Justia Intellectual Property Opinion Summaries

The Corephotonics patent is directed to creating “portrait photos” and discloses “a thin (e.g., fitting in a cell phone) dual-aperture zoom digital camera” that combines images taken by a wide lens and a tele lens to create a fused still image. Apple filed petitions for inter partes review, each challenging various claims of the patent as obvious in view of multiple prior art references. The Patent Trial and Appeal Board rejected Apple’s arguments.The Federal Circuit vacated and remanded. Neither the claim language nor the specification presents a cut-and-dry case of claim construction for “fused image with a point of view of the Wide camera” but taken together and in context, the intrinsic evidence supports that the claim term requires only that the fused image maintain Wide perspective point of view or Wide position point of view, but does not require both. Apple’s proposed construction is more in line with the intrinsic evidence. In addition, the Board based its second decision on a ground not raised by any party in violation of the Administrative Procedure Act. View "Apple, Inc. v. Corephotonics Ltd." on Justia Law

About 20 years ago, PIM introduced a chewy candy, watermelon-flavored, wedge-shaped Sour Jacks Wedges. Its colors match its flavor: a green layer topped by a thin white band with a larger red section. PIM advertised the candy as “The Ultimate Shape of Sour” and told consumers to “Respect the Wedge.” Years later, PIM tried to trademark the wedge shape. The Patent and Trademark Office required PIM to add colors. PIM registered the shape of a wedge, with an upper green section with white speckles, followed by a narrow middle white section, with a lower red section with white speckles. PIM later produced Sour Jacks Wedges in other flavors. Each has a color to match its flavor. The Patent Office granted PIM a supplemental registration for a tricolored wedge with unspecified colors. Haribo recently introduced its own chewy watermelon candy as an elongated watermelon wedge in red, white, and green.PIM sued for trademark and trade-dress infringement, Lanham Act, 15 U.S.C. 1114(1), 1125(a)(1)(A). Haribo countered that PIM’s trade dress was functional and asked the court to cancel PIM’s trademark. The district court granted Haribo summary judgment. The Third Circuit affirmed. PIM may have created the wedge shape to distinguish its product in the market but in doing so, it made a candy reminiscent of a juicy watermelon wedge, which makes the whole trade dress functional when applied to a watermelon candy. The cancellation order should apply to the primary registration. View "Pim Brands Inc v. Haribo of America Inc." on Justia Law

United Aeronautical Corporation and Blue Aerospace, LLC (collectively, Aero) filed suit against the United States Air Force and Air National Guard (collectively, USAF) in the U.S. District Court for the Central District of California. Aero alleges that USAF has for some time violated federal procurement regulations and the Trade Secrets Act by improperly using Aero’s intellectual property. The district court dismissed for lack of subject matter jurisdiction, concluding that the Contract Disputes Act (CDA), precludes jurisdiction over Aero’s action by vesting exclusive jurisdiction over federal-contractor disputes in the Court of Federal Claims.   The Ninth Circuit affirmed. The panel agreed with the district court that the Contract Disputes Act “impliedly forbids” jurisdiction over Aero’s claims by vesting exclusive jurisdiction over federal-contractor disputes in the Court of Federal Claims. A claim falls within the scope of the CDA’s exclusive grant of jurisdiction if (1) the plaintiff’s action relates to (2) a procurement contract and (3) to which the plaintiff was a party. Here, Aero’s claims that USAF improperly received and used MAFFS data (1) relate to the DRA, (2) the DRA is a procurement contract, and (3) Aero is a contractor for purposes of the DRA. The panel held that the test set forth in Megapulse, Inc. v. Lewis, 672 F.2d 959 (D.C. Cir. 1982), is limited to determining whether the Tucker Act—which grants exclusive jurisdiction to the Court of Federal Claims over breach-of-contract actions for money damages—“impliedly forbids” an ADA action because Megapulse addressed implied preclusion only pursuant to the Tucker Act, not pursuant to the CDA. View "UNITED AERONAUTICAL CORP., ET AL V. USAF, ET AL" on Justia Law

Plaintiff Rex Real Estate I, L.P. sued Defendant Rex Real Estate Exchange for trademark infringement. The district court granted Defendant’s motion for judgment as a matter of law after Plaintiff rested its case. Plaintiff appealed the judgment against its federal infringement claims under the Lanham Act.   The Fifth Circuit affirmed in part, reversed in part, and remanded. The court held that a reasonable jury could not find in favor of Plaintiff’s Section 32(1) claim, but it could find in favor of Plaintiff’s Section 43(a) claim. The court explained that while there was strong evidence that the marks are perceived by the public as primarily a personal name, the record does not compel that conclusion. Thus, the district court erred by deciding as a matter of law that Plaintiff’s marks are not inherently distinctive.     Moreover, the court explained that Plaintiff also asserts that the numerous calls it received from confused consumers who heard Defendant’s advertisements show that the marks have strong standing in the marketplace because it could mean that the callers assumed that Plaintiff was the sole source of the advertising. This is a plausible inference for a jury to make. The court held that taken together and in the light most favorable to the Plaintiff, a reasonable jury could find that this factor weighs in favor of Plaintiff. View "Rex Real Est I v. Rex Real Est" on Justia Law

Sisvel’s 698 and 196 patents claim methods and apparatuses that rely on the exchange of frequency information in connection with cell reselection between a mobile station (or user cell phone) and a central mobile switching center. Both are entitled “Cell Reselection Signalling Method.” The 196 patent is a continuation of the application that eventually gave rise to the 698 patent.The Patent Trial and Appeal Board concluded that multiple claims in each patent are unpatentable as anticipated and/or obvious in view of certain prior art. Sisvel challenged the Board’s construction of a single claim term, “connection rejection message” and the Board’s denial of its revised motion to amend the claims of the 698 patent. The Federal Circuit affirmed, agreeing that “connection rejection message” should be given its plain and ordinary meaning of “a message that rejects a connection.” The Board correctly determined that Sisvel failed to meet its burden to show that the scope of its substitute claims is not broader than the scope of its original claims. View "Sisvel International S.A. v. Sierra Wireless, Inc.," on Justia Law

The Copyright Office sent a letter to Valancourt Books, LLC, an independent press based in Richmond, Virginia, demanding physical copies of Valancourt’s published books on the pain of fines. Valancourt protested that it could not afford to deposit physical copies and that much of what it published was in the public domain. In response, the Office narrowed the list of demanded works but continued to demand that Valancourt deposit copies of its books with the Library of Congress or otherwise face a fine. Valancourt then brought this action against the Register of Copyrights and the Attorney General. Valancourt challenged the application of Section 407’s deposit requirement against it as an unconstitutional taking of its property in violation of the Fifth Amendment and an invalid burden on its speech in violation of the First Amendment. The district court granted summary judgment to the government on both claims.   The DC Circuit reversed the district court’s grant of summary judgment in the government’s favor and remanded for the entry of judgment to Valancourt and the award of relief. The court concluded that Section 407, as applied by the Copyright Office in this case, worked an unconstitutional taking of Valancourt’s property. The court explained that the Office demanded that Valancourt relinquish property (physical copies of copyrighted books) on the pain of fines. And because the requirement to turn over copies of the works is not a condition of attaining (or retaining) copyright protection in them, the demand to forfeit property cannot be justified as the conferral of a benefit in exchange for property. View "Valancourt Books, LLC v. Merrick Garland" on Justia Law

Cellect’s challenged patents are directed to personal digital-assistant devices or phones. Each claims priority from a single application, the 255 patent. The 369 and 626 patents are continuations-in-part of the 255 patent. The 742 patent is a continuation-in-part of the 369 patent; the 621 patent is a continuation-in-part of the 626 patent. The 036 patent is a continuation of the 626 patent. Each of the challenged patents was granted Patent Term Adjustment (PTA) for Patent Office delay during prosecution (pre-AIA 35 U.S.C. 154(b)); each would have expired on the same day but for the grants of PTA. None were subject to a terminal disclaimer during prosecution; the patents have all expired.Cellect sued Samsung for infringement. Samsung requested ex parte reexaminations, asserting that the patents were unpatentable based on obviousness-type double patenting (ODP). The examiner determined that the challenged claims were obvious variants of Cellect’s prior-expiring reference patent claims, tracing back to the 036 patent, which did not receive PTA and retained an expiration date 20 years after the filing of the 255 application. The 621 patent claims were unpatentable over the 626 patent claims, which were unpatentable over the 369 patent claims. The 742 patent claims were unpatentable over the 369 claims. The 369 patent claims were unpatentable over the 036 claims, which did not receive PTA. The Board and Federal Circuit affirmed. ODP for a patent that has received PTA, regardless of whether a terminal disclaimer is required or has been filed, must be based on the expiration date of the patent after PTA has been added. View "In Re Cellect, LLC" on Justia Law

Whirlpool filed a complaint against Shenzhen Sanlida Electrical Technology Co., Ltd. and Shenzhen Avoga Technology Co., Ltd. (collectively, “Shenzhen”) asserting federal and state law claims for trademark and trade dress infringement along with a motion for a preliminary injunction to stop the sale of the allegedly infringing mixers. The district court granted the injunction. In addition to its appeal, Shenzhen sought an emergency stay pending appeal. After granting an initial administrative stay, the Fifth Circuit denied that motion. Then, after the Federal Circuit heard the merits of the case, it affirmed the district court.The Fifth Circuit found the district court did not abuse its discretion in finding that the harms weighed in favor of Whirlpool. View "Whirlpool v. Shenzhen Sanlida" on Justia Law

Volvo’s 692 patent is directed to a tractor-type stern drive for a boat. A stern drive is an engine mounted in the boat's hull, connected to a drive unit mounted outside of the hull, typically on the stern; it is also called an “inboard/outboard drive.” A tractor-type drive generally relies on forward, bow-facing propellers that pull the boat through the water. In 2015, Volvo launched its commercial embodiment of the patent, the Forward Drive, which became extremely successful for water sports, including wake-surfing. The forward-facing propellers increased the distance between the propeller and swimmers, compared with prior, pulling-type stern-drive boats. In 2020, Brunswick launched its own drive that embodies the 692 patent, the Bravo Four, and petitioned for inter partes review, asserting that all claims would have been anticipated or obvious based on several references.The Patent Trial and Appeal Board found all claims unpatentable as obvious. The Federal Circuit vacated. The Board’s finding of a motivation to combine was supported by substantial evidence but the Board failed to properly consider the evidence of objective indicia of nonobviousness. Volvo established a nexus between its objective evidence of secondary considerations and the claimed invention. Even if its assignment of weight to each factor was supported by substantial evidence (“some weight” for copying, industry praise, and commercial success; and “very little weight” for skepticism, failure of others, and long-felt unsolved need), the Board did not discuss the summation of the factors. View "Volvo Penta of the Americas, LLC v. Brunswick Corp." on Justia Law

Pace (a company that sells and services garage doors) sued a competitor, Overhead Garage Door (“OGD”) (a company that also offers garage door services), alleging a host of federal and state law violations relating to OGD’s trade practices. Pace and Overhead Door Corporation (a garage door manufacturer that is not a party to this case but that has a name noticeably similar to Defendant OGD, its competition) have a licensing agreement in which Pace is the licensee, and Overhead Door Corporation is the licensor. As part of this agreement, Pace uses Overhead Door Corporation’s marks. The district court granted summary judgment to OGD on all of Pace’s claims, concluding in large part that Pace could not bring suit because Pace was a nonexclusive licensee that lacked sufficient ownership rights in Overhead Door Corporation’s marks and because OGD and Overhead Door Corporation’s settlement agreement extinguished Pace’s claims. Pace timely appealed.   The Eleventh Circuit vacated. The court concluded that Pace may bring its federal and state law claims. The court concluded that the licensing agreement, Pace’s status as a nonexclusive licensee, and the settlement agreement do not bar Pace from bringing its claims under the Lanham Act, state law, or common law. The court explained that although the agreement may prevent OGD and Overhead Door Corporation from suing each other, the settlement agreement is “not . . . binding on . . . current and future licensees.” As such, the settlement agreement is not binding on licensees like Pace and does not prevent Pace from suing View "D.H. Pace Company, Inc. v. OGD Equipment Company, LLC" on Justia Law