Justia Intellectual Property Opinion Summaries

Gamon’s patents each claim “[t]he ornamental design for a gravity feed dispenser display.” Gamon’s commercial embodiment of the claimed designs is called the iQ Maximizer gravity feed dispenser, In 2002-2009, Gamon sold about $31 million worth of iQ Maximizers to Campbell. In 2008, Campbell began purchasing similar gravity feed dispensers from Trinity. Gammon sued for infringement. In inter partes review, the Patent Trial and Appeal Board rejected claims of obviousness. The Federal Circuit reversed. Weighing all of the “Graham" factors, including the Board’s finding that, from the perspective of a designer of ordinary skill, prior art creates the same overall visual impression as the claimed designs and copying by Trinity of the claimed designs’ unique characteristics, the claimed designs would have been obvious over the prior art. View "Campbell Soup Co. v. Gamon Plus, Inc." on Justia Law

Hyatt is a prolific patent filer and litigant. In 1995, Hyatt filed “hundreds of extraordinarily lengthy and complex patent applications,” including the four at issue; he adopted an approach "that all but guaranteed indefinite prosecution delay” in an effort to submarine his patent applications and receive lengthy patent terms. The examination of these patents has cost the Patent and Trademark Office (PTO) millions of dollars. After adverse results regarding the patents at issue, Hyatt sued the PTO under 35 U.S.C. 145. The PTO moved to dismiss the actions for prosecution laches. The district court ordered the PTO to issue a patent covering some of the claims.While an appeal was pending, Hyatt sought attorney’s fees under the Equal Access to Justice Act as a “prevailing party” 28 U.S.C. 2412(b). The district court granted this motion in part. The Sixth Circuit vacated, holding that the PTO had carried its initial burden of demonstrating prosecution laches. The PTO sought reimbursement of its expert witness fees. Under 35 U.S.C. 145, “[a]ll the expenses of the proceedings shall be paid by the applicant.” The district court noted the American Rule presumption against fee-shifting and denied expert fees. The Federal Circuit vacated. Hyatt is not entitled to attorney’s fees under 28 U.S.C. 2412(b) and cannot be considered a prevailing party. The court affirmed the denial of expert fees because section 145 does not specifically and explicitly shift expert witness fees. View "Hyatt v. Hirshfeld" on Justia Law

The separate inter partes review (IPR) proceedings concerned the 688 patent, and the 229 patent, which have the same inventors and owner. Both are directed to controllers for games consoles. The Patent Board determined that nine claims of the 688 patent were unpatentable as anticipated by the Uy application; five other claims were not unpatentable as obvious over a claimed prior art reference (Burns article) in combination with other references because a copy of the Burns article that Valve relied on had not been authenticated. The 229 patent is directed to “[a] hand[-]held controller for a games console,” “wherein the controller further includes at least one additional control located on a back of the controller,” The Board determined that none of the claims of the 229 patent were unpatentable as anticipated by Uy because Uy did not teach “an elongate member” that “is inherently resilient and flexible,” and because Valve failed to show that a copy of the Burns article Valve relied on as a reference to show obviousness was prior art.The Federal Circuit reversed the determination that the Exhibit is not prior art and vacated the determination that five claims of the ’688 patent and multiple claims of the 229 patent were not shown to be unpatentable. The court remanded for the Board to consider Valve’s arguments that relied on the Exhibit as to those claims. The court affirmed that other of the patents were not unpatentable. View "Valve Corp. v. Ironburg Inventions Ltd." on Justia Law

Teva's patents are directed to methods of using humanized antagonist antibodies that target calcitonin gene-related peptide (CGRP). CGRP is a 37-amino acid peptide that is “a neurotransmitter in the central nervous system and has been shown to be a potent vasodilator in the periphery, where CGRP-containing neurons are closely associated with blood vessels. Dilation of blood vessels was associated with and thought to exacerbate the symptoms of migraine. The challenged patents describe “anti-CGRP antagonist antibodies and methods of using anti-CGRP antagonist antibodies for treating or preventing vasomotor symptoms, such as headaches, such as migraine.” Lilly asserted that each challenged claim would have been obvious over a combination of prior art references.The Patent Trial and Appeal Board first construed the claims, including the preambles and the term “effective amount,” then analyzed prior art, concluding that Lilly failed to prove that the challenged claims would have been obvious over the stated references. The Federal Circuit affirmed, rejecting arguments that the Board erred by reading a result into the constructions of the preambles and the term “effective amount,” which led to erroneously requiring Lilly to prove that a skilled artisan would have expected to achieve results that are unclaimed and that, even if the preambles are limiting and the claims require administration of an antibody with an expectation of results, the Board applied too high a standard in determining whether a skilled artisan would have had a reasonable expectation of success. View "Eli Lilly & Co. v. Teva Pharmaceuticals International GMBH" on Justia Law

Teva’s patents, directed to methods of using humanized antagonist antibodies that target calcitonin gene-related peptide (CGRP), a 37-amino acid peptide that is “a neurotransmitter in the central nervous system, and has been shown to be a potent vasodilator. Dilation of blood vessels was associated with and thought to exacerbate the pain symptoms of migraine. Lilly filed petitions for inter partes review (IPR).In three IPR proceedings, the Board issued a combined final written decision holding that the challenged claims in all three patents are unpatentable as they would have been obvious over various cited references and that a skilled artisan would have been motivated to combine the teachings of the prior art and would have had a reasonable expectation of successfully achieving the claimed invention. The Federal Circuit affirmed, rejecting Teva’s arguments that the Patent Trial and Appeal Board erred as a matter of law in its motivation to combine analysis by deviating from the motivation asserted by Lilly in its IPR petitions, that even under the motivation to combine that the Board did analyze, substantial evidence does not support the Board’s factual findings, and that the Board erred in its analysis of secondary considerations of nonobviousness View "Teva Pharmaceuticals International GmbH v. Eli Lily & Co." on Justia Law

Charles James and Designworks filed suit against real estate companies, as well as their affiliates and agents, claiming that defendants infringed their copyrights when they created and published certain floorplans without authorization. The district court granted defendants summary judgment on the infringement claims, as well as on plaintiffs' claims for contributory and vicarious copyright infringement.The Eighth Circuit held that the copyright statute, 17 U.S.C. 120(a), does not provide a defense to a claim of infringement for real estate companies, their agents, and their contractors when they generate and publish floorplans of homes they list for sale. The court reasoned that the terms Congress used in section 120(a) have a certain quality in common—they all connote artistic expression. The court explained that floorplans, like the ones here, serve a functional purpose. The court noted that its decision does not preclude the district court on remand from considering whether some other defense might apply or whether plaintiffs have demonstrated a claim of copyright infringement in the first place. Accordingly, the court reversed the district court's grants of summary judgment to defendants on the primary infringement claim as well as on the claims for contributory and vicarious infringement, vacated the district court's orders awarding defendants costs and attorney's fees, and remanded for further proceedings. View "Designworks Homes, Inc. v. Columbia House of Brokers Realty, Inc." on Justia Law

Kelley wanted to publish “Hooker to Looker,” to promote her cosmetics business. Di Angelo agreed to publish and distribute Kelley’s then-unwritten Book, with Kelly receiving 50 percent of the net royalties. Kelley provided Di Angelo with a three-page manuscript, detailing her background and outlining the Book’s topics. Di Angelo claims it wrote the Book while “communicating and/or collaborating with Kelley.” The Book Di Angelo distributed lists only Kelley as the copyright holder. Di Angelo sold the initial 1,000-copy print run. Kelley asked Di Angelo for an updated version. Di Angelo alleges that it prepared the updated work, then discovered that Kelley was attempting to work directly with Di Angelo’s printer, in violation of the contract.Kelley sued, claiming that Di Angelo overcharged her and alleging that she “is the sole owner of all copyrights.” Di Angelo counterclaimed for breach of contract. That state court action is pending. Di Angelo filed a federal suit, seeking a declaration that it owns the copyrights. Kelley challenged federal jurisdiction, arguing the claim was premised solely on her alleged breach of the contract, a controversy governed by Texas law. Di Angelo claimed resolution of the authorship dispute required interpretation of federal copyright law, including the definitional and ownership provisions in 17 U.S.C. 101 & 201, which the state court lacks jurisdiction to address. The Fifth Circuit reversed the dismissal of the suit. Di Angelo’s claim necessarily implicates federal law definitions of “Initial ownership” and “Works made for hire.” View "Di Angelo Publications, Inc. v. Kelley" on Justia Law

PersonalWeb’s asserted patents claim priority from an application filed in 1995 and relate to data-processing systems that assign each data item a substantially unique name that depends on the item’s content. These content-based identifiers are generated by a mathematical algorithm, such as a cryptographic hash or “message digest” function. The identifier changes when the data item’s content changes.PersonalWeb sued Google for patent infringement. The court stayed the cases pending resolution of several inter partes reviews (IPRs); the Patent Trial and Appeal Board found all challenged claims unpatentable, concluding that using hash-based identifiers for data management was disclosed in the prior art. The Federal Circuit affirmed. After the stay was lifted, the district court granted Google judgment on the pleadings, citing 35 U.S.C. 101. The Federal Circuit affirmed. the claims focus on “mere automation of manual processes using generic computers.” “lie[] entirely in the realm of abstract ideas, with no plausibly alleged innovation in the non-abstract application realm.” View "PersonalWeb Technologies LLC v. Google LLC" on Justia Law

The 268 patent is directed to seismometers for use in seismic exploration, which generally involves sending an acoustic signal into the earth and using seismic receivers called geophones to detect “seismic reflections” from subsurface structures. Every independent claim of the patent recites, a “geophone internally fixed within” either a “housing” or an “internal compartment” of a seismometer. After being sued for patent infringement, Seabed petitioned for inter partes review of the 268 patent on multiple grounds. The Patent Trial and Appeal Board instituted review and found that the cited prior art did not disclose the geophone limitation and determined Seabed failed to prove the challenged claims were unpatentable. The Federal Circuit vacated. The intrinsic evidence consistently informs a skilled artisan that “fixed” in the claims means mounted or fastened. Given the clarity of the intrinsic evidence, resort to extrinsic evidence is unnecessary. The Board erred to the extent that it relied on extrinsic evidence to alter the meaning of “fixed,” which is clear from the intrinsic evidence. View "Seabed Geosolutions (US) Inc. v. Magseis FF LLC" on Justia Law

Plaintiffs filed suit alleging that defendants purchased trademark terms as keywords for search-engine advertising, then placed generic advertisements that confused customers as to whether the advertisements belonged to or were affiliated with plaintiffs. Plaintiffs alleged claims for trademark infringement in violation of the Lanham Act and claims under Texas law.The Fifth Circuit reversed the district court's dismissal of the complaint for failure to state a claim, vacated the denial of leave to amend, and remanded for further proceedings. The court agreed with Southwest Recreational, Ninth Circuit precedent, and the author of a leading treatise that in the context of internet searches and search-engine advertising in particular, the critical issue is whether there is consumer confusion and that distraction is insufficient. In regard to plaintiff's trademark infringement claims, the court concluded that whether an advertisement incorporates a trademark that is visible to the consumer is a relevant but not dispositive factor in determining a likelihood of confusion in search-engine advertising cases. In this case, plaintiff's complaint contains sufficient factual matter, accepted as true, to state a Lanham Act claim that is plausible on its face. View "Jim S. Adler, PC v. McNeil Consultants, LLC" on Justia Law