Justia Intellectual Property Opinion Summaries

Relator alleged that Defendants prevented generic drug competitors from entering the market. Relator alleged that this permitted defendants to charge Medicare inflated prices for the two drugs, in violation of the False Claims Act. The district court denied Defendants’ motion to dismiss based on the False Claims Act’s public disclosure bar, which prevents a relator from merely repackaging publicly disclosed information for personal profit by asserting a claim under the Act.The Ninth Circuit held that an ex parte patent prosecution is an “other 4 UNITED STATES EX REL. SILBERSHER V. ALLERGAN Federal . . . hearing” under 31 U.S.C. Sec. 3730(e)(4)(A)(ii). Thus, the public disclosure bar was triggered. The Ninth Circuit expressed no opinion on whether Relator still could bring his qui tam action because he was an “original source” of the information in his complaint. The court remanded to the district court for further proceedings. View "ZACHARY SILBERSHER V. ALLERGAN, INC." on Justia Law

Plaintiffs petitioned the United States Patent and Trademark Office for federal registration of the mark “THEEILOVE”. That phrase, “Thee I Love,” comes from the alma mater of Jackson State University. They then sued the University’s licensing agent (Collegiate Licensing Company) and a few of the licensees in charge of producing and selling the University’s merchandise (Anthony Lawrence Collection, Defron Fobb, and Thaddeus Reed, together “the Licensees”). But they did not sue the University itself. Collegiate and the Licensees moved to dismiss under Federal Rule of Civil Procedure 12(b)(7). The district court granted the motion and dismissed the suit without prejudice.   The Fifth Circuit affirmed. The court held that the district court did not abuse its discretion in concluding that the University was a required party under Rule 19(a)(1)(B)(i). And because everyone agrees that the University enjoys sovereign immunity, the question becomes whether the district court abused its discretion in dismissing the case rather than proceeding without the University. Here, the University has a non-frivolous claim here. As a practical matter, this suit would impair or impede its ability to protect its interest in the “Thee I Love” mark. That is enough to require dismissal of the action because “there is a potential for injury to” the University’s “interests as the absent sovereign.” Finally, even setting aside the University’s sovereign status, the balance of Rule 19(b) factors weigh in favor of dismissal. As a result, the district court did not abuse its discretion in dismissing the case. View "Lee, et al v. Anthony Lawrence Collection, et al" on Justia Law

The Grill Holdings, L.L.C. (Khodr) filed suit in the Civil District Court for the Parish of Orleans seeking a declaratory judgment as to whether CGH (Shwartz) had the right to audit their books and records under the License Agreement. The state district court ruled in CGH’s favor on summary judgment, and the Louisiana Fourth Circuit Court of Appeal denied writ.The parties appealed to the Fifth Circuit. First, the Shwartz parties appealed, arguing that the district court erred in denying the Rooker-Feldman motion to dismiss and in the scope of its permanent injunction. Next, the Khodr parties cross-appealed, arguing that the district court erred in denying the motion for sanctions.The Fifth Circuit affirmed the district court’s rulings, including (1) a ruling denying a motion to dismiss; (2) a ruling entering a permanent injunction; and (3) a ruling denying a motion for Rule 11 and Section 1927 sanctions. The court explained that there was no room on remand for reconsideration of the alleged elements that constituted trade dress. Thus, the district court did not abuse its discretion by leaving wait staff attire out of the injunction. Further, the court held that the Rule 11 safe harbor provision requires identicality. Here, as the district court found, the served motion and the filed motion contained substantial differences. The motions were thus not identical, and the district court properly denied the motion and declined to enter sanctions. View "Uptown Grill v. Camellia Grill Holdings" on Justia Law

ACT publishes “WorkKeys”—“a system of workforce-development assessments that measure skills affecting job performance” and “Skill Definitions,” descriptions of the skills tested by each assessment. ACT collaborated with WIN to promulgate those assessments, from 1997-2011. The contractual relationship ended in 2011. WIN developed and promoted its own career-readiness-assessment materials. In 2017, ACT contracted with the South Carolina Department of Education and Workforce to provide its WorkKeys assessments to state employers. The state later solicited competing bids for new assessments, ultimately awarding the contract to WIN. WIN’s “Learning Objectives” for Applied Mathematics, Locating Information, and Reading for Information assessments were virtually indistinguishable from ACT’s Skill Definitions. ACT sued.The district court granted ACT partial summary judgment on copyright claims. When the COVID-19 pandemic caused prolonged delays in the litigation, WIN enlisted an education consultant to revise its product. The court ordered ACT to amend its complaint to include allegations about the revised Learning Objectives. WIN then unsuccessfully tried to assert a new defense: derivative sovereign immunity. The district court entered a preliminary injunction, restraining WIN from knowingly infringing ACT’s copyrights in its Skill Definitions, 17 U.S.C. 106, barring WIN from distributing the original and revised Learning Objectives and WIN’s corresponding assessments. The Sixth Circuit affirmed the imposition (and scope) of that preliminary injunction and the rejection, as untimely, of WIN’s argument that because WIN designed the Learning Objectives to bid on state contracts, it was entitled to assert state sovereign immunity. View "ACT, Inc. v. Worldwide Interactive Network, Inc." on Justia Law

Killian’s application relates to a system “for determining eligibility for Social Security Disability Insurance [SSDI] benefits through a computer network.” This process entails looking up information from a Federal Social Security database and a state database containing records for patients receiving treatment for developmental disabilities or mental illness. For those patients identified in the state database as meeting certain criteria but not currently receiving SSDI benefits, the method determines whether the patient is entitled to SSDI benefits.The examiner rejected all pending claims of the application under 35 U.S.C. 101, as directed to the abstract idea of “determining eligibility for social security disability insurance” benefits and lacking additional elements amounting to significantly more than the abstract idea because the additional elements were simply generic recitations of generic computer functionalities. The Patent Trial and Appeal Board and Federal Circuit affirmed. The essential steps recited by claim 1—the “selecting” and “determining” limitations—can be performed in the human mind and are “an abstract mental process.” The remaining steps were merely directed to data gathering or data output and were appropriately categorized as “insignificant extra-solution activity” or “primitive computer operations found in any computer system” “which do not integrate the processes into a ‘practical application,’ and which do not recite an ‘inventive concept.’” View "In Re Killian" on Justia Law

Since 2014 Par has manufactured and sold Vasostrict®, an FDA-approved vasopressin injection product used to treat patients with critically low blood pressure. The Orange Book identifies Par’s 785 and 209 patents as encompassing Vasostrict®. Both patents require the vasopressin composition to have a rounded pH between 3.7–3.9. In 2018, Eagle filed an abbreviated new drug application (ANDA) to manufacture and sell a generic version of Vasostrict® before those patents expired. Eagle represented in its release specification that the pH range would be between 3.4–3.6. Eagle’s ANDA also contained 35 U.S.C. 355(j)(2)(A)(vii)(IV) certification that Par’s patents are invalid or will not be infringed by Eagle’s proposed product.Par sued for infringement under 35 U.S.C. 271(e)(2). Eagle stipulated that its proposed product would meet all asserted claim limitations except the claimed pH range. Par argued that “real-world” evidence shows the pH of Eagle’s product drifts up over time and that Eagle sought authority to release products into the marketplace with a pH of 3.64, just 0.01 beneath the infringing range. The Federal Circuit affirmed the rejection of those arguments. Minor fluctuations in pH value identified by Par did not reveal any discernible trend and the stability specification imposed an additional constraint that Eagle’s proposed product maintain a pH between 3.4–3.6 from the time of its distribution through its entire shelf life. View "Par Pharmaceutical, Inc. v. Eagle Pharmaceuticals, Inc." on Justia Law

In 2012, Click-to-Call sued several entities (including Ingenio) for infringement of its patent. Ingenio filed a petition for inter partes review (IPR) challenging the 16 asserted claims and one additional claim. While the petition was pending, the district court issued a Markman order construing certain claim terms and required plaintiffs to narrow their asserted claims to eight claims. Click-to-Call selected claims 1, 2, 8, 12, 13, 16, 26, and 27. The Board partially instituted IPR, found persuasive unpatentability grounds based on one reference, Dezonno, but refused to consider grounds based on another reference, Freeman. The Freeman grounds challenged asserted claim 27, whereas the Dezonno grounds did not. While appeal of the IPR was pending, the Supreme Court overruled the practice of partial institutions in “SAS” (2018). Ingenio never sought remand under SAS for the Board to consider Ingenio’s challenge to claim 27.In post-IPR district court proceedings, Ingenio moved for summary judgment, arguing that the only asserted claim not finally held unpatentable in the IPR, claim 27, was invalid based on the same reference that Ingenio had used against the other asserted claims in its IPR petition—Dezonno. Click-to-Call unsuccessfully argued that Ingenio was estopped from pressing this invalidity ground against claim 27, citing IPR estoppel, 35 U.S.C. 315(e)(2). The Federal Circuit reversed and remanded. The district court erred in not applying IPR estoppel to claim 27 based on Dezonno. View "Click-to-Call Technologies, LP- v. Ingenio, Inc." on Justia Law

NBA Properties owns the trademarks of the NBA and NBA teams. In 2020, a Properties investigator accessed HANWJH’s online Amazon store and purchased an item, designating an address in Illinois as the delivery destination. The product was delivered to the Illinois address. Properties sued, alleging trademark infringement and counterfeiting, 15 U.S.C. 1114 and false designation of origin, section 1125(a). Properties obtained a TRO and a temporary asset restraint on HANWJH’s bank account, then moved for default; despite having been served, HANWJH had not answered or otherwise defended the suit. HANWJH moved to dismiss, arguing that the court lacked personal jurisdiction over it because it did not expressly aim any conduct at Illinois. HANWJH maintained that it had never sold any other product to any consumer in Illinois nor had it any “offices, employees,” “real or personal property,” “bank accounts,” or any other commercial dealings with Illinois.The Seventh Circuit affirmed the denial of the motion to dismiss and the entry of judgment in favor of Properties. HANWJH shipped a product to Illinois after it structured its sales activity in such a manner as to invite orders from Illinois and developed the capacity to fill them. HANWJH’s listing of its product on Amazon.com and its sale of the product to counsel are related sufficiently to the harm of likelihood of confusion. Illinois has an interest in protecting its consumers from purchasing fraudulent merchandise. HANWJH alleges no unusual burden in defending the suit in Illinois. View "NBA Properties, Inc. v. HANWJH" on Justia Law

Centripetal filed an infringement complaint against PAN, which then filed an inter partes review (IPR) petition for one patent and a post-grant review (PGR) petition for another. While the petitions were pending, the Patent and Trademark Office (USPTO) updated its interim guidance, noting that the agency “does not accept requests for Director review of decisions on institution.” The Patent Trial and Appeal Board denied institution. PAN filed Requests for Director Rehearing. The agency responded that USPTO "does not accept requests for Director review of decisions on institution ... parties may only request Director review of final written decisions" issued in IPR and PGR and that PAN’s “rehearing requests will not revert to the Board panel and there will be no further review of the Board’s decision.”PAN sought mandamus relief. A newly-appointed Director updated the interim guidance to state that “the Office does not accept requests for Director review of institution decisions” but that “the Director has always retained and continues to retain the authority to review such decisions sua sponte.” The Director has since exercised that authority. PAN argues that the Director’s current policy was contrary to the Appointments Clause, as interpreted by the Supreme Court in “Arthrex,” (2021). The Federal Circuit denied the petition. That the Appointments Clause requires that a Presidentially-appointed, Senate-confirmed officer have review authority does not mean that a principal officer, once bestowed with such authority, cannot delegate it to other agency officers. View "In Re Palo Alto Networks, Inc." on Justia Law

Since 2004, Nichino has offered a trademarked pesticide, “CENTAUR.” Valent trademarked a competing product, “SENSTAR,” in 2019, with a similar logo. Both pesticides are used by farmers in the same geographic areas against many of the same insects. SENSTAR is a liquid, a unique combination of two active chemicals. CENTAUR is manufactured as a solid, packed into bags and cases.Nichino sued for trademark infringement, seeking a preliminary injunction. The court applied the newly-effective Trademark Modernization Act of 2020 (TMA) Pub. Law 116-260, which establishes a rebuttable presumption of irreparable harm favoring a plaintiff who has shown a likelihood of success on the merits of an infringement claim. The district court found Nichino narrowly demonstrated its infringement claim would likely succeed, though “there is not an abundance of evidence of likelihood of confusion,” applied a 10-part, non-exhaustive analysis of likely confusion, then denied a preliminary injunction.The Third Circuit affirmed. The TMA’s rebuttable presumption requires courts considering a trademark injunction to assess the plaintiff’s evidence only as it relates to a likelihood of success on the merits. If that evidence does establish likely trademark infringement, the TMA is triggered, and the burden of production shifts to the defendant to introduce evidence sufficient for a reasonable factfinder to conclude that the consumer confusion is unlikely to cause irreparable harm. If a defendant successfully rebuts the TMA’s presumption by making this slight evidentiary showing, the presumption has no effect. View "Nichino America Inc v. Valent USA LLC" on Justia Law