Justia Intellectual Property Opinion Summaries

The Ninth Circuit reversed the district court's grant of summary judgment for McKeon in a trademark infringement action alleging that McKeon's green ear plugs infringed Moldex's green earplugs. The panel held that the existence or nonexistence of alternative designs was probative of functionality or nonfunctionality, and thus evidence of alternative colors must be considered in deciding the functionality of Moldex's mark. The panel held that there was a material dispute of material facts as to whether Moldex's bright green color earplugs was functional. Therefore, the panel remanded for the district court to consider McKeon's arguments both that Moldex's green color lacked secondary meaning and that there was no likelihood of confusion, and then if necessary go to trial. View "Moldex-Metric, Inc. v. McKeon Products, Inc." on Justia Law

The Zeroclick patents relate to modifications to the graphical user interfaces of devices such as computers and mobile phones, modifications that allow the interfaces to be controlled using pre-defined pointer or touch movements instead of mouse clicks. The claimed invention contemplates updating existing user interface programs by using a two-step method recited in claims 2 and 52 of the 691 patent, or by making two configuration changes to the user interface code as recited in claim 19 of the 443 patent. In Zeroclick’s suit against Apple, the district court found the asserted claims invalid for indefiniteness. The Federal Circuit vacated. The district court failed to undertake the relevant inquiry and make related factual findings to support its conclusion that the asserted claims recited means-plus-function terms, 35 U.S.C. 112. Given that “[t]he basic concept behind both of the patents-in-suit is relatively simple,” a person of ordinary skill in the art could reasonably discern from the claim language that the words “program” and “user interface code” are used not as generic terms or black box recitations of structure or abstractions, but rather as specific references to conventional graphical user interface programs or code, existing in prior art at the time of the inventions. View "Zeroclick, LLC v. Apple Inc." on Justia Law

In 2010, the inventors filed the 989 Patent Application as part of the national stage of the Patent Cooperation Treaty, 35 U.S.C. 371. The application is directed to improved methods and apparatuses for “microwave vacuum-drying of organic materials, such as food products and medicinal plants.” It describes dehydrating organic material, such as fruits and berries, by placing the material in a container, transferring the container to a vacuum chamber, and rotating the container as it moves through the vacuum chamber while applying microwave radiation to the organic material. The Patent Board affirmed an examiner’s obviousness rejection of the claims. The Federal Circuit vacated, finding that the Board failed to consider arguments in applicants’ reply brief that were properly made in response to the examiner’s answer. The court directed the Board to consider arguments on whether the divider walls in the containers are a part of the claimed structure of the tumbling limitation under 35 U.S.C. 112 and whether a structural identity rejection can be used to find a prima facie case of obviousness for method claims. View "In Re: Durance" on Justia Law

The Ninth Circuit affirmed the district court's grant of judgment as a matter of law to Jay-Z and other defendants in an action brought by the heir to the Egyptian composer Baligh Hamdy, alleging copyright infringement in the song Khosara. Jay-Z used a sample from the arrangement in the background music to his single Big Pimpin'. The panel held that the heir to Hamdy's copyright may not sue Jay-Z for infringement based solely on the fact that Egyptian law recognizes an inalienable "moral right" of the author to object to offensive uses of a copyrighted work. The panel held: (1) that Egyptian law recognizes a transferable economic right to prepare derivative works; (2) that the moral rights the heir retained by operation of Egyptian law were not enforceable in U.S. federal court; and (3) that, even if they were, the heir has not complied with the compensation requirement of Egyptian law, which did not provide for his requested money damages, and which provided for only injunctive relief from an Egyptian court. View "Fahmy v. Jay-Z" on Justia Law

IV’s patent is entitled “Method of Baseband Frequency Hopping Utilizing Time Division Multiplexed Mapping between a Radio Transceiver and Digital Signal Processing Resources.” Frequency hopping is used in wireless systems in which a base station communicates with entities (such as mobile subscribers) on varying radio frequencies, so as to reduce interference among communications. In inter partes review, the Patent Trial and Appeal Board sustained the patentability of 16 of the patent’s claims. The Federal Circuit reversed, concluding that the Board erred in its decision with respect to claim 1, the only claim whose patentability was analyzed by the Board and remanded for a determination of patentability of claims 2–16. Claim 1 is unpatentable as obvious in view of prior art; the experts were in agreement that a person having ordinary skill in the field would have known how to implement frequency hopping. View "Ericsson, Inc. v. Intellectual Ventures I LLC" on Justia Law

The 551 patent discloses and claims lacosamide, the active ingredient in Vimpat®, a drug that treats epilepsy and other central nervous system disorders. UCB holds New Drug Applications that cover the FDA approval of Vimpat®. The 551 patent is listed in the FDA’s Approved Drug Products With Therapeutic Equivalence Evaluations (Orange Book). Generic drug manufacturers filed Abbreviated New Drug Applications (ANDAs), seeking approval for generic versions of Vimpat®. Pursuant to the governing Hatch-Waxman Act provisions, they certified in their ANDAs that the 551 patent is invalid, unenforceable, or that their proposed generic lacosamide products will not infringe the patent. UCB sued and the generic manufacturers stipulated to infringement of claims 9, 10, and 13 but maintained that these claims are invalid for obviousness-type double patenting, 35 U.S.C. 101, obviousness, and anticipation. The district court concluded that the asserted claims are not invalid. The Federal Circuit affirmed, holding that the district court applied the correct legal standards and that there was no clear error in its underlying fact findings. The district court did not err by focusing its double patenting analysis on the claims’ differences, as well as the claims as a whole. View "UCB, Inc. v. Accord Healthcare, Inc." on Justia Law

XY’s patents relate to the sorting of X- and Y-chromosome-bearing sperm cells, for selective breeding purposes. Trans Ova provides services related to embryo transfer and in-vitro fertilization for cattle. XY and Trans Ova entered into a five-year licensing agreement in 2004 under which Trans Ova was authorized to use XY’s technology, subject to automatic renewal unless Trans Ova was in material breach. In 2007, Inguran acquired XY and sent a letter purporting to terminate the Agreement because of alleged breaches. For several years, the parties negotiated but failed to resolve their disputes. Trans Ova continued to make royalty payments to XY, which were declined. XY alleges that it became aware of further breaches, including underpayment of royalties and development of improvements to XY’s technology without disclosure of such improvements to XY. XY sued for patent infringement and breach of contract. Trans Ova counterclaimed, alleging patent invalidity, breach of contract, and antitrust violations. The district court granted XY summary judgment on the antitrust counterclaims. A jury found breaches of contract by both parties; that Trans Ova failed to prove that the asserted patent claims were invalid and willfully infringed the asserted claims; and XY was entitled to patent infringement damages. The court denied all of Trans Ova’s requested relief and granted XY an ongoing royalty. The Federal Circuit affirmed except the ongoing royalty rate, which it remanded for recalculation. View "XY, LLC v. Trans Ova Genetics, L.C." on Justia Law

Specific elements from within a television show—as opposed to the title of the show itself—can receive trademark protection. The Fifth Circuit affirmed the district court's grant of summary judgment to Viacom on its trademark infringement and unfair competition claims related to the common law trademark of The Krusty Krab. The Krusty Krab is a fictional restaurant in the "SpongeBob SquarePants" animated television series, and IJR took steps to open seafood restaurants using the same name. The court held that The Krusty Krab's key role in "SpongeBob SquarePants" coupled with the consistent use of the mark on licensed products established ownership of the mark because of its immediate recognition as an identifier of the source for goods and services; Viacom's mark has acquired distinctiveness through secondary meaning as a matter of law; and Viacom met its burden by proving that IJR's use of The Krusty Krab created a likelihood of confusion as to source, affiliation, or sponsorship. View "Viacom International, Inc. v. IJR Capital Investments, LLC" on Justia Law

D Three’s patents, issued in 2014-2015, are directed to roof mount sealing assemblies. EcoFasten’s allegedly infringing product was available to the public in June 2009. D Three claimed priority from its 2009 Application’s effective filing date, February 2009. The Federal Circuit affirmed summary judgment, holding that the asserted claims could not claim priority from the application because they were broader than the invention disclosed in the application, such that they did not meet the written description requirement, 35 U.S.C. 112(a). The court divided the asserted claims into two categories–– claims that recited a washer and claims that did not––and asked whether “the parent applications disclose roof mount assemblies that (a) do not have a soft washer but also do not limit the type of attachment bracket, and (b) have a soft washer but do not limit its location.” The application’s only disclosure of a washerless assembly “requir[ed a] W[-]pronged attachment bracket 1700,” but the asserted claims disclosed broader configurations of washerless assemblies; the application's assemblies with washers only disclosed washers situated “above the flashing,” but the asserted claims covered assemblies with washers below the flashing. The court invalidated the asserted claims as anticipated. View "D Three Enterprises, LLC v. Sunmodo Corp." on Justia Law

Mallinckrodt’s 112 patent is directed to methods of distributing nitric oxide gas cylinders for pharmaceutical applications. Inhaled nitric oxide is approved by the FDA for treating neonates with hypoxic respiratory failure, a condition where oxygen levels in the blood are too low. Nitric oxide functions to dilate blood vessels in the lungs and can thereby improve blood oxygenation. Mallinckrodt exclusively supplies inhaled nitric oxide in the United States for pharmaceutical use under the brand name INOmax®. On inter partes review, the Patent and Trademark Office Patent Trial and Appeal Board found claim 9 not unpatentable as obvious under 35 U.S.C. 103 but found claims1-8 and 10-11 unpatentable as obvious. The Federal Circuit reversed as to claim 9 but otherwise affirmed. The Board did not err in applying the printed matter doctrine to claims 1–8 and 10, but its findings regarding the differences between the prior art and claim 9 and its findings on secondary considerations depended on an incorrect interpretation of that claim, and are not supported by substantial evidence. The Board’s uncontested findings regarding prior art render claim 9 obvious under the proper reading of the claim. View "Praxair Distribution Inc. v. Mallinckrodt Hospital Products IP, Ltd." on Justia Law