Justia Intellectual Property Opinion Summaries

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Uniloc sued Motorola for infringement of a patent that concerns pairing a telephone with another device and using the other device to make a telephone call using the telephone’s cellular capabilities. Motorola alleged that Uniloc lacked standing, having granted Fortress a license and an unfettered right to sublicense the asserted patent. The district court dismissed, agreeing that Uniloc had granted a license and that the existence of a license deprived it of standing. Related cases, in which Uniloc had alleged infringement, had been dismissed for lack of subject matter jurisdiction. On appeal, Motorola asserted collateral estoppel.The Federal Circuit affirmed. The court acknowledged that patent owners arguably do not lack standing simply because they granted a license that gave another party the right to sublicense the patent to an alleged infringer but declined to address that issue. , Uniloc was collaterally estopped from arguing that it did not grant a license, including a right to sublicense, to Fortress, and that the existence of that license deprived Uniloc of standing. View "Uniloc USA, INC. v. Motorola Mobility, LLC" on Justia Law

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Uniloc brought multiple infringement suits against Google concerning patents directed to innovations in multimedia content delivery, IT security, high-resolution imaging, network connectivity, video conferencing, and image and text searching. Google alleged Uniloc lacked standing because its predecessors had granted Fortress a license and an unfettered right to sublicense to the asserted patents as part of a financing arrangement. Uniloc argued that any license had been eliminated by a Termination Agreement executed between Uniloc’s predecessors and Fortress before the suits commenced.The district court dismissed, finding that a license had been granted and survived the Termination Agreement. The Federal Circuit reversed. The district court erred in interpreting the Termination Agreement. The License Agreement granted Fortress a “non-exclusive, transferrable, sub-licensable, divisible, irrevocable, fully paid-up, royalty-free and worldwide license” to several of Uniloc’s patents, including those at issue. The Termination Agreement stated that the License Agreement “shall terminate and shall be of no further force or effect without any further documentation or action and without liability to any party hereto, and the rights of each of the applicable parties under the applicable agreement shall terminate.” By terminating the License Agreement and rights under that agreement, the Termination Agreement terminated Fortress’s license. Although the License Agreement describes the license as “irrevocable” the context clearly refers to the license’s being “irrevocable” by the licensor and does not preclude revocation by mutual agreement. View "Uniloc 2017 LLC v. Google LLC" on Justia Law

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Finjan sued ESET for infringement. The four asserted (expired) patents are part of a family of patents directed to systems and methods for detecting computer viruses in a “Downloadable” through a security profile. Finjan claims priority for each of the patents back to a 1996 provisional application. The district court held a Markman hearing and construed the term “Downloadable,” which appears in the claims of all asserted patents, to mean “a small executable or interpretable application program which is downloaded from a source computer and run on a destination computer.” The court reasoned that the patent family contained “somewhat differing definitions” that “can be reconciled” and, based on the definitions and examples included throughout those patents, the term Downloadable should be construed to include the word “small” as defined in the 520 Patent.The court then granted summary judgment, finding the asserted patents indefinite. The Federal Circuit reversed. The district court erred because it viewed the differing definitions throughout the patent family as competing and determined that the asserted patents should be limited to the most restricted definition; it is not necessary to limit the asserted patents because the definitions are not competing. The use of a restrictive term in an earlier application does not reinstate that term in a later patent that purposely deletes the term, even if the earlier patent is incorporated by reference. View "Finjan, Inc.. v. ESET, LLC" on Justia Law

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The plaintiffs own four design patents on hoverboards and sued the appellants claiming that products sold by the appellants infringed the plaintiffs’ patents. The plaintiffs obtained a temporary restraining order, followed by a preliminary injunction, prohibiting the appellants from “offering for sale, selling, and importing any products not authorized by Plaintiffs and that include any reproduction, copy or colorable imitation of the design claimed in the Patents-in-Suit.” The Federal Circuit reversed, holding that the entry of the preliminary injunction was procedurally improper for lack of Rule 65(a) notice.After the court entered a second injunction, the Federal Circuit again reversed. The plaintiffs established a likelihood of success on the merits that the accused products infringed one or more claims of the asserted patents. The district court failed to apply the "ordinary observer" test on a product-by-product basis, which is particularly important here in light of significant differences among the accused products themselves. View "ABC Corp. I v. Partnership & Unincorporated Associations" on Justia Law

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IBM sued Zillow for infringement of several patents related to graphical display technology. A user of the system draws a shape on a map to select that area of the map, and the claimed system then filters and displays data limited to that area of the map. It synchronizes which elements are shown as “selected” on the map and its associated list.The district court granted Zillow judgment on the pleadings, concluding that two of the asserted patents claimed ineligible subject matter under 35 U.S.C. 101. The Federal Circuit affirmed. The patents are directed to abstract ideas and lack an inventive concept. The claims in one patent fail to “recite any assertedly inventive technology for improving computers as tools,” but are directed to “an abstract idea for which computers are invoked merely as a tool” for limiting and coordinating the display of information based on a user selection. Another patent is directed to the abstract idea of organizing and displaying visual information. View "International Business Machines Corp. v. Zillow Group, Inc" on Justia Law

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A named inventor of four related patents sued Google for infringement. The patents generally describe ways in which individuals and businesses can exchange information. As individuals go about their day, they may record the URLs or business cards of those they encounter along with the time and place of the encounters, either by accepting a proposal from another person or business or by unilaterally making an entry. The district court dismissed, finding all of the asserted claims ineligible under 35 U.S.C. 101.The Federal Circuit affirmed in part, finding two patents directed to an abstract idea. The purported benefit of limiting data accumulation to members is not captured in the claims and does not shift the focus of the claims away from the abstract idea of creating a digital travel log. The claims rely on the use of existing technology to create computerized travel logs and do not focus on a specific means or method that improves the relevant technology. The court reversed in part. The district court erred in failing to separately analyze two patents. Weisner plausibly alleged that those claims recite a specific implementation of the abstract idea that purports to solve a problem unique to the Internet; these claims should not have been held ineligible at this stage. View "Weisner v. Google, LLC" on Justia Law

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A collection of music publishers alleged infringement of their copyrights in 197 musical works when a series of live concert recordings was made available by Defendants for download and streaming on their websites. Plaintiffs sought damages and a permanent injunction pursuant to the Copyright Act. The district court held on summary judgment that Defendants had no valid licenses and therefore infringed each of the musical works and that the principal was personally liable. The district court denied Plaintiffs’ request for a permanent injunction.   Defendants appealed from the district court’s summary judgment order and the order granting fees and costs. Plaintiffs cross-appeal from the district court’s denial of a permanent injunction, several evidentiary rulings, and the denial of a new trial.   The Second Circuit affirmed the rulings in the summary judgment order to the extent they: (a) held that Defendants failed to obtain a license for any of the audiovisual recordings, and therefore infringed the audiovisual works; (b) concluded that Defendants had no valid affirmative defense, and (c) declined the Publishers’ request for a permanent injunction. The court vacated the ruling in the summary judgment order that Defendants infringed the musical works used in the audio-only recordings by failing to comply with Section 115’s substantive requirements. The court reversed the ruling on summary judgment that Defendant was liable for direct infringement. The court rejected the challenges to evidentiary rulings. The court affirmed the order denying the motion for a new trial. Finally, the court vacated the award of attorneys’ fees. View "ABKCO Music, Inc. v. Sagan" on Justia Law

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Plaintiff appealed from the district court’s judgment granting Defendant Sirius XM Radio, Inc. (“Sirius XM”)’s motion to dismiss Plaintiff’s claims with prejudice for violations of his right of publicity under California common and statutory law because his claims were preempted by the Copyright Act, 17 U.S.C. Section 301. The claims arise from Melendez’s performance under the moniker “Stuttering John” on The Howard Stern Show (the “HS Show”) from 1988 until 2004.   On appeal, Plaintiff asserted that Sirius XM’s use of excerpts of him from the archival episodes in its online and on-air advertisements promoting the HS Show violates his right of publicity under California common and statutory law because his name and likeness have been exploited for Sirius XM’s commercial gain without his permission.   The Second Circuit affirmed the district court’s judgment. The court held that Plaintiff failed to plausibly allege any use of his name or likeness that is separate from, or beyond, the rebroadcasting, in whole or in part, of the copyrightable material from the HS Show’s archives and, thus, his right of publicity claims are preempted by the Copyright Act. Moreover, because Plaintiff has failed to articulate any allegations that he could add in a second amended complaint that overcome preemption in this case, the court concluded that the district court correctly determined that any leave to re-plead would be futile and properly dismissed his claims with prejudice. View "Melendez v. Sirius XM Radio, Inc." on Justia Law

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Bel Power sued, alleging that Monolithic infringes Bel’s patents by selling certain power modules to original equipment manufacturers and other distributors and customers that use the products in their own electronic devices. Monolithic moved to dismiss or transfer for lack of venue under 28 U.S.C. 1406(a), arguing that, as a Delaware corporation, it does not “reside” in the Western District of Texas, that it does not own or lease any property in that district, and that the homes of four full-time remote employees in the Western District identified in the complaint to support venue do not constitute a “regular and established place of business.” Monolithic alternatively moved to transfer to the Northern District of California.The Federal Circuit upheld the denial of both requests. Monolithic viewed maintaining a business presence in the Western District as important, as evidenced by a history of soliciting employment in Austin to support local customers, even if none of its Western District employees were required to reside there. Monolithic provided certain Western District employees with lab equipment or products to be used in or distributed from their homes as part of their responsibilities. The convenience of parties and witnesses and the interests of justice did not weigh in favor of transfer under the multi-factor approach; Monolithic failed to demonstrate that California was clearly more convenient than the Western District. View "In Re Monolithic Power Systems, Inc." on Justia Law

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Merck’s 708 patent describes sitagliptin dihydrogen phosphate (sitagliptin DHP), which belongs to the class of dipeptidyl peptidase-IV (DP-IV) inhibitors that can be used for treating non-insulin-dependent (Type 2) diabetes. Mylan petitioned for inter partes review, arguing that claims 1–3, 17, 19, and 21–23 were anticipated by the Merck-owned 489 publication, and the equivalent 871 patent (collectively, Edmondson) Edmondson is directed to compounds that are DP-IV inhibitors, useful in the treatment or prevention of diseases in which the dipeptidyl peptidase-IV enzyme is involved, such as diabetes and particularly type 2 diabetes. Mylan also argued that claims 1–4, 17, 19, and 21–23 would have been obvious over Edmondson and two additional publications.The Federal Circuit affirmed the Patent and Trademark Office Patent Trial and Appeal Board holding that Mylan failed to show that claims 1–4, 17, 19, and 21–23 were anticipated or would have been obvious over the cited prior art at the time the alleged invention was made. Merck reduced to practice more than what is shown in Edmondson for the claimed subject matter. View "Mylan Pharmaceuticals Inc. v. Merck Sharp & Dohme Corp.," on Justia Law