Justia Intellectual Property Opinion Summaries

From 2003-2014, Bornmann directed a research laboratory that synthesized cancer drugs at University of Texas MD Anderson Cancer Center. In 2013, Bornmann’s team apparently discovered an antibiotic with the potential to treat cancer and type-2 diabetes. Bornmann signed an invention disclosure report (IDR) describing the antibiotic and listing Bornmann among several contributors, including DePinho, President of MD Anderson, who was credited with providing laboratory space and supervision. Later MD Anderson decided not to renew Bornmann's contract and to close his lab. Bornmann filed a petition to take Rule 202 depositions of DePinho and Dennis. Rule 202 of the Texas Rules of Civil Procedure allows a court to authorize a deposition “to investigate a potential claim or suit.” Bornmann theorized that “his lab [was being] closed to benefit the personal interests of Dr. DePinho,” that an IDR without his signature would be filed, and that a provisional patent would be filed and licensed to a company owned by DePinho or his wife.Bornmann sought to depose Depinho concerning the IDR signatures and Dennis on timing and filing, in order to “investigate a potential tortious interference claim against Dr. DePinho as well as other potential causes of action.” The Texas Supreme Court vacated an order authorizing the discovery. A court may not order Rule 202 depositions to investigate unripe claims View "In re: DePinho and Dennis" on Justia Law

DTC filed suit against JPMC and others, alleging willful patent infringement relating to electronic check-processing systems. JPMC was the first bank to reach a settlement agreement with DTC in 2005. As part of the settlement, JPMC entered into a consent judgment in which it admitted the patents were valid and enforceable and that JPMC had infringed them. It also entered into a license agreement permitting JPMC unlimited use of DTC’s patented technology going forward. At issue in this appeal is the district court’s interpretation of a most favored licensee (MFL) clause in the license agreement allowing JPMC to use DTC's patented check processing technology. JPMC invoked its rights under the MFL clause based on DTC’s granting a similar unlimited license to another entity for a lesser lump sum than JPMC paid. The court agreed with the district court that after comparing these two lump-sum license agreements, the later agreement is indeed more favorable, and JPMC therefore is entitled to a refund from DTC for the difference between the amount it paid for its license and the lesser amount bargained for in the later license agreement. Accordingly, the court affirmed the judgment. View "JP Morgan Chase Bank, N.A. v. Datatreasury Corp." on Justia Law

ISC filed suit against SU and Sondra Schneider, alleging that SU's use of ISC's certification mark violated the Lanham Act, 15 U.S.C. 1051 et seq., and constituted infringement under 15 U.S.C. 1114, false designation of origin and false advertising under 15 U.S.C. 1125(a), and trademark dilution under 15 U.S.C. 1125(c), and that SU’s use of the mark constituted unfair competition under the Connecticut Unfair Trade Practices Act (CUTPA), Conn. Gen. Stat. 42–110a et seq. The district court granted summary judgment to defendants. The court held that nominative fair use is not an affirmative defense to a claim of infringement under the Lanham Act. In cases involving nominative use, in addition to considering the Polaroid factors, courts are to consider (1) whether the use of the plaintiff’s mark is necessary to describe both the plaintiff’s product or service and the defendant’s product or service, that is, whether the product or service is not readily identifiable without use of the mark; (2) whether the defendant uses only so much of the plaintiff’s mark as is necessary to identify the product or service; and whether the defendant did anything that would, in conjunction with the mark, suggest sponsorship or endorsement by the plaintiff holder, that is, whether the defendant’s conduct or language reflects the true or accurate relationship between plaintiff’s and defendant’s products or services. When considering these factors, courts must be mindful of the different types of confusion relevant to infringement claims. Because the district court failed to consider the Polaroid factors and because its consideration of the relevant nominative fair use factors was based on incorrect assumptions, the court vacated the district court’s grant of summary judgment on the infringement claims. The court vacated the grant of summary judgment as to the false designation of origin and false advertising claims, and the CUTPA claims. The court affirmed as to the dilution claims and remanded for further proceedings. View "Int'l Info. Sys. Sec. Certification Consortium, Inc. v. Security Univ., LLC" on Justia Law

Albert Brumley, author of the gospel song “I’ll Fly Away,” assigned the song’s 1932 copyright to a company. The company subsequently became the property of his son, Robert. Albert died in 1977. Albert’s widow also executed an assignment to Robert. During the term of a copyright, an author may use, assign, sell, or license the copyright, 17 U.S.C. 201(d), but songwriters and their descendants may terminate the songwriter’s assignment of a copyright to another party, Sections 203, 304(c). In 2008, four of Brumley’s six children filed notice to terminate the assignment to their brother, Robert. The copyright was then generating about $300,000 per year. The district court and Sixth Circuit affirmed their right to terminate the assignment, rejecting arguments that the song was a “work made for hire,” which is not eligible for termination, 17 U.S.C. 304(c); and that Albert’s widow relinquished any termination rights. View "Brumley v. Brumley & Sons, Inc." on Justia Law

Cordua owns and operates five restaurants branded as “Churrascos,” the first of which opened in 1988. The restaurants serve South American dishes, including grilled meats; the menu describes chargrilled “Churrasco Steak” as “our signature.”.Cordua obtained the 321 registration for the service mark CHURRASCOS (in standard character format) in 2008, for use in connection with “restaurant and bar services; catering.” In 2011, Cordua filed a trademark application, seeking protection of the stylized form of CHURRASCOS for use in connection with “Bar and restaurant services; Catering.” The trademark examiner rejected the application as merely descriptive and on the basis that “the applied-for mark is generic for applicant’s services,” barring registration under Lanham Act, 15 U.S.C. 1052(e)(1).. The examiner concluded that the term “churrascos” “refer[s] to beef or grilled meat more generally” and that the term “identifies a key characteristic or feature of the restaurant services, namely, the type of restaurant.” The Trademark Trial and Appeal Board agreed and held that Cordua’s underlying 321 Registration had no bearing on whether the stylized form of CHURRASCOS was generic. The Federal Circuit affirmed, finding that the stylized form of CHURRASCOS generic as applied to restaurant services and, therefore, trademark-ineligible View "In re: Cordua Restaurants, Inc." on Justia Law

Consumer Health Information sued Amylin Pharmaceuticals,alleging copyright infringement. 17 U.S.C. 101, concerning patient-education materials Consumer Health developed for Amylin’s use in marketing its diabetes drug Byetta. The parties’ contract, executed in 2006, unambiguously assigns the copyright to Amylin. Consumer Health alleged that the contract was induced by fraud or economic distress and sought rescission. The district court dismissed the suit as untimely. The Seventh Circuit affirmed. Consumer Health assigned the copyright to Amylin in 2006 but did not file this suit until 2013, several years too late under either a four-year limitations period that applies to claims for contract rescission under California law, or under the Copyright Act’s three-year statute of limitations, 17 U.S.C. 507(b). Consumer Health’s cause of action accrued when the contract was executed; at that point Consumer Health knew that Amylin owned the copyright, and the limitations clock on a suit to reclaim ownership started ticking. View "Consumer Health Info. Co v. Amylin Pharma., Inc." on Justia Law

Plaintiff TLOC Senior Living, LLC, owned and operated a senior living community in Middlebury, Vermont, doing business as “The Lodge at Otter Creek.” In July 2013, defendant Albert Bingham registered the name “The Lodge at Otter Creek” under his own name with the Vermont Secretary of State’s Office after plaintiff lapsed in its re-registration of the name. In December 2013, plaintiff filed a complaint alleging slander of title, trade infringement, unfair competition, and tortious interference with contract. Plaintiff claimed that despite Bingham’s actions, his registration of the name did not bestow him with any rights to actually use it as a trade name. Rather, plaintiff contended that it retained the exclusive common law rights to the continued use of “The Lodge at Otter Creek” as its trade name. Bingham filed several counterclaims. He argued in relevant part that by registering the name “The Lodge at Otter Creek” as his business name, he effectively foreclosed any right that plaintiff had to the name. The court concluded that although Bingham had been able to register “The Lodge at Otter Creek,” plaintiff’s failure to re-register the name did not allow Bingham to use it. Defendant appealed, and finding no reversible error, the Supreme Court affirmed. View "TLOC Senior Living, LLC v. Bingham" on Justia Law

Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law

Two appeals involved U.S. Patent No. 6,349,291, which named Samir Varma as the inventor and was owned by InvestPic LLC (collectively, Varma). The ’291 patent stated that many “conventional financial information sites” on the World Wide Web furnish information derived from “rudimentary statistical functions [that] are not useful to investors in forecasting the behavior of financial markets because they rely upon assumptions that the underlying probability distribution function (‘PDF’) for the financial data follows a normal or Gaussian distribution, which is generally false.” The Patent Trial and Appeal Board of the Patent and Trademark Office cancelled certain claims of the ’291 patent in two related reexamination proceedings: one initiated by International Business Machines Corp. and SAS Institute Inc.; the other by SAS alone. Varma’s appeals centered on two claim phrases: (1) a “bias parameter” that “determines a degree of randomness in sample selection in a resampling process”; and (2) “a statistical analysis request corresponding to two or more selected investments.” The Federal Circuit Court of Appeals agreed with Varma that the Board erred regarding both claim phrases. Correcting the first error, the Court reversed the cancellation of claims 1–5, 8–16, 19–21, and 24. Correcting the second error, the Court vacated the cancellation of claims 22, 23, 25, and 29–31 and remanded for further proceedings on those claims. View "In re Varma" on Justia Law

Applicants Ray and Amanda Tears Smith appealed a final decision of the Patent Trial and Appeal Board which affirmed the rejection of claims 1–18 of U.S. Patent Application No. 12/912,410 for claiming patent-ineligible subject matter under 35 U.S.C. 101. Applicants filed the ’410 patent application, titled “Blackjack Variation.” According to the application, “[t]he present invention relates to a wagering game utilizing real or virtual standard playing cards.” The examiner concluded that the claims represented “an attempt to claim a new set of rules for playing a card game,” which “qualifies as an abstract idea.” Because the claims covered only the abstract idea of rules for playing a wagering game and use conventional steps of shuffling and dealing a standard deck of cards, the Federal District Court of Appeals affirmed. View "In re: Smith" on Justia Law