- Volume 26, Issue #18
- Means-Plus-Function Findings Not Adequately Supported, Federal Circuit Says
WASHINGTON, D.C. - A California federal judge's determination that three claims of two patents are invalid as indefinite, based upon findings that the claims recite means-plus-function terms without sufficient corresponding structure, was vacated June 1 by the Federal Circuit U.S. Court of Appeals, in a loss for Apple Inc. (Zeroclick LLC v. Apple Inc., No. 17-1267, Fed. Cir., 2018 U.S. App. LEXIS 14581).
- Dispute Over Patented Spinal Column Deviation Treatment Remanded
WASHINGTON, D.C. - In a June 11 decision, the Federal Circuit U.S. Court of Appeals partly affirmed and partly vacated findings of patentability by the Patent Trial and Appeal Board with regard to methods and systems for ameliorating aberrant spinal column deviations (Medtronic Inc. v. Mark A. Barry, Nos. 17-1169, Fed. Cir., 2018 U.S. App. LEXIS 15667).
- Obviousness Finding Upheld, But Federal Circuit Won't Review Noninstituted Claims
WASHINGTON, D.C. - In a June 7 ruling, the Federal Circuit U.S. Court of Appeals rejected assertions by a patent owner that the Patent Trial and Appeal Board erred in finding a motivation to combine two prior art references in a dispute over a marine seismic surveying patent (PGS Geophysical AS v. Andrei Iancu, Nos. 2016-2470, -2472, -2474, Fed. Cir.).
- Expert In Texas Patent Case Cleared To Testify To $1.5 Billion In Damages
MARSHALL, Texas - Efforts by Samsung Electronics Co. Ltd. and other defendants to bar an expert from testifying that they owe at least $1.5 billion in damages for patent infringement were unsuccessful on June 5, when a Texas federal magistrate judge denied their joint, sealed motion to exclude (Kaist IP US LLC v. Samsung Electronics Co. Ltd., et al., No. 16-1314, E.D. Texas, 2018 U.S. Dist. LEXIS 93876).
- Investor Voluntarily Dismisses Infringement, UCL Claims Related To Patents
SEATTLE - A Washington federal judge on May 31 voluntarily dismissed an inventor's trade dress and patent infringement claims asserted against a company and its owners in relation to an allegedly copied patent for glassware features, but granted his request to dismiss his claim for violation of California's unfair competition law (UCL) without prejudice to refiling (Elliot Kremerman v. Open Source Steel, LLC, et al., No. 2:17-cv-953, W.D. Wash., 2017 U.S. Dist. LEXIS 171735).
- Delaware Federal Magistrate Judge: Reject Assertion Of False Marking Violation
WILMINGTON, Del. - In a June 6 report, a Delaware federal magistrate judge recommended that Chief U.S. Judge Leonard P. Stark of the District of Delaware deny a motion to dismiss patent infringement allegations on grounds that the plaintiff failed to comply with the patent marking statute (Lexos Media IP LLC v. Jos. A. Bank Clothiers Inc., No. 17-1317, D. Del. 2018 U.S. Dist. LEXIS 94176).
- New York Magistrate Judge Won't Strike Supplemented Patent Allegations
BROOKLYN, N.Y. - In a June 7 ruling, a New York federal judge rejected efforts by two defendants to strike supplemental patent infringement allegations in a case that already asserted patent and copyright infringement, as well as violations of the Lanham Act (PopSockets LLC v. Quest USA Corp., et al., No. 17-3653, E.D. N.Y., 2018 U.S. Dist. LEXIS 96137).
- Federal Circuit Upholds Fee Award, Summary Judgment In Patent Case
WASHINGTON, D.C. - A Texas federal judge did not err in granting Huawei Technologies Co. Ltd. summary judgment, nor in awarding Huawei attorney fees incurred in defending allegations that it infringed three semiconductor patents, the Federal Circuit U.S. Court of Appeals concluded June 8 (Xiaohua Huang v. Huawei Technologies Co. Ltd., Nos. 2017-1505, -1767, -1893, -2092, -2229, Fed. Cir.).
- Despite Remand, Federal Circuit Won't Require Board To Consider Fraud Claim
WASHINGTON, D.C. - In a June 11 order, the Federal Circuit U.S. Court of Appeals granted a joint motion to remand to the Patent Trial and Appeal Board an inter partes review (IPR) of an animal litter patent but declined a petitioner's request that the court order the board to address allegations of fraud or sanctions stemming from documents produced in a parallel district court case (Nestle Purina Petcare Company v. Oil-Dri Corporation of America, No. 17-1744, Fed. Cir.).
- Attorney's Deposition Partly Compelled In Suit Over Water Ride Patent
SAN DIEGO - A California federal magistrate judge on June 8 found that a patent owner's counsel did not waive attorney-client privilege regarding certain proceedings before the U.S. Patent and Trademark Office (PTO) over a water park ride patent, partly denying a motion to compel his deposition but granting the defendant's motion related to nonprivileged communications and requests for production (RFPs) (Whitewater West Industries Ltd. v. Pacific Surf Designs Inc., et al., No. 3:17-cv-01118, S.D. Calif., 2018 U.S. Dist. LEXIS 96970).
- Siding With Patent Owner, Board Rejects Google Assertion Of Invalidity
ALEXANDRIA, Va. - In a final written decision issued June 6, the Patent Trial and Appeal Board found nine challenged claims of a Koninklijke Philips N.V. patent nonobvious and not anticipated by prior art (Google Inc. v. Koninklijke Philips N.V., No. IPR2017-00437, PTAB).
- Amazon, Hulu, Netflix Team Up In New Inter Partes Review Petition
ALEXANDRIA, Va. - A patent covering data compression claims "known compression concepts," Amazon.com Inc., Hulu LLC and Netflix Inc. assert in a June 4 petition for inter partes review (IPR) by the Patent Trial and Appeal Board (Amazon.com Inc., et al. v. Realtime Adaptive Streaming LLC, No. IPR2018-01187, PTAB).
- Method For Sorting Cells Is Obvious, Petitioner Tells Patent Board
ALEXANDRIA, Va. - A patent at the center of infringement litigation pending in Wisconsin and Colorado federal courts would have been obvious to a person of skill in the art, according to a June 8 petition for inter partes review filed with the Patent Trial and Appeal Board (ABS Global Inc. v. XY LLC, No. IPR2018-01224, PTAB).
- Biopharma Company Seeks Post-Grant Review Of Interfering RNA Patent
ALEXANDRIA, Va. - A claimed form of synthetically interfering ribonucleic acid (RNAi) molecules is not entitled to patent protection, Alnylam Pharmaceuticals Inc. asserts in a June 11 petition for post-grant review by the Patent Trial and Appeal Board (Alnylam Pharmaceuticals Inc. v. Silence Therapeutics GmbH, No. PGR2018-00067, PTAB).
- Patent Board Sides With Cisco, Finds Uniloc Patent Claims Obvious
ALEXANDRIA, Va. - In a June 13 final written decision, the Patent Trial and Appeal Board agreed with Cisco Systems Inc. that five claims of a conference call patent do not pass muster under Section 103 of the Patent Act (Cisco Systems Inc. v. Uniloc USA Inc., et al., No. IPR2017-00597, PTAB).
- 7th Circuit Affirms: Defendant Authored Work Before Copyright Plaintiff
CHICAGO - An Illinois federal judge did not err in granting a romance novelist summary judgment on allegations of copyright infringement, in view of undisputed evidence that the accused work was completed before the plaintiff's, the Seventh Circuit U.S. Court of Appeals ruled June 1 (Kelly Rucker v. Donna Fasano, et al., No. 17-3608, 7th Cir., 2018 U.S. App. LEXIS 14575).
- Jay-Z, Others Prevail In Appeal Of 'Big Pimpin'' Copyright Judgment
SAN FRANCISCO - Allegations by the heir of an Egyptian composer that rapper Jay-Z, also known as Shawn Carter, improperly copied from "Khosara Khosara" in the "hook" of the hit song "Big Pimpin'" were properly rejected by a California federal judge, the Ninth Circuit U.S. Court of Appeals ruled May 31 (Osama Ahmed Fahmy v. Jay-Z, et al., No. 16-55213, 9th Cir., 2018 U.S. App. LEXIS 14334).
- Florida Magistrate Judge: Corporate Officers Can Be Added To Copyright Case
MIAMI - A plaintiff was granted leave to amend its copyright infringement complaint on June 11 by a Florida federal magistrate judge, to add various individuals as defendants, but a related request to allege that the individuals are liable for secondary infringement was rejected (43 North Broadway LLC v. Essential Media Group LLC, No. 17-24518, S.D. Fla., 2018 U.S. Dist. LEXIS 97497).
- Settlement In Principle Reached In Long-Running YouTube Fair Use Case
OAKLAND, Calif. - One year after a YouTube user was denied certiorari on questions of fair use and good faith surrounding the takedown provisions of the Digital Millennium Copyright Act (DMCA), a California federal magistrate judge announced in a June 6 minute entry that the parties in the 11-year old case had "reached in principle" a settlement of the remaining issues (Stephanie Lenz v. Universal Music Corp., et al., No. 4:07-cv-03783, N.D. Calif.).
- Extension Of Time To Oppose Report Sought In Copyright, Trademark Case
NEW YORK - In a June 13 letter motion, plaintiffs' attorneys requested a two-week extension to file objections to a June 8 New York federal magistrate judge's recommendation that they be awarded a default judgment on just three of seven counts of copyright infringement (Conan Properties International LLC, et al. v. Ricardo Jove Sanchez, No. 17-162, E.D. N.Y., 2018 U.S. Dist. LEXIS 98631).
- Successors To Abbott And Costello Estates Must Pay Fees In Copyright Case
NEW YORK - A New York federal judge on June 12 adopted a New York federal magistrate judge's recommendation that defendants accused of copyright infringement by the successors in interest to the estates of comedy duo Bud Abbott and Lou Costello should be awarded $50,123.04 in attorney fees in connection with the case (TCA Television Corp., et al. v. Kevin McCollum, et al., No. 15-4325, S.D. N.Y., 2018 U.S. Dist. LEXIS 98551).
- 6th Circuit: Injunction Properly Denied In 'Trick Pony' Trademark Case
CINCINNATI - The Sixth Circuit U.S. Court of Appeals on May 31 found that a Tennessee federal judge properly concluded that a trademark infringement plaintiff is not entitled to a preliminary injunction barring the band "Trick Pony" from touring under its name (PGP LLC v. TPII LLC, et al., No. 17-6221, 6th Cir., 2018 U.S. App. LEXIS 14315).
- California Federal Judge Won't Disqualify Counsel In 'Twit' Trademark Case
SAN FRANCISCO - Efforts by a trademark infringement plaintiff to disqualify counsel for Twitter Inc. on the basis of a prior relationship with the plaintiff surrounding patent litigation which never materialized were rejected June 1 by a California federal judge (TWiT LLC v. Twitter Inc., No. 18-341, N.D. Calif., 2018 U.S. Dist. LEXIS 92321).
- 9th Circuit Again Reverses Trade Dress Functionality Finding
SAN FRANCISCO - For the second time in three years, the Ninth Circuit U.S. Court of Appeals on June 5 vacated and remanded a California federal judge's finding that the use of the color bright green for foam ear plugs is functional and thus unprotectable as trade dress (Moldex-Metrix Inc. v. McKeon Products Inc., No. 16-55548, 9th Cir, 2018 U.S. App. LEXIS 15064).
- Nevada Federal Judge Won't Reconsider Dismissal Of False Advertising Claim
LAS VEGAS - A November 2017 order that dismissed with prejudice allegations of copyright misuse, intentional interference with prospective economic advantage and false advertising by Oracle International Corp. will not be reconsidered, a Nevada federal judge ruled June 5 (Rimini Street Inc. v. Oracle International Corp., No. 14-1699, D. Nev., 2018 U.S. Dist. LEXIS 94585).
- Judge Dismisses UCL, Lanham Act Claims, Finds Statements Were Not Misleading
SAN JOSE, Calif. - After finding that statements made on a trademark filing service company's website would not likely mislead consumers, a California federal judge on May 25 granted the company's request to dismiss claims for violation of California's unfair competition law (UCL) and the Lanham Act and for false advertising asserted by a law firm, its owner and a trademark search service company (Legalforce RAPC Worldwide, P.C., et al. v. Trademark Information International LLC, et al., No. 17-cv-07354, N.D. Calif., 2018 U.S. Dist. LEXIS 88506).
- 5th Circuit Affirms: Personal Jurisdiction Lacking In Trademark Case
NEW ORLEANS - A corporate trademark infringement claim was properly granted dismissal for lack of personal jurisdiction because the corporation has never solicited business in Texas, maintains no physical presence in Texas, and its owner and co-defendant was only ever in Texas on a flight layover, the Fifth Circuit U.S. Court of Appeals affirmed June 13 (GreatFence.com Inc. v. A Great Fence LLC, et al., No. 17-20487, 5th Cir., 2018 U.S. App. LEXIS 15888).
- High Court Asked To Decide If Nontaxable Costs Can Be Awarded Under Copyright Act
WASHINGTON, D.C. - In a May 31 petition for certiorari, a software support firm argues that a prevailing party can be awarded only taxable, not nontaxable costs, under the Copyright, asking the U.S. Supreme Court to resolve a difference of opinions among the circuit courts of appeal on the issue (Rimini Street Inc., et al. v. Oracle USA Inc., et al.., No. 17-1625, U.S. Sup.).
- News Service Seeks Review Of Copyright Registration Requirement For Litigation
WASHINGTON, D.C. - Responding to a U.S. government amicus curiae brief, a news organization in a June 5 supplemental brief to the U.S. Supreme Court maintains that its petition for certiorari should be granted to resolve a circuit split over whether a copyright applicant is entitled to sue for infringement prior to achieving registration (Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC, et al., No. 17-571, U.S. Sup.).
- Amici Support Google's Rehearing Petition In Java Fair Use Dispute With Oracle
WASHINGTON, D.C. - Nonprofit organizations The Electronic Frontier Foundation (EFF) and Public Knowledge (PK) were among the interested parties that filed amicus curiae briefs with the Federal Circuit U.S. Court of Appeals on June 11 and 12 in support of Google LLC's petition for rehearing en banc, arguing that a panel ruling over Google's use of Java technology in its Android smartphone operating system ignored fair use case law and could have a detrimental impact on technological innovations (Oracle America Inc. v. Google LLC, Nos. 17-1118, -1202, Fed. Cir.).
- VidAngel To 9th Circuit: Studios' Conspiracy Against Filterers Plausibly Alleged
SAN FRANCISCO - Online video-filtering service provider VidAngel Inc. argues in a June 1 reply brief to the Ninth Circuit U.S. Court of Appeals that its antitrust counterclaims in a copyright dispute were wrongly dismissed because it plausibly alleged a conspiracy by the plaintiff movie studios to boycott filtering services despite public demand for such services (Disney Enterprises Inc., et al. v. VidAngel Inc., No. 17-56665, 9th Cir.).
- Patent Owner Challenges Board Combination Of Handbooks With Prior Art
WASHINGTON, D.C. - In a May 30 reply brief, a patent owner argues against findings by the Patent Trial and Appeal Board that a patented technology used in oil and gas wells would have been obvious to a person of skill in the art, based upon a combination of teachings in three reference books with three primary art references (Enventure Global Technology Inc. v. Mohawk Energy Ltd., No. 18-1356, Fed. Cir.).
- Validity Of Vibration- Damping Device Debated Before Federal Circuit
WASHINGTON, D.C. - An inter partes review (IPR) petitioner is disputing a decision by the Patent Trial and Appeal Board to allow substitute claims based on unexpected results, according to a recently filed brief before the Federal Circuit U.S. Court of Appeals (Valeo North America, Inc. and Valeo Embrayages v. Schaeffler Technologies AG & CO KG, Nos. 2018-1196, -1228, Fed. Cir.).
- Parties Dispute Holdings In Consolidated Dispute Over Delzicol Capsule
WASHINGTON, D.C. - A Texas federal magistrate judge's sua sponte construction of "gelling agent" as excluding water was erroneous, the licensee and owner of a patent covering the ulcerative colitis drug Delzicol maintain in an appeal to the Federal Circuit U.S. Court of Appeals (Allergan Pharmaceuticals International Ltd., et al. v. Teva Pharmaceuticals USA Inc., et al., No. 18-1241, Fed. Cir.).