Justia Intellectual Property Opinion Summaries

The Official Code of Georgia Annotated (OCGA) includes the text of every Georgia statute currently in force. Non-binding annotations appear beneath each statutory provision, typically including summaries of judicial opinions construing each provision, summaries of pertinent attorney general opinions, and a list of related law review articles and other reference materials. The OCGA is assembled by the Code Revision Commission, a state entity composed mostly of legislators, funded through legislative branch appropriations, and staffed by the Office of Legislative Counsel. The current OCGA annotations were produced by a private publisher, pursuant to a work-for-hire agreement, which states that any copyright in the OCGA vests in the state, acting through the Commission. A nonprofit, dedicated to facilitating public access to government records and legal materials, posted the OCGA online and distributed copies. The Commission sued for infringement under the Copyright Act, 17 U.S.C. 102(a).The Eleventh Circuit and the Supreme Court held that OCGA annotations are ineligible for copyright protection. Under the government edicts doctrine, officials empowered to speak with the force of law cannot be the authors of the works they create in the course of their official duties. The Court noted long-standing precedent that an official reporter cannot hold a copyright interest in opinions created by judges; no one can own the law. The doctrine applies to whatever work legislators perform in their capacity as legislators, including explanatory and procedural materials they create in the discharge of their legislative duties. The sole “author” of the annotations is the Commission, which functions as an arm of the Georgia Legislature and creates the annotations in the discharge of its legislative duties. The Court focused on authorship, stating that Georgia’s characterization of the OCGA annotations as non-binding and non-authoritative undersells the practical significance of the annotations to litigants and citizens. View "Georgia v. Public Resource.Org, Inc." on Justia Law

The Eighth Circuit affirmed judgments against DatabaseUSA for copyright infringement and Vinod Gupta for breach of contract. After Gupta founded Infogroup, he and the company entered a separation agreement. Then Gupta found DatabaseUSA two years later.The court held that a reasonable juror, based on the evidence at trial, could have found Infogroup owned a valid copyright; a reasonable juror could have concluded that DatabaseUSA copied the original elements of Infogroup's work; and, because of spoliation, DatabaseUSA's two arguments against copying fail. Finally, the court affirmed the $11.2 million award for the copyright infringement claim and the $10 million award for the breach of contract claim. View "Infogroup, Inc. v. DatabaseUSA.com LLC" on Justia Law

In 2003, jury found E*Trade liable for trade secret misappropriation and for breach of a mutual nondisclosure agreement with Ajaxo. The jury awarded damages only for the breach of contract after the court granted a nonsuit on the issue of damages for trade secret misappropriation. On remand, in 2008, a jury found no net damages for unjust enrichment and awarded nothing. The court denied Ajaxo’s request to seek a reasonable royalty under the California Uniform Trade Secret Act (Civ. Code 3426-3426.11). On second remand, the court held a bench trial, declined to award any royalty, and awarded E*Trade its costs as the prevailing party.The court of appeal affirmed. The trial court did not abuse its discretion by declining to award any reasonable royalty despite the available evidence from which a reasonable royalty theoretically might have been derived, considering its findings on the evidence, application of apportionment principles from patent law, exclusion of expert testimony and analysis of Ajaxo’s royalty model, and treatment of the “Georgia-Pacific factors” for determining a royalty rate in intellectual property disputes. The trial court did not err in its prevailing party determination and costs award despite the practical effect of Ajaxo having already obtained full satisfaction of what became a separate, final judgment in its favor following the 2006 remittitur from the first appeal, including costs. View "Ajaxo, Inc. v. E*Trade Financial Corp." on Justia Law

Apotex filed a petition for inter partes review of Novartis’s patent. The Board instituted proceedings and granted Sun, Teva, Actavis, and Argentum (with Apotex, the petitioners) joinder. The Board concluded that the petitioners had not demonstrated unpatentability of the claims. During the appeal process, all petitioners other than Argentum settled with Novartis. Before opening briefs were filed, Novartis moved to dismiss Argentum’s appeal for lack of standing. Argentum argued that its standing need not be addressed because only one party must have standing for an action to proceed in an Article III Court; the other petitioners undisputedly had standing. Following the settlement of all the other parties, Apotex argued that “now that Argentum is the only appellant, Article III standing has become a threshold issue.”The Federal Circuit dismissed for lack of Article III standing. Argentum argued that it demonstrated concrete injuries in fact: a real and imminent threat of litigation as it jointly pursues, with its partner KVK-Tech, a generic version of Novartis’ Gilenya® product for which they are in the process of filing an ANDA. Argentum failed to provide sufficient evidence that it invested in KVK’s generic Gilenya® product or ANDA. View "Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corp." on Justia Law

Romag and Fossil signed an agreement to use Romag’s fasteners in Fossil’s leather goods. Romag eventually discovered that factories in China making Fossil products were using counterfeit Romag fasteners. Romag sued Fossil and certain Fossil retailers for trademark infringement, 15 U.S.C. 1125(a). Citing Second Circuit precedent, the district court rejected Romag’s request for an award of profits, because the jury, while finding that Fossil had acted callously, rejected Romag’s accusation that Fossil had acted willfully.The Supreme Court vacated. A plaintiff in a trademark infringement suit is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award. The Lanham Act provision governing remedies for trademark violations, section 1117(a), makes a showing of willfulness a precondition to a profits award in a suit under section 1125(c) for trademark dilution, but section 1125(a) has never required such a showing. The Act speaks often, expressly, and with considerable care about mental states, indicating that Congress did not intend to incorporate a willfulness requirement here obliquely. View "Romag Fasteners, Inc. v. Fossil, Inc." on Justia Law

Truckai and his NovaCept team developed NovaSure, which was FDA-approved to detect perforations in the uterus. NovaCept incorporates the 183 and 348 patents, which list Truckai as an inventor. Truckai assigned to NovaCept his interests in the applications from which those patents claim priority and all continuation applications. Hologic is the current assignee of the patents and markets NovaSure. Truckai left NovaCept and founded Minerva, which developed EAS; EAS received FDA approval for the same indication as NovaSure. Hologic sued Minerva for infringement. In addition to asserting defenses of lack of enablement and failure to provide an adequate written description, Minerva sought inter partes review (IPR).The Patent Board instituted IPR of the 183 patent but denied IPR of the 348 patent and found the 183 claims unpatentable as obvious. Hologic appealed to the Federal Circuit. The district court declined to dismiss the infringement claim as moot and granted Hologic summary judgment that the doctrine of assignor estoppel bars Minerva from challenging the patents' validity, of no invalidity, and of infringement. A jury awarded damages.The Federal Circuit affirmed the Board’s decision that the 183 patent claims are invalid. The district court determined that the decision did not affect the verdict.The Federal Circuit affirmed that assignor estoppel bars the assignor from asserting the invalidity of the 348 patent in district court. Assignor estoppel does not preclude Minerva from relying on the Board's decision to argue that the 183 patent claims are void ab initio, justifying the denial of a permanent injunction, enhanced damages, and ongoing royalties. View "Hologic, Inc. v. Minerva Surgical, Inc." on Justia Law

Biogen holds the New Drug Application for the active ingredient dimethyl fumarate (DMF), which was FDA-approved in 2013 as Tecfidera®, a twice-daily pill for the treatment of relapsing forms of multiple sclerosis at a daily dose of 480 mg. The 001 patent, “Utilization of Dialkylfumarates,” discloses that dialkyl fumarates may have therapeutic uses “in transplantation medicine and for the therapy of autoimmune diseases,” including multiple sclerosis. After the five-year data exclusivity for Tecfidera® expired, Banner submitted an application under 21 U.S.C. 355(b)(2) to market a twice-daily monomethyl fumarate (MMF) pill at a daily dose of 380 mg. Biogen alleged infringement of the 001 patent. Banner argued that section 156(b)(2) limits the scope of the patent’s extension to methods of using the approved product as defined in 156(f)—DMF, its salts, or its esters—and that MMF is none of those things. Biogen responded that section 156(b)(2) limits extension only to uses of any product within the original scope of the claims. The patent will expire in June 2020.The Federal Circuit affirmed the district court’s finding of non-infringement. The monomethyl ester, covered by claim 1, is not covered by the extension. The scope of a patent term extension under 35 U.S.C. 156 only includes the active ingredient of an approved product, or an ester or salt of that active ingredient; the product at issue does not fall within those categories. View "Biogen International GmbH v. Banner Life Sciences, LLC" on Justia Law

Dragon sued 10 defendants, alleging patent infringement. Based on petitions by DISH and SXM (collectively, “DISH”), the Board instituted inter partes review (IPR) of the patent. The district court stayed proceedings as to DISH but proceeded as to the other defendants. After the court issued a claim construction order, Dragon, DISH, and the other defendants stipulated to noninfringement as to the accused products. The court entered judgment in favor of all defendants. In the parallel IPR, the Board issued a final decision holding unpatentable all asserted claims.DISH sought attorneys’ fees under 35 U.S.C. 285 and 28 U.S.C. 1927. Before the motions were resolved, Dragon appealed both the judgment of noninfringement and the Board’s decision. The Federal Circuit affirmed the Board’s decision and dismissed the district court appeal as moot. On remand, the district court vacated the judgment of noninfringement as moot but denied DISH’s motions for attorneys’ fees, holding that “success in a different forum is not a basis for attorneys’ fees” in the district court. The Federal Circuit vacated. The judgment of noninfringement was vacated only because DISH successfully invalidated the claims in parallel IPR proceedings, rendering moot Dragon’s infringement action. DISH’s success in obtaining a judgment of noninfringement, although later vacated because of its success in IPR, supports holding that they are prevailing parties. View "Dragon Intellectual Property LLC v. DISH Network LLC" on Justia Law

Inter partes review (IPR) permits a patent challenger to ask the U.S. Patent and Trademark Office to reconsider the validity of earlier granted patent claims. If a request comes more than a year after a patent infringement lawsuit against the requesting party, IPR “may not be instituted,” 35 U.S.C. 315(b). The agency’s determination of whether to institute IPR is “final and nonappealable” under section 314(d).Thryv sought IPR of Click-to-Call’s patent. The Patent Trial and Appeal Board rejected Click-to-Call’s argument that the suit was untimely, instituted review, and canceled 13 of the patent’s claims as obvious or lacking novelty. Treating the Board’s application of section 315(b) as judicially reviewable, the Federal Circuit concluded that the petition was untimely and vacated the Board’s decision.The Supreme Court vacated. Section 314(d) precludes judicial review of the agency’s application of section 315(b)’s time prescription. A challenge based on section 315(b) constitutes an appeal of the agency’s decision “to institute” an IPR. Allowing section 315(b) appeals would unwind agency proceedings determining patentability and leave bad patents enforceable. Section 314(d)’s text does not limit the review bar to section 314(a)’s question of whether the petitioner has a reasonable likelihood of prevailing. Click-to-Call’s contention is, essentially, that the agency should have refused to institute IPR. View "Thryv, Inc. v. Click-To-Call Technologies, LP" on Justia Law

CardioNet’s 207 patent, titled “Cardiac Monitoring,” claims priority to an application filed in 2004 and describes cardiac monitoring systems and techniques for detecting and distinguishing atrial fibrillation and atrial flutter from other various forms of cardiac arrythmia. The district court dismissed CardioNet’s patent infringement complaint against InfoBionic, finding that the asserted claims of the patent are ineligible under 35 U.S.C. 101.The Federal Circuit reversed, applying the Supreme Court’s two-step “Alice” framework and finding that the asserted claims of the 207 patent are directed to a patent-eligible improvement to cardiac monitoring technology and are not directed to an abstract idea. Nothing in the record suggests that the claims merely computerize pre-existing techniques for diagnosing atrial fibrillation and atrial flutter. View "CardioNet, LLC v. InfoBionic, Inc." on Justia Law