Justia Intellectual Property Opinion Summaries

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AndroGel, a testosterone replacement therapy, generated billions of dollars in sales, The Federal Trade Commission sued the owners of an AndroGel patent under Section 13(b) of the Federal Trade Commission Act, 21 U.S.C. 301, alleging that they filed sham patent infringement suits against Teva and Perrigo and entered into an anticompetitive reverse-payment agreement with Teva. The FTC accused the defendants of trying to monopolize and restrain trade over AndroGel. The District Court dismissed the FTC’s claims to the extent they relied on a reverse-payment theory but found the defendants liable for monopolization on the sham-litigation theory. The court ordered the defendants to disgorge $448 million in profits but denied the FTC’s request for an injunction.The Third Circuit reversed in part. The district court erred by rejecting the reverse-payment theory and in concluding that the defendants’ litigation against Teva was a sham. The court did not err in concluding the Perrigo litigation was a sham and that the defendants had monopoly power in the relevant market. The FTC has not shown that monopolization entitles it to any remedy. The court did not abuse its discretion in denying injunctive relief. The court erred by ordering disgorgement because that remedy is unavailable under Section 13(b). View "Federal Trade Commission v. AbbVie Inc" on Justia Law

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Mazur discovered a process for creating “black silicon” by irradiating a silicon surface with ultra-short laser pulses to create a textured surface; the resulting black silicon has electronic properties different from traditional silicon. Several patents issued, including the 467 patent, from a 2001 patent application. SiOnyx was formed to commercialize black silicon. In 2006, SiOnyx met with Hamamatsu, which produces silicon-based photodetector devices. The parties entered into a nondisclosure agreement (NDA), providing that a party receiving confidential information shall maintain the information in strict confidence for seven years after the expiration of the agreement and acknowledges that the disclosing party claims ownership of the information and all patent rights. While the NDA was in effect, SiOnyx provided to Hamamatsu proposed architectures and a manufacturing process for a photodetector device, which were marked as confidential. Hamamatsu ultimately represented that it wished to develop its products alone. The NDA expired in 2008. In 2009, Hamamatsu notified SiOnyx that Hamamatsu intended to introduce a new photodiode that it did not believe infringed SiOnyx’s intellectual property or breached Hamamatsu’s confidentiality obligations. Hamamatsu filed patent applications in several countries. In 2010, Hamamatsu began releasing the accused products. SiOnyx began selling its own photodetector products. In 2014 a customer alerted SiOnyx to Hamamatsu’s patents.The Federal Circuit affirmed that Hamamatsu breached the NDA and infringed the 467 patent. SiOnyx is entitled to sole ownership of the disputed U.S. Patents. The district court erred in failing to grant SiOnyx sole ownership of the Disputed Foreign Patents. View "Sionyx LLC v. Hamamatsu Photonics K.K." on Justia Law

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Future Proof filed suit against Coors for trademark infringement, claiming that consumers would confuse Coors' hard seltzer beverage "Vizzy" with Future Proof's hard seltzer beverage "Brizzy."The Fifth Circuit affirmed the district court's denial of Future Proof's motion for a preliminary injunction, holding that the district court did not abuse its discretion in determining that Future Proof cannot determine a likelihood of success on the merits of its claims. In this case, the district court considered the digits of confusion and concluded that three digits supported the injunction and one weighed "marginally in favor of granting the injunction . . . ." But the district court correctly concluded that the other four factors did not support the injunction. The district court also notably concluded correctly that the two digits that have special importance, namely the sixth—which "may alone be sufficient to justify an inference that there is a likelihood of confusion,"—and the seventh—which constitutes the "best evidence of a likelihood of confusion,"—did not support the injunction. View "Future Proof Brands, LLC v. Molson Coors Beverage Co." on Justia Law

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VidStream’s patent, titled: “Recording and Publishing Content on Social Media Websites,” has a priority date of May 2012. Twitter filed two petitions for inter partes review (IPR), with method claims 1–19 in one petition, and medium and system claims 20–35 in the other. Twitter cited the Bradford book as the primary reference for both petitions, combined with other references. With the petitions, Twitter filed copies of several pages of the Bradford book and explained their relevance to the claims. Twitter also filed a Bradford 2011 copyright page and copies of archived webpages from the Internet Archive, showing the Bradford book listed on a publicly accessible website bearing a November 2011 website date and website pages dated December 6, 2011, showing the Bradford book available for purchase from Amazon.The Patent Trial and Appeal Board held that claims 1–35 are unpatentable as obvious. The Federal Circuit affirmed the Board’s holding that Bradford is prior art. The Board permitted both sides to provide evidence concerning the reference date of the Bradford book; the evidence well supports its finding that Bradford was published and publicly accessible before the patent’s 2012 priority date. With Bradford as the primary reference, VidStream did not appeal the unpatentability of claims 1–35. View "VidStream LLC v. Twitter, Inc." on Justia Law

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Rogers owned RJ Control. Elder owns Multiject, which engineers and sells accessories for plastic injection molding. In 2008, the parties entered into an oral agreement. Rogers developed a control system for injection molding. RJ updated that system design in 2013 (Design 3). The parties dispute the invoicing for Design 3. In 2014, Elder asked for copies of Design 3’s diagrams and software source code. Rogers disclosed that information. Days later, Elder indicated that Multiject would no longer need Rogers’s services and would instead use RSW for the assembly and wiring of the control systems. RSW's quote explicitly referenced Design 3’s software code and technical drawings without any changes. RSW apparently believed Multiject had permission to use the software and technical drawings.Almost two years later, Rogers obtained Copyright Certificates of Registration for the software code and the technical drawings. RJ filed suit. The district court granted the defendants summary judgment. The Sixth Circuit affirmed in part. The use of the Design 3 drawing to manufacture a control system is not an act of copyright infringement. Copyright protection extends to the drawing itself, 17 U.S.C. 106, but does not extend to the use of those drawings to create the described useful article. Patent law, with stricter standards requiring novelty, governs use protection. The court reversed with respect to the software code, finding that material questions of fact remain concerning whether the complex technology is properly protected under the Copyright Act. View "RJ Control Consultants, Inc. v. Multiject, LLC" on Justia Law

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Vectura sued GSK in 2016, alleging direct infringement of claim 3 of the 991 patent, which concerns the production of “composite active particles” for use in pulmonary administration, such as in dry-powder inhalers. The composite active particles described in the patent consist of additive material that is adhered to particles of the active ingredient. The active ingredient produces the desired chemical or biological effect, while the additive particles promote the dispersion and delivery of the active ingredient into the lungs when the inhaler is activated.The Federal Circuit affirmed holdings that the patent was infringed and not invalid. The court rejected arguments that Vectura failed to present substantial evidence that the accused inhalers use additive material that “promotes the dispersion” of the active material, that the district court’s construction of the term “composite active particles” was erroneous, that there were flaws in the calculation of the royalty proposed by Vectura’s damages expert, and that Vectura made prejudicial references to GSK’s sales and advanced an improper “pennies on the dollar” argument in comparing Vectura’s royalty request to GSK’s sales. View "Vectura Ltd. v. GlaxoSmithKline, LLC" on Justia Law

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Alleshouse and Yeh are named as the inventors on the 685 and 189 patents, which claim water-park attractions that individuals may ride as if surfing, and on the 433 patent, which claims nozzle configurations for regulating water flow in such attractions. Pacific, the company Alleshouse and Yeh formed to develop and market such attractions, is the assignee of the patents. Whitewater is the successor of Wave, which employed Alleshouse until just before he went into business with Yeh and the patented inventions were conceived. Whitewater sued Alleshouse, Yeh, and Pacific, claiming that Alleshouse had to assign each of the patents to Whitewater, as Wave’s successor, under the terms of Alleshouse’s employment contract with Wave. Whitewater also claimed that Yeh, who had not been employed by Whitewater or its predecessors and therefore was not under any alleged assignment duty, was improperly listed as an inventor on each of the patents.The district court held that Alleshouse breached the employment agreement, so Whitewater was entitled to an assignment of the patent interests, and Yeh was improperly joined as an inventor. The Federal Circuit reversed, The contract’s assignment provision is void under California law, (Labor Code 2870, 2872; Business and Professions Code 16600), so Whitewater lacks standing to contest inventorship. View "Whitewater West Industries Ltd. v. Alleshouse" on Justia Law

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CFC appealed the district court's dismissal based on summary judgment of its complaint alleging trademark infringement, trademark dilution, and unfair competition by Energizer. CFC contends that its trademark for automobile air fresheners, consisting of the words "Black Ice," is infringed and diluted by Energizer's sale of products labeled with the words "Midnight Black Ice Storm" and that its trademark, consisting of the words "Bayside Breeze," is infringed and diluted by Energizer's sale of products labeled with the words "Boardwalk Breeze."The Second Circuit concluded that the record developed by CFC sufficed to withstand Energizer's motion for summary judgment with respect to CFC's mark "Black Ice" but not its mark "Bayside Breeze." Accordingly, the court reversed the grant of summary judgment for Energizer on CFC's federal trademark infringement claim with respect to its "Black Ice" mark; affirmed the grant of summary judgment for Energizer on CFC's federal trademark infringement claim with respect to the "Bayside Breeze" mark; affirmed the grant of summary judgment for Energizer on CFC's federal trademark dilution claim with respect to both marks; reversed the grant of summary judgment for Energizer on CFC's state law claims with respect to the "Black Ice" mark; and affirmed the grant of summary judgment for Energizer on CFC's state law claims with respect to the "Bayside Breeze" mark. The court remanded for further proceedings. View "Car-Freshner Corp. v. American Covers, LLC" on Justia Law

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SIPCO’s patent explains communicating information from a previously unconnected, remote device to a central location by setting up a two-step communication path through intermediate nodes to use the nodes’ already-provided link (e.g., a public-switched telephone network) to the central location. The remote device communicates wirelessly to an intermediate node. The Patent Board found that the patent was not exempt from covered business method (CBM) review under the “technological invention” exception and found five claims patent-ineligible under 35 U.S.C. 101 and unpatentable for obviousness under section 103. The Federal Circuit vacated.The Supreme Court remanded for further consideration in light of the Court’s 2020 “Thryv” decision. The Federal Circuit then affirmed the Board’s obviousness determination and did not address the Board’s patent-ineligibility decision under section 101. The Thryv decision makes clear that the threshold determination that the patent qualifies for CBM review is non-appealable under 35 U.S.C. 324(e); SIPCO’s challenge is nothing more than a contention that the agency should have refused to institute CBM review View "SIPCO, LLC v. Emerson Electric Co." on Justia Law

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Google’s 765 application relates to “distributed caching for video-on-demand systems, and in particular to a method and apparatus for transferring content within such video-on-demand systems.” The proposed invention presents a solution for determining how to stream content to set-top boxes and where to store said content among the content servers, be it at one or more video server offices or smaller, partial-content libraries at local servers (video home offices). The examiner rejected certain claims under 35 U.S.C. 103, as obvious in view of prior art. The Federal Circuit affirmed, declining to address certain of Google’s arguments as waived. View "In Re Google Technology Holdings LLC" on Justia Law