok lacked sufficient contacts with the forum state of Tennessee for personal jurisdiction as to both the declaratory judgment claim and the tortious interference claim. View "Maxchief Investments Ltd. v. Wok & Pan, Ind., Inc." on Justia Law

Saint Louis Brewery (SLB), a craft brewery founded in 1989 by Thomas Schlafly and Daniel Kopman, began selling beer with the SCHLAFLY logo in 1991 and asserts that it “has continuously sold beer under its SCHLAFLY trademark” ever since. In 2011, SLB applied for trademark registration for the word mark “SCHLAFLY” for use with various types of beer. The application drew opposition from Phyllis Schlafly, Thomas’s aunt and a well-known conservative activist (now deceased), and Bruce Schlafly (Opposers). The Trademark Trial and Appeal Board denied the opposition. The Federal Circuit affirmed the registration, rejecting an argument that the Board did not recognize that the mark was “primarily merely a surname,” and improperly accepted that the mark has acquired secondary meaning although the applicant did not provide survey evidence. The court also rejected claims of violation of the Opposers’ First Amendment, Fifth Amendment, and Due Process rights and protections. A trademark registration does not constitute a “taking” and the trademark opposition procedure, of which the Opposers have availed themselves, provides an appropriate process of law. View "Schlafly v. Saint Louis Brewery, LLC" on Justia Law

The Photographers entered into representation agreements with Corbis, a photography agency, providing Corbis authority to sub-license their works to third parties on a non-exclusive, fixed-duration basis. The agreements include forum selection clauses and give Corbis sole authority to make and settle claims for unauthorized use of images. If Corbis declines to bring such a claim within 60 days, the Photographers may bring actions. Corbis sub-licensed their photographs to McGraw-Hill. The invoices included the name of the photographer responsible for the work and incorporated Corbis’ standard “Terms and Conditions,” which included mandatory, exclusive forum selection clauses. The Photographers each brought a copyright action against McGraw-Hill in the Eastern District of Pennsylvania. McGraw-Hill moved to transfer venue under 28 U.S.C. 1404(a), arguing that the disputes implicate the Corbis–McGraw-Hill agreements, under which the proper venue was the Southern District of New York. One judge denied the motion, reasoning that the claims are based purely on copyright law, so the action is not a “dispute regarding th[e] Agreement[s],” and not subject to the forum selection clauses. Another judge reasoned that the copyright claims depend upon the interpretation of the Corbis–McGraw-Hill agreements so that the photographer was subject to the forum selection clause as an intended third-party beneficiary. In consolidated actions, the Third Circuit concluded that the photographers are not bound because they are not intended beneficiaries of the agreements, nor are they closely related parties. Because the erring district court’s mistakes were not clear or indisputable, the court declined to grant mandamus relief. View "In re: McGraw-Hill Global Education Holdings, LLC" on Justia Law

The Ninth Circuit filed an order granting defendants' petition for panel rehearing, withdrawing the panel’s opinion, and ordering the filing of a superseding opinion. The panel also filed a superseding opinion reversing the district court's grant of summary judgment in favor of defendants in a trademark infringement suit over the "Honey Badger" catchphrases under the Lanham Act.The panel held that, under the test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), the Lanham Act applies to expressive works only where the public interest in avoiding consumer confusion outweighs the public interest in free expression. In this case, defendants have not used plaintiff's mark in the creation of a song, photograph, video game, or television show, but have largely just pasted plaintiff's mark into their greeting cards. The panel held that a jury could determine that this use of plaintiff's mark was explicitly misleading as to the source or content of the cards. Therefore, the panel reversed the district court's grant of summary judgment and remanded for further proceedings. View "Gordon v. Drape Creative, Inc." on Justia Law