Justia Intellectual Property Opinion Summaries

Lite-Netics sells string lights held by magnets to a surface such as a roof edge, as the assignee of two patents entitled “Magnetic Light Fixture.” Lite-Netics competes with HBL in the market for holiday string lights. Lite-Netics brought a patent-infringement action against HBL and also sent notices, one before filing suit and one after, to its customers (stores that sell the lights), some of which were also HBL customers, informing them of allegedly infringing competitors and stating Lite-Netics’s intent to enforce its patent rights. Lite-Netics did not name such competitors in the first notice. In the second notice, it identified HBL as an allegedly infringing competitor.After the second notice, HBL filed counterclaims, including for state-law torts. The district court issued a preliminary injunction, barring Lite-Netics from suggesting that HBL is a patent infringer, that HBL copied Lite-Netics’s lights, or that HBL customers might be sued. The Federal Circuit vacated. The district court abused its discretion in issuing the preliminary injunction because the applicable speech-protective legal standards were not met. Federal patent law preempts state-law tort liability for a patentholder’s good faith conduct in communications asserting infringement and warning about potential litigation. HBL’s state-law claims can survive federal preemption only to the extent that they are based on a showing of bad faith in asserting infringement. Lite-Netics’s positions have not been shown, at this stage of the litigation, to be objectively baseless. View "Lite-Netics, LLC v. Nu Tsai Capital, LLC" on Justia Law

Fraunhofer-Gesellschaft zur Förderung der angewandten Forschung E.V. (“Fraunhofer”) initiated a patent infringements lawsuit against Sirius XM Radio Inc. (“Sirius XM”) in district court. After filing suit, Fraunhofer subpoenaed Sirius XM’s former Chief Marketing Officer, Appellant, for a deposition. When Appellant failed to appear for her deposition, the parties filed motions to address the situation. The district court denied Appellant’s motion to quash the subpoena, ordered her to sit for her deposition, found her in contempt for defying the subpoena, and expressed an intent to award sanctions. Appellant sat for her deposition, and then, before any judgment had been issued on sanctions, she appealed the orders against her. Before the DC Circuit, Appellant argued that the district court abused its discretion in compelling her deposition, finding her in contempt, and expressing an intent to award sanctions.   The DC Circuit dismissed the appeal for want of jurisdiction. The court reasoned that Appellant’s challenge to the district court’s order compelling her deposition is moot because her deposition testimony has been given. Appellant’s challenges to the district court’s contempt finding and intent to award sanctions raise matters relating to a discovery proceeding ancillary to a patent suit which are within the exclusive jurisdiction of the United States Court of Appeals for the Federal Circuit. View "Fraunhofer-Gesellschaft Zur Forderung Der Angewand v. Sirius XM Radio Inc." on Justia Law

The application for the 208 patent was filed in 2012 and claims a priority date of November 7, 2011. It is directed to surgical devices for an “endometrial ablation,” which stops or reduces abnormal uterine bleeding. The procedure generally involves inserting a device having an energy-delivery surface into a patient’s uterus, expanding the surface, energizing the surface to “ablate” or destroy the endometrial lining of the patient’s uterus, and removing the surface.Minerva sued Hologic for infringement. After discovery, the district court granted summary judgment that the asserted claims are anticipated under the public use bar of pre-AIA 35 U.S.C. 102(b). The Federal Circuit affirmed. The patented technology was “in public use” because, before the critical date, for several days, Minerva disclosed 15 devices having the technology at the industry’s “Super Bowl,” Minerva showcased them at a booth, in meetings with interested parties, and in a technical presentation. Minerva did not disclose the devices under any confidentiality obligations, despite the commercial nature of the event. At the time of that public use, the technology was “ready for patenting.” Minerva had created working prototypes and technical documents describing the claimed technology. There are no genuine factual disputes. View "Minerva Surgical, Inc. v. Hologic, Inc." on Justia Law

Dmarcian, Inc. (dInc) and dmarcian Europe BV (dBV)—and a broken business relationship. The original dmarcian, dInc, is a Delaware corporation with headquarters in North Carolina. Its corporate homonym, dBV, is a Dutch entity based in the Netherlands. The two companies negotiated an agreement authorizing dBV to sell dInc’s software in Europe and Africa. The license was done on a handshake, and the parties now dispute its terms. Among other allegations, dInc accuses dBV of directly competing for customers, which prompted dInc to bring claims of copyright and trademark infringement, misappropriation of trade secrets, and tortious interference. The district court exercised personal jurisdiction over dBV and declined to dismiss for forum non conveniens. The district court also issued a preliminary injunction limiting dBV’s use of dInc’s intellectual property. The district court later held dBV in contempt for violating the injunction, and dBV appealed.   The Fourth Circuit affirmed except as to one aspect of the contempt order, which the court vacated and remanded for further proceedings as to the proper amount of sanctions. The court explained that the district court did not err in exercising personal jurisdiction, in declining to dismiss for forum non conveniens, and in issuing a preliminary injunction. Further, the court held that the district court was also justified in issuing a contempt sanction; but the court  requires a more thorough examination of the sanction amount. While the preliminary injunction may not be the final word on the merits, its entry was also not an abuse of discretion considering the weighty interests and detailed findings discussed at length above. View "Dmarcian, Inc. v. Dmarcian Europe BV" on Justia Law

SSI alleged that DZEM infringes two of SSI’s patents that are generally directed to sensors for determining the characteristics of fluid in a container, such as a fuel tank. SSI’s commercial embodiments of the asserted patents and DZEM’s accused products are systems that determine the quality and volume of diesel exhaust fluid that is used in emission-reduction systems for diesel truck engines. DZEM asserted counterclaims for invalidity of the asserted patents and for tortious interference with prospective business relations.The district court granted DZEM summary judgment on the infringement claims and dismissed DZEM’s invalidity counterclaims, granting SSI summary judgment on the tortious interference counterclaim. The Federal Circuit vacated in part, reversing the district court’s construction of the term “filter” as used in the 038 patent. The term is properly construed to mean “a device containing openings through which liquid is passed that blocks and separates out matter, such as air bubbles.” On remand, SSI will not be precluded from arguing that DZEM’s accused sensors infringe under the doctrine of equivalents. The court affirmed summary judgment with respect to the 153 patent and DZEM’s counterclaim for tortious interference. View "SSI Technologies, LLC, v. Dongguan Zhengyang Electronic Mechanical LTD" on Justia Law

ChromaDex’s 807 patent is directed to dietary supplements containing isolated nicotinamide riboside (NR), a form of vitamin B3 naturally present—in non-isolated form—in cow’s milk and other products. Animal cells convert ingested NR into the coenzyme nicotinamide adenine dinucleotide, or NAD+. NAD+ deficiencies can cause diseases in both animals and humans. ChromaDex sued Elysium, a former ChromaDex customer, for patent infringement.The district court construed several claim terms, finding “isolated [NR]” to mean “[NR] that is separated or substantially free from at least some other components associated with the source of [NR].” The district court granted Elysium summary judgment, finding that the asserted claims were invalid under 35 U.S.C. 101. The Federal Circuit affirmed. The asserted claims concern a product of nature and are not patent eligible. They do not have characteristics markedly different from milk; both “increase[] NAD+ biosynthesis upon oral administration.” Recognizing the utility of NR is nothing more than recognizing a natural phenomenon, which is not inventive. The act of isolating the NR by itself, “no matter how difficult or brilliant it may have been” does not turn an otherwise patent-ineligible product of nature into a patentable invention. View "ChromaDex, Inc. v. Elysium Health, Inc." on Justia Law

The Everly Brothers (Phil and Don) are known for many musical hits, including Cathy’s Clown, recorded, released, and copyrighted in 1960. The copyrights listed both brothers as authors; both were credited as co-authors and received royalties. In 1980, Phil signed notarized documents titled “Release and Assignment,” related to Cathy’s Clown and other works: “Phil Everly desires to release, and transfer, to the said Don Everly all of his rights, interests and claim in and to [‘Cathy’s Clown’], including rights to royalties and his claim as co-composer. In 2017, Don sued Phil’s estate for a declaratory judgment that Don was the sole author of Cathy’s Clown. There was contradictory evidence of Phil’s factual authorship, particularly a 1984 television interview.The district court found that Don repudiated Phil’s authorship of Cathy’s Clown, which triggered a three-year window for Phil to make an authorship claim under the Copyright Act. Phil did not do so. The district court rejected Phil’s estate’s argument that the three-year limitations period should not apply to the defense that Phil is a co-author. The Sixth Circuit affirmed. Don’s estate may rely on the statute of limitations. The district court did not clearly err in finding that Phil failed to exercise his rights after Don repudiated his authorship. View "Garza v. Everly" on Justia Law

Defendant Citizens Equity First Credit Union (CEFCU) petitioned the Trademark Trial and Appeal Board (TTAB) to cancel a trademark registration belonging to plaintiff San Diego County Credit Union (SDCCU). SDCCU procured a stay to the TTAB proceedings by filing an action seeking declaratory relief to establish that it was not infringing either of CEFCU’s registered and common-law marks and to establish that those marks were invalid. The district court granted SDCCU’s motion for summary judgment on noninfringement. After a bench trial, the district court also held that CEFCU’s common-law mark was invalid and awarded SDCCU attorneys’ fees.   The Ninth Circuit affirmed in part and vacated in part the district court’s judgment and award of attorneys’ fees in favor of Plaintiff and remanded. The panel held that SDCCU had no personal stake in seeking to invalidate CEFCU’s common-law mark because the district court had already granted summary judgment in favor of SDCCU, which established that SDCCU was not infringing that mark. Hence, there was no longer any reasonable basis for SDCCU to apprehend a trademark infringement suit from CEFCU. After it granted summary judgment in favor of SDCCU, the district court was not resolving an actual “case” or “controversy” regarding the validity of CEFCU’s common-law mark; thus, it lacked Article III jurisdiction to proceed to trial on that issue. The panel therefore vacated the district court’s judgment and its award of attorneys’ fees, which was based, in part, on the merits of the invalidity claim over which the district court lacked Article III jurisdiction. View "SAN DIEGO COUNTY CREDIT UNION V. CEFCU" on Justia Law

Ahern Rentals, Inc. (Ahern), alleges that two competitors— EquipmentShare.com, Inc. (EquipmentShare) and EZ Equipment Zone, LLC (EZ)— misappropriated its trade secrets to gain an unfair advantage in the construction equipment rental industry. The district court first dismissed EZ from the lawsuit, ruling that Ahern failed to state a plausible claim for relief against it. Later, the district court dismissed the case altogether, ruling that Ahern’s remaining claims against EquipmentShare were duplicative of claims against EquipmentShare in several other ongoing lawsuits brought by Ahern. Ahern appealed both rulings, arguing that the district court erred in dismissing its claims.   The Eighth Circuit reversed. The court reasoned that, according to Ahern, EquipmentShare developed programs by exploiting Ahern’s trade secrets. Ahern also alleged that the market information used by EZ to develop profitable utilization and rental rates is based on Ahern’s trade secrets illegally obtained by EquipmentShare. Taking all factual allegations as true, Ahern pled enough facts to make it entirely plausible that EZ is at least using systems developed by EquipmentShare through the exploitation of Ahern’s trade secrets. Further, the court found that Ahern has pled sufficient facts to state a claim against EZ for unjust enrichment. It is not disputed that Ahern’s trade secrets are a benefit with real economic value. And, as alleged in the complaint, EquipmentShare and EZ have used the benefit to their advantage. Finally, Ahern plausibly alleges malfeasance in the acquisition of these confidential trade secrets. Thus, the district court erred in dismissing Ahern’s claims against EZ for civil conspiracy and unjust enrichment. View "Ahern Rentals, Inc. v. EquipmentShare.com, Inc." on Justia Law

Under the terms of a consulting agreement between GSE Consulting, Inc. (“GSE”) and Harris Corporation (“Harris”), GSE is entitled to a payment of up to four million dollars in the event that certain intellectual property owned by Harris is “sold, merged or transferred” but did not form “the primary basis of the sale.” GSE contends that the relevant intellectual property, held by a subsidiary of one of Harris’s subsidiaries, necessarily “merged” when Harris used a different subsidiary to effectuate a comprehensive reverse triangular merger with an outside company and thus triggered Harris’s payment obligation under the parties’ agreement. L3Harris, however, maintained that Harris’s participation in the reverse triangular merger did not cause the relevant intellectual property to “merge” and has accordingly refused to make the demanded payment. The district court agreed with L3Harris and dismissed GSE’s breach of contract claim on summary judgment.   The Eleventh Circuit affirmed. The court reasoned that the reverse triangular merger at issue did not “merge,” i.e., combine, the relevant intellectual property in any ordinary way. The Plan contains assurances regarding the validity, right to continued use, and maintenance of each party’s intellectual property. And, given its broad definitions of “Company Intellectual Property” and “Intellectual Property,” the Plan certainly reaches the intellectual property held by Eagle as subsidiary of one of Harris’s subsidiaries. The Plan neither blends, pools, nor otherwise combines the intellectual property held by Eagle with any other intellectual property. Therefore, the intellectual property discussed in the Consulting Agreement was not “merged” as a result of the reverse triangular merger. View "GSE Consulting, Inc. v. L3Harris Technologies, Inc." on Justia Law