Justia Intellectual Property Opinion Summaries

The dispute centers on a patented pre-lit artificial tree owned by Willis Electric Co., Ltd., which features separable, modular trunk portions that mechanically and electrically connect to one another, enabling attached lights to illuminate automatically regardless of trunk orientation. The prior art required separate mechanical and electrical connections, but Willis’ patent integrates both functions in a single step. Willis accused Polygroup of infringing claim 15 of its patent, specifically targeting Polygroup trees with the “Quick Set” feature that establishes simultaneous mechanical and electrical connections.After Willis initiated the lawsuit in the United States District Court for the District of Minnesota, Polygroup filed multiple inter partes review petitions at the Patent Trial and Appeal Board (PTAB) challenging various claims of Willis’ patent. The PTAB upheld claim 15, and the United States Court of Appeals for the Federal Circuit affirmed that finding. The district court proceedings continued with only claim 15 at issue. Polygroup filed a Daubert motion to exclude Willis’ damages expert, which was denied. At trial, the jury found claim 15 infringed and not invalid, awarding Willis over $42 million in damages. Polygroup then moved for judgment as a matter of law (JMOL) on obviousness and a new trial on damages, but the district court denied both motions.The United States Court of Appeals for the Federal Circuit reviewed the district court’s denial of JMOL and the motion for a new trial. The court held that substantial evidence supported the jury’s finding that a skilled artisan would not have been motivated to combine prior art with coaxial barrel connectors as claimed in claim 15, thus affirming nonobviousness. The court also held that the district court did not abuse its discretion in admitting the damages expert’s testimony, finding the methodology sufficiently reliable under Rule 702. As a result, the Federal Circuit affirmed the district court’s judgment in all respects. View "WILLIS ELECTRIC CO., LTD. v. POLYGROUP LTD." on Justia Law

A group of nine professional models brought suit against a nightclub in Greenville, South Carolina, alleging that the club took images from the models’ social media pages and used them in its promotional materials without their knowledge, consent, or compensation. The models claimed the advertising falsely implied their association, employment, or endorsement of the club. They asserted two claims under the Lanham Act as well as seven state law claims, including misappropriation of likeness.The defendant responded with a motion to dismiss all counts for failure to state a claim under Federal Rule of Civil Procedure 12(b)(6), but did not challenge the sufficiency of the misappropriation of likeness claim. The plaintiffs did not respond to the motion within the time set by the District of South Carolina’s local rules. The United States District Court for the District of South Carolina granted the motion to dismiss as unopposed, dismissing the federal and most state law claims with prejudice and dismissing the misappropriation of likeness claim without prejudice, declining to exercise supplemental jurisdiction. The plaintiffs’ postjudgment motions for relief were denied by the district court.On appeal, the United States Court of Appeals for the Fourth Circuit held that a court may not grant a Rule 12(b)(6) motion solely because it is unopposed. The court emphasized that Rule 12(b)(6) requires an independent determination of whether the complaint states a plausible claim for relief, regardless of the parties’ failure to respond. Finding that the district court had not made such a determination, the Fourth Circuit vacated the judgment and remanded the case for further proceedings. The court did not reach the merits of the parties’ other arguments or the postjudgment orders. View "Guzman v. Acuarius Night Club LLC" on Justia Law

This case involves a challenge to the validity of a patent owned by DivX, LLC, which claims systems and methods for streaming partly encrypted media content. DivX sued Netflix, Inc. for patent infringement, leading Netflix to petition for inter partes review (IPR) before the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Netflix argued that the patent’s claims would have been obvious in view of specific prior-art references. The dispute centered on the proper construction of a claim limitation relating to the location of "encryption information" within the system described by the patent.After the IPR was instituted, the Patent Trial and Appeal Board first issued a final written decision holding that Netflix had not shown the claims were unpatentable, basing its conclusion on issues unrelated to claim construction. Netflix appealed that decision to the United States Court of Appeals for the Federal Circuit, which vacated and remanded. On remand, the Board adopted DivX’s proposed claim construction, holding that the limitation required the encryption information itself to be located within the requested portions of the selected stream of protected video, and again found in favor of DivX. Netflix appealed again.The United States Court of Appeals for the Federal Circuit reviewed the Board’s claim construction de novo. The appellate court held that the Board erred in its construction of the disputed limitation. The correct construction, the court explained, is that only the encrypted portions of the video frames, not the encryption information, must be located within the requested portions of the selected stream. The court found that, under this construction, the asserted prior art meets the limitation. The Federal Circuit therefore reversed the Board’s claim construction, vacated its decision, and remanded for further proceedings. View "NETFLIX, INC. v. DIVX, LLC " on Justia Law

Several technology companies challenged instructions issued by the Director of the United States Patent and Trademark Office (PTO) that guided the Patent Trial and Appeal Board (Board) in deciding whether to institute inter partes review (IPR) proceedings. These instructions, known collectively as the NHK-Fintiv instructions, outlined factors for the Board to consider when parallel patent litigation was occurring in district court. The challengers argued that these instructions resulted in too many denials of IPR petitions and were contrary to law, arbitrary and capricious, and issued without the required notice-and-comment rulemaking under the Administrative Procedure Act (APA).The United States District Court for the Northern District of California initially found all challenges to the PTO’s instructions to be judicially unreviewable. On appeal, the United States Court of Appeals for the Federal Circuit previously held that while the challenges based on statutory and arbitrary-and-capricious grounds were unreviewable, the claim regarding the lack of notice-and-comment rulemaking could proceed. On remand, the district court determined that the instructions were exempt from notice-and-comment requirements because they were “general statements of policy,” not substantive or legislative rules.The United States Court of Appeals for the Federal Circuit reviewed the district court’s decision de novo. The court agreed that the Director’s instructions were general statements of policy exempt from notice-and-comment rulemaking under 5 U.S.C. § 553(b). It emphasized that there is no statutory right to IPR institution, that the instructions do not bind the Director, and that the Director retains unreviewable discretion to institute or deny IPR. The court found that none of the legal standards or precedents cited by the challengers required a different result, and it affirmed the district court’s judgment rejecting the APA-based challenge. View "APPLE INC. v. SQUIRES " on Justia Law

Two companies that manufacture activated carbon honeycombs, used in automotive emission control systems, became embroiled in a legal dispute. One company holds a patent covering certain dual-stage fuel vapor canister systems, but not honeycombs used in air-intake systems. The other company began marketing a competing honeycomb product, prompting a patent infringement lawsuit. In response, the defendant challenged the validity of the patent, argued non-infringement, and asserted counterclaims alleging antitrust violations—specifically, that the patent holder unlawfully tied licenses for the patent to the purchase of its unpatented honeycomb products.The United States District Court for the District of Delaware first granted summary judgment that the patent was invalid due to prior invention. It then denied both parties’ motions for summary judgment on the antitrust and tortious interference counterclaims, finding a factual dispute about whether the honeycomb products had substantial non-infringing uses. At trial, the jury found the patent holder liable for unlawful tying under federal antitrust law, concluding that it had conditioned patent licenses on customers buying its honeycombs, and awarded significant damages. The district court denied the patent holder’s motions for judgment as a matter of law and for a new trial, confirming the jury’s findings that the honeycombs were staple goods with substantial non-infringing uses and that the conduct was not protected by immunity doctrines.On appeal, the United States Court of Appeals for the Federal Circuit affirmed the district court’s judgment. The Federal Circuit held that substantial evidence supported the jury’s findings that the honeycomb products had actual and substantial non-infringing uses, making them staple goods and removing the patent holder’s statutory defense against antitrust liability. The court also rejected the argument that the patent holder’s conduct was immunized from antitrust scrutiny, and upheld the damages award, finding no error in the district court’s rulings or the jury’s determinations. View "INGEVITY CORPORATION v. BASF CORPORATION " on Justia Law

A professional photographer discovered that between 2018 and 2022, hundreds of his photographs were uploaded to an online stock photo platform operated by a large digital content marketplace, without his permission. Three contributors to the platform were responsible for uploading these images, and the platform subsequently licensed many of them to customers, generating revenue shared with the uploaders. After being notified by the photographer’s attorney, the platform removed the images and terminated the contributor accounts, but the photographer filed suit alleging both copyright infringement and violations related to the removal and alteration of copyright management information (CMI).The United States District Court for the Southern District of New York granted summary judgment to the platform on all claims. The court concluded that the platform qualified for safe harbor immunity under the Digital Millennium Copyright Act (DMCA) for the copyright infringement claims. For the CMI claims, the court found that the photographer failed to present evidence of the platform's required scienter (knowledge or intent) to sustain a violation under 17 U.S.C. § 1202.On appeal, the United States Court of Appeals for the Second Circuit affirmed the district court’s decision regarding the CMI claims, agreeing that there was no evidence the platform acted with the necessary scienter under § 1202(a) or (b). However, the appellate court vacated the grant of summary judgment on the copyright infringement claims. It held that factual disputes remained as to whether the infringing activity occurred “by reason of the storage at the direction of a user” and whether the platform had the “right and ability to control” the infringing activity, both critical to safe harbor eligibility under the DMCA. The case was remanded for further proceedings on these factual questions. View "McGucken v. Shutterstock, Inc." on Justia Law

GoTV Streaming, LLC owned three related patents that describe a system in which a server receives a content request from a wireless device, tailors the content to that device’s capabilities (such as screen size), and sends the modified content to the device for display. The patents were designed to reduce the burden of developing unique applications for each device type. Instead, the server uses generic templates and custom configurations that are then tailored to the specific device’s needs.The United States District Court for the Central District of California initially dismissed GoTV’s claims for induced infringement, holding that such claims require the defendant’s knowledge of the patents before the lawsuit. The court also denied Netflix’s motion that the patents were ineligible under 35 U.S.C. § 101, finding the claims were not directed to abstract ideas. The court later found all claims of the ’865 patent indefinite and invalid, adopted some of GoTV’s proposed claim constructions, and denied GoTV’s motions to exclude certain Netflix damages evidence. At trial, the jury found Netflix infringed only one patent and awarded GoTV $2.5 million in damages. The district court denied GoTV’s post-trial motions, including for retrial on damages and for prejudgment interest predating the complaint.The United States Court of Appeals for the Federal Circuit reviewed the case. It reversed the district court’s indefiniteness finding for the ’865 patent and adopted GoTV’s claim construction. However, it held that all asserted claims were patent-ineligible under § 101 because they were directed to the abstract idea of using a generic template tailored for a user’s device without reciting an inventive concept. The Federal Circuit reversed the district court’s judgment for GoTV, ordered judgment for Netflix, and vacated the district court’s rulings on inducement and damages evidence. View "GOTV STREAMING, LLC v. NETFLIX, INC. " on Justia Law

The plaintiff, a New Hampshire-based corporation, acquired patents and software from a military contractor and sought to adapt the technology for consumer telecommunications. The defendant, a Finnish multinational, manufactures cellular base stations. In 2015, the parties began discussions about integrating the plaintiff’s software into the defendant’s products. By February 2017, negotiations focused on two main points: a fee for integration work and a lump sum for a perpetual software license. On June 6, 2017, the plaintiff alleges both parties orally agreed to a $3 million integration fee and a $20 million license fee. The defendant disputes whether such an oral agreement occurred. The plaintiff continued work based on this understanding. Later, the defendant offered a lower license fee in a draft written contract, which the plaintiff rejected. Eventually, the defendant canceled the project.After cancellation, the plaintiff sued the defendant in the United States District Court for the District of New Hampshire. Following a ten-day trial, the jury found in favor of the plaintiff on breach of contract and promissory estoppel, awarding $23 million in damages. The district court, considering the defendant’s statute-of-frauds defense, determined that the core issue was whether the perpetual license agreement could be performed within one year. The court found this, along with other issues, raised novel questions of New Hampshire law without binding precedent, and certified three questions to the Supreme Court of New Hampshire.The Supreme Court of New Hampshire reviewed the certified questions. It held that, under New Hampshire law, obligations imposed by a perpetual intellectual property license can be performed within one year, because, absent express language to the contrary, the licensor’s obligations are fulfilled upon granting the license. The court declined to answer the other two certified questions, as its answer to the first resolved the determinative legal issue. The case was remanded to the district court. View "Collision Commc'ns v. Nokia Solutions and Networks OY" on Justia Law

A Colorado-based technology company specializing in wireless communications collaborated with a Massachusetts micro-display company to develop a headset, formalizing their respective rights in a contract. The contract established joint intellectual property ownership for the project and designated the Massachusetts company to select counsel and prosecute patents. The selected law firm worked with both companies during patent prosecution, opening billing files and receiving powers of attorney from the Colorado company’s employees. Over time, disputes arose regarding patent applications, including amendments that allegedly benefited the Massachusetts company at the expense of the Colorado company, abandonment of applications, and filing disclaimers—often without informing the Colorado company.After the business relationship ended in 2009, the Colorado company only discovered alleged misconduct by the law firm years later when investigating its patent portfolio in response to a potential acquisition. Subsequent litigation in the U.S. District Court for the District of Colorado led to the law firm’s disqualification due to a found attorney-client relationship, and discovery revealed possible concealment and conflicts of interest.The Colorado company then sued the law firm and individual attorneys in the United States District Court for the District of Massachusetts, alleging legal malpractice and related claims. The district court granted summary judgment for the law firm, concluding all claims were untimely under the statute of limitations, not saved by equitable tolling, and that no attorney-client relationship existed.Upon review, the United States Court of Appeals for the First Circuit held that whether the malpractice claims were timely is a factual question suitable for a jury, not summary judgment, and that an attorney-client relationship existed as a matter of law for the relevant period. The appellate court reversed the district court’s timeliness and relationship rulings on the legal malpractice claim, vacated determinations regarding other claims, and remanded for further proceedings. View "BlueRadios, Inc. v. Hamilton, Brook, Smith & Reynolds, P.C." on Justia Law

Range of Motion Products, LLC owns a design patent for a body massaging apparatus, which is embodied in its product, the Rolflex. Armaid Company Inc. manufactures the Armaid2, an accused product in this suit, as well as an earlier version, the Armaid1, which was covered by a utility patent. RoM alleged that the Armaid2 infringed its design patent. Previously, RoM had filed a similar suit against Armaid in the same court, but that case was dismissed without prejudice following the denial of a preliminary injunction.In the subsequent action, the United States District Court for the District of Maine construed the design patent, carefully distinguishing between functional and ornamental aspects of the claimed design. The court found that many features, notably the shape of the arms and the base, were primarily functional, narrowing the scope of the claimed design. Upon reviewing the evidence, the district court concluded that no reasonable jury could find the design of the Armaid2 substantially similar to the patented design, and granted summary judgment of non-infringement in favor of Armaid.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the district court’s claim construction de novo and its grant of summary judgment under the First Circuit’s de novo standard. The Federal Circuit affirmed the district court’s judgment, holding that the district court did not err in identifying the functional versus ornamental aspects of the claimed design, and finding that the designs were plainly dissimilar when considering only the ornamental features. The court further held that, even when comparing the accused and claimed designs alongside prior art, no reasonable jury could find substantial similarity. The judgment of non-infringement was affirmed. View "RANGE OF MOTION PRODUCTS, LLC v. ARMAID COMPANY INC. " on Justia Law