by
Adidas sought inter partes review of Nike's 598 and 749 patents, arguing (ground 1) that each challenged claim would have been obvious based on the Reed and Nishida references and (ground 2) that each claim would have been obvious based on the Castello, Fujiwara, and Nishida references. The Patent Trial and Appeal Board instituted inter partes review and held that Adidas had not met its burden of demonstrating any of the claims would have been obvious based on ground 1 without addressing the merits of ground 2 or suggesting that its conclusions as to ground 1 would be dispositive as to ground 2. After the Supreme Court issued its 2018 "SAS" decision, Adidas sought remand, arguing that SAS requires that the Board institute on all grounds raised in the Petition. The Patent Office recently issued public guidance indicating that, in light of SAS, if a trial is instituted, the Board will institute review on all challenges raised in the petitions. The Federal Circuit ordered a remand, quoting the Court: “the petitioner’s contentions, not the Director’s discretion, define the scope of the litigation all the way from institution through to conclusion.” View "Adidas AG v. Nike, Inc." on Justia Law

by
The Ninth Circuit affirmed the district court's judgment in favor of Pinkette, which sells LUSH-branded women's fashions, in a trademark infringement action brought by CWL, which sells LUSH-branded cosmetics and related goods. The panel distinguished between Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), and SCA Hygiene Products v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017), holding that the principle at work in these cases—a concern over laches overriding a statute of limitations—did not apply here, where the Lanham Act has no statute of limitations and expressly makes laches a defense to cancellation. In this case, the district court applied the correct standard when it applied the factors set forth in E-Sys., Inc. v. Monitek, Inc., 720 F.2d 604 (9th Cir. 1983), to CWL's claim for injunctive relief. After analyzing the E-Systems factors, the panel held that they validate the strong presumption in favor of laches created by CWL's delaying past the expiration of the most analogous state statute of limitations. Therefore, the district court did not abuse its discretion in applying laches to bar CWL's cancellation and infringement claims. The panel held that CWL's remaining arguments were without merit. View "Pinkette Cothing, Inc. v. Cosmetic Warriors Limited" on Justia Law

by
Triptans are selective serotonin receptor agonists, developed in the 1980s. When Zolmitriptan became available in the U.S. in oral tablet form in 1999 under the name Zomig® it was among several triptans on the market or under development. AstraZeneca owns the 237 and 767 patents, which relate to formulations of zolmitriptan for intranasal administration, and the New Drug Application for Zomig® (zolmitriptan) Nasal Spray, approved by the FDA for treatment of migraines. The patents are listed in connection with Zomig® Nasal Spray in the FDA’s Approved Drug Products with Therapeutic Equivalence Evaluations (Orange Book). In 2012, AstraZeneca and Impax entered into an agreement, granting Impax an exclusive license to AstraZeneca’s patents covering the Zomig® products, for the payment of $130 million and additional payments at varying royalty rates. In 2014, Lannett notified AstraZeneca that it had filed an Abbreviated New Drug Application, seeking approval for a generic version of Zomig® Nasal Spray, with a Paragraph IV certification (21 U.S.C. 355(j)(2)(A)(vii)(IV)), alleging noninfringement or invalidity of the 237 and 767 patents. In the subsequent infringement suit, 35 U.S.C. 271(e)(2)(A), the district court issued its claim construction opinion, the parties stipulated to infringement, and the court held that Lannett failed to prove by clear and convincing evidence that the asserted claims were invalid or would have been obvious over prior art. The Federal Circuit affirmed, upholding the entry of an injunction. View "Impax Laboratories Inc. v. Lannett Holdings Inc." on Justia Law

by
Experian compiled the Consumer View Database, which contains more than 250 million records, each pertaining to an individual consumer, which includes compiled pairings of names and addresses. The Ninth Circuit held that the name and address pairings were copyrightable as compilations but were entitled only to limited protection under the copyright laws. The panel held that Experian established that its lists were copyrightable but failed to establish that its copyright had been infringed because it did not establish a bodily appropriation of its work. Therefore, the panel affirmed the district court's grant of summary judgment for Natimark on the copyright infringement claim. However, the panel reversed as to the state law trade secret claim, remanding for further proceedings. View "Experian Information Solutions, Inc. v. Nationwide Marketing Services, Inc." on Justia Law

by
WesternGeco owns patents for a system used to survey the ocean floor. ION sold a competing system, built from components manufactured in the U.S., then shipped abroad for assembly into a system indistinguishable from WesternGeco’s. WesternGeco sued for patent infringement, 35 U.S.C. 271(f)(1) and (f)(2). The jury awarded WesternGeco royalties and lost profits under section 284. The Supreme Court reversed the Federal Circuit, holding that WesternGeco’s award for lost profits was a permissible domestic application of section 284 of the Patent Act, not an impermissible extraterritorial application of section 271. To determine whether the case involves a domestic application of the statute, courts must identify the statute’s "focus” and ask whether the conduct relevant to that focus occurred in U.S. territory. If so, the case involves a permissible domestic application of the statute. When determining the statute’s focus, the provision at issue must be assessed in concert with other provisions. Section 284, the general damages provision, focuses on “the infringement.” The “overriding purpose” is “complete compensation” for infringements. Section 271 identifies several ways that a patent can be infringed; to determine section 284’s focus in a given case, the type of infringement must be identified. Section 271(f)(2) was the basis for WesternGeco’s claim and damages. That provision regulates the domestic act of “suppl[ying] in or from the United States,” and vindicates domestic interests, The focus of section 284 in a case involving infringement under section 271(f)(2) is the act of exporting components from the U.S., so the relevant conduct occurred in the U.S. Damages are not the statutory focus but are merely the means by which the statute remedies infringements. The overseas events giving rise to the lost-profit damages here were merely incidental to the infringement. View "WesternGeco LLC v. ION Geophysical Corp." on Justia Law

by
The Ninth Circuit affirmed the district court's grant of summary judgment for CoreLogic in an action brought under the Digital Millennium Copyright Act. Plaintiffs, professional real estate photographers, alleged that CoreLogic removed copyright management information from their photographs and distributed their photographs with the copyright management information removed, in violation of 17 U.S.C. 1202(b)(1)–(3). The panel held that section 1202(b) requires an affirmative showing that the defendant knew the prohibited act would induce, enable, facilitate, or conceal infringement. In this case, plaintiffs failed to make the required affirmative showing because they failed to produce evidence showing that CoreLogic knew its software carried even a substantial risk of inducing, enabling, facilitating, or concealing infringement, let alone a pattern or probability of such a connection to infringement. The panel affirmed the district court's denial of plaintiffs' discovery request and the award of fees. View "Stevens v. CoreLogic, Inc." on Justia Law

by
Royal Crown (RC) and The Coca-Cola Company (TCCC) compete in the beverage market. Both companies and others distribute beverages that use ZERO as an element of their marks. When RC sought trademark protection for DIET RITE PURE ZERO and PURE ZERO, it disclaimed the term ZERO apart from the marks as a whole. TCCC has used ZERO as an element in its marks for at least 12 different beverage products sold in the U.S. The Patent and Trademark Office requested that TCCC disclaim the term “zero” because the term merely “describes a feature of the applicant’s goods, namely, calorie or carbohydrate content of the goods.” TCCC responded that the term had acquired distinctiveness under the Lanham Act, 15 U.S.C. 1052(f). The PTO accepted TCCC’s Section 2(f) submissions and approved the marks for publication without requiring disclaimers. The Board concluded that RC failed to demonstrate that ZERO is generic for the genus of goods identified in TCC's applications; that survey evidence indicated that TCCC’s ZERO marks had acquired distinctiveness; and that TCCC’s use of ZERO in connection with soft drinks was substantially exclusive, given the “magnitude of TCCC’s use.” The Board dismissed RC’s oppositions. The Federal Circuit vacated. The Board erred in its legal framing of the question of the claimed genericness of TCCC’s marks, and failed to determine whether, if not generic, the marks were at least highly descriptive. View "Royal Crown Co., Inc.. v. The Coca-Cola Co." on Justia Law

by
Sirona’s 006 patent “relates to a method for producing a drill assistance device,” a drill template, “to precisely place a pilot hole for a tooth implant, wherein the pilot hole for the tooth implant is aligned relative to the teeth that still remain in the jaw.” The specification discloses taking X-ray images of the jaw and taking a three-dimensional optical image of the visible surfaces of the jaw and teeth. These images are compiled into “measured data records” and correlated. From this correlation, the position for the implant is determined and a drill template is prepared. On inter partes review, the Patent Trial and Appeal Board found claims 1–8 of unpatentable as obvious, 35 U.S.C. 103, over the combination of a German Patent (Bannuscher) and a U.S. Patent (Truppe), and denied Sirona’s contingent motion to amend the claims. The Board found patentable claims 9–10. The Federal Circuit affirmed in part. Substantial evidence supports that claims 1–8 would have been obvious over the combination of Bannuscher and Truppe; the Board’s unpatentability determination did not deviate from the grounds alleged in the petition. Petitioners failed to demonstrate claims 9–10 were unpatentable. The court vacated the denial of the contingent motion to amend and remanded. View "Sirona Dental Systems GMBH v. Institut Straumann AG" on Justia Law

by
FastShip’s patents, entitled “Monohull Fast Sealift or Semi-Planing Monohull Ship,” relate to a “fast ship whose hull design in combination with a waterjet propulsion system permits, for ships of about 25,000 to 30,000 tons displacement with a cargo carrying capacity of 5,000 tons, transoceanic transit speeds of up to 40 to 50 knots in high or adverse sea states.” FastShip sued the government, alleging patent infringement under 28 U.S.C. 1498. FastShip alleged that the Navy’s Freedom-class Littoral Combat Ships, LCS-1 and LCS-3, infringed various claims. Following the Court of Federal Claims’ opinion construing various terms, the government successfully moved for partial summary judgment, arguing that the LCS3 was not “manufactured” by or for the government within the meaning of section 1498 before the patents expired. The court held that LCS-1 infringed the claims and awarded FastShip $6,449,585.82 in damages plus interest. The Federal Circuit affirmed, modifying the damages award. The court interpreted “manufactured” in section 1498 in accordance with its plain meaning, such that a product is “manufactured” when it is made to include each limitation of the thing invented and is therefore suitable for use; although other portions of LCS-3 had been completed, the “waterjet” and “hull” limitations had not been completed before the patent’s expiration. View "FastShip, LLC v. United States" on Justia Law

by
More than 95% of the world’s bourbon comes from Kentucky. One distiller, Colonel Edmund Haynes Taylor, Jr., was called “the most remarkable man to enter the whiskey industry during the post-Civil War years.” Taylor built the Old Taylor Distillery in 1887 in Woodford County, to resemble a medieval limestone castle. The distillery fell into financial ruin and changed hands several times after the Colonel’s death. Production ceased in 1972. In 2014, Peristyle purchased the Old Taylor distillery, planning to renovate and resume bourbon production there. Peristyle renamed the property “Castle & Key” and intends to do business under that name, including marketing its bourbons and whiskeys. During the renovation period, the company regularly referred to its location at “the Former Old Taylor Distillery” or simply “Old Taylor.” Sazerac, which owns the trademark rights to “Old Taylor” and “Colonel E.H. Taylor” and produces bourbons under both names, sued Peristyle, alleging trademark infringement, unfair competition, and false advertising under the Lanham Act as well as common law trademark infringement, unfair competition, and passing-off violations. The Sixth Circuit affirmed summary judgment in favor of Peristyle, which used the Old Taylor name descriptively and in good faith, qualifying for shelter under the Lanham Act’s fair use defense, 15 U.S.C. 1115(b)(4). View "Sazerac Brands, LLC v. Peristyle, LLC" on Justia Law