Justia Intellectual Property Opinion Summaries

Acorda Therapeutics, Inc. developed Ampyra®, a drug for multiple sclerosis, and had a licensing agreement with Alkermes PLC, which owned a patent for Ampyra’s active ingredient. The patent expired in July 2018, but Acorda continued to make royalty payments to Alkermes until July 2020, when it began making payments under protest. Acorda initiated arbitration in July 2020, seeking a declaration that the royalty provisions were unenforceable post-patent expiration and a refund of royalties paid since July 2018.The arbitration tribunal agreed that the royalty provisions were unenforceable but ruled that Acorda could only recoup payments made under formal protest. Acorda then petitioned the United States District Court for the Southern District of New York to confirm the tribunal’s rulings except for the denial of recoupment of unprotested payments. The district court rejected Acorda’s arguments, which were based on the tribunal’s alleged “manifest disregard” of federal patent law and a non-patent-law principle, and confirmed the award in full.Acorda appealed to the United States Court of Appeals for the Federal Circuit, seeking to reverse the district court’s denial of the 2018–2020 recoupment. The Federal Circuit concluded that it lacked jurisdiction over the appeal because Acorda’s petition did not necessarily raise a federal patent law issue. The court determined that the petition’s request for confirmation did not require a determination of federal patent law, and the request for modification presented alternative grounds, one of which did not involve patent law. Consequently, the Federal Circuit transferred the case to the United States Court of Appeals for the Second Circuit. View "Acorda Therapeutics, Inc. v. Alkermes PLC" on Justia Law

Yuga Labs, Inc. created the Bored Ape Yacht Club (BAYC) NFT collection, which became highly popular and valuable. Defendants Ryder Ripps and Jeremy Cahen created a nearly identical NFT collection called Ryder Ripps Bored Ape Yacht Club (RR/BAYC), using the same images and identifiers as Yuga's BAYC NFTs. Yuga sued for trademark infringement and cybersquatting, while Defendants countersued under the Digital Millennium Copyright Act (DMCA) and sought declaratory relief that Yuga had no copyright protection over the Bored Apes.The United States District Court for the Central District of California dismissed Defendants' declaratory-judgment counterclaims for lack of subject-matter jurisdiction and granted summary judgment for Yuga on its trademark infringement and cybersquatting claims, as well as on Defendants' DMCA counterclaim. The court then held a bench trial on remedies, enjoining Defendants from using the BAYC marks and awarding Yuga over $8 million in disgorgement of profits, statutory damages, attorney fees, and costs.The United States Court of Appeals for the Ninth Circuit reviewed the case. The court held that NFTs can be trademarked under the Lanham Act as they are considered "goods." However, the court reversed the district court's grant of summary judgment for Yuga on its trademark infringement and cybersquatting claims, concluding that Yuga did not prove as a matter of law that Defendants' actions were likely to cause consumer confusion. The court found that Defendants' use of Yuga's marks did not constitute nominative fair use and was not protected by the First Amendment. The court affirmed the district court's rejection of Defendants' DMCA counterclaim and the dismissal of their declaratory-judgment claims with prejudice. The case was remanded for further proceedings. View "Yuga Labs, Inc. v. Ripps" on Justia Law

Sunkist Growers, Inc. ("Sunkist") opposed Intrastate Distributors, Inc.'s ("IDI") applications to register the mark KIST in standard characters and a stylized form for soft drinks, arguing a likelihood of confusion with its registered SUNKIST marks. Sunkist has offered SUNKIST branded beverages for at least ninety years and owns multiple SUNKIST trademark registrations. IDI, a bottling company, purchased the KIST brand in 2009 and has used it for various soda products.The United States Trademark Trial and Appeal Board ("Board") dismissed Sunkist's opposition, finding no likelihood of confusion between IDI's KIST marks and Sunkist's SUNKIST marks. The Board analyzed the DuPont factors and found that while the similarity of goods, trade channels, conditions of sale, and strength of Sunkist's mark favored a likelihood of confusion, the similarity of the marks and actual confusion factors did not. The Board concluded that the different commercial impressions of the marks (KIST referencing a kiss and SUNKIST referencing the sun) and the lack of reported instances of confusion outweighed the other factors.The United States Court of Appeals for the Federal Circuit reviewed the Board's decision. The court found that the Board's conclusion regarding the different commercial impressions of the marks was not supported by substantial evidence. The court noted that the KIST mark did not consistently include a lips image and that the SUNKIST mark was often used without a sun design. The court concluded that the similarity of the marks favored a likelihood of confusion and that the Board's finding of no likelihood of confusion was incorrect. The court reversed the Board's decision, holding that IDI's KIST marks are likely to cause confusion with Sunkist's registered SUNKIST marks. View "Sunkist Growers, Inc. v. Intrastate Distributors, Inc." on Justia Law

CPI Security Systems, Inc. filed a lawsuit against Vivint Smart Home, Inc., alleging that Vivint engaged in deceptive practices to lure away CPI’s customers. Vivint sales representatives falsely claimed that Vivint had acquired CPI, that CPI was going out of business, or that Vivint needed to upgrade CPI’s equipment. These tactics led many CPI customers to switch to Vivint, causing significant losses for CPI. A jury found Vivint liable for violating the Lanham Act, the North Carolina Unfair and Deceptive Trade Practices Act (UDTPA), and for committing the common-law torts of unfair competition and tortious interference with contracts. The jury awarded CPI $49.7 million in compensatory damages and $140 million in punitive damages.The United States District Court for the Western District of North Carolina upheld the jury’s verdict. Vivint appealed, raising several issues, including the requirement of CPI’s reliance on false statements for the UDTPA claim, the sufficiency of evidence supporting the damages award, the application of North Carolina’s cap on punitive damages, and the admission of prejudicial evidence.The United States Court of Appeals for the Fourth Circuit reviewed the case and found no reversible error. The court held that CPI was not required to prove its own reliance on Vivint’s false statements to establish a UDTPA claim, as the claim was based on unfair competition rather than fraud. The court also found that the evidence presented by CPI was sufficient to support the jury’s damages award. Additionally, the court ruled that the district court correctly applied North Carolina’s cap on punitive damages by considering the total compensatory damages awarded. The court further held that the district court did not abuse its discretion in denying Vivint’s motion to bifurcate the trial or in its evidentiary rulings. The reassignment of the trial judge post-trial did not warrant a new trial. Consequently, the Fourth Circuit affirmed the district court’s judgment. View "CPI Security Systems, Inc. v. Vivint Smart Home, Inc." on Justia Law

IGT owns an expired U.S. Patent No. 7,168,089, which addresses secure communication in gaming environments. In 2003, Zynga's predecessor copied claims from IGT's application into its own, leading to an interference declared by the Board of Patent Appeals and Interferences in 2010. Zynga moved for judgment that IGT's claims were unpatentable for obviousness, but the Board dismissed this motion as moot, terminating the interference because Zynga's claims lacked written description support.In 2021, Zynga petitioned for an inter partes review (IPR) of certain claims of IGT's patent, alleging obviousness based on new prior-art references. IGT argued that interference estoppel barred Zynga's challenge. The Patent Trial and Appeal Board (PTAB) instituted the IPR, rejecting the estoppel argument, and the Director of the PTO affirmed this decision. The PTAB ultimately found all challenged claims unpatentable for obviousness.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the PTAB's decision not to apply interference estoppel was unreviewable under 35 U.S.C. § 314(d), as it was closely tied to the decision to institute the IPR. The court also found no "shenanigans" or legal errors in the PTAB's decision. On the merits, the court affirmed the PTAB's findings that the prior art taught the claimed elements, including the "software authorization agent" and the required messages for authorizing gaming software transfers. The court concluded that substantial evidence supported the PTAB's findings and affirmed the decision. View "IGT v. Zynga, Inc." on Justia Law

Colibri Heart Valve LLC owns U.S. Patent No. 8,900,294, which claims a method for implanting an artificial heart valve that allows for partial deployment and recapture if positioning is incorrect. Colibri sued Medtronic CoreValve, LLC, alleging that Medtronic induced surgeons to infringe this patent by using Medtronic’s products. The patent initially included two independent claims for partial deployment by pushing and retracting, but the claim for retracting was canceled during prosecution.In the United States District Court for the Central District of California, Medtronic argued that their product used partial deployment by retracting, not pushing, and that Colibri’s claim of infringement under the doctrine of equivalents was barred by prosecution history estoppel. The jury found in favor of Colibri, awarding over $106 million in damages. Medtronic’s motions for judgment as a matter of law (JMOL) on the grounds of prosecution history estoppel were denied by the district court.The United States Court of Appeals for the Federal Circuit reviewed the case and concluded that prosecution history estoppel barred Colibri’s claim under the doctrine of equivalents. The court determined that Colibri’s cancellation of the claim for partial deployment by retracting during prosecution, coupled with the close relationship between the canceled and retained claims, precluded Colibri from asserting that Medtronic’s method was equivalent to the claimed method. Consequently, the Federal Circuit reversed the district court’s denial of JMOL of noninfringement, rendering the remaining issues on appeal moot. View "Colibri Heart Valve LLC v. Medtronic CoreValve, LLC" on Justia Law

Roy McAlister invented and patented technologies related to clean fuels and incorporated McAlister Technologies, L.L.C. (MT) to hold and license these patents. In 2009, MT entered into a licensing agreement with Advanced Green Technologies, L.L.C. (AGT), which later retained Loeb & Loeb, L.L.P. for patent matters. Conflicts arose, leading McAlister to terminate the agreement, alleging AGT's breach. McAlister and MT claimed that Loeb & Loeb's actions clouded their patents, causing prospective licensees to back out, resulting in lost profits.The Superior Court in Maricopa County granted summary judgment in favor of Loeb & Loeb on the lost profit damages, finding the plaintiffs' evidence speculative and lacking reasonable certainty. The court excluded the plaintiffs' expert testimony on damages and ruled against them on claims for trespass to chattel, slander of title, and aiding and abetting, but allowed claims for breach of fiduciary duty and negligent supervision to proceed. Plaintiffs conceded no triable damages remained and stipulated to final judgment against them.The Arizona Court of Appeals affirmed the exclusion of the expert testimony and the summary judgment on most lost profit claims but reversed on a $5 million initial payment claim, remanding for further proceedings. It also reversed the summary judgment on trespass to chattel and slander of title claims.The Arizona Supreme Court reviewed the case, focusing on the lost profit damages and trespass to chattel claim. It concluded that the plaintiffs failed to prove the lost profit damages with reasonable certainty, as material terms of the prospective licensing agreement were unresolved. Consequently, the court affirmed the summary judgment in favor of Loeb & Loeb on the lost profit damages and trespass to chattel claim, vacating the relevant parts of the Court of Appeals' decision. The case was remanded to the Superior Court for further proceedings on the slander of title claim. View "McAlister v. Loeb" on Justia Law

Top Brand and Cozy Comfort are competitors in the market for oversized hooded sweatshirts. Cozy Comfort owns a design patent (D788 patent) and two trademarks for "THE COMFY" related to blanket throws. Top Brand sought a declaratory judgment of noninfringement of the design patent, while Cozy Comfort counterclaimed for infringement of both the design patent and trademarks. The jury found in favor of Cozy Comfort, determining that Top Brand had infringed both the design patent and the trademarks, and awarded Cozy Comfort $15.4 million for patent infringement and $3.08 million for trademark infringement.The United States District Court for the District of Arizona denied Top Brand's motion for judgment as a matter of law (JMOL) and entered judgment based on the jury's verdict. Top Brand then appealed to the United States Court of Appeals for the Federal Circuit.The Federal Circuit held that the principles of prosecution history disclaimer apply to design patents. The court found that Top Brand was entitled to JMOL of noninfringement of the design patent because the accused design fell within the scope of the subject matter surrendered during prosecution. The court also concluded that substantial evidence did not support the jury’s verdict of trademark infringement. Consequently, the Federal Circuit reversed the district court’s denial of JMOL and found in favor of Top Brand on both the design patent and trademark infringement claims. View "Top Brand LLC v. Cozy Comfort Co." on Justia Law

Doctor’s Best, Inc. (DB), a Delaware corporation, developed a new line of supplements branded as "Nature’s Day" and sought a U.S. trademark. Nature’s Way Products, LLC (NWP), a Wisconsin company owning the "Nature’s Way" trademark, claimed this infringed on their trademark. DB’s "Nature’s Day" products were manufactured and transported within the U.S. but sold exclusively abroad. DB sought a declaratory judgment of non-infringement, while NWP counterclaimed for trademark infringement under the Lanham Act.The United States District Court for the Central District of California granted summary judgment in favor of DB, concluding that NWP failed to show a likelihood of consumer confusion from DB’s domestic conduct. The court applied the extraterritoriality framework from Abitron Austria GmbH v. Hetronic International, Inc., determining that only DB’s U.S. transport of the products was actionable under the Lanham Act. The court found no genuine issue of material fact regarding the likelihood of consumer confusion from this conduct.The United States Court of Appeals for the Ninth Circuit affirmed the district court’s decision. The Ninth Circuit held that the district court correctly applied the Abitron framework to isolate DB’s domestic conduct and properly used the Sleekcraft factors to assess the likelihood of consumer confusion. The court agreed that no rational jury could find that DB’s domestic transport of "Nature’s Day" products infringed NWP’s trademarks. The court also upheld the district court’s denial of NWP’s request for additional discovery time, noting NWP’s lack of diligence in pursuing discovery. View "Doctor’s Best, Inc. v. Nature’s Way Products, LLC" on Justia Law

Shockwave Medical, Inc. owns U.S. Patent No. 8,956,371, which is directed to a method for treating atherosclerosis using intravascular lithotripsy (IVL). Cardiovascular Systems, Inc. (CSI) filed an inter partes review (IPR) petition challenging all 17 claims of the '371 patent as obvious over various prior art combinations. The Patent Trial and Appeal Board (Board) found claims 1-4 and 6-17 unpatentable as obvious but upheld the patentability of claim 5.The Board's decision was appealed by Shockwave regarding claims 1-4 and 6-17, and cross-appealed by CSI regarding claim 5. The United States Court of Appeals for the Federal Circuit reviewed the case. Shockwave argued that the Board improperly relied on applicant admitted prior art (AAPA) and erred in its claim construction and factual findings. CSI argued that the Board failed to consider the combined teachings of the prior art in its analysis of claim 5.The Federal Circuit affirmed the Board's determination that claims 1-4 and 6-17 were unpatentable as obvious. The court found that the Board properly used AAPA as evidence of general background knowledge and that the Board's claim construction and factual findings were supported by substantial evidence. The court also found that Shockwave's secondary considerations evidence did not outweigh the evidence of obviousness.Regarding CSI's cross-appeal, the Federal Circuit reversed the Board's determination that claim 5 was not shown to be unpatentable. The court found that the Board failed to consider the combined teachings of the prior art and that the placement of electrodes as claimed in claim 5 would have been a routine design choice for an ordinarily skilled artisan.In conclusion, the Federal Circuit affirmed the Board's decision on claims 1-4 and 6-17 and reversed the decision on claim 5, finding it unpatentable as obvious. View "Shockwave Medical, Inc. v. Cardiovascular Systems, Inc." on Justia Law