Justia Intellectual Property Opinion Summaries

Endo holds the approved New Drug Application for Aveed®, a testosterone undecanoate intramuscular injection. Bayer owns the 640 and 395 patents listed in the Orange Book for Aveed®. Custopharm’s predecessor submitted an Abbreviated New Drug Application (ANDA) to the FDA for approval to produce and market a generic version of Aveed® and made a Paragraph IV certification and gave notice of the certification to Endo and Bayer in October 2014. Endo and Bayer brought an action alleging infringement of the 640 and 395 patents. Custopharm stipulated to infringement; Endo and Bayer limited their asserted claims to claim 2 of the 640 patent and claim 18 of the 395 patent. After a bench trial on invalidity, the district court concluded that Custopharm had not proven that the claims were invalid under 35 U.S.C. 103. The Federal Circuit affirmed. Custopharm failed to meet its burden of showing that a skilled artisan would combine a lowered dose with the injection schedule in the manner claimed. View "Endo Pharmaceuticals Solutions, Inc. v. Custopharm Inc." on Justia Law

Raytheon produces infrared imaging equipment, including infrared cameras, which enable people to see in the dark and through obstructions such as smoke. Indigo’s founders included three former Raytheon employees. By 2000, Indigo was manufacturing and selling infrared cameras. In 2007, Raytheon sued, alleging patent infringement and trade secret misappropriation under California and Texas law. The district court granted Indigo summary judgment, finding Raytheon’s trade secrets claims time-barred. The parties settled Raytheon’s patent claims. The Federal Circuit reversed, reasoning that there were factual questions regarding when Raytheon should have become aware of its misappropriation cause of action and vacated the denial of Indigo’s motion for attorney fees under the under the Texas Theft Liability Act (TTLA). On remand, a jury ruled in Indigo’s favor on all 31 alleged trade secrets. Raytheon unsuccessfully moved for judgment as a matter of law, contending that it had conclusively established misappropriation of two trade secrets. Indigo moved for attorney fees under the TTLA arguing Raytheon had withdrawn its TTLA claim to avoid an adverse ruling that California law, rather than Texas law, governed Raytheon’s misappropriation claims. Denying Indigo’s motion, the district court observed that Raytheon’s continued pursuit of its misappropriation claims under California law established that Raytheon’s withdrawal of its TTLA claim was not motivated by a desire to avoid an unfavorable ruling. The Federal Circuit affirmed both the judgment of no liability in favor of Indigo and the denial of attorney fees. View "Raytheon Co. v. Indigo Systems Corp." on Justia Law

Plaintiff, a videographer, and his video production company, filed suit against North Carolina, alleging that plaintiff's copyrights were violated when North Carolina published video footage and a still photograph that he took of the 18th century wreck of a pirate ship that sank off the North Carolina coast. Plaintiff and his company also sought to declare unconstitutional a 2015 state law, N.C. Gen. Stat. 121-25(b), that provided that photographs and video recordings of shipwrecks in the custody of North Carolina are public records.The Fourth Circuit reversed and remanded with instructions to dismiss with prejudice the claims against the state officials in their individual capacities and to dismiss without prejudice the remaining claims. The court held that North Carolina did not waive its sovereign immunity when it signed the 2013 Settlement Agreement; the Copyright Remedy Clarification Act did not validly abrogate Eleventh Amendment immunity; and the Ex parte Young exception to Eleventh Amendment immunity did not apply in this case. View "Allen v. Cooper" on Justia Law

Polara entered the accessible pedestrian signal systems (APS market) with an eight-wire system, the Navigator. Because many intersections only have two wires, installation of eight-wire systems could be difficult and labor-intensive. In 2000-2001, Polara engineers began designing a two-wire version of the Navigator, which led to the 476 patent, relating to a two-wire control system for push-button crosswalk stations for a traffic-light-controlled intersection with visual, audible, and tactile accessible signals. The patent discloses using “existing underground wire pairs to transmit power and data signals in order to generate the accessible signal functions for both sighted and visually impaired pedestrians.” Polara filed the application in August 2004. In September 2003, Polara began selling the Navigator-2, a two-wire APS system. In Polara’s infringement suit, the Federal Circuit rejected claims of invalidity and no willful infringement, based on prior public use and prior art, 35 U.S.C. 282. The court vacated an enhanced damages award and remanded for a more complete explanation, including a discussion of the public use defense, for the court’s exercise of its discretion, 35 U.S.C. 284. View "Polara Engineering Inc. v. Campbell Co." on Justia Law

The Ninth Circuit affirmed in part and reversed in part dismissal of claims for resale royalties under the California Resale Royalties Act. The Act grants artists an unwaivable right to 5% of the proceeds on any resale of their artwork under specified circumstances. The panel held that plaintiffs' claims under the Act were covered by the 1976 Copyright Act and were expressly preempted. Therefore, the panel dismissed those claims. The panel held, however, that the 1909 Copyright Act had no express preemption provisions. Therefore, plaintiffs' claims under the Act were covered only by the 1909 Act and could not be expressly preempted. Furthermore, these claims were not preempted by conflict preemption. The panel reversed dismissal of those claims and remanded for further proceedings. View "Close v. Sotheby's, Inc." on Justia Law

The parties manufacture power supply controller chips--integrated circuits used in power supplies, such as chargers that transform AC electricity from an outlet into DC electricity, to power electronic devices. A switching regulator directs the transistor in the circuit when to turn on and off, to provide the desired amount of power. Power’s patents cover switching regulators. Prior-art regulators were inefficient during low power periods, creating loud noise and delivering power in an intermittent fashion. Power’s 079 patent addressed this problem by reducing the frequency of on/off cycles rather than by skipping cycles altogether, using feedback signals. Power’s 908 patent covers a power supply controller--an integrated circuit that can perform a variety of power-regulation functions. A jury found Fairchild literally infringed claims of the 079 patent and infringed two claims of the 908 patent under the doctrine of equivalents. Another jury awarded damages of roughly $140 million, finding that the entire market value rule applied in calculating damages for infringement of the 079 patent. The Federal Circuit affirmed judgments of infringement but vacated the award, concluding that the entire market value rule cannot be used to calculate damages. Power did not show that the patented feature was the sole driver of consumer demand, i.e., that it alone motivated consumers to buy the accused products. View "Power Integrations, Inc. v. Fairchild Semiconductor International, Inc." on Justia Law

Adidas sought inter partes review of Nike's 598 and 749 patents, arguing (ground 1) that each challenged claim would have been obvious based on the Reed and Nishida references and (ground 2) that each claim would have been obvious based on the Castello, Fujiwara, and Nishida references. The Patent Trial and Appeal Board instituted inter partes review and held that Adidas had not met its burden of demonstrating any of the claims would have been obvious based on ground 1 without addressing the merits of ground 2 or suggesting that its conclusions as to ground 1 would be dispositive as to ground 2. After the Supreme Court issued its 2018 "SAS" decision, Adidas sought remand, arguing that SAS requires that the Board institute on all grounds raised in the Petition. The Patent Office recently issued public guidance indicating that, in light of SAS, if a trial is instituted, the Board will institute review on all challenges raised in the petitions. The Federal Circuit ordered a remand, quoting the Court: “the petitioner’s contentions, not the Director’s discretion, define the scope of the litigation all the way from institution through to conclusion.” View "Adidas AG v. Nike, Inc." on Justia Law

The Ninth Circuit affirmed the district court's judgment in favor of Pinkette, which sells LUSH-branded women's fashions, in a trademark infringement action brought by CWL, which sells LUSH-branded cosmetics and related goods. The panel distinguished between Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), and SCA Hygiene Products v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017), holding that the principle at work in these cases—a concern over laches overriding a statute of limitations—did not apply here, where the Lanham Act has no statute of limitations and expressly makes laches a defense to cancellation. In this case, the district court applied the correct standard when it applied the factors set forth in E-Sys., Inc. v. Monitek, Inc., 720 F.2d 604 (9th Cir. 1983), to CWL's claim for injunctive relief. After analyzing the E-Systems factors, the panel held that they validate the strong presumption in favor of laches created by CWL's delaying past the expiration of the most analogous state statute of limitations. Therefore, the district court did not abuse its discretion in applying laches to bar CWL's cancellation and infringement claims. The panel held that CWL's remaining arguments were without merit. View "Pinkette Cothing, Inc. v. Cosmetic Warriors Limited" on Justia Law

Triptans are selective serotonin receptor agonists, developed in the 1980s. When Zolmitriptan became available in the U.S. in oral tablet form in 1999 under the name Zomig® it was among several triptans on the market or under development. AstraZeneca owns the 237 and 767 patents, which relate to formulations of zolmitriptan for intranasal administration, and the New Drug Application for Zomig® (zolmitriptan) Nasal Spray, approved by the FDA for treatment of migraines. The patents are listed in connection with Zomig® Nasal Spray in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book). In 2012, AstraZeneca and Impax entered into an agreement, granting Impax an exclusive license to AstraZeneca’s patents covering the Zomig® products, for the payment of $130 million and additional payments at varying royalty rates. In 2014, Lannett notified AstraZeneca that it had filed an Abbreviated New Drug Application, seeking approval for a generic version of Zomig® Nasal Spray, with a Paragraph IV certification (21 U.S.C. 355(j)(2)(A)(vii)(IV)), alleging noninfringement or invalidity of the 237 and 767 patents. In the subsequent infringement suit, 35 U.S.C. 271(e)(2)(A), the district court issued its claim construction opinion, the parties stipulated to infringement, and the court held that Lannett failed to prove by clear and convincing evidence that the asserted claims were invalid or would have been obvious over prior art. The Federal Circuit affirmed, upholding the entry of an injunction. View "Impax Laboratories Inc. v. Lannett Holdings Inc." on Justia Law

Experian compiled the Consumer View Database, which contains more than 250 million records, each pertaining to an individual consumer, which includes compiled pairings of names and addresses. The Ninth Circuit held that the name and address pairings were copyrightable as compilations but were entitled only to limited protection under the copyright laws. The panel held that Experian established that its lists were copyrightable but failed to establish that its copyright had been infringed because it did not establish a bodily appropriation of its work. Therefore, the panel affirmed the district court's grant of summary judgment for Natimark on the copyright infringement claim. However, the panel reversed as to the state law trade secret claim, remanding for further proceedings. View "Experian Information Solutions, Inc. v. Nationwide Marketing Services, Inc." on Justia Law