Justia Intellectual Property Opinion Summaries

Michael Grecco Productions, Inc. (MGP) sued Ruthie Allyn Davis and associated entities for copyright infringement, alleging that Davis used Michael Grecco’s copyrighted photos without a license. The United States District Court for the Southern District of New York dismissed MGP’s complaint, reasoning that MGP, being a sophisticated plaintiff in detecting and litigating infringements, should have discovered the alleged infringement within three years of its occurrence. The district court concluded that MGP’s claims were time-barred by the Copyright Act’s three-year limitations provision.The district court’s decision was based on the premise that sophisticated plaintiffs cannot benefit from the discovery rule, which determines when a claim accrues. The court held that MGP’s sophistication in detecting infringements meant it should have discovered the alleged infringement within three years of its occurrence. Consequently, the court dismissed the complaint as time-barred, offering MGP the opportunity to amend the complaint to allege a separately occurring act of infringement within the limitations period, which MGP declined.The United States Court of Appeals for the Second Circuit reviewed the case and disagreed with the district court’s application of the discovery rule. The appellate court held that the discovery rule, not the injury rule, determines when a copyright infringement claim accrues, regardless of the plaintiff’s sophistication. The court emphasized that there is no “sophisticated plaintiff” exception to the discovery rule or to a defendant’s burden to plead and prove a statute-of-limitations defense. The appellate court found that it was not clear from the face of the complaint that MGP’s claims were time-barred and vacated the district court’s dismissal, remanding the case for further proceedings. View "Michael Grecco Prods., Inc. v. RADesign, Inc." on Justia Law

Simply Wireless, Inc., a Virginia telecommunications company, sued T-Mobile US, Inc. and T-Mobile USA, Inc. for trademark infringement, alleging that T-Mobile had infringed on its common law trademark "SIMPLY PREPAID." Simply Wireless had used the trademark from 2002 to 2008 and resumed its use in 2012. T-Mobile began using the same trademark in 2014 and applied to register it with the United States Patent and Trademark Office. Simply Wireless filed a competing application and subsequently launched a revamped website under the trademark.The United States District Court for the Eastern District of Virginia granted summary judgment to T-Mobile, ruling that Simply Wireless had abandoned the trademark due to nonuse from 2009 to 2011. The court found that Simply Wireless had not provided sufficient evidence to rebut the presumption of abandonment, which is triggered by three consecutive years of nonuse under 15 U.S.C. § 1127. Simply Wireless appealed, arguing that genuine disputes of material fact existed regarding its intent to resume use of the trademark during the period of nonuse.The United States Court of Appeals for the Fourth Circuit reviewed the case de novo and vacated the district court's summary judgment order. The appellate court found that Simply Wireless had presented sufficient evidence, including a detailed declaration from its CEO and corroborating documents, to create a genuine dispute of material fact regarding its intent to resume use of the trademark during the period of nonuse. The court emphasized that the intent-to-resume-use inquiry is an intensely factual question and rarely amenable to summary judgment. The Fourth Circuit also rejected T-Mobile's alternative argument that the statutory abandonment test does not apply to common law trademarks, affirming that the test is applicable.The Fourth Circuit vacated the district court's summary judgment order and remanded the case for further proceedings. View "Simply Wireless, Inc v. T-Mobile US, Inc" on Justia Law

The case involves a dispute over the validity of several patents related to the drug eluxadoline, marketed as Viberzi®, which is used to treat irritable bowel syndrome with diarrhea (IBS-D). Allergan USA, Inc. and its affiliates (collectively, "Allergan") hold patents for the drug and its formulations. Sun Pharmaceutical Industries Limited and MSN Laboratories Private Ltd. (collectively, "Sun") sought to market a generic version of Viberzi, leading to litigation over the validity of Allergan's patents.The United States District Court for the District of Delaware held a three-day bench trial and found that claim 40 of U.S. Patent 7,741,356 (the '356 patent) was invalid for obviousness-type double patenting (ODP) over claims in two later-filed, later-issued patents (the '011 and '709 patents). The district court also found that the claims of four other patents (the '179, '291, '792, and '516 patents) were invalid under 35 U.S.C. § 112 for lack of written description, as they did not adequately describe formulations without a glidant.The United States Court of Appeals for the Federal Circuit reviewed the case. The court reversed the district court's determination that claim 40 of the '356 patent was invalid for ODP, holding that a first-filed, first-issued, later-expiring claim cannot be invalidated by a later-filed, later-issued, earlier-expiring reference claim with a common priority date. The court also reversed the district court's finding that the asserted claims of the '179, '291, '792, and '516 patents lacked written description, concluding that the specification reasonably conveyed to a person of ordinary skill in the art that the inventors had possession of a formulation without a glidant.The Federal Circuit's main holdings were that claim 40 of the '356 patent is not invalid for ODP and that the asserted claims of the '179, '291, '792, and '516 patents satisfy the written description requirement of 35 U.S.C. § 112. The court reversed the district court's judgment of invalidity and remanded the case for further proceedings. View "Allergan USA, Inc. v. MSN Laboratories Private LTD." on Justia Law

Bruce Molzan, a well-known chef, filed a lawsuit against Bellagreen Holdings, LLC, and other associated entities and individuals, alleging trademark infringement and other claims under the Lanham Act and Texas law. Molzan claimed that he had been using the "RUGGLES" trademarks for over forty years and that the defendants misused these trademarks after a forced sale of his restaurants. He alleged that the defendants continued to use the "RUGGLES GREEN" trademark and domain name without authorization, causing consumer confusion.The United States District Court for the Southern District of Texas dismissed all of Molzan's claims under Federal Rule of Civil Procedure 12(b)(6) for failure to state a claim. The court found that Molzan's allegations were conclusory and did not establish a connection between the defendants and the third-party websites causing the confusion. The court also determined that the Settlement Agreement between the parties addressed the alleged infringements and provided a remedy for such transgressions.The United States Court of Appeals for the Fifth Circuit reviewed the case and found that Molzan's complaint contained well-pleaded factual allegations that made his claims facially plausible. The court noted that the allegations established a likelihood of confusion due to the defendants' continued use of the "RUGGLES" trademarks. The court also found that the district court erred in assuming the veracity of the defendants' assertions over Molzan's well-pleaded allegations. The Fifth Circuit reversed the district court's dismissal of Molzan's federal and state trademark infringement, false advertising, unfair competition, and state trademark dilution claims. The court also reversed the dismissal of Molzan's breach of contract and unjust enrichment claims and remanded the case for further proceedings. Additionally, the court vacated the district court's dismissal of the Web Defendants and the denial of Molzan's motion for leave to amend his complaint. View "Molzan v. Bellagreen Holdings" on Justia Law

Celanese International Corporation, Celanese (Malta) Company 2 Limited, and Celanese Sales U.S. Ltd. (collectively, “Celanese”) filed a petition with the United States International Trade Commission (the “Commission”), alleging that Anhui Jinhe Industrial Co., Ltd., Jinhe USA LLC (collectively, “Jinhe”), and other entities violated 19 U.S.C. § 337 by importing Ace-K (an artificial sweetener) made using a process that infringed Celanese’s patents. The patents in question had an effective filing date of September 21, 2016. It was undisputed that Celanese had sold Ace-K made using the patented process in the United States before the critical date of September 21, 2015.The presiding Administrative Law Judge (ALJ) granted Jinhe’s motion for a summary determination of no violation of 19 U.S.C. § 337, concluding that Celanese’s prior sales triggered the on-sale bar under 35 U.S.C. § 102(a)(1). The ALJ found that the America Invents Act (AIA) did not overturn settled pre-AIA precedent, which held that sales of products made using a secret process could trigger the on-sale bar, precluding the patentability of that process. The Commission denied Celanese’s petition for review, making the ALJ’s decision the final decision of the Commission.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the Commission’s decision. The court held that the AIA did not alter the pre-AIA rule that a patentee’s sale of an unpatented product made according to a secret method triggers the on-sale bar to patentability. The court concluded that Celanese’s pre-2015 sales of Ace-K made using its secret process triggered the on-sale bar, rendering the later-sought patent claims on that process invalid. View "CELANESE INTERNATIONAL CORPORATION v. ITC " on Justia Law

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