Justia Intellectual Property Opinion Summaries

Impossible X, now a Texas LLC, is a one-person company run by Joel Runyon, a self-described “digital nomad” who for two years operated his business from San Diego. Impossible X sells apparel, nutritional supplements, diet guides, and a consulting service through its website and various social media channels. Impossible Foods sued Impossible X in federal court in California, seeking a declaration that Impossible Foods’ use of the IMPOSSIBLE mark did not infringe on Impossible X’s trademark rights. The district court dismissed the case for lack of personal jurisdiction.   The Ninth Circuit reversed the district court’s dismissal. The panel held that Impossible X was subject to specific personal jurisdiction in California because it previously operated out of California and built its brand and trademarks there, and its activities in California were sufficiently affiliated with the underlying trademark dispute to satisfy the requirements of due process. First, Impossible X purposefully directed its activities toward California and availed itself of the privileges of conducting activities there by building its brand and working to establish trademark rights there. Second, Impossible Foods’ declaratory judgment action arose out of or related to Impossible X’s conduct in California. The panel did not confine its analysis to Impossible X’s trademark enforcement activities, but rather concluded that, to the extent the Federal Circuit follows such an approach for patent declaratory judgments, that approach is not justified in the trademark context. Third, the panel concluded that there was nothing unreasonable about requiring Impossible X to defend a lawsuit based on its trademark building activities in the state that was its headquarters and Runyon’s home base. View "IMPOSSIBLE FOODS INC. V. IMPOSSIBLE X LLC" on Justia Law

Since 2013, Home Chef has created and delivered meal kits. In 2014, Home Chef began using its “HC Home Mark,” covered by five federal trademark registrations. Home Chef later merged with Kroger, and now delivers meals directly to customers and offers them for sale in Kroger stores, through Kroger’s website, and through food delivery services.Grubhub, an online food-ordering and delivery marketplace, owns numerous trademark registrations covering the GRUBHUB name and stylized variations. In 2021, Grubhub was acquired by JET, which owns food-delivery brands worldwide and combines its “JET House Mark” with local brand names when conducting business in various countries. JET has used the JET House Mark since 2014. JET had filed an international trademark application for the JET House Mark. A USPTO examiner found the JET House Mark “highly similar” and “confusingly similar” to the HC Home Mark and Home Chef Home Logo. JET withdrew its application. JET later combined the GRUBHUB word mark with the JET House Mark. Grubhub invested millions of dollars in rebranding its print and electronic materials.After receiving a cease-and-desist letter from Home Chef, Grubhub sought a declaratory judgment that its Logo did not infringe Home Chef’s marks. The Seventh Circuit affirmed the denial of Home Chef's motion for a preliminary injunction. The district court did not clearly err in finding that Home Chef failed to meet its burden to show a likelihood of success on the merits of its infringement claim. View "Grubhub, Inc. v. Relish Labs LLC" on Justia Law

Plaintiffs in this case are three standard-developing organizations: the American Society for Testing and Materials (ASTM), the American Society of Heating, Refrigerating, and Air-Conditioning Engineers (ASHRAE), and the NFPA. Defendant, Public.Resource.Org, is a non-profit group that disseminates legal and other materials. It has posted on its website copies of hundreds of incorporated standards. Plaintiffs sued Public Resource for copyright infringement. Plaintiffs moved for summary judgment on their claims as to nine of the disputed standards. The district court granted the motion and enjoined Public Resource from posting these standards. The DC Circuit reversed and remanded for further factual development. On remand, the district court held that the non-commercial posting of standards incorporated by reference into law is fair use.   The DC Circuit affirmed the district court’s reasonable exercise of discretion in declining to award injunctive relief. The court explained that the first three factors under section 107 strongly favor fair use, and the fourth is equivocal. The court concluded that Public Resource’s non-commercial posting of incorporated standards is fair use. Further, the court found that the district court reasonably declined to enter an injunction. Public Resource promptly removed from its website the 32 standards found not to have been incorporated into law. The court explained that Plaintiffs give the court no reason to think that Public Resource will post unincorporated standards again absent an injunction View "American Society for Testing and Materials v. Public.Resource.Org, Inc." on Justia Law

The DivX patent explains, in a section titled “Background of the Invention,” that “[t]he present invention relates generally to encoding, transmission and decoding of multimedia files.” In its petition for inter partes review, Netflix asserted that several claims of the patent would have been obvious in view of prior art, Zetts as modified by Kaku. In a section titled “Field of the Invention,” Kaku’s specification states that the invention “relates to motion image apparatuses and, more particularly, to a motion image reproducing apparatus which is applicable to a digital camera for reproducing motion image data recorded on a recording medium.” The Patent Trial and Appeal Board found that Kaku failed to qualify as analogous art.The Federal Circuit vacated and remanded. The Board failed to identify the field of endeavor for either the challenged patent or the prior art and thus failed to establish analogous art under the field of endeavor test. The Board’s directive that Netflix more precisely articulate the relevant field of endeavor to meet its burden was unduly strict. View "Netflix, Inc. v. DivX, LLC" on Justia Law

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