LexisNexis® Legal Newsroom
    Mealey's IP/Tech - 8th Circuit Vacates Trademark Cancellations, Cites Lack Of Damages

    ST. LOUIS - Although clarifying that their conclusions "should not be read as condoning . . . knowing misrepresentations" made by a trademark owner to the U.S. Patent and Trademark Office (PTO), the Eighth Circuit U.S. Court of Appeals on Aug. 11 nonetheless vacated an Iowa federal judge's cancellation of the "Pakster" trademark after finding that the judge lacked jurisdiction (East Iowa Plastics Inc. v. PI Inc., No. 15-2757, 8th Cir.; 2016 U.S. App. LEXIS 14762).

    Mealey's IP/Tech - Magistrate Judge Says Patent Litigation Should Remain In Delaware

    WILMINGTON, Del. - A request by a patent infringement defendant to transfer its dispute with a competitor to the U.S. District Court for the Southern District of Texas should be denied, a Delaware federal magistrate judge recommended Aug. 11 (Smith International Inc. v. Baker Hughes Inc., No. 16-56, D. Del.; 2016 U.S. Dist. LEXIS 105481).

    Mealey's IP/Tech - German Glass Pipe Maker Sues Hookah Company For Selling Counterfeits

    MIAMI - A German corporation known for selling water pipes and hookahs on Aug. 9 filed suit in federal court in Florida against a hookah company for allegedly selling counterfeit products (ROOR v. Hookah, Tobacco and Sun Inc., No. 0:16-cv-61902, S.D. Fla.).

    Mealey's IP/Tech - R.J. Reynolds Seeks Inter Partes Review Of Electronic Cigarette Patent

    ALEXANDRIA, Va. - A patented electronic cigarette is not entitled to the filing date of a parent patent pursuant to rulings by the Federal Circuit U.S. Court of Appeals in ICU Medical, Inc. v. Alaris Medical Systems, Inc. (558 F.3d 1368 [Fed. Cir. 2009]), Research Corp. Techs. v. Microsoft Corp. (627 F.3d at 871-872 [Fed. Cir. 2010]) and Anascape v. Nintendo of America Inc. (601 F.3d at 1334, 1340 [Fed. Cir. 2010]), according to an Aug. 5 petition for inter partes review filed with the Patent Trial and Appeal Board (R.J. Reynolds Vapor Company v. Fontem Holdings I BV, No. IPR2016-01532, PTAB).

    Mealey's IP/Tech - Terrorism Aiding Suit Against Twitter Dismissed Under Communications Decency Act

    OAKLAND, Calif. - Finding that the family members of two terror attack victims who alleged that Twitter Inc. aided terrorists in violation of the Anti-Terrorism Act (ATA) sought to treat Twitter as the speaker of messages posted by ISIS, a California federal judge on Aug. 10 dismissed their claims as barred by the Communications Decency Act (CDA) (Tamara Fields v. Twitter Inc., No. 4:16-cv-00213, N.D. Calif.; 2016 U.S. Dist. LEXIS 105768).

    Mealey's IP/Tech - California Federal Judge Orders Couple To Stop Using Tobacco Trademark

    LOS ANGELES - A federal judge in California on Aug. 8 granted a motion for default judgment in favor of a hookah tobacco company that sued a couple who was using the company's trademarked brands and ordered the couple to pay $575,000 (Starbuzz Tobacco Inc. v. Issa Hilo, et al., No. SACV 16-0303 AG, C.D. Calif.).

    Mealey's IP/Tech - California Federal Judge Rejects Lanham Act Counterclaims In Patent Litigation

    SAN FRANCISCO - Assertions by a patent infringement defendant that a plaintiff committed false advertising and defamation in a letter it sent to the defendant's current and prospective customers were rejected on summary judgment Aug. 8 by a California federal judge (Johnstech International Corp. v. JF Microtechnology SDN BHD, No. 14-2864, N.D. Calif.; 2016 U.S. Dist. LEXIS 104380).

    Mealey's IP/Tech - Google, Oracle Spar Over Post-Judgment Sanctions For Financial Info Disclosure

    SAN FRANCISCO - In an Aug. 8 opposition brief filed in California federal court, Oracle America Inc. calls a post-trial motion for civil contempt and sanctions by Google Inc. "unprecedented," asserting that the discovery trial statements that purportedly disclosed confidential information "were responsive" to arguments from Google and probing questions from the presiding magistrate (Oracle America Inc. v. Google Inc., No. 3:10-cv-03561, N.D. Calif.).

    Mealey's IP/Tech - Therapeutic Radiology Patent Will Be Reviewed By Patent Board

    ALEXANDRIA, Va. - A February 2016 request for inter partes review was granted Aug. 4 by the Patent Trial and Appeal Board, following failure by the patent owner to respond to the petition (Elekta Inc. v. Varian Medical Systems Inc., No. IPR2016-00551, PTAB).

    Mealey's IP/Tech - Honda Seeks Inter Partes Review Of 'Integration Subsystem' Patent

    ALEXANDRIA, Va. - A patent that is currently the subject of several pending inter partes review (IPR) requests filed by companies including Volkswagen Group of America Inc. and Toyota Motor Co. is under fire again, in light of an Aug. 4 petition for IPR filed by America Honda Motor Co. Inc. (Honda) with the Patent Trial and Appeal Board (American Honda Motor Co. v. Blitzsafe Texas LLC, No. IPR2016-01533, PTAB).

    Mealey's IP/Tech - Prevailing Patent Defendant Wins Partial Award Of Attorney Fees in Maryland

    BALTIMORE - A plaintiff's decision to pursue patent litigation became "clearly unreasonable" once the plaintiff failed to adequately rebut or otherwise address a defendant's position that the case was barred by 28 U.S. Code Section 1498, a Maryland federal judge ruled Aug. 4 (Astornet Technologies Inc. v. BAE Systems Inc., No. 14-245, D. Md.; 2016 U.S. Dist. LEXIS 102260).

    Mealey's IP/Tech - Ohio Federal Judge Denies Injunction In Dispute Over Restaurant Trade Dress

    CLEVELAND - A lawsuit involving restaurant trade dress will proceed without a temporary restraining order in place, an Ohio federal judge ruled Aug. 8 (Barteca Holdings LLC v. Coastal Taco LLC, No. 16-1498, N.D. Ohio; 2016 U.S. Dist. LEXIS 104026).

    Mealey's IP/Tech - Minnesota Federal Judge Denies Request For Dismissal Of Patent Litigation

    MINNEAPOLIS - Citing the interactive nature of a defendant's website, a Minnesota federal judge on Aug. 5 denied a motion to dismiss a patent infringement lawsuit on grounds of lacking personal jurisdiction (Imation Corporation v. Sanho Corporation Inc., No. 15-1883, D. Minn.; 2016 U.S. Dist. LEXIS 103626).

    Mealey's IP/Tech - Illinois Federal Judge: Television Commercials Not Substantially Similar

    CHICAGO - Allegations that Steak n Shake Inc. infringed the copyrighted television advertisement of a competitor were rejected Aug. 5 by an Illinois federal judge, who deemed the commercials dissimilar (Culver Franchising System Inc. v. Steak n Shake Inc., No. 16-75, N.D. Ill.; 2016 U.S. Dist. LEXIS 103091).

    Mealey's IP/Tech - Federal Circuit Vacates Unenhanced Damages On Remand From Supreme Court

    WASHINGTON, D.C. - In the wake of the U.S. Supreme Court's rejection in June of the two-part test for enhanced damages set forth in In re: Seagate Technology LLC (497 F. 3d 1360, 1371 [2007]), the Federal Circuit U.S. Court of Appeals on Aug. 5 vacated an award of unenhanced damages in a patent case and remanded the dispute to a Nevada federal court (Halo Electronics Inc. v. Pulse Electronics Inc., et al., Nos. 13-1472, -1656, Fed. Cir.; 2016 U.S. App. LEXIS 14366).

    Mealey's IP/Tech - Patent Board Turns Away Fitbit Petition For Inter Partes Review

    ALEXANDRIA, Va. - Allegations of invalidity by FitBit Inc. with regard to a patented system for collecting health, wellness and fitness data with a sensor device were rejected Aug. 4 by the Patent Trial and Appeal Board (FitBit Inc. v. BodyMedia Inc., IPR IPR2016-00543, PTAB).

    Mealey's IP/Tech - Pennsylvania Federal Judge Says Patent Cannot Satisfy Alice Eligibility Standard

    PITTSBURGH - Efforts to enforce a patent against myriad defendant insurers failed Aug. 4 when a Pennsylvania federal judge agreed with the insurer that the patent claims ineligible subject matter and "does not clear" the bar set in Alice Corp. Pty. Ltd. v. CLS Bank Int'l. (134 S. Ct. 2347, 2355 [2014]) (Intellectual Ventures I LLC v. Erie Indemnity Company, et al., No. 14-220, W.D. Pa.; 2016 U.S. Dist. LEXIS 102289).

    Mealey's IP/Tech - Patent Board Will Review Fraud Prevention Patent

    ALEXANDRIA, Va. - Efforts by various banking institutions to obtain covered business method (CBM) review of a patent that claims improvements in fraud detection and notification during remote and electronic transactions were successful Aug. 1, when the Patent Trial and Appeal Board approved the request (Southside Bancshares Inc., et al. v. St. Isidore Research LLC, No. CBM2016-00027, PTAB).

    Mealey's IP/Tech - 1st Circuit: Finding Of Noninfringement In Trademark Case Clearly Erroneous

    NEW YORK - In its second ruling in a longstanding trademark dispute, the First Circuit U.S. Court of Appeals on Aug. 3 vacated and remanded a Puerto Rico federal judge's findings of noninfringement, directing the district court to instead reconsider an earlier-entered injunction (Oriental Financial Services Corp., et al. v. Cooperativa de Ahorro y Credito Oriental, No. 15-1009, 1st Cir.; 2016 U.S. App. LEXIS 14162).

    Mealey's IP/Tech - N.J. Man Sues Pokemon Go Developer For Placing Stops On Private Property

    OAKLAND, Calif. - The developer of Pokemon Go, a popular "augmented reality" game that is played on smartphones, is liable for nuisance for placing virtual parts of the game known as "Pokestops" and "Pokemon gyms" on or adjacent to private property, a New Jersey man alleges in a class complaint filed July 29 in a California federal court (Jeffrey Marder, et al. v. Niantic, Inc., et al., No. 16-4300, N.D. Calif.).

    Mealey's IP/Tech - Connecticut Federal Judge Grants Summary Judgment On Typosquatting Claim

    HARTFORD, Conn. - Citing a lack of evidence linking two digital marketing companies with the use of various domain names featuring a deliberate misspelling of a plaintiff's trademark, a Connecticut federal judge on July 29 dismissed allegations that the defendant that hired the companies violated the Anti-Cybersquatting Consumer Protection Act (ACPA) (Edible Arrangements LLC v. Provide Commerce Inc., No. 14-250, D. Conn.; 2016 U.S. Dist. LEXIS 99291).

    Mealey's IP/Tech - Following Trademark Trial, Federal Judge Sides With Macy's Subsidiary

    NEW YORK - Allegations that Macy's Merchandising Group Inc. (MMG) infringed the "Joules" trademark by selling women's clothing under the "Maison Jules" trademark were rejected Aug. 2 by a New York federal judge following a two-day bench trial in July (Joules Limited v. Macy's Merchandising Group Inc., No. 15-3645, S.D. N.Y.; 2016 U.S. Dist. LEXIS 101151).

    Mealey's IP/Tech - South Carolina Federal Judge Triples Damages, Awards Infringer Profits

    FLORENCE, S.C. - A South Carolina federal judge on July 29 awarded Choice Hotels International Inc. triple damages plus $1.18 million of infringer profits in a trademark infringement case against defendants who bought a North Myrtle Beach hotel from one of Choice Hotels' former franchisees and operated a "virtually identical business with a virtually identical name on the very same property" (Choice Hotels International Inc. v. Zeal LLC, et al., No. 4:13-01961, D. S.C., Florence Div.; 2016 U.S. Dist. LEXIS 99342).

    Mealey's IP/Tech - Apple's Waiver Claim Fails, But Federal Circuit Upholds Noninfringement Ruling

    WASHINGTON, D.C. - A California federal judge properly construed the terms "specified connection" and "UL connections" in a dispute over wireless communication patents, according to an Aug. 1 ruling by the Federal Circuit U.S. Court of Appeals in favor of defendant Apple Inc. (Wi-LAN USA Inc., et al. v. Apple Inc., No. 15-1256, Fed. Cir.; 2016 U.S. App. LEXIS 13860).

    Mealey's IP/Tech - Federal Circuit Affirms: Paging Patents Not Invalid, Not Infringed By Apple

    WASHINGTON, D.C. - A California federal judge's decision that upheld a verdict of patent invalidity and noninfringement following a seven-day jury trial was not erroneous, the Federal Circuit U.S. Court of Appeals ruled Aug. 1 (GPNE Corp. v. Apple Inc., No. 15-1825, Fed. Cir.; 2016 U.S. App. LEXIS 13862).