LexisNexis® Legal Newsroom
    Mealey's IP/Tech - 9th Circuit Sides With Google In Genericide Dispute

    SAN FRANCISCO - An Arizona federal judge did not err in concluding that a plaintiff failed to establish that the primary significance of the word "google" to the relevant public is as a generic name for internet search engines, instead of as a trademark identifying the Google Inc. search engine in particular, the Ninth Circuit U.S. Court of Appeals ruled May 16 (David Elliott and Chris Gillespie v. Google Inc., No. 15-15809, 9th Cir., 2017 U.S. App. LEXIS 8583).

    Mealey's IP/Tech - Google Seeks Dismissal Of Balloon-Based Wireless Network Trade Secrets Suit

    SAN JOSE, Calif. - Three months after a wireless services and solutions firm's trade secret claims against it were initially dismissed as insufficiently pleaded, Google Inc. on May 11 again moved for dismissal in California court, arguing that the plaintiff's amended complaint still fails to properly identify the trade secrets that were purportedly misappropriated (Space Data Corp. v. Alphabet Inc., et al., No. 5:16-cv-03260, N.D. Calif.).

    Mealey's IP/Tech - California Federal Judge: Jokes Entitled To 'Thin' Copyright Protection

    SAN DIEGO - Conan O'Brien and myriad other defendants associated with the "Conan" show on May 12 won a partial summary judgment that various copyrighted jokes O'Brien allegedly infringed are entitled only to "thin" protection, but in the same ruling, a California federal judge denied O'Brien summary judgment with regard to willfulness (Robert Alexander Kaseberg v. Conan O'Brien, et al., No. 15-1637, S.D. Calif., 2017 U.S. Dist. LEXIS 72921).

    Mealey's IP/Tech - New York Federal Judge Won't Reconsider Denial Of Stay In ITC Patent Case

    NEW YORK - Efforts by Comcast Corp. to enjoin patent allegations pending against it before the International Trade Commission (ITC) were again unsuccessful on May 15, when a New York federal judge refused to reconsider an earlier order denying a preliminary injunction (Comcast Corporation v. Rovi Corporation, No. 16-3852, S.D. N.Y., 2017 U.S. Dist. LEXIS 73669).

    Mealey's IP/Tech - Uber Enjoined From Using Stolen Waymo Files In Self-Driving Car Trade Secret Suit

    SAN FRANCISCO - Finding "compelling evidence" that a former Waymo LLC employee misappropriated confidential files and provided them to Uber Technologies Inc., a California federal judge on May 15 granted in part Waymo's motion for a preliminary injunction, ordering Uber to cease using any of the stolen materials in the development of its self-driving car technology (Waymo LLC v. Uber Technologies Inc., et al., No. 3:17-cv-00939, N.D. Calif.).

    Mealey's IP/Tech - Federal Circuit Affirms Exceptionality Finding, Fee Award In Patent Case

    WASHINGTON, D.C. - A Delaware federal judge's award of $2.5 million in attorney fees in connection with a successful defense of an equity action alleging fraud upon the court was not an abuse of discretion, the Federal Circuit U.S. Court of Appeals ruled May 11 (NOVA Chemicals Corp., et al. v. Dow Chemical Co., No. 16-1576, Fed. Cir., 2017 U.S. App. LEXIS 8338).

    Mealey's IP/Tech - Twitter Prevails Before Federal Circuit In Patent Eligibility Dispute

    WASHINGTON, D.C. - A New York federal judge properly granted Twitter Inc. a summary judgment that five direct message publishing patents claim ineligible subject matter, the Federal Circuit U.S. Court of Appeals ruled May 12 (EasyWeb Innovations LLC v. Twitter Inc., No. 16-2066, Fed. Cir., 2017 U.S. App. LEXIS 8436).

    Mealey's IP/Tech - Federal Circuit Denies En Banc Hearing In Challenge To AIA

    WASHINGTON, D.C. - A request by a patent licensee for en banc hearing of an appeal over the right of third parties to challenge patents in a petition for inter partes review (IPR) before the Patent Trial and Appeal Board was denied May 11 by the Federal Circuit U.S. Court of Appeals (Cascades Projection LLC v. Epson America Inc., et al., Nos. 17-1517, -1518, Fed. Cir., 2017 U.S. App. LEXIS 8337).

    Mealey's IP/Tech - Indiana Magistrate Judge Orders Discovery Of Franchise Pacts In Restaurant Row

    HAMMOND, Ind. - An Indiana magistrate judge on May 10 granted a Texas grill and saloon franchisor's motion to compel discovery of franchise agreements of a western-style restaurant franchisor that is accusing it of trademark and trade dress infringement, but limited it to production of U.S. franchise agreements because requiring production of foreign franchise agreements, if any, would be "disproportional to the needs of the case" (Texas Roadhouse Inc., et al. v. Texas Corral Restaurants Inc., et al., No. 2:16-cv-28, N.D. Ind., 2017 U.S. Dist. LEXIS 71182).

    Mealey's IP/Tech - 9th Circuit Partly Reverses Ruling In Coverage Dispute Over Intellectual Property

    PASADENA, Calif. - The Ninth Circuit U.S. Court of Appeals on May 9 affirmed in part, reversed in part and remanded a coverage dispute arising from an underlying lawsuit alleging that insureds breached an intellectual property agreement and committed trade libel and tortious inducement to breach of contract (The Burlington Insurance Co. v. Minadora Holdings, LLC, et al., Nos. 15-55702 and 15-56657, 9th Cir., 2017 U.S. App. LEXIS 8232).

    Mealey's IP/Tech - Microsoft Petitions Board For Inter Partes Review Of Memo Patent

    ALEXANDRIA, Va. - A patent that claims a method for displaying a reminder to users of a communication device for future communication with members of their contact list does not pass muster under the Patent Act, 35 U.S.C. 103, Microsoft Corp. argues in a May 10 petition for inter partes review with the Patent Trial and Appeal Board (Microsoft Corp. v. Mira Advanced Technology Systems Inc., No. IPR2017-01411, PTAB).

    Mealey's IP/Tech - Court Lacks Jurisdiction Over Defendant In Trade Secrets Suit, Judge Rules

    HOUSTON - A federal district court lacks personal jurisdiction over a defendant in a patent infringement and misappropriation of trade secrets lawsuit because the plaintiff failed to show that the defendant had any contacts with the forum state, a federal judge in Texas ruled May 8 in granting the defendant's motion to dismiss (Downhole Technology LLC v. Silver Creek Services Inc., et al., No. 17-0020, S.D. Texas, 2017 U.S. Dist. LEXIS 70056).

    Mealey's IP/Tech - Federal Circuit: Board Within Its Authority In Granting Patent Review

    WASHINGTON, D.C. - A decision by the Patent Trial and Appeal Board to proceed with an inter partes review (IPR) after the petitioner requested that the petition be denied was not outside the board's statutory authority, the Federal Circuit U.S. Court of Appeals ruled May 10 (In re: AT&T Intellectual Property II L.P., No. 16-1830, Fed. Cir., 2017 U.S. App. LEXIS 8263).

    Mealey's IP/Tech - Means-Plus-Function Limitations Debated Before Federal Circuit

    WASHINGTON, D.C. - A finding by a California federal judge that the means-plus-function limitation "means for mounting" in a patented method and system for real-time replication of file systems components was invalid for insufficient structure is under review by the Federal Circuit U.S. Court of Appeals, which heard oral arguments on May 8 (Twin Peaks Software Inc. v. IBM Corporation, No. 16-2177, Fed. Cir.).

    Mealey's IP/Tech - Board Sides With Examiner In Rejecting Microsoft Patent Claims

    ALEXANDRIA, Va. - The Patent Trial and Appeal Board on May 9 upheld findings by an examiner that 20 claims of a patent application directed to inserting domain switch points in an instruction set would have been obvious to a person of ordinary skill in the art (Ex parte Stall, et al., No. 2015-005253, PTAB).

    Mealey's IP/Tech - Olive Garden Denies ADA Violation Allegations Over Website Accessibility

    FORT LAUDERDALE, Fla. - Citing a lack of legal or regulatory guidelines governing how to determine if a website is accessible for visually impaired persons, Olive Garden Holdings LLC on May 5 filed an answer to a putative class action in Florida federal court, denying claims that its website violates the Americans with Disabilities Act (ADA) (Dennis Haynes v. Olive Garden Holdings LLC, No. 0:17-cv-60643, S.D. Fla.).

    Mealey's IP/Tech - Company's Trade Secrets Misappropriation Claims Survive Dismissal Motion

    DALLAS - Defendants in a misappropriation of trade secrets and intellectual property lawsuit have failed to show that a plaintiff failed to state its claims for violation of the Texas Uniform Trade Secrets Act (TUTSA), as well as several common-law claims, a federal magistrate judge in Texas ruled May 8 in denying the defendants' motion to dismiss (TeamLogic Inc. v. Meredith Group IT LLC, et al., No. 16-2542, N.D. Texas, 2017 U.S. Dist. LEXIS 69580).

    Mealey's IP/Tech - Federal Circuit Agrees With Examiner, Board: Patent Is Obvious

    WASHINGTON, D.C. - A patent application covering an apparatus for engaging in wireless commercial transactions was properly rejected by the Patent Trial and Appeal Board, the Federal Circuit U.S. Court of Appeals ruled May 9 (In re: Paul Poniatowski, No. 17-1346, Fed. Cir., 2017 U.S. App. LEXIS 8185).

    Mealey's IP/Tech - In Partial Reversal, Federal Circuit Says Claims Lack Descriptive Support

    WASHINGTON, D.C. - A holding by the Patent Trial and Appeal Board that confirmed the patentability of five claims of a fiber optic patent was reversed May 10 by the Federal Circuit U.S. Court of Appeals (Cisco Systems Inc. v. Cirrex Systems LLC, Nos. 16-1143, -1144, Fed. Cir.).

    Mealey's IP/Tech - NVIDIA Petitions Board, Claims Polaris Patent Is Obvious, Anticipated

    ALEXANDRIA, Va. - In a May 4 petition for inter partes review NVIDIA Corp. asserts unpatentability of myriad claims relating to a patented process for improved error coding through the use of data arrangement alteration (NVIDIA Corp. v. Polaris Innovations Ltd., No. IPR2017-01346, PTAB).

    Mealey's IP/Tech - Copyright, Lanham Act Claims Partly Dismissed In Dispute Over Bobblehead

    SAN DIEGO - Allegations that the sellers of a Hillary Clinton bobblehead doll committed false advertising by falsely claiming an association with the Trump organization fail to plead proximate causation because the claims lack evidence of lost sales or reputational damage, a California federal judge ruled May 8 (Bobbleheads.com LLC v. Wright Brothers Inc., et al., No. 16-2790, S.D. Calif., 2017 U.S. Dist. LEXIS 70050).

    Mealey's IP/Tech - Federal Circuit: No Due Process Violation In Bandwidth Patents Case

    WASHINGTON, D.C. - A decision, upon inter partes review (IPR), that deemed various claims of two bandwidth selection patents anticipated or obvious over prior art was not a violation of the patent owner's due process rights, the Federal Circuit U.S. Court of Appeals ruled May 8 (Intellectual Ventures II LLC v. Ericsson Inc., et al., Nos. 2016-1739, -1740, -1741, Fed. Cir., 2017 U.S. App. LEXIS 8106).

    Mealey's IP/Tech - Federal Circuit Hears Oral Arguments In Dispute Over E-Commerce Patent

    WASHINGTON, D.C. - In oral arguments on May 8, a patent owner took aim at a covered business method (CBM) review decision by the Patent Trial and Appeal Board that rendered unpatentable all claims of two patents covering e-commerce transactions (Linkgine Inc. v. VigLink Inc., et al., Nos. 16-2087, -2088, Fed. Cir.).

    Mealey's IP/Tech - IBM Patent Application Rejected By Board Pursuant To Section 101

    ALEXANDRIA, Va. - An application for a method and system for user automation out of a process flow claims ineligible subject matter pursuant to the Patent Act, 35 U.S.C. 101, the Patent Trial and Appeal Board ruled May 3 (Ex parte Uthe, No. 2015-001676, PTAB).

    Mealey's IP/Tech - Government Opposes Certiorari In Dispute Over YouTube Video Takedown

    WASHINGTON, D.C. - In a May 4 amicus curiae brief in the U.S. Supreme Court, the U.S. government voiced its opposition to a YouTube user's petition for certiorari, opining that a Ninth Circuit U.S. Court of Appeals ruling on good faith related to a copyright holder's Digital Millennium Copyright Act (DMCA) takedown notice does not conflict with existing case law, also stating that key issues regarding the copyright owner's "mental state" were not properly before the lower courts (Stephanie Lenz v. Universal Music Corp., et al., No. 16-217, U.S. Sup.).