Justia Intellectual Property Opinion Summaries

The Ninth Circuit affirmed the district court's grant of summary judgment in favor of Apple in a trademark infringement action brought by Social Tech over the use of the MEMOJI mark. The panel held that mere adoption of a mark without bona fide use in commerce, in an attempt to reserve rights for the future, is insufficient to establish rights in the mark under the Lanham Act. The panel explained that Social Tech failed to put forward evidence that the release of its Memoji application to the public was for genuine commercial purposes warranting trademark protection and thus it failed to establish a triable issue regarding whether it engaged in a bona fide use of the mark in commerce within the meaning of the Lanham Act.The panel considered the totality of the circumstances and concluded that, while at the time of its original intent-to-use filing, Social Tech may have had some commercial intent to develop the Memoji application, at the time it filed its Statement of Use, its use of the MEMOJI mark was made merely to reserve a right in the mark. Because Social Tech did not engage in bona fide use of the MEMOJI mark in commerce, its registration is invalid, and Apple is entitled to cancellation of Trademark Registration No. 5,566,242. View "Social Technologies LLC v. Apple Inc." on Justia Law

Bot sued Sony, alleging infringement of six patents related to gaming. The district court held a case management conference, during which Bot agreed to file an amended complaint. The district court dismissed Bot's amended complaint as to the 540, 990, 988, and 670 patents and denied Bot’s motion for leave to file a second amended complaint. As to the 363 patent, the district court granted Sony summary judgment, finding claim 1 invalid under 35 U.S.C. 101.The Federal Circuit affirmed in part, reversed in part, and remanded for further proceedings. To the extent the district court characterized its colloquy with counsel during the case management conference as “directing” Bot to file a first amended complaint, there was no abuse of discretion, nor in dismissing Bot’s claims as to the 540 and 990 patents for failure to state a plausible claim of infringement. A plaintiff is not required to plead infringement on an element-by-element basis but there must be some factual allegations that, when taken as true, articulate why it is plausible that the accused product infringes the patent claim. With respect to the 988 and 670 patents, the district court erred in finding the infringement allegations insufficient. Claim 1 of the 363 patent is invalid under section 101. View "Bot M8 LLC v. Sony Corp. of America" on Justia Law

Ikorongo Texas was formed as a Texas LLC and, a month later, filed patent infringement complaints in the Western District of Texas. Although "Texas" claims to be unrelated to Ikorongo Tech, a North Carolina LLC, both are run out of the same North Carolina office; as of March 2020, the same five individuals “own[ed] all of the issued and outstanding membership interests” in both. "Tech" owns the patents at issue. Days before the complaints were filed, Tech assigned to Texas exclusive rights to sue for infringement and collect damages for those patents within specified parts of Texas while retaining those rights in the rest of the country. First amended complaints named both entities as co-plaintiffs and do not distinguish between infringement in the Western District of Texas and infringement elsewhere.The defendants moved under 28 U.S.C. 1404(a) to transfer the suits to the Northern District of California, arguing that three of the five accused third-party applications were developed in and potential witnesses and sources of proof were located in Northern California while no application was developed or researched in and no sources of proof were in Western Texas. The court denied the motions, reasoning that Ikorongo Texas’s rights could not have been infringed in California.The Federal Circuit directed the lower court to grant the transfer motions. The case “might have been brought” in California; the presence of Ikorongo Texas is recent, ephemeral, and artificial—a maneuver in anticipation of litigation. The district court here assigned too little weight to the relative convenience of California and overstated concerns about judicial resources and inconsistent results; other public interest factors favor transfer. View "In re Samsung Electronics Co., Ltd." on Justia Law

Truckai invented NovaSure to treat abnormal uterine bleeding using a moisture-permeable applicator head to destroy targeted cells. Truckai filed a patent application and assigned the application and future continuation applications, to his company, Novacept. Novacept and its patents and patent applications were acquired by Hologic. Truckai founded Minerva and developed a supposedly improved device to treat abnormal uterine bleeding, using a moisture-impermeable applicator head to remove cells. The Patent and Trademark Office (PTO) issued a patent; the FDA approved the device for sale. Hologic filed a continuation application, seeking to add claims to its NovaSure patent--one claim encompassed applicator heads generally, without regard to whether they are moisture permeable. The PTO issued the altered patent.Hologic sued Minerva for infringement. Minerva argued that Hologic’s patent was invalid because the new claim did not match the written description. Hologic invoked the assignor estoppel doctrine: Because Truckai had assigned the original application, he and Minerva could not impeach the patent’s validity. The Federal Circuit agreed.The Supreme Court vacated. Assignor estoppel is a valid defense, based on the need for consistency in business dealings, but applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations made in assigning the patent. Concerns with the assignor taking contradictory positions do not arise when an assignment occurs before an inventor can make a warranty as to specific claims, such as when an employee assigns to his employer patent rights in future inventions; when a later legal development renders irrelevant the warranty given at the time of assignment; and when a post-assignment change in patent claims can remove the rationale for applying assignor estoppel. The Federal Circuit failed to recognize these boundaries, deeming “irrelevant” the question of whether Hologic had expanded the assigned claims. If Hologic’s new claim is materially broader than what Truckai assigned, Truckai could not have warranted its validity. View "Minerva Surgical, Inc. v. Hologic, Inc." on Justia Law

Administrative Patent Judges (APJs) conduct adversarial proceedings for challenging the validity of an existing patent before the Patent Trial and Appeal Board (PTAB), 35 U.S.C. 6(a), (c). The Secretary of Commerce appoints PTAB members, including APJs, except the Director, who is nominated by the President and confirmed by the Senate. APJs concluded that Arthrex’s patent was invalid. The Federal Circuit concluded that the APJs were principal officers who must be appointed by the President with the advice and consent of the Senate; their appointment was unconstitutional. To remedy this violation, the court invalidated the APJs’ tenure protections, making them removable at will by the Secretary.The Supreme Court vacated. The unreviewable authority wielded by APJs during patent review is incompatible with their appointment by the Secretary to an inferior office. Inferior officers must be “directed and supervised at some level by others who were appointed by Presidential nomination with the advice and consent of the Senate.” While the Director has administrative oversight, neither he nor any other superior executive officer can directly review APJ decisions. A decision by the APJs under his charge compels the Director to “issue and publish a certificate” canceling or confirming patent claims he previously allowed. Given the insulation of PTAB decisions from executive review, APJs exercise power that conflicts with the Appointments Clause’s purpose “to preserve political accountability.”Four justices concluded that section 6(c) cannot constitutionally be enforced to prevent the Director from reviewing final APJ decisions. The Director may review final PTAB decisions and may issue decisions on behalf of the Board. Section 6(c) otherwise remains operative. Because the source of the constitutional violation is the restraint on the Director’s review authority not the appointment of APJs, Arthrex is not entitled to a hearing before a new panel. View "United States v. Arthrex, Inc." on Justia Law

The Kerstiens family runs companies that build single-family homes out of Jasper, Indiana. Plan Pros and Prime Designs are home design companies that license their plans through Design Basics, which acts as a broker, serving as an intermediary between home builders and design firms. Design Basics markets the thousands of plans it holds copyrights to through trade publications, promotional materials placed in home improvement stores, and national builder associations and “has become a serial litigant,” having filed more than 100 infringement suits against home builders.In affirming the dismissal of Design Basic’s suit against the Kerstiens, the Seventh Circuit referred to “intellectual property trolls,” enforcing copyrights not to protect expression, but to extract payments through litigation. Design Basics has thin copyright in its plans because they consist largely of standard features found in homes across America. View "Design Basics, LLC v. Kerstiens Homes & Designs, Inc" on Justia Law

Yu sued for infringement of the 289 patent, titled “Digital Cameras Using Multiple Sensors with Multiple Lenses.” The district court dismissed the suit with prejudice after concluding that each asserted claim was patent-ineligible under 35 U.S.C. 101. The court found that the asserted claims were directed to “the abstract idea of taking two pictures and using those pictures to enhance each other in some way.” The court explained that “photographers ha[ve] been using multiple pictures to enhance each other for over a century” and that the asserted claims lack an inventive concept, noting “the complete absence of any facts showing that the[] [claimed] elements were not well-known, routine, and conventional.” The Federal Circuit affirmed. The claimed hardware configuration itself is not an advance and does not itself produce the asserted advance of enhancement of one image by another, which is an abstract idea. View "Yu v. Apple Inc." on Justia Law

In 2006 Heat On-The-Fly began using a new fracking technology on certain jobs. Heat’s owner later filed a patent application regarding the process but failed to disclose 61 public uses of the process that occurred over a year before the application was filed. This application led to the 993 patent. Heat asserted that patent against several parties. In 2014, Phoenix acquired Heat and the patent. Chandler alleges that enforcement of the 993 patent continued in various forms. In an unrelated 2018 suit, the Federal Circuit affirmed a holding that the knowing failure to disclose prior uses of the fracking process rendered the 993 patent unenforceable due to inequitable conduct.Chandler filed a “Walker Process” monopolization action under the Sherman Act, which required that the antitrust-defendant obtained the patent by knowing and willful fraud on the patent office and maintained and enforced that patent with knowledge of the fraudulent procurement, and proof of “all other elements necessary to establish a Sherman Act monopolization claim.” The Federal Circuit transferred the case to the Fifth Circuit, which has appellate jurisdiction over cases from the Northern District of Texas. The court concluded that it lacked jurisdiction because this case does not arise under the patent laws of the United States. View "Chandler v. Phoenix Services LLC" on Justia Law

Oakwood hired Dr. Thanoo in 1997. As Oakwood's Senior Scientist, he signed confidentiality agreements. Thanoo designed Oakwood’s microsphere process technology. Oakwood invested more than $130 million and two decades in its Microsphere Project and developed the “Leuprolide Products,” which are bioequivalent to Lupron Depot®. Aurobindo contacted Oakwood to discuss collaboration. Some of Oakwood’s trade secret information was shared under a confidentiality agreement. Negotiations failed. Aurobindo hired Thanoo six months later and began developing microsphere-based injectable products that Oakwood alleges are “substantially similar to and competitive with Oakwood’s Microsphere Project." Oakwood asserts that the product could not have been developed within the rapid timeframe without Thanoo’s assistance and the use of Oakwood’s trade secret information.The Third Circuit vacated the dismissal of Oakwood's suit, asserting trade secret misappropriation, breach of contract, and tortious interference with contractual relations. Under the Defend Trade Secrets Act, 18 U.S.C. 1836(b), Oakwood sufficiently identified its trade secrets and sufficiently alleged that the defendants misappropriated those trade secrets. The “use” of a trade secret encompasses all the ways one can take advantage of trade secret information to obtain an economic benefit, competitive advantage, or other commercial value, or for an exploitative purpose, such as research or development. A trade secret plaintiff need not allege that its information was the only source by which a defendant might develop its product. Aurobindo's avoidance of substantial research and development costs that Oakwood has invested is recognized as "harm" in the DTSA. View "Oakwood Laboratories LLC v. Thanoo" on Justia Law

SpeedTrack’s 360 patent discloses a “computer filing system for accessing files and data according to user-designated criteria.” The patent explains that prior-art systems “employ a hierarchical filing structure” and “emulate[] commonly[ ]used paper filing systems” in that they “organize[] data into files (analogous to papers in a paper filing system) and directories (analogous to file folders and hanging files).” According to the patent, such systems could “become[] very cumbersome.” According to the patent, prior-art solutions presented additional drawbacks. The 360 patent discloses a method that uses “hybrid” folders, which “contain those files whose content overlaps more than one physical directory” and “allows total freedom from the restrictions imposed by hierarchical and other present-day computer filing systems.”SpeedTrack sued various retail website operators, alleging infringement of the patent. The Federal Circuit affirmed the stipulated judgment of noninfringement based on the district court’s construction of the term “hierarchical limitation.” View "SpeedTrack, Inc. v. Amazon.com, Inc." on Justia Law