Justia Intellectual Property Opinion Summaries

Apple owns Madison, Wisconsin vitamin stores. Knott, a former Apple employee, was fired in 2017. Knott founded his own vitamin shop, Embrace Wellness, in Middleton, Wisconsin. Embrace allegedly shared design features and a similar layout with Apple’s locations and carried comparable products. Apple sued, alleging infringement of its trademark, trade dress, and copyrights. The defendants filed counterclaims for tortious interference and retaliation. Apple sought a preliminary injunction on the trademark and trade dress claims, which the court denied, explaining that Apple had failed to show a likelihood of irreparable harm. Apple then moved to dismiss its own claims without prejudice. Because the defendants had already expended resources litigating an injunction, the court ordered Apple to withdraw its motion or accept dismissal with prejudice, expressing its opinion that no party’s claim was strong. Apple agreed to dismiss its claims with prejudice.The court subsequently denied defendants’ motion for fees; they appealed with respect to the copyright claims. The Seventh Circuit affirmed. Apple’s copyright claims were frivolous—common-law copyright was abolished in 1976—but the totality of the circumstances did not warrant fees. There was no evidence that Apple had filed suit with an improper motive, and no need to deter future frivolous filings. The case was primarily about trademark and trade dress. no motions were filed related to copyright. Apple dismissed the copyright claims voluntarily before defendants had to argue against them. View "Timothy B. O'Brien LLC v. Knott" on Justia Law

Personal Web’s patents share a largely common specification and claim priority to an abandoned patent application, which was filed in 1995. According to the specification, there was a problem with the way computer networks identified data in their systems. There was “no direct relationship between the data names” and the contents of the data item. Computer networks could become clogged with duplicate data, and the efficiency and integrity of data processing systems could be impaired. The inventors purported to solve this problem by devising “True Names” for data items. The system created a “substantially unique” identifier for each data item that depended only on the content of the data itself and did not depend on purportedly less reliable means of identifying data items, such as user-provided file names. PersonalWeb sued Amazon for patent infringement. After the district court issued its claim construction order, PersonalWeb stipulated to the dismissal of all its claims against Amazon with prejudice; the court subsequently entered judgment against PersonalWeb.In 2018, PersonalWeb filed dozens of new lawsuits against website operators, many of which were Amazon’s customers. Amazon intervened. The Federal Circuit affirmed a declaratory judgment that PersonalWeb’s lawsuits against Amazon’s customers were barred as a result of the prior lawsuit brought by PersonalWeb against Amazon. View "In Re PersonalWeb Technologies LLC" on Justia Law

Munchkin sued LNC for trademark infringement and unfair competition claims based on LNC’s spill-proof drinking containers. A year later, the court allowed Munchkin to amend the complaint to include new trademark infringement claims, trade dress infringement claims, and patent infringement claims based on the 993 patent which is directed to a spill-proof drinking container. While the litigation was ongoing, Munchkin voluntarily dismissed all of its non-patent claims with prejudice. Munchkin’s 993 patent was held unpatentable through an inter partes review initiated by LNC. The Federal Circuit affirmed that Patent Trial and Appeal Board decision; Munchkin then dismissed its patent infringement claims. The district court subsequently granted LNC’s motion for attorney’s fees under 35 U.S.C. 285 and 15 U.S.C. 1117(a), finding the case to be “exceptional” because the trademark and trade dress infringement claims were substantively weak, and Munchkin should have been aware of the substantive weakness of its patent’s validity.The Federal Circuit reversed. LNC’s fee motion insufficiently presented the required facts and analysis needed to establish that Munchkin’s patent, trademark, and trade dress infringement claims were so substantively meritless to render the case exceptional. None of those issues were fully adjudicated before the court on the merits; the district court abused its discretion in granting the motion. View "Munchkin, Inc. v. Luv n' Care, Ltd." on Justia Law

The Second Circuit affirmed the district court's denial of the Welsh Government's motion to dismiss claims of copyright infringement brought by Pablo Star over two photographs of the Welsh poet Dylan Thomas and his wife, Caitlin Macnamara, on the ground of sovereign immunity. The Welsh Government argued that the commercial-activity exception of the Foreign Sovereign Immunities Act (FSIA) does not apply to its conduct promoting Welsh culture and tourism in New York.The court held, however, that the Welsh Government engaged in commercial activity in publicizing Wales-themed events in New York, and that the Welsh Government's activity had substantial contact with the United States. Therefore, Pablo Star's lawsuit falls within an exception to the immunity recognized in the FSIA. View "Pablo Star Ltd. v. The Welsh Government" on Justia Law

Quincy’s Prevagen® dietary supplement is sold at stores and online. Quincy registered its Prevagen® trademark in 2007. Ellishbooks, which was not authorized to sell Prevagen®, sold supplements identified as Prevagen® on Amazon.com, including items that were in altered or damaged packaging; lacked the appropriate purchase codes or other markings that identify the authorized retail seller; and contained tags from retail stores. Quincy sued under the Lanham Act, 15 U.S.C. 1114. Ellishbooks did not respond. The court entered default judgment. Ellishbooks identified no circumstances capable of establishing good cause for default. The district court entered a $480,968.13 judgment in favor of Quincy, plus costs, and permanently enjoined Ellishbooks from infringing upon the PREVAGEN® trademark and selling stolen products bearing the PREVAGEN® trademark.The Seventh Circuit affirmed and subsequently awarded Rule 38 sanctions. Ellishbooks’ appellate arguments had virtually no likelihood of success and its conduct during the course of the appeal was marked by several failures to timely respond and significant deficiencies in its filings. These shortcomings cannot be attributed entirely to counsel’s lack of experience in litigating federal appeals. A review of the dockets suggests that Ellishbooks has attempted to draw out the proceedings as long as possible while knowing that it had no viable substantive defense. View "Quincy Bioscience, LLC v. Ellishbooks" on Justia Law

Almirall markets ACZONE®, a prescription medication used to treat acne. Almirall’s 926 and 219 patents are listed in the FDA Orange Book as claiming ACZONE. Before seeking approval to market a generic version of ACZONE, Amneal sought inter partes review (IPR), challenging claims of the patents. Amneal filed its Abbreviated New Drug Application with the FDA. Almirall sued, alleging infringement of only the 219 patent. Amneal counterclaimed that the 926 patent is invalid and is not infringed. Almirall offered to enter into a covenant-not-to-sue on the 926 patent upon the dismissal of the IPR. With the parties unable to reach a settlement, the underlying IPR on the 926 patent proceeded. The Patent Board found claims of the 926 patent not unpatentable. Amneal appealed but later moved to voluntarily dismiss its appeal.Almirall agreed to the dismissal but argued that Amneal litigated in an unreasonable manner by continuing to pursue the IPR after the covenant-not-to-sue was offered, and Almirall sought removal of the patent from the Orange Book. Almirall sought (35 U.S.C. 285) fees and costs incurred from the date settlement negotiations ended to the date of the IPR trial. The Federal Circuit denied the request. Even if section 285 is not limited to district court proceedings, the plain meaning of its reference to “[t]he court” speaks only to awarding fees incurred during, in close relation to, or as a direct result of, judicial proceedings, not to fees incurred for work in Patent Office proceedings before the court asserted jurisdiction. View "Amneal Pharmaceuticals LLC v. Almirall, LLC" on Justia Law

The Ninth Circuit reversed the district court's judgment after a jury trial and award of attorneys' fees in favor of Unicolors in a copyright infringement action against H&M, where Unicolors alleged that a design it created in 2011 is remarkably similar to a design printed on garments that H&M began selling in 2015.The panel held that courts may not consider in the first instance whether the Register of Copyrights would have refused registration due to the inclusion of known inaccuracies in a registration application. In this case the district court erred by imposing an intent-to-defraud requirement for registration invalidation and erred in concluding that Unicolors’s application for copyright registration did not contain inaccuracies despite the inclusion of confined designs.The panel held that the plain meaning of "single unit" in 37 C.F.R. 202.3(b)(4)(i)(A) requires that the registrant first published the collection of works in a singular, bundled collection. The panel explained that it is an inaccuracy for a registrant like Unicolors to register a collection of works as a single-unit publication when the works were not initially published as a singular, bundled collection. Furthermore, the undisputed evidence adduced at trial further shows that H&M included the inaccurate information "with knowledge that it was inaccurate." Therefore, the panel remanded to the district court with instructions to submit an inquiry to the Register of Copyrights asking whether the known inaccuracies contained in the '400 Registration application, if known to the Register of Copyrights, would have caused it to refuse registration. View "Unicolors, Inc. v. H&M Hennes & Mauritz, LP" on Justia Law

Odyssey filed the 678 patent application in 2004. After several procedural disputes and appeals, the Patent Board reversed an examiner’s rejections. The Technology Center Director issued an “examiner’s request for rehearing.” Odyssey did not address the merits, objecting to the procedural propriety of the request, and requesting reconsideration. Odyssey eventually made merits arguments, but without waiting for the Board’s decision, it sought judicial review.Odyssey filed its 603 application in 2006. After a final rejection of all claims, Odyssey appealed and filed a petition demanding that the examiner make certain evidence part of the written record and supplement his responses. The examiner further explained his decision. The Technology Center Director dismissed the petition as moot. Odyssey believed that the examiner’s answer to its appeal brief included new grounds for rejection. The Technology Center Director dismissed that assertion. Rather than filing a brief replying to the examiner’s answer, Odyssey sought judicial review.The PTO amended its rules of practice in ex parte appeals; final rules were published in November 2011, applicable to all ex parte appeals filed on or after January 23, 2012. Odyssey challenged the legality of these amendments.The Federal Circuit affirmed the dismissal of all three claims. In the first two counts, Odyssey was challenging actions not yet final before the Board; the Board could provide Odyssey with an adequate remedy, and if not, Odyssey had remedies under 35 U.S.C. 141 or 145. Count III was untimely under 28 U.S.C. 2401, the six-year statute of limitations for a facial APA challenge, which runs from the date the regulations were published. The complaint was filed in January 2018. View "Odyssey Logistics & Technology Corp. v. Iancu" on Justia Law

McRO’s patent describes a method for automatically generating animations, with a three-dimensional appearance, depicting lip movements and facial expressions. The method uses two basic building blocks: “phonemes” and “morph targets.” A “phoneme,” the patent explains, is “the smallest unit of speech, and corresponds to a single sound.” A “morph target” is a model of a mouth position—one “reference model” displays a “neutral mouth position,” while other models display “other mouth positions, each corresponding to a different phoneme or set of phonemes.”McRO sued several video game developers alleging infringement of three method claims of the patent. The district court held the claims invalid for ineligibility under 35 U.S.C. 101, but the Federal Circuit reversed. On remand, the district court ultimately held that the developers were entitled to summary judgment of noninfringement because the accused products do not practice the claimed methods and to summary judgment of invalidity because the specification fails to enable the full scope of the claims.The Federal Circuit affirmed the judgment of noninfringement, agreeing with the developers that the claim term “morph weight set” requires three-dimensional vectors. The court vacated the judgment of invalidity and remanded for further proceedings in light of, among other things, the developers’ offer to withdraw their counterclaims without prejudice. View "McRO, Inc. v. Bandai Namco Games America, Inc." on Justia Law

The Eighth Circuit affirmed the district court's findings of fact and conclusions of law in this trademark infringement case over the word mark "Lawn Managers." In this case, the licensing agreement was the result of a divorce and provided that husband and wife would, in effect, operate parallel, almost identical companies using the same name and similar equipment and vehicles but in different zip codes.The court agreed with the district court that Progressive has not met its high burden of proving that Lawn Managers abandoned its mark through naked licensing. Therefore, the district court properly found that wife could reasonably rely on husband's own quality control efforts and thus met the duty of control as licensor. The court held that the terms of the licensing agreement, combined with the couple's successful operation of the Lawn Managers business for over 17 years and the lack of any evidence of quality deviations at Progressive, were sufficient to support the district court's finding of reasonable reliance. Furthermore, the court held that the district court was within its discretion to conclude that the Lawn Managers mailer did not support Progressive's unclean hands defense. Finally, the district court did not clearly err in its damages award. View "Lawn Managers, Inc. v. Progressive Lawn Managers, Inc." on Justia Law