Justia Intellectual Property Opinion Summaries

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This case concerns a patent dispute between RAI Strategic Holdings, Inc. (RAI) and Philip Morris Products S.A. (Philip Morris) about an electrically powered smoking article. The United States Court of Appeals for the Federal Circuit affirmed in part, vacated in part, and remanded the decision of the Patent Trial and Appeal Board (Board).RAI owns a patent for electrically powered smoking articles that heat tobacco or other substances without significant combustion. Philip Morris filed a petition to review the patent, asserting that the claims were invalid due to a lack of written description and obviousness over prior art. The Board agreed with Philip Morris and held certain claims of the patent unpatentable.On appeal, RAI argued that the Board erred by finding that some claims lacked adequate written description support and that other claims were obvious. The Court of Appeals agreed with RAI regarding the written-description issue. It found that the patent specification did provide adequate written description support for the disputed claims, as it disclosed the end points of the claimed range and there were no inconsistent statements regarding the range. Thus, the Court of Appeals vacated the Board's decision on this issue and remanded for further consideration.However, the Court of Appeals affirmed the Board’s decision regarding the obviousness issue. It found substantial evidence to support the Board's finding that a person of ordinary skill in the art would have been motivated to combine prior art references, making the claims obvious. Specifically, the Court found that the Board reasonably concluded that a skilled artisan would have been motivated to replace the heating element in Robinson's smoking article with the heating element taught by Greim. Therefore, the Court affirmed the Board’s finding that these claims were unpatentable as obvious. View "RAI Strategic Holdings, Inc. v. Philip Morris Products S.A." on Justia Law

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In this case, the University of South Florida Board of Trustees (USF) sued the United States, claiming that the latter infringed a patent owned by USF regarding genetically modified mice for Alzheimer's Disease research. The USF contended that The Jackson Laboratory, with the government's authorization and consent, had been producing and using mice covered by the patent for the government. The government countered the claim by asserting it had a license to practice the patent under a provision of the Bayh-Dole Act, which addresses patent rights in work funded by the federal government. The United States Court of Appeals for the Federal Circuit determined that the provision does apply and therefore affirmed the judgment of noninfringement. The court confirmed that the April 1997 work, the first actual reduction to practice of the invention, was "in the performance of work under a funding agreement." The court also rejected USF's contention that a funding agreement must be in place at the time of the relevant work, clarifying that the Act can cover work already performed before a funding agreement is executed or becomes effective. View "University of South Florida Board of Trustees v. United States" on Justia Law

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In a patent dispute between Weber, Inc. and Provisur Technologies, Inc. before the United States Court of Appeals for the Federal Circuit, Weber appealed two final written decisions from the Patent Trial and Appeal Board. The Board had determined that Weber failed to establish the unpatentability of the claims of Provisur’s patents relating to high-speed mechanical slicers used in food-processing plants. The Board found that Weber’s operating manuals were not prior art printed publications and that the prior art did not disclose two challenged claim terms. The Court of Appeals reversed the Board's determinations that Weber's operating manuals do not qualify as printed publications and that the prior art does not disclose the "disposed over" and "stop gate" limitations. The court then vacated the Board's conclusions that Weber failed to establish unpatentability of the challenged claims, and remanded the case for further proceedings. View "WEBER, INC. v. PROVISUR TECHNOLOGIES, INC. " on Justia Law

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The appellants, Google LLC and ecobee, Inc. had appealed from a decision of the United States Patent and Trademark Office’s Patent Trial and Appeal Board. The Board had found that the challenged claims of U.S. Patent No. 8,498,753, owned by EcoFactor, Inc., were not unpatentable. Google argued that the Board had made an erroneous claim construction of a limitation in Claim 1 and that Google had not been given notice or an opportunity to address the Board’s construction, thereby violating the Administrative Procedure Act. The United States Court of Appeals for the Federal Circuit held that the Board had indeed construed Claim 1 and that its construction was erroneous. The court vacated the Board’s decision and remanded the case for further proceedings under the correct construction of the [1m] limitation in Claim 1. View "GOOGLE LLC v. ECOFACTOR, INC. " on Justia Law

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In this case, professional concert photographer Larry Philpot brought a copyright-infringement claim against news website Independent Journal Review (IJR) after IJR used his photograph of musician Ted Nugent in an online article. IJR sought summary judgment, arguing that its use of the photo constituted fair use under the Copyright Act and alternatively arguing that Philpot's copyright registration was invalid. Philpot also sought summary judgment, contending that his registration was valid and that IJR's use was not fair use. The district court granted summary judgment to IJR on fair use grounds and denied Philpot's motion.On appeal, the United States Court of Appeals for the Fourth Circuit reversed and remanded the decision. The court held that IJR's use of the photograph did not constitute fair use because it was non-transformative and commercial, and it adversely affected the potential market for the photograph. It also found that Philpot's copyright registration was valid because the photograph was not published before Philpot registered it as an unpublished work. The court concluded that IJR was not entitled to summary judgment on its fair use defense and that Philpot was entitled to summary judgment on the validity of the copyright registration. View "Philpot v. Independent Journal Review" on Justia Law

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Ronald Ragan, Jr. brought a suit against Berkshire Hathaway Automotive, Inc. (BHA) alleging that the company had copied his car dealership customer intake form ("Guest Sheet") without his permission, constituting copyright infringement. The case was brought before the United States Court of Appeals for the Eighth Circuit. Ragan held a certificate of registration for the Guest Sheet issued by the United States Copyright Office and asserted that BHA continued to use the form after acquiring a company that had previously copied and used the Guest Sheet. BHA argued that the Guest Sheet was not copyrightable. The district court agreed with BHA and ruled in its favor. On appeal, Ragan argued that the district court erred in finding the Guest Sheet uncopyrightable. The appeals court, however, upheld the district court's decision, ruling that the Guest Sheet lacked the requisite originality to be protected under copyright law. The court found that the Guest Sheet, which contained basic questions and prompts, did not exhibit sufficient creativity, and was designed to record, not convey, information. The court also dismissed Ragan's claim that the district court ignored the statutory presumption of copyright validity granted to the Guest Sheet by the certificate of registration, stating that the copyrightability of the Guest Sheet could be determined by an examination of the Guest Sheet alone. View "Ragan v. Berkshire Hathaway Auto, Inc." on Justia Law

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In this case, the plaintiff, Virginia Cora Ward, the administratrix of the estate of Edmund Edward Ward, appealed against the verdict in favor of Dr. Ernst J. Schaefer. Edmund Edward Ward, who suffered from a rare genetic deficiency that caused his body to refrain from producing a critical blood enzyme, was a subject of experimental enzyme therapy developed by Dr. Schaefer and others. The plaintiff claimed that Dr. Schaefer fraudulently induced Ward to participate in the experimental protocol and failed to obtain informed consent for his participation. However, the jury disagreed and returned a verdict in favor of Dr. Schaefer.On appeal, the United States Court of Appeals for the First Circuit affirmed the judgment of the lower court. The appellate court found that the district court did not err in excluding the patent for the experimental drug from evidence, as its probative value was substantially outweighed by the potential for confusion. Further, the court found no error in the jury instructions provided by the district court regarding the nature of the doctor-patient relationship and the application of the doctrine of res ipsa loquitur. The court concluded that the jury instructions sufficiently conveyed the legal standards to be applied, and the plaintiff failed to show that the occurrence of a medical condition during the experimental protocol implied that the protocol caused the condition. View "Ward v. Schaefer" on Justia Law

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This case arises from a trademark infringement dispute under the Lanham Act between Rolex Watch USA, Incorporated (Rolex) and Beckertime, L.L.C.; Matthew Becker (Beckertime). Rolex is a luxury watch seller with legally protectable interest in numerous trademarks. Beckertime sells primarily decades-old preowned watches containing Rolex branded parts, including watches identified as “Genuine Rolex,” but contain both Rolex and non-Rolex parts. The United States Court of Appeals for the Fifth Circuit affirmed in part, modified in part, and remanded in part the decision of the United States District Court for the Northern District of Texas.The district court found that Beckertime infringed Rolex’s trademark but refused to disgorge Beckertime of its profits, applying the laches defense. Rolex appealed, seeking a modification to the injunction, treble profits, and attorneys’ fees, while Beckertime sought the application of an alternative test to determine infringement.The Appellate Court upheld the district court's ruling that Beckertime infringed Rolex’s trademark, finding no clear error in the determination. The court affirmed the district court's decision to apply the laches defense, preventing the disgorgement of Beckertime's profits. The court found that Rolex had failed to offer a valid justification for its delay in filing suit and that Beckertime was prejudiced by this delay.Regarding remedies, the Appellate Court found that Rolex was not entitled to treble profits or attorneys’ fees. The court pointed out that Rolex had not moved for attorneys’ fees within the required time period under Federal Rule of Civil Procedure 54(d)(2), thereby waiving its right to such fees. Furthermore, the district court found no evidence of deliberate counterfeiting by Beckertime to warrant the imposition of treble profits.The court also addressed the scope of the injunction issued by the district court. It modified the injunction to prohibit the sale of Rolex watches with non-genuine bezels, but upheld the exclusion of all non-genuine dials from the injunction. The court also agreed with Rolex that the typographical errors in one section of the injunction rendered it vague and unqualified, and remanded the case to the district court for clarification. View "Rolex Watch v. Beckertime" on Justia Law

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In this case, the United States Court of Appeals for the Federal Circuit reviewed the findings of the International Trade Commission (ITC) which ruled in favor of Universal Electronics, Inc. (Universal) in a patent dispute with Roku, Inc. The patent at issue, U.S. Patent No. 10,593,196, related to a "universal control engine" that helps different types of media devices communicate with each other using various communication protocols. Universal had accused Roku of importing certain TV products that infringed this patent.The court affirmed the ITC's findings on three key issues:1. Ownership Rights: Roku had argued that Universal lacked standing to assert the patent because it did not own all rights to the patent at the time it filed its complaint. However, the court found that Universal did indeed possess ownership rights based on a 2012 agreement which constituted a present conveyance of patent rights.2. Domestic Industry Requirement: The court found that Universal satisfied the economic prong of the domestic industry requirement by proving a substantial investment in engineering and research and development to exploit the patent. Roku had argued that the Commission erred by not requiring Universal to allocate its domestic industry expenses to a specific domestic industry product, but the court disagreed.3. Non-Obviousness of Patent: The court affirmed the ITC's determination that Roku failed to establish a prima facie case that the challenged claims were unpatentable as obvious. The court found that the combination of two prior art references did not disclose all elements of the patent claim in question. Additionally, the court found that Roku failed to present clear and convincing evidence of a motivation to combine the prior art references.Based on these findings, the court affirmed the ITC's decision, thereby ruling in favor of Universal Electronics, Inc. View "ROKU, INC. v. ITC " on Justia Law

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In this case, CyWee Group Ltd. appealed a decision made by the U.S. Patent Trial and Appeal Board (the "Board") that found unpatentable claims 1, 4–5, 14–17, and 19 of U.S. Patent No. 8,441,438, which is directed to a three-dimensional (3D) pointing device. The appeal also involved CyWee’s revised motion to amend its claims. The main arguments of CyWee's appeal were that the Board erred by allowing LG Electronics Inc., an intervenor in the case, to oppose CyWee’s motion to amend and that the Board erred in denying the revised motion to amend.The United States Court of Appeals for the Federal Circuit affirmed the Board's decision. The court found no error in the Board’s decision to allow LG to oppose the revised motion to amend, despite LG joining the case as a passive 'understudy'. The court also found substantial evidence to support the Board's conclusion that a skilled artisan would combine the prior art references in the case. The court rejected CyWee's argument that it was denied meaningful Director review, in line with precedent set in previous cases. View "CYWEE GROUP LTD. v. ZTE (USA), INC. " on Justia Law