Justia Intellectual Property Opinion Summaries

Plaintiffs Marco Destin, Inc., 1000 Highway 98 East Corp., E&T, Inc., and Panama Surf & Sport, Inc. (collectively, “Marco Destin”) filed a lawsuit against agents of L&L Wings, Inc. (“L&L”), alleging that a 2011 stipulated judgment in a trademark action was obtained through fraud. Marco Destin claimed that L&L had fraudulently procured a trademark registration from the USPTO, which was used to secure the judgment. They sought to vacate the 2011 judgment under Federal Rule of Civil Procedure 60(d)(3) and requested sanctions and damages.The United States District Court for the Southern District of New York dismissed the action for failure to state a claim. The court found that Marco Destin had a reasonable opportunity to uncover the alleged fraud during the initial litigation. Specifically, the court noted that the License Agreement between the parties indicated that other entities might have paramount rights to the "Wings" trademark, suggesting that Marco Destin could have discovered the fraud with due diligence.The United States Court of Appeals for the Second Circuit reviewed the district court’s dismissal for abuse of discretion. The appellate court confirmed that the district court acted within its discretion in declining to vacate the 2011 stipulated judgment. The court emphasized that Marco Destin had a reasonable opportunity to uncover the alleged fraud during the initial litigation and that equitable relief under Rule 60(d)(3) requires a showing of due diligence. The appellate court found no abuse of discretion in the district court’s conclusion that Marco Destin could have discovered the fraud through proper diligence.The Second Circuit affirmed the judgment of the district court, upholding the dismissal of Marco Destin’s claims. View "Marco Destin, Inc. v. Levy" on Justia Law

The case involves Mobile Acuity Ltd. ("Mobile Acuity") and several Blippar entities ("Blippar"). Mobile Acuity owns U.S. Patent Nos. 10,445,618 and 10,776,658, which disclose methods and devices for storing information that can be accessed using a captured image. Mobile Acuity alleged that Blippar infringed these patents by using similar technology. The patents describe a process where a user captures an image, uploads it to a server, and associates information with the image. Another user can later access this information by capturing a similar image.The United States District Court for the Central District of California dismissed Mobile Acuity's patent infringement action, ruling that the asserted patents claimed ineligible subject matter under 35 U.S.C. § 101. The court found that the patents were directed to the abstract idea of leaving information at a location or object for future use or reference and did not contain an inventive concept that would transform the abstract idea into a patent-eligible application. The court also denied Mobile Acuity's request to amend its complaint, concluding that any amendment would be futile.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court's decision. The appellate court agreed that the claims were directed to an abstract idea and lacked an inventive concept. The court noted that the claims involved generalized steps of collecting, analyzing, and presenting information using conventional computer components, which are not patent-eligible. The court also upheld the district court's denial of Mobile Acuity's motion for leave to amend, finding that the proposed amendments would not cure the defects in the complaint. Thus, the dismissal of the patent infringement action was affirmed. View "MOBILE ACUITY LTD. v. BLIPPAR LTD. " on Justia Law

The case involves a dispute over a trademark application for "COLOGNE & COGNAC ENTERTAINMENT" by a hip-hop record label. The appellants, Bureau National Interprofessionnel du Cognac and Institut National des Appellations d’Origine, are responsible for controlling and protecting the certification mark "COGNAC" for brandy from the Cognac region of France. They opposed the trademark application, arguing that it would likely cause confusion and dilute their certification mark.The United States Patent and Trademark Office's Trademark Trial and Appeal Board dismissed the opposition. The Board found that the "COLOGNE & COGNAC ENTERTAINMENT" mark, when used for hip-hop music and production services, was not likely to cause confusion or dilute the "COGNAC" certification mark. The Board concluded that the marks were dissimilar in connotation and commercial impression, and that the relevant goods, services, trade channels, and purchasers did not overlap. The Board also found that the appellants had not proven the fame of the "COGNAC" mark for purposes of dilution.The United States Court of Appeals for the Federal Circuit vacated and remanded the Board's decision. The court found that the Board applied an incorrect legal standard for determining the fame of the "COGNAC" mark and improperly discounted relevant evidence. The court also found that the Board erred in its analysis of the similarity of the marks and the relatedness of the goods, services, and trade channels. Additionally, the court concluded that the appellants had sufficiently pleaded their dilution claim. The case was remanded for reconsideration of the likelihood of confusion and dilution issues. View "BUREAU NATIONAL INTERPROFESSIONNEL DU COGNAC v. COLOGNE & COGNAC ENTERTAINMENT" on Justia Law

A computer science professor and a tech inventor challenged the Digital Millennium Copyright Act (DMCA), arguing that its provisions against circumventing technological protections on copyrighted works and distributing circumvention tools violate the First Amendment. They claimed these provisions unduly stifle fair use of copyrighted works, which they argued is protected speech. The plaintiffs sought to invalidate these provisions as facially overbroad and a prior restraint on speech.The United States District Court for the District of Columbia dismissed the plaintiffs' facial First Amendment challenges and their Administrative Procedure Act claims but allowed their as-applied First Amendment claims to proceed. The court found that the plaintiffs failed to show that the DMCA's impact on third-party free speech interests was different from its impact on their own. The court also held that the triennial rulemaking process for exemptions did not constitute content-based censorship. The plaintiffs' as-applied claims were later dismissed after the Librarian of Congress granted an exemption for the professor's security research, and the court found that the tech inventor's proposed device would likely lead to widespread piracy.The United States Court of Appeals for the District of Columbia Circuit affirmed the district court's dismissal of the facial challenges. The court held that the DMCA's anticircumvention and antitrafficking provisions are not facially overbroad because they regulate conduct, not speech, and their legitimate applications, such as preventing digital piracy, far outweigh any potential unconstitutional applications. The court also rejected the argument that the triennial rulemaking process constitutes a prior restraint on speech, noting that the DMCA does not target expression and that alternative avenues for lawful access to copyrighted works remain available. View "Matthew Green v. DOJ" on Justia Law

Voice Tech Corporation owned U.S. Patent No. 10,491,679, which relates to using voice commands on a mobile device to remotely access and control a computer. Unified Patents, LLC petitioned for inter partes review (IPR) of claims 1–8 of the patent, arguing they were unpatentable under 35 U.S.C. § 103 for obviousness. The Patent Trial and Appeal Board (Board) found all challenged claims unpatentable based on prior art references Wong and Beauregard.The Board's decision was appealed by Voice Tech. The Board had previously determined that the combination of Wong and Beauregard disclosed all the limitations of the challenged claims, including the "audio command interface" and "mobile device interface." Voice Tech argued that the Board misinterpreted these terms and that the prior art did not teach the claimed limitations. The Board, however, found that Wong’s speech recognition engine and Beauregard’s command interpreter taught the necessary elements.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that Voice Tech did not forfeit its claim construction arguments by not raising them in its request for rehearing. However, the court found that the Board's constructions and findings were supported by substantial evidence. The court agreed with the Board that the prior art disclosed the "receiving," "decodes," and "deciding/selecting" limitations of the claims. The court also rejected Voice Tech's argument that the Board's decision was based on hindsight bias, finding that the Board had properly considered the motivation to combine the prior art references.The Federal Circuit affirmed the Board's decision, holding that all challenged claims of the '679 patent were unpatentable as obvious over the prior art. View "VOICE TECH CORP. v. UNIFIED PATENTS, LLC " on Justia Law

Compulife Software, Inc. created software to generate life insurance quotes using a proprietary database of insurance rates. The defendants, Moses Newman, Aaron Levy, Binyomin Rutstein, and David Rutstein, were accused of copying Compulife’s software code and misappropriating its trade secret by scraping its database to use on their own websites. Compulife alleged that this led to a decline in its sales and revenue.The United States District Court for the Southern District of Florida initially ruled against Compulife on the copyright infringement claim but in favor of Compulife on the trade secret misappropriation claim. The court found that the defendants had not infringed on Compulife’s copyright because the copied elements were not protectable. However, it concluded that the defendants had misappropriated Compulife’s trade secret by acquiring the database through improper means, specifically scraping. The court awarded Compulife compensatory and punitive damages and held the defendants jointly and severally liable.The United States Court of Appeals for the Eleventh Circuit reviewed the case. It found that the district court erred by not considering the arrangement of Compulife’s code as a potentially protectable element under copyright law. The appellate court reversed the district court’s ruling on the copyright claim and remanded for further fact-finding on whether the arrangement of the code was protectable. The appellate court affirmed the district court’s ruling on the trade secret misappropriation claim, agreeing that the defendants had used improper means to acquire the trade secret. It also upheld the joint and several liability for the defendants, noting that this is standard for trade secret claims under Florida law. The case was affirmed in part, reversed in part, and remanded for further proceedings. View "Compulife Software Inc. v. Moses Newman" on Justia Law

Sanho Corporation appealed a decision by the Patent Trial and Appeal Board (PTAB) that found all challenged claims of U.S. Patent No. 10,572,429 unpatentable as obvious. The PTAB's decision relied on U.S. Patent Application Publication No. 2018/0165053 (Kuo) as prior art. Sanho argued that Kuo should not be considered prior art under 35 U.S.C. § 102(b)(2)(B) because the inventor of the '429 patent had publicly disclosed the relevant subject matter before Kuo's effective filing date through the private sale of a product called HyperDrive.The PTAB concluded that the private sale of the HyperDrive did not qualify as a public disclosure under § 102(b)(2)(B), and therefore, Kuo was considered prior art. The PTAB found that Sanho failed to show that the inventor publicly disclosed the subject matter of Kuo before Kuo's effective filing date. Consequently, the PTAB determined that all challenged claims of the '429 patent were unpatentable as obvious based on combinations that included Kuo.The United States Court of Appeals for the Federal Circuit reviewed the PTAB's decision. The court held that the private sale of the HyperDrive did not constitute a public disclosure under § 102(b)(2)(B). The court reasoned that the term "publicly disclosed" in the statute requires that the invention be made available to the public, which was not the case with the private sale between the inventor and Sanho. The court affirmed the PTAB's decision, concluding that Kuo was prior art and that the challenged claims of the '429 patent were unpatentable as obvious. View "SANHO CORP. v. KAIJET TECHNOLOGY INTERNATIONAL LIMITED, INC. " on Justia Law

The case involves BioPoint, Inc., a life sciences consulting firm, which accused Catapult Staffing, LLC, and Andrew Dickhaut of misappropriating trade secrets, confidential business information, and engaging in unfair trade practices. BioPoint alleged that Catapult, with the help of Dickhaut and Leah Attis (a former BioPoint employee and Dickhaut's fiancée), used BioPoint's proprietary information to recruit candidates and secure business from BioPoint's clients, including Vedanta and Shire/Takeda.The U.S. District Court for the District of Massachusetts handled the initial proceedings. The jury found Catapult liable for misappropriating BioPoint's trade secrets concerning three candidates and two clients, and for tortious interference with BioPoint's business relationship with one candidate. The jury awarded BioPoint $312,000 in lost profits. The judge, in a subsequent bench trial, found Catapult liable for unjust enrichment and violations of the Massachusetts Consumer Protection Law (chapter 93A), awarding BioPoint $5,061,444 in damages, which included treble damages for willful and knowing conduct, as well as costs and attorneys' fees.The United States Court of Appeals for the First Circuit reviewed the case. The court largely affirmed the lower court's findings but reduced the judge's award by $157,068, as it found that BioPoint could not recover both lost profits and unjust enrichment for the same placement. The court also reversed the district court's imposition of joint-and-several liability on Andrew Dickhaut, ruling that he could not be held liable for profits he did not receive. The case was remanded for further proceedings to determine Dickhaut's individual liability. View "BioPoint, Inc. v. Dickhaut" on Justia Law

D'Pergo Custom Guitars, Inc. sued Sweetwater Sound, Inc. for using a photo of D'Pergo's guitar necks on Sweetwater's website. D'Pergo claimed copyright infringement under the Copyright Act, trademark infringement under the Lanham Act, and a violation of the New Hampshire Consumer Protection Act (CPA). The district court granted summary judgment to Sweetwater on the trademark claim and to D'Pergo on the copyright claim. A bench trial found in favor of Sweetwater on the CPA claim, and a jury awarded D'Pergo approximately $75,000 in compensatory damages for the copyright claim but did not award any of Sweetwater's profits.D'Pergo appealed the district court's summary judgment on the trademark claim and the bench trial ruling on the CPA claim. D'Pergo also argued that erroneous jury instructions warranted a reversal of the jury's finding that it was not entitled to recover any of Sweetwater's profits. Sweetwater cross-appealed, challenging the copyright damages based on what it claimed was inadmissible expert testimony.The United States Court of Appeals for the First Circuit affirmed the district court's ruling in favor of Sweetwater on the CPA claim, finding that Sweetwater did not act with the intent required for a CPA violation. However, the court reversed the district court's grant of summary judgment to Sweetwater on the trademark claim, concluding that D'Pergo's evidence created a genuine issue of fact regarding the trademark's secondary meaning and likelihood of confusion.The court also remanded for a new jury trial on the issue of infringing profits for the copyright claim, finding that the district court's jury instruction on the burden of proof for infringing profits overstated D'Pergo's burden. The court affirmed the district court's refusal to give D'Pergo's proposed "commingling" instruction and upheld the actual damages awarded to D'Pergo, rejecting Sweetwater's challenge to the admissibility of the expert testimony. View "D'Pergo Custom Guitars, Inc. v. Sweetwater Sound, Inc." on Justia Law

Affordable Aerial Photography, Inc. (AAP) filed a copyright infringement lawsuit against Property Matters USA, LLC (Property Matters) and Home Junction Inc. (Home Junction) in the Southern District of Florida. AAP alleged that Property Matters used a copyrighted aerial photograph on its website without permission. The photograph, created by AAP in 2010, was registered with the Register of Copyrights in 2018. Property Matters moved to dismiss the case, arguing that the statute of limitations had expired. Before the court ruled on the motion, AAP voluntarily dismissed the case without prejudice under Rule 41(a)(1)(A)(i).The district court denied Property Matters' motion for attorney’s fees under 17 U.S.C. § 505, concluding that Property Matters was not the prevailing party because the voluntary dismissal did not materially alter the legal relationship between the parties. The court applied the discovery rule, determining that AAP discovered the alleged infringement in February 2022, making the claim timely.The United States Court of Appeals for the Eleventh Circuit reviewed the case and affirmed the district court’s decision. The appellate court held that a defendant is not the prevailing party under § 505 when a plaintiff’s action is voluntarily dismissed without prejudice under Rule 41(a)(1)(A)(i). The court emphasized that prevailing-party status requires a judicial rejection of the plaintiff’s claim, which did not occur in this case. Therefore, Property Matters was not entitled to attorney’s fees. View "Affordable Aerial Photography, Inc. v. Property Matters USA, LLC" on Justia Law