Justia Intellectual Property Opinion Summaries

Brownstein and Lindsay worked at LSDI, a direct mailing list company. In 1993 Lindsay began developing rules for categorizing names by ethnicity. Lindsay enlisted Brownstein to create computer programs that did everything from rewriting names into proper data format to turning the rules into computer code. The combined system of Lindsay’s rules and Brownstein’s computer code was called the LCID. Lindsay received a copyright registration for the rules in 1996, entitled “Ethnic Determinant System — Knowledge and Rule/Exception Basis,” including a copy of Brownstein’s programs as a “deposit copy” for the registration, 17 U.S.C. 407(a) and referencing associated “computer process” and “codes.” Lindsay listed herself as the only author. She gave Brownstein a copy of the registrations. He claims that he never reviewed them. Subsequently, LSDI demanded that Lindsay turnover the copyright registration. Lindsay and Brownstein left LSDI in 1997. Lindsay handled all business affairs and, over the next several years, executed several agreements to form new business entities to promote and transfer ownership of the LCID. There were several lawsuits with LSDI. In 2009, Brownstein left on bad terms, filed an oppressed shareholder lawsuit, and sought his own copyright registrations. He then sought a declaratory judgment of joint authorship of LCID under the Copyright Act. The district court found the claim time-barred and insufficient on the merits. The Third Circuit remanded, holding that an authorship claim accrues when a plaintiff’s authorship has been “expressly repudiated” and that courts have no authority to cancel copyright registrations. View "Brownstein v. Lindsay" on Justia Law

Swatch filed suit against Bloomberg for copyright infringement after Bloomberg obtained a copy of a recording of a conference call convened by Swatch to discuss the company's recently released earnings report with invited investment analysts. Bloomberg used the sound recording without authorization and disseminated it to paying subscribers. The district court granted summary judgment in favor of Bloomberg based on Bloomberg's affirmative defense of fair use pursuant to the Copyright Act, 17 U.S.C. 107. After balancing the fair use factors, the court concluded that Bloomberg's use was fair use. The court granted Swatch's motion to dismiss Bloomberg's cross-appeal where Bloomberg lacked appellate standing and the court lacked appellate jurisdiction. Accordingly, the court affirmed the judgment of the district court and dismissed the cross-appeal. View "Swatch Group v. Bloomberg" on Justia Law

Plaintiff, as representative of the estate of his father, filed suit against several entities with whom his father, Ronald Louis Smith, Sr., recorded music in the late 1970s. The estate alleged infringement of Smith's copyright in a musical composition entitled "Spank," along with a claim for breach of contract and a claim seeking a declaration of the validity of copyright transfer terminations the estate filed under 17 U.S.C. 203. Where a publisher has registered a claim of copyright in a work not made for hire, the court concluded that the beneficial owner has statutory standing to sue for infringement. The court held that the estate has adequately alleged facts to support its statutory standing to sue for infringement of the "Spank" copyright. Because the district court concluded that amendment of the complaint would be futile because the estate lacked statutory standing, the district court abused its discretion in denying leave to amend the complaint. Accordingly, the court reversed the district court's denial of the estate's motion to amend the complaint. View "Smith, Jr. v. Casey, et al." on Justia Law

Proveris owns the 400 patent, for a mechanism to evaluate aerosol spray plumes. The apparatus evaluates delivery of drugs by inhalers or nasal sprays, by triggering a spray and collecting data on the plume with an illumination device and an imaging device. Innova made and sold the Optical Spray Analyzer (OSA). Proveris sued, alleging that OSA infringed the 400 patent. Innova conceded infringement of certain claims (including claim 3), but disputed infringement of others. The district court ruled in favor of Proveris on invalidity. A jury found that Innova did not infringe the disputed claims and that no damages had been proven. Based on the conceded infringement, the district court enjoined Innova from making or selling OSA. Innova modified OSA and began selling the new Aerosol Drug Spray Analyzer (ADSA). Proveris filed a contempt motion. Innova argued that OSA allowed a user to identify what range of images he wanted to analyze before activating the spray, while ADSA requires the user to first activate the spray and later determine what he wants to analyze. The district court ruled that, because Innova could have raised claim construction issues in the underlying infringement action, the court would not construe claim 3; Innova could not raise new invalidity arguments in contempt proceedings. The court entered a contempt order against Innova, found that the violation had been willful, and ordered disgorgement of profits. The Federal Circuit vacated, holding that the court erred in failing to construe the disputed claim language. View "Proveris Scientific Corp. v. Innovasystems, Inc." on Justia Law

ESR’s 236 patent, as amended, claims a computer security device and method for preventing unauthorized individuals from obtaining access to a local computer network. Its specification describes an “intelligent network security device” (INSD), capable of balancing the desire for network security against the need for network accessibility. The INSD protects a local network by: monitoring the data packets flowing into and out of the network in order to detect suspicious patterns of communications; assigning weighted values to any threatening activity it detects; and blocking communications based on their assigned weight using a firewall. A third party requested reexamination of the original patent and the PTO considered prior art. The examiner rejected certain claims as obvious. The Patent Trial and Appeal Board and the Federal Circuit affirmed. View "In re: Enhanced Sec. Research LLC" on Justia Law

The central processing unit (CPU) enables a computing device to execute instructions contained in software. For software to run on CPU, it must be compiled or translated from high-level programming language, written in a human-readable syntax (source code), into machine-readable form (machine code), which is processor-specific. Particular compilers can only translate programs into machine code for particular processors. Java is programming language that allows developers to write programs that can run on different processors without being recompiled for each system by using a single compiler that translates Java programs into “bytecodes” instead of processor-specific machine code. Java bytecodes do not run directly on the CPU, but on a Java Virtual Machine (JVM) that translates them into processor-specific machine code. Programs written in Java can run on any platform and any operating system. Computing devices also vary in how they store data in memory. Machine code or “instruction sets” may be “stack-based” or “register-based.” Although most modern processors use a register-based approach, Java bytecodes are stack-based. A device using a register-based processor can run Java programs using a JVM that translates into register-based instructions, but it takes longer. Nazomi has two patents that address the issue, describing a hardware-based JVM capable of processing stack-based instructions, that also can run legacy (register-based) applications without using the JVM. Defendants are manufacturers that incorporate processors into their products. Nazomi sued, alleging patent infringement. The district court granted defendants summary judgment, construing the asserted claims to require a hardware and software combination capable of processing both register-based and stack-based instructions; without the enabling certain software, the hardware at issue cannot process stack-based instructions. Defendants’ apparatuses do not include that software. The Federal Circuit affirmed. View "Nazomi Commc'ns, Inc. v. Nokia Corp." on Justia Law

Inhale claimed copyright protection in the shape of a hookah water container that it first published in 2008 and registered with the United States Copyright Office in 2011. Inhale filed suit against Starbuzz for copyright infringement, claiming that Starbuzz sold water containers that were identical in shape to Inhale's container. The district court granted summary judgment in favor of Starbuzz after determining that the shape of the water container was not copyrightable. The court concluded that the shape of a container is not independent of the container's utilitarian function - to hold the contents within its shape - because the shape accomplishes the function. Therefore, the district court correctly concluded that the shape of Inhale's hookah water container was not copyrightable. Further, the district court did not abuse its discretion under 17 U.S.C. 505 by awarding attorneys' fees to Starbuzz. Moreover, the court awarded attorneys' fees incurred in the defense of this appeal to Starbuzz under section 505 in an amount to be determined by the district court. Accordingly, the court affirmed the district court's judgment and remanded. View "Inhale, Inc. v. Starbuzz Tobacco, Inc." on Justia Law

Swatch is the owner of three U.S. registrations for the mark SWATCH and for materials bearing that mark. Beehive produces and sells watch bands and faces under the mark SWAP. On appeal, Swatch challenged the district court's denial of its opposition to Beehive's trademark application and dismissal of its related claims for federal, state, and common law trademark infringement, trademark dilution, and unfair competition. The district court held that the Trademark Trial and Appeal Board's (TTAB) determinations were supported by substantial evidence; found facts based on evidence not presented to the TTAB under its authority under 15 U.S.C. 1071(b)(3); concluded that there was no likelihood of confusion between the two marks and likelihood that SWAP would dilute SWATCH; dismissed Swatch's infringement and unfair competition claims as a matter of law; and concluded that Beehive's mark was registrable because it was not merely descriptive. The court concluded that the district court properly reviewed Swatch's dilution-by-blurring claim entirely de novo; the district court also decided Swatch's trademark infringement and unfair competition claims, which were not before the TTAB, de novo; and, although the district court stated that it would apply an impermissible hybrid review to its likelihood of confusion and strength-of-the-mark analyses, there were more than sufficient facts recited in its opinion to support its findings. Accordingly, the court affirmed the judgment of the district court. View "Swatch AG v. Beehive Wholesale, LLC" on Justia Law

Plaintiff and Defendant were competitors in the embedded non-volatile memory market. Plaintiff filed suit against Defendant alleging both literal infringement and infringement under the doctrine of equivalents. After striking evidence regarding Plaintiff’s theory of equivalence and ruling that Plaintiff had disavowed claim scope, the district court granted summary judgment in favor of Defendant. The United States Court of Appeals for the Federal Circuit summarily affirmed. While that appeal was pending, Defendant filed a motion for an award of attorneys’ fees. The district court denied the motion, concluding that although Defendant was the prevailing party in this case, Defendant failed to meet its burden of establishing that Plaintiff brought or maintained the prosecution of its patent infringement in bad faith. The Federal Circuit vacated the denial of Defendant’s motion for attorneys’ fees, holding that the district court’s decision was premised on an incorrect legal standard. Remanded. View "Kilopass Tech., Inc. v. Sidense Corp." on Justia Law

Hokto USA, a wholly owned subsidiary of Hokuto Co., Ltd., filed suit against Concord Farms for violating its rights to marks under which it markets its Certified Organic Mushrooms, which are produced in the United States. The district court granted summary judgment in favor of Hokto USA and Hokuto Japan on all claims and entered a permanent injunction against Concord Farms. Determining that this was a classic gray-market case, the court concluded that, because Concord Farms offered no other evidence that its imported mushrooms were not "materially different" from Hokto USA's mushrooms, the district court correctly concluded that they were not genuine Hokto USA goods; the district court correctly concluded that there was no genuine dispute of material fact as to whether Concord Farms's importation of Hokuto Japan mushrooms was likely to confuse consumers; and the district court did not err in concluding that Hokuto Japan did not engage in naked licensing where, given the close working relationship, Hokuto Japan was familiar with and reasonably relied upon Hokto USA's efforts to control the quality of the mushrooms it distributed. Accordingly, the court affirmed the district court's grant of Hokto USA's and Hokuto Japan's motion for summary judgment and affirmed the permanent injunction, denying Concord Farms's motion for summary judgment. View "Hokto Kinoko Co. v. Concord Farms, Inc." on Justia Law