Justia Intellectual Property Opinion Summaries

In the case between Vans, Inc., VF Outdoor, LLC (collectively "Vans") and MSCHF Product Studio, Inc. ("MSCHF"), the United States Court of Appeals For the Second Circuit affirmed the district court's decision to grant a temporary restraining order and preliminary injunction against MSCHF. MSCHF had created a sneaker, the Wavy Baby, which appeared to mimic Vans' Old Skool shoe. Vans sued MSCHF for trademark and trade dress infringement. MSCHF argued that its use of Vans' marks was protected by the First Amendment. However, the Court of Appeals applied the recent Supreme Court decision in Jack Daniel's Properties, Inc. v. VIP Products LLC, which held that special First Amendment protections do not apply when trademarks are used as source identifiers. The Court of Appeals concluded that Vans was likely to prevail in arguing that MSCHF's Wavy Baby shoes used Vans' marks and trade dress as source identifiers, and that there was a likelihood of confusion as to the source of the Wavy Baby shoes. The court also affirmed the district court's decisions requiring MSCHF to escrow its revenues from Wavy Baby sales and not requiring a bond determination because MSCHF never requested security. View "Vans, Inc. v. MSCHF Product Studio, Inc." on Justia Law

In a case before the United States Court of Appeals for the Federal Circuit involving VLSI Technology LLC and Intel Corporation, the court examined claims of patent infringement and respective damages. VLSI alleged that Intel had infringed two of its patents, U.S. Patent No. 7,523,373 ("373 patent") and U.S. Patent No. 7,725,759 ("759 patent").The jury found that Intel had indeed infringed both patents and awarded separate damages for each. Intel appealed these decisions. The court affirmed the judgment of infringement of the 373 patent but reversed the judgment of infringement of the 759 patent. The court also vacated the award of damages for the 373 patent and remanded the case for a new trial limited to damages. The court further reversed the denial of Intel's motion for leave to amend to add a license defense.The court's decisions hinged on a number of factors, including the interpretation of the patents, the evidence presented by both parties, and the legal conclusions drawn by the district court. The court's decision underscores the complexity of patent infringement cases and the importance of accurately interpreting and applying patent law. View "VLSI TECHNOLOGY LLC v. INTEL CORPORATION " on Justia Law

Purdue sued Collegium for infringement of its patent, meant to deter the abuse of opioid analgesics by the inclusion of an aversive agent, Collegium petitioned the Patent Trial and Appeal Board for post-grant review (PGR) of claims 1– 17. The Board found the challenged claims eligible for PGR because the pre-America Invents Act (AIA) 2001 application to which Purdue claimed priority did not contain sufficient written description support for the claimed invention. Under 35 U.S.C. 326(a)(11), the Board had one year to issue a Final Written Decision subject to a six-month extension. In September 2019, Purdue filed a Notice of Bankruptcy. The PGR proceeding and court case were stayed. In October 2019, a six-month extension was approved: “Petitioner should seek any relief it deems appropriate from the Bankruptcy Court.” Neither party sought guidance or an order lifting the stay from the bankruptcy court. The April 2020, extended deadline passed. In July 2020, the bankruptcy court lifted the stay for both proceedings.Rejecting Purdue’s motion to terminate the PGR, the Board concluded that “the AIA’s silence as to a consequence for timely issuing a final written decision does not divest us of our authority” and found claims 1–17 unpatentable for lack of written description and anticipation. The Federal Circuit affirmed. Under Supreme Court precedent, the Board has the authority to issue a Final Written Decision after the deadline proscribed in the statute has passed absent any contrary indication in the language, structure, or legislative history of the statute. View "Purdue Pharma L.P. v. Collegium Pharmaceutical, Inc." on Justia Law

Telefex’s 116 patent. is directed to a method for using a guide extension catheter with a guide catheter. In 2019, Medtronic launched its own allegedly infringing guide extension catheter product, Telescope. Medtronic filed two petitions for inter partes review (IPR) of the 116 patent. The Federal Circuit affirmed the Patent and Trademark Office Patent Trial and Appeal Board in holding that Medtronic had not shown the challenged claims to be unpatentable. In finding that the claimed invention was conceived before the critical date of alleged prior art (Itou), the court determined that the claimed invention was actually reduced to practice before the critical date of Itou and the patent owner diligently pursued work on the invention until its constructive reduction to practice. “In vivo” testing was not required for actual reduction to practice because the claims at issue are method claims reciting “advancing . . . a guide catheter . . . through a main blood vessel to an ostium of a coronary artery.” View "Medtronic, Inc. v. Teleflex Life Sciences Ltd.," on Justia Law

Cloudbreak’s patent discloses compositions and methods for treating pterygium, an eye condition in which a tumor-like growth extends from the nasal or temporal side of the eye to the cornea, by administering multikinase inhibitors to the eye to inhibit specific growth factors that contribute to tumor growth and hyperemia (i.e., eye redness). The patent discloses that nintedanib in particular “may be one of the most powerful multikinase inhibitors for reducing corneal neovascularization.”In inter partes review, the Patent Trial and Appeal Board held that the petitioner, Allgenesis, failed to prove two claims of the patent are unpatentable. The Federal Circuit dismissed an appeal. Allgenesis failed to establish an injury in fact sufficient to confer standing to appeal. Allgenesis identified no concrete plans to develop and bring to market a nintedanib treatment for pterygium and has not shown its activities will create a substantial risk of infringement or will likely cause Cloudbreak to assert a claim of infringement. The court rejected an argument that Allgenesis suffered an injury in fact based on the Board’s priority determination that will have a preclusive effect on the scope of its pending patent application. Allgenesis has not established that the Board’s decision will have preclusive effect. View "Allgenesis Biotherapeutics Inc. v. Cloudbreak Therapeutics, LLC" on Justia Law

Epoprostenol, a naturally occurring substance, useful for treating cardiovascular diseases, was discovered in the early 1980s and was first brought to market under the brand name Flolan® in 1995. Epoprostenol is unstable in water, it was prepared as a freeze-dried, or lyophilized, powder for use in the Flolan composition. Actelion owns two patents directed to improved epoprostenol formulations that can be reconstituted with commercially available IV fluids and do not require refrigeration after reconstitution until use.” The inventor “unexpectedly found that epoprostenol solution in the presence of an alkalinizing agent, and high pH (>11) is very stable compared to Flolan.” Mylan sought approval to manufacture and sell a generic epoprostenol sodium for injection by filing an Abbreviated New Drug Application (ANDA) with the FDA, containing a certification that the Actelion patents’ claims were invalid or would not be infringed by the ANDA product.The Federal Circuit vacated the district court’s claim construction order with respect to the term “a pH of 13 or higher” and its judgment of infringement. The issue involves understanding what the significant digits are for “a pH of 13.” The district court must address extrinsic evidence explaining how a person of ordinary skill in the art would view the significant digits for a pH value. View "Actelion Pharmaceuticals LTD v. Mylan Pharmaceuticals Inc.," on Justia Law

In 2011, PersonalWeb sued Amazon in Texas, alleging that Amazon’s S3 technology infringed PersonalWeb’s “True Name” patents. After the court construed the claim terms, PersonalWeb stipulated to dismissal. In 2018, PersonalWeb asserted the same patents against 85 Amazon customers for their use of Amazon S3. Amazon intervened and filed a declaratory judgment action. The customer cases and Amazon’s declaratory judgment action were consolidated. PersonalWeb represented that if it lost its “Twitch” customer case, it could not prevail in the other customer cases. The court stayed the other cases; the Twitch case and Amazon’s declaratory judgment action proceeded. PersonalWeb counterclaimed against Amazon, alleging that Amazon S3 infringed its True Name patents and accused another Amazon product, CloudFront, of infringement.The Federal Circuit affirmed partial summary judgment of non-infringement of the S3 product, based on claim preclusion and summary judgment of non-infringement as to CloudFront because, under the earlier claim construction, PersonalWeb admittedly could not prove infringement. The district court granted Amazon and Twitch attorneys’ fees and costs, 35 U.S.C. 285, determining that the case was exceptional because PersonalWeb’s claims related to Amazon S3 were objectively baseless in light of the Texas Action; PersonalWeb frequently changed positions; PersonalWeb unnecessarily prolonged litigation after claim construction foreclosed its infringement theories; PersonalWeb’s positions regarding the customer cases were unreasonable; and PersonalWeb submitted declarations that it should have known were not accurate. The Federal Circuit affirmed an award of $5,401,625.06, including $5,187,203.99 in attorneys’ fees. View "In re PersonalWeb Techs., LLC" on Justia Law

Lai, an engineer, had access to Applied’s trade secrets and participated in highly confidential meetings. Mattson, Applied's direct competitor, recruited 17 Applied employees. Lai accepted a job with Mattson. Before his last day at Applied, Lai accessed proprietary information from Applied’s cloud-based storage system and sent e-mails attaching highly confidential Applied documents—many clearly marked as such—to his personal email accounts. He signed a separation certificate stating he had not retained any Applied information and confirmed this in two exit interviews. After starting his new job, Lai logged into his personal email accounts on his Mattson computer. Lai claims never disclosed any Applied information to Mattson. Mattson denies any knowledge of Lai’s actions.Applied sued Mattson and Lai, citing the Uniform Trade Secrets Act (Civ. Code 3426) and breach of Lai’s employment agreement. Lai then deleted the emails he had sent to one account, and, after communicating with Mattson’s lawyers, downloaded a confidential Applied document to his Mattson laptop, deleting it a moment later. Mattson put Lai on leave. cut off his access to his personal email accounts. and sequestered his iPhone and computers. The defendants moved to compel arbitration based on a provision in the Applied-Lai employment contract. The court of appeal affirmed a preliminary injunction prohibiting the defendants from accessing or using Applied’s confidential information and an order compelling arbitration as to Lai. Mattson, a non-party, is not entitled to arbitration. The litigation should be stayed pending arbitration. View "Mattson Technology, Inc. v. Applied Materials, Inc." on Justia Law

Choreographer Kyle Hanagami claimed that Epic Games, Inc., the creator of the videogame Fortnite, infringed the copyright of a choreographic work when the company created and sold a virtual animation, known as an “emote,” depicting portions of the registered choreography. The district court dismissed his action under the Copyright Act and remanded for further proceedings on claims of direct and contributory infringement of a choreographic work.   The Ninth Circuit reversed. The panel held that, under the “extrinsic test” for assessing substantial similarity, Hanagami plausibly alleged that his choreography and Epic’s emote shared substantial similarities. The panel held that, like other forms of copyrightable material such as music, choreography is composed of various elements that are unprotectable when viewed in isolation. What is protectable is the choreographer’s selection and arrangement of the work’s otherwise unprotectable elements. The panel held that “poses” are not the only relevant element, and a choreographic work also may include body position, body shape, body actions, transitions, use of space, timing, pauses, energy, canon, motif, contrast, and repetition. The panel concluded that Hanagami plausibly alleged that the creative choices he made in selecting and arranging elements of the choreography—the movement of the limbs, movement of the hands and fingers, head and shoulder movement, and tempo—were substantially similar to the choices Epic made in creating the emote. The panel held that the district court also erred in dismissing Hanagami’s claim on the ground that the allegedly copied choreography was “short” and a “small component” of Hanagami’s overall work. View "KYLE HANAGAMI V. EPIC GAMES, INC., ET AL" on Justia Law

The 549 and 175 patents disclose microcalorimeters, machines that measure the amount of energy absorbed or released during a chemical reaction between two compounds, specifically an isothermal titration calorimeter (ITC). Malvern’s 782 patent is unrelated to those patents. An examiner rejected various claims of the 782 patent (with an automated ITC) as anticipated by the 968 application, disclosing a prior art “manual ITC system.” The examiner understood the 968 application to disclose an automated ITC system but noted that because the 968 application and the 782 patent had a common assignee, the 968 application might not qualify as prior art under pre-America Invents Act, 35 U.S.C. 103(c)(1). The examiner then withdrew the rejection, finding that the 968 application did not count as prior art. After Malvern acquired the 549 and 175 patents, Malvern sought supplemental examination of the 175 patent under 35 U.S.C. 257.Malvern sued Waters for infringing the 549 and 175 patents. The district court construed the term “pipette guiding mechanism” as a “mechanism that manually guides the pipette assembly.” The Federal Circuit vacated. The claim language and the specification indicate that the term is used broadly in the 549 and 175 patents and refers to a mechanism that guides the pipette assembly either manually or automatically. Merely listing the 782 patent office actions in the IDS of the 175 patent supplemental examination was insufficient to inform the meaning of “pipette guiding mechanism” in unrelated patents. View "Malvern Panalytical Inc. v. TA Instruments-Waters LLC" on Justia Law