Justia Intellectual Property Opinion Summaries

A Chinese citizen was admitted to the United States as a lawful permanent resident in 2007. In 2012, New Jersey charged him with trademark counterfeiting. While awaiting trial, he traveled temporarily to China. Upon his return to the U.S., a border officer, aware of his pending criminal charge, declined to treat him as already admitted and instead paroled him into the country pending the outcome of his case. After he pleaded guilty to the state charge in 2013, the government initiated removal proceedings, charging him as an applicant for admission who was inadmissible because of his conviction for a crime involving moral turpitude.An Immigration Judge found him removable on these grounds, and the Board of Immigration Appeals affirmed. The respondent sought review in the United States Court of Appeals for the Second Circuit. That court vacated the removal order, holding that unless border officers had “clear and convincing” evidence at the time of entry that the lawful permanent resident had committed the crime, the individual must be treated as already admitted. The Second Circuit concluded that the pending criminal charge did not constitute clear and convincing evidence, so the individual should not have been paroled but deemed admitted, and thus could not be removed on inadmissibility grounds.The Supreme Court of the United States reviewed the case and vacated the Second Circuit’s judgment. The Court held that the Immigration and Nationality Act does not require border officers to have clear and convincing evidence that a lawful permanent resident has committed a crime involving moral turpitude before treating the resident as an applicant for admission. The Court remanded the case for further proceedings, without deciding whether the underlying crime involved moral turpitude. View "Blanche v. Lau" on Justia Law

Enanta Pharmaceuticals owned a patent directed to certain chemical compounds and methods for inhibiting coronavirus replication. The patent claimed priority to an earlier provisional application filed in July 2020. In the original provisional application, the relevant chemical group was described as containing two to twelve carbon atoms, while in the later patent, the range was changed to include one to twelve carbon atoms. Before the non-provisional patent was filed, Pfizer publicly disclosed a compound that fell within the scope of Enanta’s later patent claims.Enanta filed suit in the United States District Court for the District of Massachusetts, asserting that Pfizer’s product infringed its patent. Pfizer countered that the patent was invalid because its public disclosure anticipated the patent claims, and argued that Enanta’s patent could not claim priority to the earlier provisional application since the specific chemical group was not adequately supported in the provisional filing. The district court granted summary judgment in Pfizer’s favor, concluding that the change from two to one carbon atoms was not a correctable typographical error, and that the patent could not claim the earlier priority date.On appeal, the United States Court of Appeals for the Federal Circuit reviewed the district court’s decision de novo. The appellate court held that the provisional application did not provide written description support for the later patent’s claims, specifically the inclusion of the one-carbon group, and thus the patent was not entitled to the earlier priority date. As a result, Pfizer’s disclosure anticipated all claims of Enanta’s patent, rendering them invalid. The Federal Circuit affirmed the district court’s grant of summary judgment. View "ENANTA PHARMACEUTICALS, INC. v. PFIZER INC. " on Justia Law

Ironburg Inventions Ltd. owns a patent for a video game controller featuring additional, resilient controls on the back of the device. Ironburg alleged that Valve Corporation’s Steam Controller infringed several claims of this patent. Valve responded by filing an inter partes review (IPR) petition in 2016 challenging the patent, and later amended its invalidity contentions in district court proceedings to include new grounds based on prior art references that had been asserted by a third party, Collective Minds Gaming Co. Ltd., in a separate IPR.The United States District Court for the Western District of Washington granted Ironburg’s motion for IPR estoppel under 35 U.S.C. § 315(e)(2), barring Valve from asserting two invalidity grounds—one based on the Kotkin reference and another combining Willner, Koji, and Raymond—finding they could have been discovered by a skilled searcher conducting a diligent search. After a jury verdict for Ironburg and an initial appeal, the United States Court of Appeals for the Federal Circuit vacated and remanded, instructing the district court to place the burden on Ironburg and to evaluate whether the grounds were reasonably discoverable.On remand, the district court again estopped Valve from raising both grounds. The United States Court of Appeals for the Federal Circuit reviewed the evidence and found that the district court erred. Specifically, the district court relied on insufficient evidence to estop the Kotkin ground, as the search results from Valve’s agent included thousands of references without further narrowing. For the Willner-Koji-Raymond ground, the district court failed to properly account for hindsight bias in the evidence presented. The Federal Circuit reversed the district court’s estoppel rulings and remanded for proceedings consistent with its opinion, instructing the district court to reconsider the invalidity of the patent in light of both grounds. View "IRONBURG INVENTIONS LTD. v. VALVE CORPORATION " on Justia Law

The dispute centers on the HAVANA CLUB trademark, originally registered in the United States in 1976 by a Cuban state-owned company, Cubaexport. Due to changes in U.S. law, renewal of the trademark registration required a specific license from the Treasury’s Office of Foreign Assets Control (OFAC) after 1998. In December 2005, Cubaexport submitted its renewal application and payment to the United States Patent and Trademark Office (PTO) without the required OFAC license. OFAC later notified the PTO that the payment was unauthorized, leading to the PTO’s refund of the fee and refusal to renew the registration. Cubaexport unsuccessfully litigated against OFAC and, in 2015, reapplied for the license, which OFAC granted retroactively in 2016, authorizing the 2005 payment.After the PTO Director accepted Cubaexport’s renewal filing based on the retroactive OFAC license, Bacardi sued the PTO and its Director in the United States District Court for the Eastern District of Virginia. Bacardi argued the PTO lacked statutory authority to renew the expired registration and acted arbitrarily and capriciously. The district court initially dismissed the case, finding judicial review precluded by the Lanham Act, but the United States Court of Appeals for the Fourth Circuit reversed and remanded. On remand, Cubaexport intervened, and after cross-motions for summary judgment, the district court granted judgment for the defendants, finding the OFAC license validated the payment and that any deficiency was cured during the petition process.Reviewing the district court’s summary judgment de novo, the United States Court of Appeals for the Fourth Circuit held that the PTO Director acted within statutory authority, as the retroactive OFAC license validated the 2005 payment, satisfying the renewal requirements. The court also held the Director’s explanation for the renewal was reasonable and not arbitrary or capricious. The Fourth Circuit affirmed the district court’s judgment. View "Bacardi and Company Limited v. Squires" on Justia Law

After participating in a songwriting contest co-sponsored by Sony and a well-known Puerto Rican singer, the plaintiff submitted an original song and accompanying music video for consideration. Upon advancing as a finalist, the plaintiff was asked to sign documents related to contest participation. Another entrant was ultimately selected as the contest winner. Later, the defendant released a song and video that the plaintiff claimed were substantially similar to his contest submission, leading the plaintiff to file suit for copyright infringement and allege fraudulent inducement into the contest.Following extensive procedural history, including several prior appeals and a Supreme Court decision clarifying when copyright owners may sue, the United States District Court for the District of Puerto Rico dismissed the plaintiff’s earlier complaint without prejudice due to the timing of his copyright registration. The plaintiff then filed a new action, again asserting copyright infringement. The defendant responded with counterclaims challenging the validity of the plaintiff’s copyright registration and moved for summary judgment, arguing that the plaintiff had assigned his copyright to Sony by agreeing to the contest’s rules. The district court adopted a magistrate judge’s recommendation granting summary judgment to the defendant, dismissed the plaintiff’s remaining claims, and invalidated the plaintiff’s copyright registration, all without permitting discovery.On appeal, the United States Court of Appeals for the First Circuit held that the district court abused its discretion by granting summary judgment and invalidating the copyright registration without affording the plaintiff a fair opportunity to conduct discovery, particularly since the relevant evidence was largely under the defendant’s and Sony’s control. The First Circuit vacated the district court’s summary judgment order and the invalidation of the copyright registration, remanding the case for further proceedings to allow discovery. View "Cortes-Ramos v. Martin-Morales" on Justia Law

EnvTech, Inc., a company specializing in cleaning products and services for hydrofluoric acid alkylation (HF alky) units in oil refineries, alleges that Patrick DeBusk, CEO of USA DeBusk LLC (USAD), orchestrated the theft of its proprietary neutral pH chelation cleaning formula and process. EnvTech claims that DeBusk directed the hiring of key former EnvTech employees, who were privy to EnvTech’s trade secrets, and used their knowledge to allow USAD to enter and compete in the specialized market for HF alky unit cleaning. EnvTech further asserts that this conduct was part of a broader pattern, with USAD hiring competitors’ employees to misappropriate trade secrets under DeBusk’s direction.The United States District Court for the Southern District of Texas dismissed EnvTech’s amended complaint under Federal Rule of Civil Procedure 12(b)(6). The district court found that EnvTech had not plausibly alleged that DeBusk personally engaged in trade secret theft with the necessary mental state or that a pattern of racketeering activity under the Racketeer Influenced and Corrupt Organizations Act (RICO) was sufficiently pleaded. The court dismissed the case with prejudice after EnvTech’s amended complaint did not cure the perceived deficiencies.The United States Court of Appeals for the Fifth Circuit reviewed the dismissal de novo and found that EnvTech plausibly alleged DeBusk’s knowing direction and participation in the theft and use of EnvTech’s trade secrets, as well as a broader pattern of similar conduct involving other competitors. The Fifth Circuit held that EnvTech’s allegations were sufficient to state a RICO claim based on a pattern of trade secret theft and conspiracy, and that the continuity and relatedness requirements for a RICO pattern were satisfied. The Fifth Circuit reversed the district court’s dismissal and remanded the case for further proceedings. View "EnvTech v. DeBusk" on Justia Law

Two businesses and their principals were involved in the sale of a cigar company. The sale was governed by a written agreement which expressly reserved three registered trademarks for the sellers, and did not mention other closely related marks. After the sale, the buyers’ company launched new cigar products and marketing campaigns referencing the history and reputation of the reserved marks and associated product lines. The sellers objected, claiming infringement of their reserved trademark interests and associated goodwill. When attempts to resolve the dispute failed, the sellers filed a federal trademark infringement lawsuit.The first lawsuit was brought in the United States District Court for the Southern District of Florida. That court did not address the merits of the trademark claims. Instead, it found that the claims arose out of the sales agreement, which contained a forum selection clause requiring venue in state court in Lawrence County, South Dakota. On that basis, the Florida district court dismissed the case on forum non conveniens grounds. Subsequently, the buyers initiated a related contract lawsuit in South Dakota state court. The sellers then filed the present lawsuit in the United States District Court for the District of South Dakota, asserting only federal Lanham Act claims and omitting the sales agreement from their initial filings.The United States Court of Appeals for the Eighth Circuit held that the federal trademark claims arose out of the sales agreement, because resolving them would require analyzing the parties’ contractual allocation of trademark rights and goodwill. The court further held that the forum selection clause in the agreement was valid, mandatory, and enforceable under South Dakota law and federal law, and that it required litigation to proceed in state court in Lawrence County, South Dakota. The Eighth Circuit also concluded that state courts have concurrent jurisdiction over federal Lanham Act claims. Accordingly, the Eighth Circuit affirmed the district court’s dismissal. View "Vaughn Boyd v. Deadwood Tobacco Co." on Justia Law

Deque Systems Inc., a company specializing in web accessibility software, developed and registered multiple versions of its DevTools and Rules Help Pages products. To access these, users agreed not to copy, reverse-engineer, or otherwise misuse the software or its documentation. In 2021, BrowserStack, a competing firm, sought to develop its own accessibility testing tools. More than 100 BrowserStack employees created accounts with Deque—agreeing to Deque’s terms—and later, BrowserStack released an Accessibility Toolkit, which Deque alleged was developed by unlawfully copying and reverse-engineering DevTools and the Rules Help Pages.Deque filed suit in the United States District Court for the Eastern District of Virginia, claiming copyright infringement, false advertising, breach of contract, and unjust enrichment, and sought injunctive relief, damages, and other remedies. During discovery, Deque repeatedly failed to properly disclose its damages calculations and supporting evidence by the deadlines set in the court’s scheduling order. Despite several opportunities to supplement its disclosures and a late attempt to introduce expert testimony, Deque did not timely provide the required information. BrowserStack moved to exclude Deque’s damages evidence and for summary judgment. The district court granted these motions, finding that Deque’s noncompliance with disclosure rules was neither substantially justified nor harmless, and that Deque presented no evidence supporting injunctive or other relief.On appeal, the United States Court of Appeals for the Fourth Circuit reviewed and affirmed the district court’s judgment. The Fourth Circuit held that the district court did not abuse its discretion in excluding all evidence of Deque’s damages under Federal Rule of Civil Procedure 37(c)(1) due to repeated and unjustified failures to comply with disclosure requirements. The court also held that summary judgment for BrowserStack was warranted because Deque could not establish entitlement to injunctive, declaratory, or monetary relief. View "Deque Systems Inc. v. Browserstack, Inc." on Justia Law

The dispute centers on three patents owned by the appellant, which describe a method for displaying information to facilitate the return of lost or stolen computers. The patented method involves powering on a computer and automatically displaying a screen with return information, either before or alongside the lock screen, and includes the ability to remotely initiate or change the displayed information without assistance from a user with the computer. The appellant alleged that certain devices sold by LG Electronics, featuring Google or Microsoft’s “Find My Device” software, infringed these patents.Following the appellant’s lawsuit in the United States District Court for the Western District of Texas, Google and Microsoft initiated six inter partes review (IPR) proceedings before the United States Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB), contesting the validity of the patents based on prior art. The PTAB instituted review despite the appellant’s arguments referencing a parallel district court action and concerns about duplicative proceedings. LG, named as a real party in interest, filed a “Sotera stipulation,” agreeing not to pursue in district court any grounds raised in the IPRs, which the PTAB considered in its decision to institute review.The United States Court of Appeals for the Federal Circuit reviewed the PTAB’s final written decisions, which found all challenged claims unpatentable. The Federal Circuit held that it lacked jurisdiction to review challenges tied to the PTAB’s institution decision, specifically regarding the impact of LG’s violation of the Sotera stipulation. On the merits, the court affirmed the PTAB’s construction of the “without assistance” claim limitation, finding no error and concluding that the prior art disclosed the disputed method. The court also determined that the PTAB’s analysis of secondary considerations of non-obviousness was supported by substantial evidence. The court dismissed the appeal in part and affirmed in part, awarding costs against the appellant. View "HAFEMAN v. GOOGLE LLC " on Justia Law

Amarin Pharma, Inc. developed and marketed Vascepa, a drug containing icosapent ethyl. Initially, the Food and Drug Administration (FDA) approved Vascepa for treating severe hypertriglyceridemia (the SH indication). Later, the FDA approved a new use: reducing cardiovascular risk in certain patients (the CV indication), for which Amarin held two method-of-use patents. Hikma Pharmaceuticals USA Inc., a generic manufacturer, sought to market a generic icosapent ethyl. After Amarin’s SH-indication patents were invalidated by a district court, Hikma pursued FDA approval for a “skinny label” generic, carving out the patented CV indication. The FDA approved Hikma’s application with the label limited to the SH indication.Amarin sued Hikma in the United States District Court for the District of Delaware, alleging that Hikma actively induced infringement of Amarin’s CV-indication patents. Amarin argued that various statements in Hikma’s skinny label, patient information leaflet, website, and press releases encouraged infringement. The District Court granted Hikma’s motion to dismiss, finding that the statements did not constitute active encouragement of infringement. The United States Court of Appeals for the Federal Circuit reversed, holding it plausible that a physician could read Hikma’s statements as instructions or encouragement to prescribe the drug for the patented use.The Supreme Court of the United States reviewed the case and held that Amarin failed to state a claim for active inducement under 35 U.S.C. §271(b). The Court clarified that liability requires affirmative “active steps” to encourage infringement, not merely statements that could be read as encouragement. The Court found Hikma’s statements either reflected legal compliance or ordinary industry practice, or were too vague or passive to plausibly constitute active inducement. The Supreme Court reversed the Federal Circuit’s judgment and remanded for further proceedings. View "Hikma Pharmaceuticals USA Inc. v. Amarin Pharma, Inc." on Justia Law