Justia Intellectual Property Opinion Summaries

Plaintiffs sued Oath in the Eastern District of New York, alleging patent infringement. Oath conducts business in New York, but is incorporated in Delaware; it does not have “a regular and established place of business” in the Eastern District as defined in the patent statute venue provision, 28 U.S.C. 1400(b) In 2016, Oath moved under FRCP 12(b)(6) to dismiss for failure to state a claim but did not object to venue. Oath withdrew its motion and filed an answer, admitting the complaint’s venue allegations but expressly reserving the right to challenge venue based upon any change in law, including the Supreme Court’s "TC Heartland" decision. The Supreme Court subsequently issued that decision, holding that, under section 1400(b), “a domestic corporation ‘resides’ only in its State of incorporation,” rejecting Federal Circuit precedent that a domestic corporation “resides” in any judicial district in which the defendant is subject to personal jurisdiction. Oath moved to dismiss. Plaintiffs argued that Oath had waived the venue defense because it was “available” in 2016. The district court agreed. In November 2017, the Federal Circuit held (Micron) that “TC Heartland changed the controlling law ... making the waiver rule ... inapplicable” but that venue rights might be forfeited by delay in asserting them in some circumstances. On reconsideration, the district court again denied Oath’s motion. The Federal Circuit remanded with instructions to either dismiss or transfer the case. The district court provided no analysis of why these circumstances supported a finding of forfeiture under section 1406(b) and erred in failing to apply the Micron precedent. View "In re: Oath Holdings, Inc." on Justia Law

Under the circumstances of this case, copyright registration, without more, does not trigger accrual of an ownership claim under section 205(c) of the Copyright Act. The Second Circuit denied a petition for rehearing in a dispute over ownership of the renewal term copyrights of certain musical compositions and sound recordings. The court had previously vacated the district court's grant of defendants' motion to dismiss for untimeliness under section 205(c) and remanded for further proceedings. View "Wilson v. Dynatone Publishing Co." on Justia Law

Bell sued Vacuforce for copyright infringement, accusing it of publishing his photograph of the Indianapolis skyline on its website without a license. Vacuforce hired attorney Overhauser. The parties quickly settled; the federal lawsuit was dismissed with prejudice. Overhauser then moved to recover attorney fees from Bell, arguing that because the settlement produced a dismissal with prejudice, Vacuforce was the “prevailing party” for purposes of fees under the Copyright Act, 17 U.S.C. 505. The district court denied Overhauser’s as motion frivolous and misleading and ordered monetary sanctions against Overhauser: one under Federal Rule of Civil Procedure 11 and another under 28 U.S.C. 1927. The Seventh Circuit affirmed the sanctions, rejecting an argument that a party can “prevail” for purposes of a fee-shifting statute by paying a settlement and obtaining a dismissal with prejudice. The district court did not abuse its discretion by imposing the section 1927 sanction. “Objective bad faith” will support such a sanction. A lawyer demonstrates objective bad faith when she “pursues a path that a reasonably careful attorney would have known, after appropriate inquiry, to be unsound.” The district court found that Overhauser’s legal contentions were baseless and that he failed to disclose the proper factual foundation necessary to evaluate his legal argument. View "Overhauser v. Bell" on Justia Law

Under the Defend Trade Secrets Act, a defendant is not eligible for fees when the plaintiff obtains a dismissal without prejudice because such a dismissal does not establish the winner of the dispute. The Fifth Circuit held that taking the lead early in the lawsuit did not make defendants eligible for fees, nor did the trial court's postponement of the litigation when it allowed plaintiff to dismiss the federal suit without prejudice. Accordingly, the court affirmed the district court's denial of fees. View "Dunster Live, LLC v. LoneStar Logos Management Co." on Justia Law

Cisco’s 597 patent, titled “Method and Apparatus for Securing a Communications Device using a Logging Module,” relates generally to ensuring network device security by using a logging module with restricted configurability to detect and communicate changes to a network device’s configuration. Arista petitioned for an inter partes review (IPR) of certain claims of the patent. The Patent Trial and Appeal Board upheld some of those challenged claims as patentable but invalidated others. On appeal, Arista argued that the Board erred in construing the term “broadcast,” and that this error caused the Board to improperly reject Arista’s obviousness challenge to five claims. Cisco’s cross-appeal concerned the Board’s refusal to apply the doctrine of assignor estoppel. The Federal Circuit reversed as to Arista’s appeal, finding that the Board applied incorrect claim construction, and affirmed Cisco’s cross-appeal. While the issue of assignor estoppel was reviewable, section 311(a), by allowing “a person who is not the owner of a patent” to file an IPR, unambiguously dictates that assignor estoppel has no place in IPR proceedings. View "Arista Networks, Inc. v. Cisco Systems, Inc." on Justia Law

The patents at issue are directed to a broadcast technique in which a broadcast channel overlays a point-to-point communications network. The communications network consists of a graph of point-to-point connections between host computers or “nodes,” through which the broadcast channel is implemented. Blizzard filed six inter partes review (IPR) petitions regarding the three patents based principally on two different prior art references: one set of IPRs challenged claims based on the Shoubridge article 2 alone or combined with a prior art book DirectPlay3 and another set of IPRs challenged claims based on the Lin article 4 alone or combined with DirectPlay. The Patent Trial and Appeal Board held that multiple claims were unpatentable but upheld others and held that the Lin article is not a printed publication under 35 U.S.C. 102(a). The Federal Circuit affirmed, rejecting arguments that the Board erred by construing the term “participant” according to its plain meaning; that the terms “game environment” and “information delivery service,” appearing in two patents should have been given patentable weight; and that the Board failed to identify a broadcast channel in Shoubridge in its anticipation and obviousness analyses. The Board’s finding that Lin was not publicly accessible before the critical date was supported by substantial evidence. View "Acceleration Bay, LLC v. Activision Blizzard Inc." on Justia Law

SMRI filed suit alleging that defendants, through their participation in the selling of Rushmore's unlicensed motorcycle rally-related products, had violated several provisions of the Lanham Act and related South Dakota statutes. The Eighth Circuit held that the district court did not err in declining to apply licensee estoppel against defendants; the trial record did not support a finding that SMRI owned the rally or its intellectual property, that SMRI and the Chamber before it have been the substantially exclusive users of the word "Sturgis" in relation to either the rally or rally-related goods and services, or that relevant consumers associate the word "Sturgis" with a single source of goods and services in any context; and thus the court reversed the jury's finding that defendants diluted the "Sturgis" mark and vacated the jury's finding that defendants engaged in cybersquatting.The court also held that defendants should have been granted judgment as a matter of law on the infringement claims relating to SMRI's unregistered marks, "Sturgis Motorcycle Rally" and "Sturgis Rally & Races," because the jury was not presented with sufficient evidence to find that the marks had acquired secondary meaning. Finally, the evidence at trial supported the jury's finding that SMRI's mark "Sturgis Bike Week" was valid; there was sufficient evidence to show that SMRI's "Monahan Composite Mark" was widely used in connection with the rally and that defendants' infringement of the mark was willful and intentional; the differences between the shot glass's design and the Monahan mark were so obvious that the jury did not have any basis in the record for its finding of a counterfeit; SMRI's claims for deceptive practices, false advertising and unfair competition were not time-barred; the district court did not err in granting judgment as a matter of law to JRE; the court vacated the district court's order granting defendants the defenses of laches and acquiescence; and the court reversed and remanded the permanent injunction. View "Sturgis Motorcycle Rally, Inc. v. Rushmore Photo & Gifts, Inc." on Justia Law

The 753 trademark, issued to Converse in 2013, describes the trade-dress configuration of three design elements on the midsole of Converse’s All Star shoes. Converse filed a complaint with the International Trade Commission (ITC), alleging violations of 19 U.S.C. 337 by various companies in the importation into the U.S., the sale for importation, and the sale within the U.S. after importation of shoes that infringe its trademark. The ITC found the registered mark invalid and that Converse could not establish the existence of common-law trademark rights, but nonetheless stated that various accused products would have infringed Converse’s mark if valid. The Federal Circuit vacated. The ITC erred in failing to distinguish between alleged infringers who began infringing before Converse obtained its trademark registration and those who began afterward. With respect to the pre-registration period, Converse, as the party asserting trade-dress protection, must establish that its mark had acquired secondary meaning before the first infringing use by each alleged infringer. In addition, the ITC applied the wrong legal standard in its determination of secondary meaning. On remand, the ITC should reassess the accused products to determine whether they are substantially similar to the mark in the infringement analysis. View "Converse, Inc. v. International Trade Commission" on Justia Law

This appeal stemmed from RPD's purchase of a patent license from multiple debtors in bankruptcy sales of their estates. Tech Pharm alleged that RPD did not have rights under the license to Tech Pharm's patented invention. The bankruptcy court held that RPD did not have rights and the district court agreed.The Fifth Circuit affirmed the district court's judgment and held that the patent license was a rejected executory contract and could not have been transferred by the bankruptcy sales in question. In this case, because the license agreement was an executory contract deemed rejected by operation of law, RPD could not and did not acquire the license from any of the Grapevine, Western Pennsylvania, and Waco estates—and no bankruptcy court order held otherwise. Finally, the court held that the bankruptcy court did not exceed its authority in addressing RPD's rights through purchase of the OnSite machines, and did not err in reading the license agreement to require that third parties operate OnSite machines in the same locations where they were placed at the time of sale. View "RPD Holdings, LLC v. Tech Pharmacy Services" on Justia Law

Plaintiffs, three publishing houses, alleged that members of the Board of Regents at GSU infringed their copyrights by maintaining a policy which allows GSU professors to make digital copies of excerpts of plaintiffs' books available to students without paying plaintiffs. At issue on appeal was whether the district court misinterpreted the Eleventh Circuit's mandate in an earlier appeal and misapplied the defense of fair use.The court held that the district court erred when it made its new findings of fair use, but the district court did not abuse its discretion when it declined to reopen the record. Accordingly, the court affirmed the district court's order denying the publishers' request to reopen the record, but vacated the judgment entered on remand. Finally, the court vacated the district court's award of attorney's fees and costs and the underlying determination that the University was the prevailing party. View "Cambridge University Press v. Albert" on Justia Law