LexisNexis® Legal Newsroom
    Mealey's IP/Tech - Federal Circuit Largely Sides With Patent Board In Consolidated Appeal

    WASHINGTON, D.C. - In a Dec. 5 ruling, the Federal Circuit upheld findings of patent invalidity by the Patent Trial and Appeal Board in two cases but ruled against the board - and in favor of three inter partes review (IPR) petitioners - in a third case, in which the board deemed the disputed technology patentable (CRFD Research Inc. v. Joseph Matal, No. 16-2198; CRFD Research Inc. v. DISH Network Corp., No. 16-2298; Hulu LLC v. CRFD Research Inc., No. 16-2437, Fed. Cir.).

    Mealey's IP/Tech - Florida Federal Judge: Trademark Not Promoted In Unsolicited Facsimiles

    WEST PALM BEACH, Fla. - Citing a lack of personal jurisdiction over two defendants accused of violating the Telephone Consumer Protection Act (TCPA), a Florida federal judge on Dec. 1 reversed course, vacating his earlier finding that unsolicited facsimile (fax) advertisements bearing the "Ulesfia" trademark were sent on behalf of the mark owner (S.A.S.B. Corporation, et al., v. Concordia Pharmaceuticals Inc., et al., No. 16-14108, S.D. Fla., 2017 U.S. Dist. LEXIS 199021).

    Mealey's IP/Tech - Cattle Insemination Method Patent Is Obvious, Challenger Tells Board

    ALEXANDRIA, Va. - In a Dec. 4 petition for inter partes review (IPR), a bovine reproductive technology company argues to the Patent Trial and Appeal Board that using sex-sorted sperm to produce two or more embryos of a desired sex is unpatentable pursuant to Sections 102 and 103 of the Patent Act, 35 U.S.C. 102, 103 (Trans Ova Genetics LC v. XY LLC, No. IPR2018-00249, PTAB).

    Mealey's IP/Tech - Federal Circuit Upholds Claim Constructions, Obviousness Holding

    WASHINGTON, D.C. - Findings by the Patent Trial and Appeal Board that various challenged patent claims would have been obvious to a person of skill in the art were affirmed Nov. 30 by the Federal Circuit U.S. Court of Appeals, which found no error in the board's differing construction of "internet protocol" and "Internet protocol" (AIP Acquisition LLC v. Cisco Systems Inc., No. 16-2371, Fed. Cir., 2017 U.S. App. LEXIS 24192).

    Mealey's IP/Tech - Citing Micron, Federal Circuit Grants Mandamus Petition In Patent Case

    WASHINGTON, D.C. - In a Nov. 15 grant of mandamus released Dec. 1, the Federal Circuit U.S. Court of Appeals vacated a Minnesota federal judge's decision to transfer a patent case to the U.S. District Court for the Western District of Pennsylvania (In re: Cutsforth Inc., No. 17-135, Fed. Cir.).

    Mealey's IP/Tech - Adult Site Owner's Petition Over Vicarious, Direct Copyright Infringement Denied

    WASHINGTON, D.C. - In its Dec. 4 order list, the U.S. Supreme Court denied certiorari to the operator of an adult website that had appealed a Ninth Circuit U.S. Court of Appeals ruling that a usenet provider was not liable for direct or vicarious infringement of its copyrighted images due to a lack of volitional conduct (Perfect 10 Inc. v. Giganews Inc., et al, No. 17-320, U.S. Sup., 2017 U.S. LEXIS 7259).

    Mealey's IP/Tech - Federal Circuit Vacates Obviousness Holding By Board, Sides With Microsoft

    WASHINGTON, D.C. - Although affirming a construction by the Patent Trial and Appeal Board of the claim term "request," the Federal Circuit U.S. Court of Appeals on Dec. 1 nonetheless vacated in full the board's determination that two patents are nonobvious and partly vacated the board's holding that the patents are not anticipated by prior art (Microsoft Corp., et al., v. Parallel Networks Licensing LLC, Nos. 2016-2515, -2517, -2518, -2519, -2642, -2644, -2645, -2646, Fed. Cir., 2017 U.S. App. LEXIS 24333).

    Mealey's IP/Tech - Abandonment Of Mark Not Proven, Washington Federal Judge Rules

    SEATTLE - Although denying a trademark infringement plaintiff summary judgment, a Washington federal judge on Nov. 29 rejected assertions by defendants in the case that they "strictly proved" trademark abandonment (Kische USA LLC v. Ali Simsek, et al., No. 16-168, W.D. Wash., 2017 U.S. Dist. LEXIS 196191).

    Mealey's IP/Tech - California Magistrate Judge Dismisses Trademark Claim, Trade Libel Claim Survives

    SAN FRANCISCO - A dispute between two beauty product suppliers will proceed in California federal court but without a claim for trademark infringement against an individual defendant, a federal magistrate judge ruled Nov. 27 (BioZone Laboratories Inc. v. Next Step Laboratories Corporation and Richard Rigg, No. 17-2768, N.D. Calif., 2017 U.S. Dist. LEXIS 194454).

    Mealey's IP/Tech - New Petition For Inter Partes Review Targets Seat Reservation Patent

    ALEXANDRIA, Va. - The Patent Trial and Appeal Board was told Nov. 28 in a new petition for inter partes review (IPR) that a patented seat reservation method would have been obvious to a person of ordinary skill in the art (TicketNetwork Inc. v. CEATS Inc., No. IPR2018-00245, PTAB).

    Mealey's IP/Tech - In Final Written Decision, Patent Board Sides With Patent Owners

    ALEXANDRIA, Va. - Allegations that 19 claims of a patent covering "injectable suspensions having improved injectability" would have been obvious to a person of skill in the art were rejected Nov. 28 by the Patent Trial and Appeal Board (Luye Pharma Group Ltd., et al. v. Alkermes Pharma Ireland Ltd., et al., No. IPR2016-01096, PTAB).

    Mealey's IP/Tech - Federal Circuit Affirms Denial Of Registrations For 'Magnesita' Trademarks

    WASHINGTON, D.C. - A decision by the Trademark Trial and Appeal Board to deny two trademark registration applications for "Magnesita" on grounds that the marks are generic for refractory products was not erroneous, the Federal Circuit U.S. Court of Appeals concluded Nov. 27 (In re: Magnesita Refractories Company, No. 16-2345, Fed. Cir., 2017 U.S. App. LEXIS 23845).

    Mealey's IP/Tech - Patent Board Sides With Petitioner, Deems 10 Claims Unpatentable

    ALEXANDRIA, Va. - A challenge by EMC Corp. of a multiprocessor system patent was successful on Nov. 24, when the Patent Trial and Appeal Board agreed in a final written decision that 10 claims would have been obvious to a person of skill in the art (EMC Corporation v. Intellectual Ventures II LLC, No. IPR2016-01106, PTAB).

    Mealey's IP/Tech - Supreme Court Hears Arguments In Dispute Over Scope Of Inter Partes Review

    WASHINGTON, D.C. - Once the Patent Trial and Appeal Board agrees to institute inter partes review (IPR), it must address in its final written decision all claims challenged in the underlying petition, an attorney for software developer SAS Institute Inc. told the U.S. Supreme Court Nov. 27 during oral arguments (SAS Institute Inc. v. Joseph Matal, et al., No. 16-969, U.S. Sup.).

    Mealey's IP/Tech - Constitutionality Of Inter Partes Review Procedure Debated By Supreme Court

    WASHINGTON, D.C. - In a case that could upend the landscape for patent litigants globally, the U.S. Supreme Court heard oral arguments Nov. 27 in a dispute over the constitutionality of inter partes review (IPR) proceedings by the U.S. Patent and Trademark Office (PTO's) Patent Trial and Appeal Board (Oil States Energy Services LLC v. Greene's Energy Group LLC, No. 16-712, U.S. Sup.).

    Mealey's IP/Tech - Federal Magistrate Recommends Arbitration Of Barnes & Noble Data Privacy Class Suit

    NEW YORK - The arbitration provision in Barnes & Noble Booksellers Inc.'s (B&N) terms of use (TOU) on its website is not unconscionable and therefore must be enforced in a class complaint filed by a customer who claims that information about her online purchase of a DVD was shared with Facebook, a New York federal magistrate judge opined in a Nov. 20 report and recommendation (Melina Bernardino v. Barnes & Noble Booksellers, Inc., No. 17-4570, S.D. N.Y., 2017 U.S. Dist. LEXIS 192814).

    Mealey's IP/Tech - Hulu Hit With Class Suit Over Inaccessibility For Blind Customers

    BOSTON - Two organizations for visually impaired people and two blind individuals filed a class complaint on Nov. 20 in the U.S. District Court for the District of Massachusetts accusing Hulu LLC, an online streaming company, of discrimination by failing to provide an audio description on any content and failing to make its website and software applications accessible to customers using screen readers (American Council of the Blind, et al. v. Hulu LLC, No. 17-12285, D. Mass.).

    Mealey's IP/Tech - Federal Circuit Sides With Apple, Affirms Patent Claim Construction

    WASHINGTON, D.C. - The Federal Circuit U.S. Court of Appeals on Nov. 22 upheld the claim construction of various disputed terms proffered by a California federal judge in a win for Apple Inc. (Rembrandt Patent Innovations LLC, et al. v. Apple Inc., No. 16-2324, Fed. Cir.).

    Mealey's IP/Tech - Microsoft Seeks Inter Partes Review Of Remote Control Zoom Patent

    ALEXANDRIA, Va. - In a Nov. 17 petition for inter partes review (IPR) by the Patent Trial and Appeal Board, Microsoft Corp. challenged the patentability of seven claims of a patented remote control with an auto-zoom feature, which allows for easier button selection on a touch screen (Microsoft Corp. v. Koninklijke Philips N.V., No. IPR2018-00185, PTAB).

    Mealey's IP/Tech - On Remand, Texas Federal Judge Won't Dismiss Copyright Infringement Claim

    HOUSTON - In a Nov. 21 ruling, a Texas federal judge interpreted the phrase "lawfully made under this title" as it appears in Section 109 of the Copyright Act, 17 U.S.C. 109, to mean "that a copy is lawful if it was made in the United States in compliance with Title 17 or in a foreign country in a manner that would comply with Title 17 if United States copyright law applied" (Geophysical Services Inc. v. TGS Nopec-Geophysical Services, No. 14-1368, S.D. Texas, 2017 U.S. Dist. LEXIS 192803).

    Mealey's IP/Tech - Company's Claims In Trade Secrets, Copyright Suit Survive Motion To Dismiss

    SHERMAN, Texas - A company has properly stated a claim for relief in seeking declaratory relief against several former employees and its direct competitor for alleged trade secret misappropriation and patent and copyright infringement, among other things, and its claims under the Copyright Act provide a federal district court with federal question jurisdiction, a federal judge in Texas ruled Nov. 20 in denying the defendants' motion to dismiss (Performance Pulsation Control Inc. v. Sigma Drilling Technologies LLC, et al., No. 17-0450, E.D. Texas, 2017 U.S. Dist. LEXIS 191530).

    Mealey's IP/Tech - Federal Circuit Vacates Relief, Orders New Trial On Patent Damages

    WASHINGTON, D.C. - Although affirming a California federal judge's determination that various claims of a capacitor patent are not indefinite under Section 112 of the Patent Act, 35 U.S.C. 112, the Federal Circuit U.S. Court of Appeals on Nov. 21 reversed an award of lost profits and grant of permanent injunctive relief in the case (Presidio Components Inc. v. American Technical Ceramics Corp., Nos. 16-2607, -2650, Fed. Cir.).

    Mealey's IP/Tech - Copyright, Trademark Claims Survive Dismissal Request In Illinois Court

    CHICAGO - Efforts by two defendants to obtain dismissal of allegations they committed copyright and trademark infringement by copying and exhibiting photographs by the late Vivian Maier were unsuccessful on Nov. 20, when an Illinois federal judge deemed claims by a public administrator appointed to Maier's estate upon her death in 2009 adequately pleaded (The Estate of Vivian Maier v. Jeffrey Goldstein, et al., No. 17-2951, N.D. Ill., 2017 U.S. Dist. LEXIS 191294).

    Mealey's IP/Tech - Delaware Federal Magistrate Judge: Don't Dismiss Patent Case Against WhatsApp

    WILMINGTON, Del. - A Delaware federal magistrate judge on Nov. 20 recommended that allegations that WhatsApp Inc. infringed two electronic messaging patents should proceed, rejecting a request for dismissal on grounds of patent ineligibility (TriPlay Inc. v. WhatsApp Inc., No. 13-1703, D. Del., 2017 U.S. Dist. LEXIS 191330).

    Mealey's IP/Tech - Federal Circuit Remands Indefiniteness Holding By Delaware Federal Judge

    WASHINGTON, D.C. - A judgment of patent invalidity based upon findings that certain language in a patented catalytic conversion system is indefinite was reversed Nov. 20 by the Federal Circuit U.S. Court of Appeals (BASF Corporation v. Johnson Matthey Inc., No. 16-1770, Fed. Cir.).