Justia Intellectual Property Opinion Summaries

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

Plaintiff's 561 and 512 pharmaceutical patents for "Taxotere" are related to administration of the chemotherapy cancer drug docetaxel (a successor to the cancer drug paclitaxel, covered by a now-expired patent). To stabilize the perfusion and delay precipitation, the cancer drugs are mixed with additives like surfactants and ethanol. Prior art used the surfactant Cremophor, but it was known to trigger serious allergic reactions. The 561 and 512 patents relate to using surfactants other than Cremophor and decreasing the amount of ethanol to reduce alcohol intoxication and anaphylactic effects in patients. After defendants applied for FDA approval to market generic versions of Taxotere, plaintiff claimed infringement, 35 U.S.C. 271(e). The district court found certain claims invalid for obviousness and that the patents were unenforceable for inequitable conduct. The Federal Circuit affirmed, concluding that withheld references to prior art were material View "Aventis Pharma S.A. v. Hospira, Inc." on Justia Law

Plaintiffs appealed from the judgment of the district court granting summary judgment to defendants on all claims of direct and secondary copyright infringement based on a finding that defendants were entitled to safe harbor protection under the Digital Millennium Copyright Act (DMCA), 17 U.S.C. 512. The court held that, although the district court correctly held that the section 512(c) safe harbor required knowledge or awareness of specific infringing activity, the court vacated the order granting summary judgment because a reasonable jury could find that YouTube had actual knowledge or awareness of specific infringing activity on its website. The court further held that the district court erred by interpreting the "right and ability to control" infringing activity to require "item-specific" knowledge. Finally, the court affirmed the district court's holding that three of the challenged YouTube software functions fell within the safe harbor for infringement that occurred "by reason of" storage at the direction of the user, and remanded for further fact-finding with respect to a fourth software function. Accordingly, the court affirmed in part, vacated in part, and remanded. View "Viacom International, Inc., et al. v. Youtube, Inc., et al.; The Football Assoc. Premier League Ltd., et al. v. Tur, et al." on Justia Law

The Trademark Trial and Appeal Board found that a service mark, NATIONAL CHAMBER, submitted by the Chamber of Commerce of the USA, was correctly refused registration for being merely descriptive under 15 U.S.C. 1052(e)(1). The Federal Circuit affirmed, finding the decision supported by substantial evidence. View "In re: Chamber of Commerce of the United States of America" on Justia Law

The patent involves screening devices used in the pulp and paper industry. According to the specification of the asserted patent, a persistent problem in the screening process is clogging of the openings in the screen resulting in reduced efficiency. The patent purports to include specially-designed screening devices that offer substantially increased efficiency and flow capacity. Submission for reissue in 2003 was initially rejected as anticipated by prior art 35 U.S.C. 102 (b). After the examiner withdrew the rejection, the patent-holder filed suit for infringement. The district court entered summary judgment of noninfringement and lack of willfulness. The Federal Circuit affirmed on willfulness, but reversed with respect to infringement, finding that the court erred in its construction of the term "perforated."View "Advanced Fiber Tech. Trust. v. J&L Fiber Serv., Inc." on Justia Law

This case involved the importation and sale of counterfeit luxury goods bearing trademarks owned by Louis Vuitton (plaintiff) and others. Defendants appealed from the district court's judgment granting summary judgment to plaintiff on its claims of trademark counterfeiting and infringement, and awarding plaintiff statutory damages in the amount of $3 million, and more than $500,000 in attorney's fees and costs. The court concluded that the district court did not abuse its discretion in declining to stay the proceedings; that, as the district court concluded, an award of attorney's fees under 15 U.S.C. 1117(a) could accompany an award of statutory damages pursuant to 15 U.S.C. 1117(c); and that the district court did not abuse its discretion in awarding such fees or in setting their amount. Accordingly, the judgment was affirmed. View "Louis Vuitton Malletier S.A. v. LY USA, Inc., et al." on Justia Law

FS and AOS discussed working together to develop a pump motor to prevent entrapment of swimmers by suction created by pool drains. FS sent a letter discussing specific features. After months of correspondence, FS sent another letter, with test results from a previous unsuccessful design and desired features. None of the correspondence mentioned confidentiality. Eventually FS signed the AOS standard one-way confidentiality agreement, stating that FS was a supplier of research consulting services. FS did not require AOS to enter into a confidentiality agreement. After signing the agreement FS shared more details. The relationship broke down when the companies began discussing a formal marketing agreement. AOS eventually introduced and marketed pump motors that FS claims incorporated its trade secrets. FS sued for misappropriation of trade secrets and unjust enrichment under Wisconsin law. The district court granted summary judgment in favor of AOS, finding the misappropriation claim barred by a three-year statute of limitations and that FS failed to take reasonable steps to protect claimed trade secrets. Voluntary disclosure of information defeated the unjust enrichment claim. The Seventh Circuit affirmed.View "Fail-Safe LLC v. A.O. Smith Corp." on Justia Law

In 1996, RG, exclusive licensee of a German patent and corresponding patents in the U.S., Europe, and Japan relating to genetic identification, entered into a license agreement with Promega, granting Promega certain licenses. The agreement included a clause, providing that “all controversies or disputes arising out of or relating to this Agreement, or relating to the breach thereof, shall be resolved by arbitration” and prohibited assignment without consent. Assignments were approved in 2001 and 2003; a subsequent assignment from IP to LT was not approved. In 2008 LT believed that Promega was paying less than required royalties. Negotiations failed and LT demanded arbitration. Promega sought a declaratory judgment of non-arbitrability, alleging infringement of five patents and contenting that rights under the 1996 agreement had never been assigned to LT. IP then moved to compel arbitration. The district court ordered arbitration, finding that IP was the assignee, remained in existence, and that it was irrelevant that Promega alleged that IP was merely a puppet of LT. The Federal Circuit affirmed.View "Promega Corp. v. Life Tech. Corp." on Justia Law

Avery and 3M are competitors in the market for retroreflective sheeting technology, used in applications including road signs. In 2001, Avery sued 3M concerning patents not currently at issue; during the course of settlement discussions, 3M became aware that Avery was prosecuting reissue of the Heenan patents. Avery indicated that certain 3M sheeting products might infringe the patents and that licenses were available. 3M rejected the suggestion and asked for more information. Avery responded that it had performed an analysis of 3M’s product and would send claim charts, but never did so. The patents emerged from reissue 2009. n 2010 Avery filed another unrelated patent infringement claim and 3M filed with respect to the Heenan patents. 3M conceded that conversations prior to 2009 were covered by a confidentiality agreement that precluded their use as a basis to support a declaratory judgment action, then cancelled its declaratory judgments claims and refiled those claims separately (the current action). The district court dismissed for lack of subject matter jurisdiction. The Federal Circuit vacated, noting that the court would have jurisdiction under facts alleged by 3M and that the court did not resolve those factual issues. View "3M Co. v. Avery Dennison Corp." on Justia Law

The patent describes an infusion system used to meter and deliver fluids from multiple sources into a patient's body. Different fluids may be discharged at different rates using a central control device. Ergo sued CareFusion for infringement of several of the patent's claims; the parties stipulated that several terms were means-plus-function terms, including the terms "programmable control means" and "control means." The parties agreed that the analysis for both terms is the same and that the function for the terms is "controlling the adjusting means." The district court held that the "control means" terms are indefinite for failure to disclose corresponding structure. The Federal Circuit affirmed. View "Ergo Licensing, LLC v. CareFusion 303, Inc." on Justia Law