Justia Intellectual Property Opinion Summaries

Provisur Technologies, Inc. owns patents related to food-processing machinery, specifically high-speed mechanical slicers and a fill and packaging apparatus. Provisur sued Weber, Inc. and its affiliates, alleging that Weber's food slicers and SmartLoader products infringed on these patents. The case was tried before a jury, which found that Weber willfully infringed several claims of Provisur's patents and awarded Provisur approximately $10.5 million in damages.The United States District Court for the Western District of Missouri denied Weber's motions for judgment as a matter of law (JMOL) on noninfringement and willfulness, as well as a motion for a new trial on infringement, willfulness, and damages. Weber appealed these decisions.The United States Court of Appeals for the Federal Circuit reviewed the case. The court affirmed the district court's denial of JMOL for noninfringement regarding the '812 and '436 patents, as Weber conceded its noninfringement arguments were no longer available due to an intervening decision. However, the court reversed the district court's denial of JMOL for noninfringement of the '936 patent, finding that Provisur failed to provide sufficient evidence that Weber's SmartLoader could be readily configured to infringe the patent.The court also reversed the district court's denial of JMOL on willfulness, ruling that the evidence presented, including testimony about Weber's failure to consult a third party, was insufficient to establish willful infringement. Additionally, the court found that the district court abused its discretion in allowing Provisur to use the entire market value rule for calculating damages without sufficient evidence that the patented features drove customer demand for the entire slicing line. Consequently, the court reversed the denial of a new trial on damages.The case was remanded for further proceedings consistent with the Federal Circuit's decision. View "PROVISUR TECHNOLOGIES, INC. v. WEBER, INC. " on Justia Law

This case involves a dispute over the "Pollo Picú" trademark used in the sale of fresh chicken. Productos Avícolas del Sur, Inc. (PAS) sold chicken under this trademark until 2011, when financial difficulties forced the company to stop. In 2016, To-Ricos, Ltd. (To-Ricos) applied to register the Picú mark, believing PAS had abandoned it. PAS opposed the application, leading To-Ricos to seek a declaratory judgment in federal district court to establish its ownership of the mark. The district court granted summary judgment for To-Ricos, concluding that PAS had abandoned the mark.The United States District Court for the District of Puerto Rico found that PAS had not used the Picú mark for at least three consecutive years, establishing a prima facie case of abandonment. PAS argued that its financial difficulties and ongoing litigation with its bank excused its nonuse of the mark and that it intended to resume use. However, the district court determined that PAS did not provide sufficient evidence of intent to resume use within the statutory period and thus granted summary judgment in favor of To-Ricos.The United States Court of Appeals for the First Circuit reviewed the case and affirmed the district court's decision. The appellate court held that PAS failed to rebut the presumption of abandonment. PAS's attempts to sell the mark in 2012, its 2014 settlement agreement with the bank, and its 2017 licensing agreement with IMEX did not demonstrate an intent to resume use of the mark within the relevant statutory period. The court emphasized that mere explanations for nonuse or vague intentions to resume use are insufficient to rebut the presumption of abandonment. Consequently, the court affirmed the district court's grant of summary judgment, establishing To-Ricos as the rightful owner of the Picú mark. View "To-Ricos, Ltd. v. Productos Avicolas del Sur, Inc." on Justia Law

In 2020, Mix Creative Learning Center, an art studio offering children's art lessons, began selling online art kits during the pandemic. These kits included reproductions of artworks from Michel Keck's Dog Art series. Keck sued Mix Creative and its proprietor for copyright and trademark infringement, seeking enhanced statutory damages for willful infringement.The United States District Court for the Southern District of Texas found that the fair use defense applied to the copyright claim and granted summary judgment to Mix Creative. The court also granted summary judgment on the trademark claim, even though Mix Creative had not sought it. Following this, the district court awarded fees and costs to Mix Creative under 17 U.S.C. § 505 but declined to hold Keck’s trial counsel jointly and severally liable for the fee award under 28 U.S.C. § 1927.The United States Court of Appeals for the Fifth Circuit reviewed the case and affirmed the district court's judgment. The appellate court held that the fair use defense applied because Mix Creative’s use was transformative and unlikely to harm the market for Keck’s works. The court also found that any error in the district court’s sua sponte grant of summary judgment on the trademark claim was harmless, given the parties' concession that the arguments for the copyright claim applied to the trademark claim. Lastly, the appellate court ruled that the district court did not abuse its discretion in awarding fees to Mix Creative or in refusing to hold Keck’s attorneys jointly and severally liable for the fee award. View "Keck v. Mix Creative Learning Center" on Justia Law

Astellas Pharma, Inc. and its affiliates (collectively, "Astellas") sued Sandoz Inc. and other defendants for patent infringement related to their attempts to market generic versions of Myrbetriq®, a drug used to treat overactive bladder. The patent in question, U.S. Patent 10,842,780, covers sustained-release formulations of mirabegron, which Astellas developed to mitigate the drug's undesirable "food effect."The United States District Court for the District of Delaware held a five-day bench trial focusing on issues of infringement and validity under 35 U.S.C. § 112. However, the district court, sua sponte, determined that claims 5, 20, and 25 of the '780 patent were invalid under 35 U.S.C. § 101, reasoning that the claims were directed to an ineligible natural law. This decision was made despite the fact that Sandoz had not raised a § 101 defense during the trial or in its post-trial briefing.The United States Court of Appeals for the Federal Circuit reviewed the case and found that the district court had abused its discretion by addressing a ground not raised by the parties, thereby disregarding the principle of party presentation. The Federal Circuit vacated the district court's judgment and remanded the case for adjudication of the issues properly raised by the parties, specifically infringement and validity under 35 U.S.C. § 112. The Federal Circuit also declined Astellas's request to reassign the case to a different judge, trusting that the district court could resolve the remaining issues impartially. View "ASTELLAS PHARMA, INC. v. SANDOZ INC. " on Justia Law

The plaintiff, a manufacturer of resinous flooring systems, sued a former employee, the defendant, for breaching a noncompete agreement, violating the Connecticut Uniform Trade Secrets Act (CUTSA), and breaching a common-law duty of confidentiality. The defendant, who had signed a noncompete agreement as a condition of continued employment, later established his own floor coating business and used the plaintiff’s proprietary information to develop competing products. The plaintiff alleged that the defendant also assisted competitors in developing their products.In a separate but related case, the trial court found the noncompete agreement unenforceable due to lack of consideration and ruled that the common-law duty of confidentiality claim was preempted by CUTSA. The court also determined that a payment made to the defendant after his resignation was severance pay, not compensation for reaffirming the noncompete agreement. Based on these findings, the trial court in the present case granted summary judgment for the defendant, applying collateral estoppel to preclude further consideration of the issues.The Connecticut Supreme Court reviewed the case and concluded that the trial court had incorrectly determined the noncompete agreement was unenforceable for lack of consideration. The Supreme Court reversed the trial court’s judgment on the breach of the noncompete agreement claim and remanded the case for further proceedings to determine whether the agreement was supported by adequate consideration. The court upheld the trial court’s findings that the severance payment was not consideration for reaffirming the noncompete agreement and that the common-law duty of confidentiality claim was preempted by CUTSA. These rulings were binding in the present case. The judgment was reversed in part and affirmed in part, with further proceedings required to determine the enforceability and potential breach of the noncompete agreement. View "Dur-A-Flex, Inc. v. Dy" on Justia Law

The plaintiff, a developer and manufacturer of resinous flooring systems, sued several individual and corporate defendants for misappropriation of trade secrets, among other claims. The key individual defendant, S, was a former employee who developed a product called Poly-Crete for the plaintiff. After resigning, S started his own business and developed similar products, allegedly using the plaintiff’s trade secrets. The plaintiff claimed that S and other defendants, including companies that tested and used S’s products, misappropriated its trade secrets.The trial court conducted a bench trial in three phases. In the first phase, the court found that the plaintiff’s formulas for Poly-Crete and other products were trade secrets but ruled that the noncompete agreement S signed was unenforceable due to lack of consideration. The court also found that the plaintiff’s common-law confidentiality claim was preempted by the Connecticut Uniform Trade Secrets Act (CUTSA).In the second phase, the court found that S and some defendants misappropriated the plaintiff’s trade secrets to create products like ProKrete and ProSpartic. However, it ruled that other defendants, including Indue, Krone, ECI, and Merrifield, did not misappropriate the trade secrets as they did not know or have reason to know about the misappropriation. The court also granted attorney’s fees to Krone and ECI, finding the plaintiff’s claims against them were made in bad faith.In the third phase, the court ordered the defendants who misappropriated the trade secrets to disgorge profits and enjoined them from using the trade secrets. The court also sanctioned the plaintiff for attempted spoliation of evidence by its president, F, who tried to remove incriminating photos from the company’s Facebook page during the trial.The Connecticut Supreme Court affirmed the trial court’s rulings on most issues but reversed the judgment regarding the enforceability of the noncompete agreement and the standard for determining misappropriation. The case was remanded for further proceedings on these issues. View "Dur-A-Flex, Inc. v. Dy" on Justia Law

American Girl, LLC, a manufacturer of dolls and related products, sued Zembrka, a Chinese entity operating through websites, for selling counterfeit American Girl products. American Girl alleged that Zembrka's websites sold and shipped counterfeit products to New York, using American Girl's trademarks. The case was filed in the United States District Court for the Southern District of New York.The District Court granted Zembrka's motion to dismiss for lack of personal jurisdiction, emphasizing that American Girl failed to show that Zembrka shipped the counterfeit products to New York. The court concluded that without evidence of shipment, the "transacting business" requirement under New York's long-arm statute, C.P.L.R. § 302(a)(1), was not met. American Girl's motion for reconsideration, which included new evidence of New York customers purchasing counterfeit products, was also denied.The United States Court of Appeals for the Second Circuit reviewed the case. The court found that American Girl had adequately demonstrated that Zembrka transacted business in New York. Evidence showed that Zembrka accepted orders from New York, sent order confirmations, and received payments, which constituted purposeful activity within the state. The court held that actual shipment of goods was not necessary to establish personal jurisdiction under § 302(a)(1). The court also determined that exercising jurisdiction over Zembrka was consistent with due process, given New York's strong interest in protecting its consumers and businesses from counterfeit goods.The Second Circuit reversed the District Court's dismissal and remanded the case for further proceedings. View "American Girl, LLC v. Zembrka" on Justia Law

The case involves Vascular Solutions LLC, Teleflex LLC, Arrow International LLC, and Teleflex Life Sciences LLC (collectively, Teleflex) suing Medtronic, Inc. and Medtronic Vascular, Inc. (collectively, Medtronic) for patent infringement. Teleflex asserted forty claims across seven patents related to a coaxial guide catheter. The District Court for the District of Minnesota conducted claim construction proceedings and found the term "substantially rigid portion/segment" to be indefinite, invalidating all asserted claims. The parties stipulated to final judgment based on this determination, leading Teleflex to appeal.Previously, in the District Court for the District of Minnesota, Teleflex sought a preliminary injunction, which was denied due to substantial questions of invalidity. The court stayed the case pending inter partes review (IPR) proceedings. The Patent Trial and Appeal Board (PTAB) found some claims unpatentable but upheld others. Teleflex then filed a second preliminary injunction request, which was also denied. The district court appointed an independent expert, Andrei Iancu, who proposed a construction for "substantially rigid portion/segment." The district court ultimately found the term indefinite and invalidated all claims.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the district court erred in determining the claims were mutually exclusive and indefinite. The Federal Circuit clarified that the boundary of the "substantially rigid portion/segment" does not need to be consistent across claims and can be understood functionally. The court vacated the district court's final judgment and remanded the case for further proceedings, instructing that the claims are not necessarily mutually exclusive and that the term "substantially rigid portion/segment" does not need a consistent boundary across different independent claims. View "Vascular Solutions LLC v. Medtronic, Inc." on Justia Law

Contour IP Holding LLC sued GoPro, Inc. for patent infringement, alleging that GoPro's point-of-view digital video cameras infringed on Contour's patents, specifically U.S. Patent Nos. 8,890,954 and 8,896,694. These patents relate to portable, point-of-view video cameras designed for hands-free use, with features allowing remote image acquisition control and viewing. The patents describe a system where the camera generates high and low-quality video streams in parallel, with the low-quality stream being wirelessly transmitted to a remote device for real-time viewing and adjustment.The United States District Court for the Northern District of California initially construed the term "generate" in the patents to mean "record in parallel from the video image data." Later, GoPro moved for summary judgment, arguing that the claims were patent ineligible under 35 U.S.C. § 101. The district court agreed, finding that the claims were directed to the abstract idea of creating and transmitting video at different resolutions and adjusting the video’s settings remotely. The court concluded that the claims did not include an inventive concept sufficient to transform the abstract idea into a patent-eligible application and entered judgment against Contour.The United States Court of Appeals for the Federal Circuit reviewed the case and reversed the district court's decision. The Federal Circuit held that the claims were not directed to an abstract idea but to a specific technological improvement in POV camera technology. The court found that the claims described a specific means of generating high and low-quality video streams in parallel and wirelessly transmitting the low-quality stream to a remote device, which provided a technological solution to a technological problem. Therefore, the claims were patent eligible under 35 U.S.C. § 101. The case was remanded for further proceedings. View "CONTOUR IP HOLDING LLC v. GOPRO, INC. " on Justia Law

ParkerVision, Inc. sued Qualcomm Inc. in 2014, alleging infringement of patents related to wireless communications technology. This followed a 2011 lawsuit where ParkerVision claimed Qualcomm infringed on different but related patents. In the 2011 case, the court granted judgment as a matter of law (JMOL) of non-infringement, which was affirmed on appeal. In the 2014 case, the district court granted Qualcomm’s motion for summary judgment of non-infringement based on collateral estoppel from the 2011 case and excluded certain expert testimonies from ParkerVision.The district court for the Middle District of Florida granted Qualcomm’s motions, concluding that the claims in the 2014 case were materially similar to those in the 2011 case, thus applying collateral estoppel. The court also excluded ParkerVision’s expert testimonies on validity and infringement, deeming them unreliable due to a lack of testing and simulation.The United States Court of Appeals for the Federal Circuit reviewed the case. It vacated the summary judgment of non-infringement, finding that the district court erred by not conducting a proper claim construction to determine if the claims in the 2014 case were materially different from those in the 2011 case. The appellate court also reversed the exclusion of ParkerVision’s expert testimonies, ruling that the district court improperly required testing and simulation for the expert opinions to be considered reliable. The case was remanded for further proceedings to determine the proper scope of the claims and whether the differences in the claims would materially alter the question of infringement. View "PARKERVISION, INC. v. QUALCOMM INCORPORATED " on Justia Law