Justia Intellectual Property Opinion Summaries

District court properly awarded “exceptional case” legal fees. In 2005, Dow filed an infringement action against NOVA, which argued that its product did not infringe and that Dow lacked standing because it had transferred ownership of the patents. In 2010, the district court entered judgment against NOVA for $61 million. The Federal Circuit affirmed. In a separate appeal from an award of supplemental damages, the Federal Circuit found the asserted claims invalid as indefinite under the Supreme Court’s intervening “Nautilus” standard, but did not disturb the 2010 judgment relating to preverdict infringement. NOVA became aware of evidence allegedly showing that Dow had committed fraud in obtaining the 2010 judgment but was time-barred from moving to set aside that judgment. In 2013, NOVA filed a separate action in equity for relief from the 2010 judgment, asserting misrepresentation of Dow’s ownership of the asserted patents, based on the testimony of a former Dow employee in an unrelated tax case and on the testimony of Dow’s expert, about testing on the accused product during separate Canadian litigation. The Federal Circuit affirmed dismissal. The district court awarded Dow $2.5 million under 35 U.S.C. 285, which allows courts to award “reasonable attorney fees to the prevailing party” in “exceptional cases.” The court noted the weakness of NOVA’s litigating position and the manner in which NOVA pursued the case. The Federal Circuit affirmed. View "Nova Chemicals Corp. v. Dow Chemical Co." on Justia Law

Claims in patent relating to fiber optic communication signals were unpatentable for lack of written description support. Cirrex’s 082 patent is directed to the field of fiber optic communication signals that use light energy made up of multiple different wavelengths within one fiber optic cable. Cisco requested inter partes reexamination of the patent. The Patent and Trademark Office found certain claims patentable and rejected other claims for lack of written description support. The Board affirmed. The Federal Circuit affirmed in part and reversed in part, finding that, under the correct claim construction for the equalization and discrete attenuation claims, all the claims on appeal unpatentable for lack of written description support. View "Cisco Systems, Inc. v. Cirrex Systems, LLC" on Justia Law

The Fourth Circuit affirmed the grant of summary judgment to Agadir in Grayson O's trademark and unfair competition action. Grayson O sells products designed to protect hair from heat during styling, and owns a federal trademark registration for the mark "F 450." The Fourth Circuit found that Grayson O's mark was both conceptually and commercially weak; even if "450" was a separable, dominant part of Grayson O's mark, given the many other differences between Grayson O's and Agadir's marks, the district court correctly concluded that the marks were not similar; Grayson O failed to demonstrate that Agadir had an intent to infringe; and Grayson O failed to present evidence of actual confusion. View "Grayson O Company v. Agadir International" on Justia Law

Pre-AIA section 317(b) precluded argument that Patent and Trademark Office (PTO) was prohibited from maintaining reexamination of multiple claims where court upheld only two claims in parallel litigation. King requested ex parte reexamination of all claims of Affinity’s patent. Volkswagen requested inter partes reexamination based on additional, different asserted grounds of unpatentability; Apple requested inter partes reexamination of based on still different grounds. The PTO granted and merged the requests. Volkswagen subsequently received an adverse final judgment in a parallel district court proceeding, upholding the validity of claims 28 and 35. Affinity petitioned the PTO to vacate the entire merged reexamination proceeding, arguing that the estoppel provision in pre-America Invents Act (AIA) 35 U.S.C. 317(b) extended to all parties and all claims, not just litigated claims 28 and 35. The PTO denied Affinity’s request, but severed the Volkswagen reexamination and held that no rejection could be maintained in that reexamination as to claims 28 and 35. The Examiner evaluated the Volkswagen reexamination separately and issued a Right of Appeal Notice in each proceeding, rejecting numerous claims as unpatentable. The Patent Trial and Appeal Board and Federal Circuit affirmed, rejecting Affinity’s arguments that the PTO erred in maintaining the reexaminations, given the final decision that Volkswagen failed to prove invalidity of two claims, and that, assuming the reexaminations were properly maintained, the decisions were based on misreadings of asserted prior art and misevaluation of Affinity’s objective indicia evidence of nonobviousness. View "In re: Affinity Labs of Texas, LLC" on Justia Law

Estoppel provision of section 317(b) did not prohibit the Patent and Trademark Office (PTO) from maintaining a reexamination after court's dismissal, without prejudice, of invalidity claims..Apple requested reexamination after Affinity filed suit, alleging infringement of Affinity’s patent. While the reexamination was pending, the parties settled and filed a stipulation of dismissal with the district court. Affinity’s infringement action was dismissed with prejudice and Apple’s invalidity counterclaims were dismissed without prejudice. Apple filed notice of non-participation in the reexamination. Affinity petitioned the PTO to terminate the reexamination in view of the dismissal of Apple’s district court counterclaims pursuant to pre-America Invents Act (AIA) 35 U.S.C. 317(b), which prohibited the PTO from maintaining an inter partes reexamination after the party who requested the reexamination has received a final decision against it in a civil action concluding “that the party has not sustained its burden of proving the invalidity of any patent claim in suit.” The PTO dismissed Affinity’s request because it did not view the dismissal, without prejudice, as meeting section 317(b)’s required condition. The Examiner rejected all of the patent’s claims. The Patent Trial and Appeal Board and the Federal Circuit upheld the rejection, rejecting Affinity’s claims that the PTO improperly maintained the reexamination and that the Board’s finding that all claims are unpatentable was based on improper claim construction. View "In re: Affinity Labs of Texas, LLC" on Justia Law

Sixth Circuit finds little likelihood of confusion between the trademarks “OrderLink” and “UPS OrderLink.” Progressive, located in Michigan, provides logistical services to online businesses. Under the trademark “OrderLink,” Progressive develops clients’ websites and handles deliveries. Progressive registered the OrderLink trademark in 2004, but alleges that it has used the mark for at least 19 years and spent $2.5 million dollars advertising the mark. UPS also serves small volume shippers who operate businesses on Amazon and eBay. In 2012, UPS developed a new interface to enable those customers to import their orders directly into UPS’s shipping application. UPS initially concluded that the name “orderlink” was not available, but determined that the terms “order” and “link” were commonly used together by other companies. UPS concluded that Progressive’s services differed substantially from tits application UPS and chose the name “UPS OrderLink.” Its USPTO application was rejected based on a likelihood of confusion with Progressive’s mark. Nonetheless, UPS launched UPS OrderLink as a free service, accessible only through UPS’s website. Progressive sent a cease-and-desist letter. UPS changed the name of its service to “Ship Marketplace Orders.” Progressive alleged violations of the Lanham Act, 15 U.S.C. 1051, the Michigan Consumer Protection Act, and the common law. The district court granted UPS summary judgment. The Sixth Circuit affirmed. The balance of eight factors, particularly the strength of the mark and the similarity of the marks, indicate little likelihood of customer confusion. View "Progressive Distribution Services, Inc. v. United Parcel Service, Inc." on Justia Law

The Leahy-Smith America Invents Act did not change the statutory meaning of “on sale” under 35 U.S.C. 102, in a case involving patents that were ready for patenting and subject to an invalidating contract for sale prior to the critical date of January 30, 2002. Teva had invoked the provision as a defense in a suit charging infringement based on Teva’s filing of an Abbreviated New Drug Application (ANDA). The district court upheld, as valid, Helsinn’s patents, directed to intravenous formulations of palonosetron for reducing chemotherapy-induced nausea and vomiting, and rejected Teva’s “on sale” defense. In reversing, the Federal Circuit noted that the invention worked for its intended purpose, that the evidence that the formulation was ready for patenting was “overwhelming,” and that there was no tenable argument that, before the critical date, Helsinn was unable to file a patent application that met the requirements of 35 U.S.C. 112. The district court clearly erred by applying too demanding a standard. The completion of Phase III studies and final FDA approval are not pre-requisites for the invention here to be ready for patenting. View "Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc." on Justia Law

The court affirmed the grant of a permanent injunction enjoining BC Cleaners from using Martinizing's trademarks, concluding that Martinizing failed to prove willful infringement by BC Cleaners. Because Martinizing failed to prove that it was entitled to monetary remedies against BC Cleaners, the individual defendants were likewise not liable for damages, an accounting for profits, and attorneys' fees. The court also concluded that the district court did not abuse its discretion in not granting injunctive relief against the individual defendants, because BC Cleaners had agreed to stop using the trademarks. Therefore, the court reversed as to these issues; affirmed the denial of a default judgment against Defendants Lundell and Carver; and remanded with directions to enter amended judgments. View "Martinizing International v. BC Cleaners" on Justia Law

The Federal Circuit affirmed the district court’s refusal to enter a permanent injunction against Everlight after finding that Everlight had infringed three of Nichia’s patents and that the patents were not invalid. The patents disclose package designs and methods of manufacturing LED devices. The court upheld the constructions of “lead” as “the portion of the device that conducts electricity,” and of “planar” as “in a substantially same plane,” and rejected claims of obviousness. Nichia failed to show that it had suffered irreparable harm to justify a permanent injunction. View "Nichia Corp. v. Everlight Americas, Inc." on Justia Law

The Federal Circuit affirmed judgment on the pleadings, finding claims in RecogniCorp’s 303 Patent, entitled “Method and Apparatus for Encoding/Decoding Image Data,” patent-ineligible. The patent teaches a method and apparatus for building a composite facial image using constituent parts. Before the invention disclosed in the 303 patent, composite facial images typically were stored in file formats such as “bitmap,” “gif,” or “jpeg,” which required significant memory; compressing the images often resulted in decreased image quality. Digital transmission of these images could be difficult. The 303 patent sought to solve this problem by encoding the image at one end through a variety of image classes that required less memory and bandwidth and, at the other end, decoding the images. The courts concluded that the claims are directed to the abstract idea of encoding and decoding image data and do not contain an inventive concept sufficient to render the patent eligible under 36 U.S.C. 101. View "RecogniCorp, LLC v. Nintendo Co., Ltd." on Justia Law