CHICAGO - An Illinois appeals panel on Jan. 22 affirmed a lower court's ruling that a commercial general liability insurer has no obligation to reimburse its insured for more than $16,000 in independent counsel fees incurred in an underlying copyright infringement dispute, rejecting the insured's contention that a conflict of interest entitled it to independent counsel (Bean Products, Inc. v. Scottsdale Insurance Co., No. 1-17-0421, Ill. App., 1st Dist., Div. 1, 2018 Ill. App. Unpub. LEXIS 89).
LOS ANGELES - A recent removal by YouTube LLC and Google Inc. of a purported copyright action to California federal court and subsequent request for dismissal prompted a California federal judge on Jan. 22 to enter an order to show cause for why the case should not be returned to Los Angeles County Superior Court (Akiko Kijimoto v. YouTube LLC, et al., No. 17-8184, C.D. Calif., 2018 U.S. Dist. LEXIS 9918).
WASHINGTON, D.C. - In a Jan. 23 amicus brief, the American Bar Association (ABA) urges the Federal Circuit U.S. Court of Appeals to undo its June 2017 ruling that the U.S. Patent and Trademark Office (USPTO) may seek recovery of its attorney fees when it must defend its rejection of a patent application in court (Nantkwest Inc. v. Joseph A. Matal, Acting Director U.S. Patent and Trademark Office, No. 16-1794, Fed. Cir.).
CHICAGO - A counterclaim seeking a declaration of copyright invalidity is "unnecessary" in light of affirmative defenses of fair use, first sale, acquiescence and license raised in response to allegations of copyright infringement, an Illinois federal judge ruled Jan. 23 (Maui Jim Inc. v. SmartBuyGlasses Optical Limited, No. 16-9788, N.D. Ill., 2018 U.S. Dist. LEXIS 10093).
ALEXANDRIA, Va. - A challenge to 16 claims of a wrinkle reduction patent was unsuccessful Jan. 19, when the Patent Trial and Appeal Board turned away assertions of obviousness (Ulthera Inc. v. Dermafocus LLC, No, IPR2016-01459, PTAB).
WASHINGTON, D.C. - The Federal Circuit U.S. Court of Appeals on Jan. 19 rejected assertions by a patent defendant that a Texas federal judge erred in ordering jurors to take back their invalidity holding, while also rejecting claims by the patent owner that the same judge erred in granting a summary judgment of noninfringement of another patent before trial (Flexuspine Inc. v. Globus Medical Inc., No. 17-1188, Fed. Cir., 2018 U.S. App. LEXIS 1280).
WASHINGTON, D.C. - An ex parte re-examination by the Patent Trial and Appeal Board that resulted in the rejection of seven claims of the patented immunosuppressive drug Remicade was not erroneous, the Federal Circuit U.S. Court of Appeals ruled Jan. 23, upholding findings of obviousness-type double patenting (In re: Janssen Biotech Inc., et al., No. 17-1257, Fed. Cir.).
SAN FRANCISCO - In a Jan. 19 holding, a California federal judge rejected, pursuant to Section 101 of the Patent Act, 35 U.S.C. 101, five patents covering the process of search engine optimization (SEO) (BrightEdge Technologies Inc. v. Searchmetrics GmbH, et al., No. 14-1009, N.D. Calif., 2018 U.S. Dist. LEXIS 9007).
INDIANAPOLIS - An Indiana federal judge on Jan. 18 denied a motion to dismiss a lawsuit accusing the owner of Applebee's and IHOP restaurants of using artificial sweetener in its franchise network that's packaged in a yellow packet made to look like trademarked Splenda sweetener (Heartland Consumer Products LLC, et al. v. DineEquity, Inc., et al., No. 17-1035, S.D. Ind., 2018 U.S. Dist. LEXIS 7983).
WASHINGTON, D.C. - In light of its Jan. 8 en banc holding in Wi-Fi One LLC v. Broadcom Corp. that the bar on judicial review of decisions to institute inter partes review (IPR) does not extend to determinations that a petition for IPR is time-barred, the Federal Circuit U.S. Court of Appeals on Jan. 19 agreed to revisit a 2015 ruling that rejected allegations by a patent owner that a petition for IPR was untimely (Click-to-Call Technologies LP v. Oracle Corp., et al., No. 15-1242, Fed Cir.).
ALEXANDRIA, Va. - West-Ward Pharmaceutical Co. on Jan. 17 took aim at a cancer treatment patent while also requesting joinder to an inter partes review (IPR) by Breckenridge Pharmaceutical Inc., in which the Patent Trial and Appeal Board on Jan. 3 instituted trial (West-Ward Pharmaceutical Co. v. Novartis Pharmaceuticals Corporation, No. IPR2018-00507, PTAB).
WASHINGTON, D.C. - Twenty-two states on Jan. 16 petitioned the District of Columbia Circuit U.S. Court of Appeals to review the Federal Communications Commission's repeal of net neutrality (State of New York, et al. v. Federal Communications Commission, et al., No. 18-1013, D.C. Cir.).
MARSHALL, Texas - A Texas federal magistrate judge on Jan. 17 granted in part a motion by a patent holder to exclude testimony from a ticket distributor's computer-programming expert in a dispute over a license agreement, ruling that the expert cannot offer opinions about a key term in the agreement because the meaning of the term is a question of law for a jury to determine (CEATS, Inc. v. TicketNetwork, Inc., et al., No. 2:15-cv-01470, E.D. Texas, 2018 U.S. Dist. LEXIS 7214).
KANSAS CITY, Kan. - In a Jan. 17 ruling, a Kansas federal judge denied a motion to refer to the Register of Copyrights allegations by an infringement defendant that a copyright registration for the Oil Daily publications is invalid (Energy Intelligence Group Inc., et al., v. CHS McPherson Refinery Inc., No. 16-1015, D. Kan., 2018 U.S. Dist. LEXIS 7048).
PORTLAND, Ore. - The author of the screenplay for the motion picture "Fathers & Daughters" is not the "legal owner" of the film, with standing to sue for infringement, because the exclusive rights to the work were transferred in a license granted within a distribution agreement, an Oregon federal judge ruled Jan. 17 (Fathers & Daughters Nevada LLC v. Lingfu Zhang, No. 16-1443, D. Ore., 2018 U.S. Dist. LEXIS 7435).
WASHINGTON, D.C. - An inventor's efforts to patent a portable memory device identification system were unsuccessful Jan. 17, when the Federal Circuit U.S. Court of Appeals instead affirmed findings by the Patent Trial and Appeal Board that the invention would be obvious to a person of skill in the art (In re: Dominick Theresa, No. 17-1920, Fed. Cir.).
MILWAUKEE - A California federal judge on Jan. 11 transferred an aftermarket motorcycle part company's action in which it seeks a declaration of noninfringement and asserts a claim for violation of California's unfair competition law (UCL) against a motorcycle maker to the U.S. District Court for the Eastern District of Wisconsin, noting that an underlying cease-and-desist letter originated in Wisconsin (Cobra Engineering Inc. v. H-D USA Llc, et al., No. 2:18cv71, E.D. Wis.).
ALEXANDRIA, Va. - The Patent Trial and Appeal Board in a Jan. 16 final written decision sided with a petitioner for covered business method (CBM) review, agreeing that five claims of a method for communicating information from remote sites to a central location are directed to the abstract idea of "establishing a communications route between two points to relay information" (Emerson Electric Company v. Sipco LLC, No. CBM2016-00095, PTAB).
OMAHA, Neb. - A request by a trademark owner to retransfer infringement allegations to the U.S. District Court for the Southern District of Texas was denied Jan. 16 by a Nebraska federal judge, who found that the plaintiff failed to show that a previously severed defendant is indispensable to the Texas action (Buc-ee's Ltd. v. Buck's Inc., et al., No. 17-287, D. Neb., 2018 U.S. Dist. LEXIS 6619).
WASHINGTON, D.C. - In a Jan. 16 ruling, the Federal Circuit U.S. Court of Appeals found that a Delaware federal judge erred in basing her decision to deny a patent assignee and licensee injunctive relief on an erroneous claim construction that excluded various accused L'Oreal USA Inc. products (Liqwd Inc., et al., v. L'Oreal USA Inc., et al., No. 17-2295, Fed. Cir.).
WASHINGTON, D.C. - In a Jan. 11 reply brief, two appellants tell the Federal Circuit U.S. Court of Appeals that their invention "advanced the science" by "creating a previously unknown composition of matter" and discovering a new usefulness for the composition, thereby rendering the invention eligible for patent protection (In re: Trevor Pearson and Craig Robertson, No. 17-2530, Fed. Cir.).
WASHINGTON, D.C. - A jury verdict of willful patent infringement and corresponding $24,280,330 compensatory damages award, along with a Nebraska federal judge's subsequent doubling of that sum, were vacated and remanded Oct. 12 by the Federal Circuit U.S. Court of Appeals (Exmark Manufacturing Company v. Briggs & Stratton Power Products Group LLC, No. 16-2197, Fed. Cir., 2018 U.S. App. LEXIS 783).
BOSTON - In what it deemed a case of first impression, a divided First Circuit U.S. Court of Appeals on Jan. 12 found that a trademark licensee retains only the right to seek prepetition damages following a Chapter 11 debtor-in-possession's rejection of the underlying license agreement (Mission Product Holdings Inc. v. Tempnology LLC, No. 16-9016, 1st Cir., 2018 U.S. App. LEXIS 870).
WASHINGTON, D.C. - In its Jan. 12 order list, the U.S. Supreme Court granted certiorari to South Dakota in its challenge of the continued applicability of a 25-year-old case that bars the state's ability to enforce a new law requiring certain out-of-state internet retailers to collect and remit sales tax on sales to South Dakota residents (South Dakota v. Wayfair Inc., et al., No. 17-494, U.S. Sup.).
WASHINGTON, D.C. - In its Jan. 12 order list, the U.S. Supreme Court granted certiorari for a second time in a dispute over the availability of lost profits awards in cases of infringement under Section 271(f) of the Patent Act, 35 U.S.C. 271(f), where the profits arose from prohibited combinations occurring outside the United States (WesternGeco LLC v. ION Geophysical Corp., No. 16-1011, U.S. Sup.).