Justia Intellectual Property Opinion Summaries

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Lanard owns Design Patent D167 and the 458 copyright for a work entitled “Pencil/Chalk Holder,” relating to a toy chalk holder designed to look like a pencil. Lanard sold the Chalk Pencil, marked to indicate Lanard’s copyright and patent protections, to national retailers. Ja-Ru designed a toy chalk holder, using the Chalk Pencil as a reference sample. Lanard’s retailers stopped ordering the Chalk Pencil and began ordering Ja-Ru’s product. Lanard sued, asserting copyright infringement, design patent infringement, trade dress infringement, and statutory and common law unfair competition. The Federal Circuit affirmed summary judgment that Ja-Ru’s product does not infringe the patent, that the copyright is invalid and alternatively not infringed, and that Ja-Ru’s product does not infringe Lanard’s trade dress. Lanard’s unfair competition claims failed because its other claims failed. The district court properly construed the claims commensurate with the statutory protection for an ornamental design. Lanard impermissibly seeks to exclude any chalk holder in the shape of a pencil and extend the scope of the patent beyond the “new, original and ornamental design,” 35 U.S.C. 171. Lanard’s copyright is for the chalk holder itself; Lanard’s arguments seek protection for the dimensions and shape of the useful article itself. Because the chalk holder itself is not copyright protectable, Lanard cannot demonstrate that it holds a valid copyright. Lanard cannot establish that the Chalk Pencil has acquired secondary meaning. View "Lanard Toys Ltd. v. Dolgencorp LLC" on Justia Law

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ECT sued ShoppersChoice for infringement of its 261 patent, titled “Secure Notification Messaging with User Option to Communicate with Delivery or Pickup Representative.” The Federal Circuit affirmed a judgment on the pleadings that claim 11 of the patent is invalid under 35 U.S.C. 101, as directed to the abstract idea of providing advance notification of the pickup or delivery of a mobile thing. Claims, like claim 11, that are directed to longstanding commercial practices do not pass step one of the two-part section 101 “Alice” test. The process of recording authentication information—such as the customer’s name, address, and telephone number—and including that information in subsequent communications with the customer is abstract not only because it is a longstanding commercial practice, but also because it amounts to nothing more than gathering, storing, and transmitting information, quite unlike the “improvement[s] in computer capabilities” that have been found eligible for patenting at step one. The claims do not include an inventive concept sufficient to transform the claimed abstract idea into a patent-eligible application. View "Electronic Communication Technologies, LLC v. ShoppersChoice.com, LLC" on Justia Law

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Lucky Brand and Marcel market clothing. Marcel registered the trademark “Get Lucky.” Lucky Brand registered the trademark “Lucky Brand” and other marks with the word “Lucky.” In a 2003 settlement agreement, Lucky Brand agreed to stop using the phrase “Get Lucky.” Marcel released its claims regarding Lucky Brand’s use of its other trademarks. In 2005, Lucky Brand sued Marcel for violating its trademarks. Marcel filed counterclaims turning on Lucky Brand’s continued use of “Get Lucky,” but did not claim that Lucky Brand’s use of its other marks alone infringed that mark. The court enjoined Lucky Brand from copying or imitating Marcel’s “Get Lucky” mark. In 2011, Marcel sued Lucky Brand, arguing only that Lucky Brand’s post-2010 use of Lucky Brand’s other marks infringed Marcel’s “Get Lucky” mark. Marcel did not allege that Lucky Brand continued to use "Get Lucky." Lucky Brand argued, for the first time since early in the 2005 Action, that Marcel had released those claims in the settlement agreement. The Second Circuit vacated the dismissal of the action, concluding that “defense preclusion” prohibited Lucky Brand from raising that unlitigated defense. A unanimous Supreme Court reversed. Any preclusion of defenses must, at a minimum, satisfy the strictures of issue preclusion or claim preclusion. Here, issue preclusion does not apply, so the causes of action must share a “common nucleus of operative fact[s]” for claim preclusion to apply. The 2005 claims depended on Lucky Brand’s alleged use of “Get Lucky.” In the 2011 suit, Marcel alleged that the infringement was Lucky Brand’s use of its other marks containing the word “Lucky,” not any use of “Get Lucky” itself. The conduct in the 2011 suit occurred after the conclusion of the 2005 suit. View "Lucky Brand Dungarees, Inc. v. Marcel Fashions Group, Inc." on Justia Law

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ETS filed a trademark infringement action against Scarpello over the "Engineered Tax Services" mark under the Lanham Act. The district court held that the mark lacked distinctiveness and granted summary judgment in favor of Scarpello. The Eleventh Circuit reversed, holding that the district court erred in concluding, as a matter of law, that ETS's mark was not suggestive, but merely descriptive—and thus invalid. Furthermore, the district court failed to consider whether the mark might also have acquired any protectible secondary meaning or whether any actionable infringement occurred. The court held that a jury could reasonably find the mark inherently distinctive and remanded for further proceedings. View "Engineered Tax Services, Inc. v. Scarpello Consulting, Inc." on Justia Law

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The Ninth Circuit vacated the district court's order denying Dolores' motion for recovery of attorney's fees under the Copyright Act. The district court had granted summary judgment for Dolores on Doc's Dream's complaint seeking a declaration that the late religious leader Dr. Eugene Scott completely abandoned his works to the public domain. The district court then denied Dolores' motion for attorney fees under 17 U.S.C. 505. The panel held that, even when asserted as a claim for declaratory relief, any action that turns on the existence of a valid copyright and whether that copyright has been infringed invokes the Copyright Act. Therefore, attorney's fees may be available under section 505 of the Copyright Act. View "Doc's Dream, LLC v. Dolores Press, Inc." on Justia Law

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In 2019, the Federal Circuit (Arthrex) held that the appointment of the APJs by the Secretary of Commerce, 35 U.S.C. 6(a), violated the Appointments Clause. The Patent and Trademark Office and Cisco argued that the Federal Circuit erred in extending Arthrex beyond the context of inter partes reviews to an appeal from a decision of the Patent Trial and Appeal Board in an inter partes reexamination. They claimed that administrative patent judges (APJs) should be deemed constitutionally appointed officers at least when it comes to their duties reviewing appeals of inter partes reexaminations. The Federal Circuit rejected the argument. The fact that an inferior officer on occasion performs duties that may be performed by an employee not subject to the Appointments Clause does not transform his status under the Constitution. Courts should look not only to the authority exercised in the case but to all of the appointee’s duties when assessing an Appointments Clause challenge. An APJs’ duties include both conducting inter partes reviews and reviewing appeals of inter partes reexaminations. Although no discovery is held and no trial conducted in inter partes reexaminations, the proceedings are otherwise similar. The Director’s authority over the Board’s decisions is not meaningfully greater in the context of inter partes reexaminations than in inter partes reviews. View "Virnetx Inc. v. Cisco Systems, Inc." on Justia Law

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Starting in 1992, Schwendimann worked at ACT, which manufactured paper coating products. In 1998-2000, Schwendimann and Nasser (ACT's owner) filed the 983 and 845 patent applications; both were named as inventors. Schwendimann filed the 910 application as the sole inventor. All three applications were assigned to ACT. When ACT ceased operations in 2001, it owed significant debts. ACT gave Schwendimann a $282,073.25 promissory note for unpaid wages. ACT agreed to assign its patent applications to Schwendimann to satisfy its outstanding debt to her..Schwendimann agreed to satisfy ACT’s debts to its law firm, SLW. An SLW attorney was instructed to file the necessary documents. SLW filed an incorrect assignment for the 845 application. In 2011, Schwendimann sued Arkwright for infringement and became aware of the incorrect assignment; ACT's assignment to Schwendimann was then recorded with the Patent Office. The district court rejected a claim that Schwendimann lacked standing, finding that ACT assigned the 845 application to Schwendimann in 2002. A judgment of willful infringement was entered; the jury awarded Schwendimann damages of $2,624,228.00. The court awarded prejudgment interest of $1,915,328.00, applying a 10 percent interest rate, under Minnesota law. The Federal Circuit affirmed. Arkwright’s proposed 1.42 percent interest rate was insufficient to place Schwendimann in as good a position as she would have been in, had Arkwright entered into a reasonable royalty agreement; the prejudgment interest rate should be calculated based on the amount of damages awarded, not of Arkwright’s final settlement offer. Arkwright failed to provide a written offer. View "Schwendimann v. Arkwright Advanced Coating, Inc." on Justia Law

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Plaintiff and Visions of America filed suit against Scholastic, alleging copyright infringement on 89 photographs plaintiff had authored. The district court determined that Scholastic had infringed six of the photographs and dismissed the remaining claims. The DC Circuit held that the district court properly recited the elements of a copyright infringement claim and placed the burden of proof on plaintiff to demonstrate that Scholastic's use of his images was outside the scope of the license; Petrella v. Metro-Goldwyn-Mayer, Inc., 572 U.S. 663 (2014), did not abrogate this Circuit's adoption of the "discovery rule" for copyright infringement claim accrual in Psihoyos v. John Wiley & Sons, Inc., 748 F.3d 120 (2d Cir. 2014); the Copyright Act limits damages to the three years prior to when a copyright infringement action is filed; and the registration of a compilation of photographs under 17 U.S.C. 409 by an applicant who holds the rights to the component works is valid and effectively registers the underlying individual photos, even if the compilation does not list the individual authors of the individual photos. Accordingly, the court affirmed in part and reversed in part, remanding for further proceedings. View "Sohm v. Scholastic Inc." on Justia Law

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Eage filed suit, alleging infringement of four patents under the doctrine of equivalents, stemming from Slayback’s new drug application for a generic version of Eagle’s branded bendamustine product, BELRAPZO®. Bendamustine is used to treat chronic lymphocytic leukemia and indolent B-cell non-Hodgkin lymphoma. The district court entered a judgment of non-infringement on the pleadings. The Federal Circuit affirmed, rejecting Eagle’s arguments that the district court erred when it concluded that the asserted patents disclose, but do not claim, ethanol—and therefore dedicated ethanol to the public and that the district court improperly applied the dedication disclosure doctrine at the pleadings stage, in the presence of factual disputes and without drawing all inferences in Eagle’s favor. The disclosure-dedication doctrine bars application of the doctrine of equivalents: “when a patent drafter discloses but declines to claim subject matter, . . . this action dedicates the unclaimed subject matter to the public.” The application of the doctrine is a question of law. The asserted patents disclose ethanol as an alternative to propylene glycol in the “pharmaceutically acceptable fluid” claim limitation. The only reasonable inference that can be made from the disclosures is that a skilled artisan would understand the patents to disclose ethanol as an alternative to the claimed propylene glycol. View "Eagle Pharmaceuticals Inc. v. Slayback Pharma LLC" on Justia Law

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The Patent Trial and Appeal Board instituted inter partes review of Caterpillar’s patent and issued its final written decision on November 13, 2019. Caterpillar appealed, then moved to vacate and remand for a new hearing before a differently constituted panel in light of the Federal Circuit’s 2019 “Arthrex” holding that the administrative patent judges of the Patent Trial and Appeal Board were improperly appointed. The Federal Circuit denied the motion. Unlike prior cases, which have been remanded, Arthrex issued before the Board’s final written decision in Caterpillar’s case. The Arthrex holding was expressly limited “to those cases where final written decisions were issued.” The court rejected an argument that even if the panel members became constitutional immediately before issuing the final written decision, that “does not cure a year’s worth of constitutional violations influencing the Board’s thinking and conclusions.” View "Caterpillar Paving Products, Inc. v. Wirtgen America, Inc." on Justia Law