Justia Intellectual Property Opinion Summaries

Plaintiff worked as an airplane mechanic, in the Navy and for several airlines. In the 1960s, he devised a tool that could reach deep inside airplane engines without disassembling external components. In 2000, a patent issued to plaintiff for the extended reach pliers, based on an application written and prosecuted by defendant. Danaher, a customer of plaintiff's business, subsequently developed its own version of the ERP and began competing against the device. Plaintiff sued for malpractice, alleging that the patent was so negligently drafted that it offered no meaningful protection against infringers. Its expert proposed alternate claim language that allegedly could have been enforced against Danaher. The district court granted defendant summary judgment, based on the element of causation. The Federal Circuit affirmed. Plaintiff did not raise a genuine dispute of material fact as to the patentability of its alternate claims. Plaintiff failed to raise a single material fact in dispute as to the nonobviousness of the proposed alternate claims. View "Minkin v. Gibbons, P.C." on Justia Law

This case involved a type of patent litigation settlement known as a "pay for delay" or "reverse payment" agreement. In this type of settlement, a patent holder paid the allegedly infringing generic drug company to delay entering the market until a specified date, thereby protecting the patent monopoly against a judgment that the patent was invalid or would not be infringed by the generic competitor. This case began when the FTC filed a complaint in district court alleging that the reverse payment settlements between the holder of a drug patent and two generic manufacturers of the drug were unfair restraints on trade that violated federal antitrust laws. The court's precedent established the rule that, absent sham litigation or fraud in obtaining the patent, a reverse payment settlement was immune from antitrust attack so long as its anticompetitive effects fell within the scope of the exclusionary potential of the patent. The court rejected the FTC's claims to the contrary and affirmed the judgment. View "FTC v. Watson Pharmaceuticals, Inc., et al." on Justia Law

In 1995, respondent filed a patent application covering 117 claims under the Patent Act of 1952, 35 U.S.C. 112. The patent examiner denied all of the claims for lack of an adequate written description. Respondent appealed to the Board of Patent Appeals and Interferences, pursuant to section 134 of the Act, which approved some claims but denied others. Pursuant to section 145 of the Act, respondent filed a civil action against the Director, but the district court declined to consider respondent's newly proffered written declaration in support of the adequacy of his description, thus limiting its review to the administrative record. On appeal, the Federal Circuit vacated the judgment. The Court held that there are no limitations on a patent applicant's ability to introduce new evidence in a section 145 proceeding beyond those already present in the Federal Rules of Evidence and the Federal Rules of Civil Procedure. If new evidence was presented on a disputed question of fact, the district court must make de novo factual findings that take account of both the new evidence and the administrative record before the Patent and Trade Office. Therefore, the Court affirmed the judgment of the Federal Circuit. View "Kappos v. Hyatt" on Justia Law

This case involved intellectual property related to the Superman character created by writer Jerome Siegel and illustrator Joe Schuster. In 2010, D.C. Comics filed a lawsuit against Marc Toberoff, owner of a joint venture with the heirs of Shuster and Siegel (Heirs), the Heirs, and three entities in which Toberoff owned a controlling interest (collectively, petitioners), claiming that Toberoff interfered with its contractual relationships with the Heirs. Toberoff had hired lawyer David Michaels to work for one of his companies. Michaels remained in Toberoff's employ for only about three months before absconding with copies of several documents from the Siegel and Shuster files. These documents formed the basis of this lawsuit. About a month after the suit was filed, Toberoff asked the U.S. Attorney to investigate Michaels and, in response, the U.S. Attorney's Office issued a grand jury subpoena for the documents at issue as well as a letter stating that if Toberoff voluntarily complied with the subpoena, the Government would "not provide the...documents...to non-governmental third parties except as may be required by law or court order." At issue was whether a party waived attorney-client privilege forever by voluntarily disclosing privileged documents to the federal government. Given that Congress has declined broadly to adopt a new privilege to protect disclosures of attorney-client privileged materials to the government, the court would not do so here. The court also rejected petitioner's assertion that even if the court rejected selective waiver as a general matter, the court should enforce a purported confidentiality agreement based upon the letter from the U.S. Attorney's Office where petitioners have provided no convincing reason that post hoc contracts regarding how information could be revealed encouraged frank conversation at the time of the advice. The court further rejected petitioners' remaining claims and denied the petition for mandamus. View "Pacific Pictures Corp., et al. v. USDC-CALA" on Justia Law

Once the FDA has approved a brand manufacturer's drug, another company could seek permission to market a generic version pursuant to legislation known as the Hatch-Waxman Amendments. See Drug Price Competition and Patent Term Restoration Act of 1984, 98 Stat. 1585. The relevant statute at issue in this case provided that a generic company "may assert a counterclaim seeking an order requiring the [brand manufacturer] to correct or delete the patent information [it] submitted... under [two statutory subsections] on the ground that the patent does not claim... an approved method of using the drug." 117 Stat. 2452, 21 U.S.C. 355(j)(5)(C)(ii)(I). At issue in this case was whether Congress had authorized a generic company to challenge a use code's accuracy by bringing a counterclaim against the brand manufacturer in a patent infringement suit. The Court held that a generic manufacturer could employ this provision to force correction of a use code that inaccurately described the brand's patent as covering a particular method of using the drug in question. Therefore, the Court reversed the judgment of the Federal Circuit. View "Caraco Pharmaceutical Laboratories, Ltd. v. Novo Nordisk A/S" on Justia Law

In 1999 Beasley filed a patent application for personalized postage stamps. In 2001 the PTO issued notice of allowance. Beasley then entered into a licensing agreement with Avery, specifying that Avery would assume responsibility for prosecution of the patent application and would pay patent prosecution expenses. Beasley appointed Renner to prosecute his application. A Renner attorney filed a supplemental information disclosure statement concerning prior art references. The PTO issued a second notice of allowance. Beasley transferred ownership USPPS. USPPS and Avery entered into an agreement. Later, the PTO vacated its notice of allowance and issued final rejections. Beasley and USPPS alleged that Avery mismanaged the application. Beasley’s suit for was dismissed for lack of standing. USPPS filed suit, alleging breach of fiduciary duty and fraud, based on Avery’s alleged representation that Beasley was the client of Renner. The district court granted summary judgment for defendants. The Fifth Circuit transferred to the Federal Circuit, finding that jurisdiction was based, in part, on 28 U.S.C. 1338 and that the alleged malpractice involves a question of patentability, even if no patent actually issued. The Federal Circuit affirmed, holding that it had jurisdiction and that the complaint was untimely. View "USPPS, Ltd. v. Avery Dennison Corp." on Justia Law

Defendant, a computer programmer employed by Goldman Sachs & Co., appealed his conviction for stealing and transferring proprietary computer source code of Goldman's high frequency trading system in violation of the National Stolen Property Act (NSPA), 18 U.S.C. 2314, and the Economic Espionage Act of 1996 (EEA), 18 U.S.C. 1832. Defendant argued, inter alia, that his conduct did not constitute an offense under either statute because: (1) the source code was not a "stolen" "good" within the meaning of the NSPA, and (2) the source code was not "related" to a product "produced for or placed in interstate or foreign commerce" within the meaning of the EEA. The court agreed and concluded that defendant's conduct did not constitute an offense under either the NSPA or the EEA, and that the indictment was therefore legally insufficient. Accordingly, the court reversed the judgment of the district court. View "United States v. Aleynikov" on Justia Law

BD applied to register with the U.S. Patent and Trademark Office a mark for "closures for medical collection tubes," asserting acquired distinctiveness based on five years of substantially exclusive, continuous use in commerce. The examining attorney refused registration under 15 U.S.C. 1052(e)(5) finding that the cap design was functional and that even if non-functional, the cap design was a non-distinctive configuration of the goods under 15 U.S.C. 1051-1052 and 1127. She found BD's declaration insufficient to show acquired distinctiveness under 15 U.S.C. 1052(f). The Trademark Trial and Appeal Board and the Federal Circuit affirmed on the basis that the cap is functional. View "In re Becton Dickinson & Co." on Justia Law

Rosetta Stone appealed from an order granting summary judgment in favor of Google for Rosetta Stone's trademark infringement, contributory and vicarious trademark infringement, and trademark dilution claims. Rosetta Stone also appealed from an order dismissing its unjust enrichment claim under Virginia Law. Rosetta Stone contended that Google's policies concerning the use of trademarks as keywords and in ad text created not only a likelihood of confusion but also actual confusion, as well as misleading Internet users in purchasing counterfeit Rosetta Stone software. The court affirmed the district court's order with respect to the vicarious infringement claim and the unjust enrichment claims. The court vacated, however, the district court's order with respect to Rosetta Stone's direct infringement claim after addressing the likelihood of confusion and the functionality doctrine; contributory infringement claim where the evidence recited by the district court was sufficient to establish a question of fact as to whether Google continued to supply its services to known infringers; and dilution claim where the district court erred by omitting the question of good faith and collapsing the fair-use defense into one question. The court remanded the case for further proceedings. View "Rosetta Stone Ltd. v. Google, Inc." on Justia Law

L.A. Printex appealed the district court's summary judgment order in favor of defendants in L.A. Printex's copyright infringement action. The parties' dispute stemmed from a floral design created by an L.A. Printex designer that later appeared on shirts bearing defendants' trademark. The court held that L.A. Printex raised a genuine dispute of material fact on access and substantial similarity. Accordingly, the court reversed the district court's grant of summary judgment, vacated the award of attorneys' fees, and remanded for further proceedings. View "L.A. Printex Industries, Inc. v. Aeropostale, Inc., et al" on Justia Law