Justia Intellectual Property Opinion Summaries

Galderma Laboratories, L.P. and TCD Royalty Sub LP (collectively, Galderma) own and market Oracea®, a doxycycline-based treatment for rosacea. They hold U.S. Patent Nos. 7,749,532 and 8,206,740 (the Asserted Patents), which cover a specific formulation of doxycycline. Lupin Inc. and Lupin Ltd. (collectively, Lupin) filed an abbreviated new drug application (ANDA) to market a generic version of Oracea®, claiming bioequivalence. Galderma sued Lupin for patent infringement under the Hatch-Waxman Act, asserting that Lupin’s product infringed the Asserted Patents.The United States District Court for the District of Delaware held a three-day bench trial and found that Lupin’s ANDA product did not infringe the Asserted Patents. The court concluded that Galderma failed to prove that Lupin’s product met the specific formulation requirements of the Asserted Patents, particularly the immediate release (IR) and delayed release (DR) portions of doxycycline. The court also found that Galderma did not demonstrate infringement under the doctrine of equivalents.The United States Court of Appeals for the Federal Circuit reviewed the case. Galderma argued that the district court erred in disregarding dissolution test data from Lupin’s ANDA, admitting evidence from a rebuttal batch, imposing additional claim limitations, and not finding infringement under the doctrine of equivalents. The Federal Circuit found no clear error in the district court’s findings. It held that the district court correctly determined that the two-stage dissolution test did not represent in vivo behavior and that Galderma did not prove its theory of infringement. The court also found no abuse of discretion in admitting the rebuttal batch evidence and no imposition of additional claim limitations. Finally, the court upheld the district court’s finding that Galderma did not prove infringement under the doctrine of equivalents.The Federal Circuit affirmed the district court’s decision, concluding that Lupin’s ANDA product did not infringe the Asserted Patents. View "Galderma Laboratories, L.P. v. Lupin, Inc." on Justia Law

PS Products, Inc. and Billy Pennington (collectively, PSP) own a U.S. Design Patent for a long-spiked electrode for a stun device. They filed a lawsuit in the Eastern District of Arkansas against Panther Trading Company, Inc. (Panther) for patent infringement. Panther responded with a Rule 11 letter and a motion to dismiss, arguing the infringement claims were frivolous and the venue was improper. PSP did not respond to these communications and later moved to voluntarily dismiss the case with prejudice. Panther then sought attorney fees and sanctions, claiming the lawsuit was frivolous.The United States District Court for the Eastern District of Arkansas dismissed the case with prejudice and awarded Panther attorney fees and costs under 35 U.S.C. § 285, deeming the case exceptional. The court also imposed $25,000 in deterrence sanctions on PSP under its inherent power, citing PSP's history of filing meritless lawsuits. PSP filed a motion for reconsideration of the sanctions, which the district court denied.The United States Court of Appeals for the Federal Circuit reviewed the case. PSP appealed the $25,000 sanctions, arguing the district court lacked authority to impose them in addition to attorney fees and that the court applied the wrong legal standard. The Federal Circuit held that the district court did not err in imposing sanctions under its inherent power, even after awarding attorney fees under § 285. The court found that PSP's conduct, including filing a meritless lawsuit and citing the wrong venue statute, justified the sanctions. The Federal Circuit affirmed the district court's decision and declined Panther's request for attorney fees for the appeal, determining the appeal was not frivolous as argued. View "PS Products, Inc. v. Panther Trading Co., Inc." on Justia Law

Mirror Worlds Technologies, LLC owns three patents related to methods for storing, organizing, and presenting data in time-ordered streams on a computer system. In 2017, Mirror Worlds sued Meta Platforms, Inc. (formerly Facebook, Inc.) for patent infringement, alleging that Facebook's features, such as News Feed, Timeline, and Activity Log, infringed on these patents. Facebook moved for summary judgment of non-infringement, which the district court granted, concluding that Facebook did not infringe the patents as a matter of law.The United States District Court for the Southern District of New York found that Facebook's systems did not meet the "main stream" or "main collection" limitations of the patents, as the evidence showed that not all data units received or generated by Facebook's systems were stored in the accused main streams. The court also rejected Facebook's defense of invalidity under 35 U.S.C. § 101 but granted summary judgment of non-infringement on several grounds, including that the accused systems did not display a "glance view" as required by the '538 and '439 patents.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court's summary judgment of non-infringement. The Federal Circuit agreed with the district court's construction of "data unit" and found that the evidence supported the conclusion that Facebook's systems received data units not stored in the accused main streams. The court also upheld the exclusion of certain evidence presented by Mirror Worlds and found no genuine dispute of material fact regarding the "glance view" limitation. Consequently, the Federal Circuit affirmed the judgment of non-infringement and dismissed Facebook's cross-appeal regarding the invalidity defense. View "MIRROR WORLDS TECHNOLOGIES, LLC v. META PLATFORMS, INC. " on Justia Law

Cytiva BioProcess R&D AB ("Cytiva") appealed the final written decisions from six inter partes reviews (IPRs) that determined 79 claims of three challenged patents were unpatentable. JSR Corp. and JSR Life Sciences, LLC (collectively, "JSR") cross-appealed the decisions in four of these IPRs, which held the remaining four challenged claims not unpatentable. The patents in question relate to chromatography matrices and processes for isolating target compounds using those matrices, specifically involving a ligand made from Protein A (SPA) found in staphylococcus aureus.The Patent Trial and Appeal Board (Board) found that it would have been obvious to make the G29A mutation to Domain C of SPA based on prior art, which suggested this modification for any of the SPA domains. The Board held that claims 1–7, 10–20, 23–26 of the '765 patent, claims 1–3, 5–7, 10–16, 18–20, 23–30 of the '142 patent, and claims 1–10, 12–14, 16–28, 30–32, and 34–37 of the '007 patent were unpatentable. However, the Board found that claims 4 and 17 of the '142 patent and claims 11 and 29 of the '007 patent were not unpatentable, as JSR had not shown a reasonable expectation of success for these claims.The United States Court of Appeals for the Federal Circuit affirmed the Board's determination that the majority of the claims were unpatentable, agreeing that the prior art expressly suggested the G29A modification to Domain C. The court also concluded that the Board erred in limiting the construction of "Fab part of an antibody" to Fab fragments and reversed the Board's determination that claims 4 and 17 of the '142 patent and claims 11 and 29 of the '007 patent were not unpatentable. The court held that if a property of a composition is inherent, there is no question of a reasonable expectation of success in achieving it, and thus, both the composition and process claims were unpatentable. View "CYTIVA BIOPROCESS R&D AB v. JSR CORP." on Justia Law

US Ghost Adventures, LLC (Ghost Adventures) operates a bed and breakfast at the Lizzie Borden House in Fall River, Massachusetts, offering ghost tours and related activities. Ghost Adventures holds federal trademarks for the name "Lizzie Borden" and a hatchet logo. Miss Lizzie's Coffee LLC (Miss Lizzie's) opened a coffee shop next to the Lizzie Borden House, using the Lizzie Borden story in its marketing, including a hatchet logo and references to being "The Most Haunted Coffee Shop in the World." Some visitors mistakenly believed the two businesses were affiliated.Ghost Adventures sued Miss Lizzie's in the United States District Court for the District of Massachusetts for trademark infringement and unfair competition, seeking a preliminary injunction to stop Miss Lizzie's from using the "Lizzie Borden" name and hatchet logo. The district court denied the preliminary injunction, finding that Ghost Adventures failed to show a likelihood of success on the merits. The court determined that the key element in any infringement action is the likelihood of confusion, which Ghost Adventures did not demonstrate. The court found that Miss Lizzie's hatchet logo and use of the name "Lizzie" were not similar enough to Ghost Adventures' trademarks to cause confusion.The United States Court of Appeals for the First Circuit reviewed the case and affirmed the district court's decision. The appellate court agreed that the district court did not clearly err in finding that the hatchet logos were dissimilar and that Miss Lizzie's reference to "Lizzie" was to the historical figure, not the trademark. The court also found that any consumer confusion was due to the proximity of the businesses and their common reliance on the Lizzie Borden story, not the similarity of their marks. The court concluded that Ghost Adventures did not demonstrate a likelihood of success on the merits, and the district court's denial of the preliminary injunction was affirmed. View "US Ghost Adventures, LLC v. Miss Lizzie's Coffee LLC" on Justia Law

National Presto Industries, Inc. ("Presto") designed and sold a personal electric heater called "HeatDish" since 1989. The product was sold at Costco, where Presto used a specific merchandising strategy to boost sales. In 2017, Costco sought a new supplier and contacted U.S. Merchants Financial Group, Inc. ("U.S. Merchants"), which developed a similar heater called "The Heat Machine." Presto claimed that U.S. Merchants infringed on its unregistered trade dress under the Lanham Act.The United States District Court for the District of Minnesota handled the initial proceedings. Presto filed a complaint with multiple claims, including trade dress infringement and copyright infringement. The district court dismissed some claims and denied others, leading to a bench trial for the trade dress claim and a jury trial for the copyright claim. The district court ruled that Presto was not entitled to a jury trial for the trade dress claim, as the remedy sought was equitable, not legal. After a six-day bench trial, the court found that Presto failed to prove that its trade dress had acquired secondary meaning, an essential element for trade dress protection.The United States Court of Appeals for the Eighth Circuit reviewed the case. The court affirmed the district court's decision, agreeing that Presto was not entitled to a jury trial for the trade dress claim because the remedy sought was equitable. The appellate court also upheld the district court's finding that Presto failed to prove secondary meaning for its trade dress. Without secondary meaning, Presto's trade dress infringement claim could not succeed. The judgment of the district court was affirmed. View "National Presto Industries, Inc. v. U.S. Merchants Financial Group, Inc." on Justia Law

In 2014, Ed Sheeran and Amy Wadge wrote the song "Thinking Out Loud," which became a global hit. Structured Asset Sales, LLC (SAS), which owns a portion of the royalties for Marvin Gaye's 1973 song "Let’s Get It On," alleged that Sheeran's song infringed on the copyright of Gaye's song. SAS claimed that the chord progression and syncopated harmonic rhythm in "Thinking Out Loud" were copied from "Let’s Get It On."The United States District Court for the Southern District of New York initially denied Sheeran's motion for summary judgment but later granted it upon reconsideration. The court concluded that the combination of the chord progression and harmonic rhythm in "Let’s Get It On" was too commonplace to warrant copyright protection. The court also excluded evidence and expert testimony related to musical elements not present in the sheet music deposited with the Copyright Office in 1973, which defined the scope of the copyright under the Copyright Act of 1909.The United States Court of Appeals for the Second Circuit reviewed the case and affirmed the district court's judgment. The appellate court agreed that the scope of the copyright was limited to the elements in the deposited sheet music and that the combination of the chord progression and harmonic rhythm was not original enough to be protectable. The court also found that no reasonable jury could find the two songs substantially similar as a whole, given their different melodies and lyrics. Thus, the court held that Sheeran did not infringe on the copyright of "Let’s Get It On" and affirmed the summary judgment in favor of Sheeran. View "Structured Asset Sales, LLC v. Sheeran" on Justia Law

CPC Patent Technologies Pty Ltd. sought discovery from Apple Inc. under 28 U.S.C. § 1782 for use in a prospective patent infringement lawsuit in Germany. CPC aimed to obtain documents describing the functionality of Apple’s biometric security technology. The district court granted CPC’s application, allowing them to serve a subpoena on Apple, but the scope of the discovery and the specific documents Apple must produce remained unresolved.Initially, a magistrate judge denied CPC’s application, finding the discovery requests unduly burdensome. CPC sought review, and the district court affirmed the magistrate judge’s decision under a clear error standard. On appeal, the Ninth Circuit held that the district court should have reviewed the magistrate judge’s decision de novo, as the ruling on a § 1782 application is dispositive. The case was remanded, and the district court, applying de novo review, granted CPC’s application. Apple objected, particularly concerned about the potential requirement to produce source code, but the district court’s order did not definitively resolve these objections.The United States Court of Appeals for the Ninth Circuit reviewed the case and dismissed the appeal for lack of appellate jurisdiction. The court held that the district court’s decision was not final because the scope of discovery and the specific documents Apple must produce were still undetermined. The lack of a final judgment meant that the Ninth Circuit could not evaluate the Intel factors used to determine whether discovery was warranted under § 1782. Consequently, the appeal was dismissed, leaving the district court to resolve the remaining discovery issues. View "CPC PATENT TECHNOLOGIES PTY LTD. V. APPLE INC." on Justia Law

NexStep, Inc. filed a lawsuit against Comcast Cable Communications, LLC, alleging infringement of nine patents, including U.S. Patent Nos. 8,885,802 and 8,280,009. The District Court for the District of Delaware granted summary judgment of non-infringement for the '802 patent after construing the term "VoIP" to require two-way voice communication, which NexStep's infringement theory did not meet. The '009 patent proceeded to a jury trial, where the jury found no literal infringement but did find infringement under the doctrine of equivalents. However, the district court granted Comcast's post-trial motion for judgment as a matter of law, finding NexStep's proof inadequate.The district court's summary judgment for the '802 patent was based on the construction of "VoIP" as requiring two-way voice communication, supported by technical dictionaries and the agreed industry standard meaning. NexStep's argument that VoIP should include one-way audio transmission was rejected. The court found no genuine dispute of material fact and granted summary judgment of non-infringement.For the '009 patent, the jury found no literal infringement but did find infringement under the doctrine of equivalents. However, the district court set aside this verdict, ruling that NexStep failed to provide the required particularized testimony and linking argument to support the doctrine of equivalents. The court found that NexStep's expert testimony was too conclusory and lacked specificity.The United States Court of Appeals for the Federal Circuit affirmed the district court's rulings. The appellate court agreed with the district court's construction of "VoIP" and its grant of summary judgment for the '802 patent. For the '009 patent, the appellate court found that NexStep's expert testimony did not meet the evidentiary requirements for the doctrine of equivalents, as it lacked particularized testimony and linking argument. The court dismissed Comcast's conditional cross-appeal related to the validity of the '009 patent. View "NEXSTEP, INC. v. COMCAST CABLE COMMUNICATIONS, LLC " on Justia Law

The case involves a dispute between two companies over the enforcement of standard-essential patents (SEPs) related to the 5G wireless-communication standard. The plaintiff, a telecommunications company, had made a commitment to license its SEPs on fair, reasonable, and non-discriminatory (FRAND) terms. The defendant, another technology company, sought an antisuit injunction to prevent the plaintiff from enforcing injunctions it had obtained in Colombia and Brazil based on these SEPs.The United States District Court for the Eastern District of North Carolina denied the defendant's request for an antisuit injunction. The district court applied a three-part framework to analyze the request, focusing on whether the domestic suit would be dispositive of the foreign actions. The court concluded that the domestic suit would not necessarily result in a global cross-license between the parties and therefore did not meet the threshold requirement for issuing an antisuit injunction.The United States Court of Appeals for the Federal Circuit reviewed the district court's decision. The appellate court vacated the district court's denial and remanded the case for further proceedings. The appellate court concluded that the district court had erred in its interpretation of the "dispositive" requirement. Specifically, the appellate court held that the FRAND commitment precludes the plaintiff from pursuing SEP-based injunctive relief unless it has first complied with its obligation to negotiate in good faith over a license to those SEPs. Since whether the plaintiff had complied with this obligation was an issue before the district court, the appellate court determined that the "dispositive" requirement was met.The appellate court did not decide whether the defendant was ultimately entitled to the antisuit injunction, leaving that determination to the district court's discretion upon further analysis. The case was remanded for the district court to consider the remaining parts of the foreign-antisuit-injunction framework. View "TELEFONAKTIEBOLAGET LM ERICSSON v. LENOVO (UNITED STATES), INC. " on Justia Law