LexisNexis® Legal Newsroom
    Mealey's IP/Tech - New Jersey Federal Judge Grants Howard Johnson Judgment Against Franchisee

    NEWARK, N.J. - A New Jersey federal judge on April 3 granted Howard Johnson International Inc.'s (HJI) unopposed motion for summary judgment on breach of contract, breach of guarantee and Lanham Act claims against a franchisee, saying the franchisee did not provide any information refuting HJI's claims (Howard Johnson International Inc. v. SSR Inc., et al., No. 14-4611, D. N.J., 2017 U.S. Dist. LEXIS 51109).

    Mealey's IP/Tech - Federal Circuit Affirms Denial Of Nonimmigrant Alien's Patent Agent Registration

    WASHINGTON, D.C. - A decision by the U.S. Patent and Trademark Office (PTO) that denied a nonimmigrant alien's request to register as a patent agent was neither arbitrary nor capricious, the Federal Circuit U.S. Court of Appeals ruled April 5 (Jinyang Guo v. Michelle K. Lee, Director, U.S. Patent and Trademark Office, No. 17-1244, Fed. Cir.).

    Mealey's IP/Tech - Federal Circuit Affirms Disposition Of Request For Fees In Patent Case

    WASHINGTON, D.C. - A Delaware federal judge properly determined that a Medtronic Inc. claim for attorney fees in a patent dispute was timely and that a sublicensor was responsible for paying the fees because of a contractual fee-shifting provision, the Federal Circuit U.S. Court of Appeals ruled April 4 (Medtronic Inc. v. Mirowski Family Ventures LLC v. Boston Scientific Corp., et al., Nos. 2015-1996, 2015-2074, 2015-2075, Fed. Cir., 2017 U.S. App. LEXIS 5766).

    Mealey's IP/Tech - Patent Board Allows Canceled, Substituted Claims In Patent Review

    ALEXANDRIA, Va. - Shire LLC on March 31 prevailed in a final written decision by the Patent Trial and Appeal Board, which in April 2016 instituted inter partes (IPR) review of six claims of a drug delivery system patent (Amerigen Pharmaceuticals Ltd. v. Shire LLC, No. IPR2015-02009, PTAB).

    Mealey's IP/Tech - West Virginia Federal Judge: Res Judicata Bars Trademark Claims

    CHARLESTON, W.Va. - Allegations of trademark abandonment through naked licensing were dismissed March 31 by a West Virginia federal judge pursuant to the doctrine of res judicata (Gerald Mollohan v. Brothers of the Wheel M.C. Executive Council Inc., No. 13-32251, S.D. W.Va., 2017 U.S. Dist. LEXIS 48690).

    Mealey's IP/Tech - 9th Circuit Sides With Copyright Plaintiff In Fabric Design Case

    SAN FRANCISCO - Where two works share an extrinsic similarity so strong that the works are near duplicates, district courts may properly conclude that no reasonable juror could find a lack of substantial similarity in the works' overall concept and feel, the Ninth Circuit U.S. Court of Appeals ruled April 3 (Unicolors Inc. v. Urban Outfitters Inc., No. 15-55507, 9th Cir., 2017 U.S. App. LEXIS 5675).

    Mealey's IP/Tech - Federal Circuit Rejects Google Bid For En Banc Review In Patent Row

    WASHINGTON, D.C. - A November 2016 ruling that the Patent Trial and Appeal Board relied on an incorrect definition of "covered business method patent" in assessing a petition for covered business method (CBM) review by Google Inc. will stand, the Federal Circuit U.S. Court of Appeals ruled April 4 (Google Inc. v. Unwired Planet LLC, No. 15-1812, Fed. Cir.).

    Mealey's IP/Tech - Judge: Suit Fails To Allege Insured Published Material That Disparages Sprint

    BALTIMORE - A Maryland federal judge on March 29 held that Sprint's underlying lawsuit against an insured fails to allege the publication of disparaging material and, therefore, the insurer's duty to defend was not triggered under the policy's "personal and advertising injury coverage" (Unwired Solutions, Inc. v. Ohio Security Insurance Co., No. 16-0405, D. Md., 2017 U.S. Dist. LEXIS 46215).

    Mealey's IP/Tech - 9th Circuit: False Patent Marking Claim Did Not Trigger Advertising Injury Coverage

    PASADENA, Calif. - The Ninth Circuit U.S. Court of Appeals on March 31 affirmed that an insurance policy's advertising injury provision did not cover a false patent marking claim that contributed to a $2,951,024 judgment against an insured (Sei Y. Kim v. Truck Insurance Exchange, et al., No. 15-56486, 9th Cir., 2017 U.S. App. LEXIS 5631).

    Mealey's IP/Tech - California Federal Judge Sides With Copyright Infringement Defendant

    LOS ANGELES - On the heels of a March 9 recommendation by a California federal magistrate judge that a copyright infringement plaintiff should be sanctioned for failure to comply with a discovery order, a California federal judge on March 31 granted a defendant partial summary judgment with regard to 11 of 12 allegedly infringing fabric designs (Urban Textile v. Rue 21 Inc. and Mark Edwards Apparel Inc., No. 14-8285, C.D. Calif., 2017 U.S. Dist. LEXIS 49573).

    Mealey's IP/Tech - Apple Seeks Discovery Of U.K. Suit Documents In Wireless Tech Patent Case

    SAN FRANCISCO - In a March 29 reply brief in California federal court, Apple Inc. defended its motion to compel discovery of documents from a lawsuit in the United Kingdom, contending that "they may bear on whether [Unwired Planet LLC's] damages demand" in the present patent case "constitutes a 'reasonable' royalty" (Unwired Planet LLC v. Apple Inc., No. 3:13-cv-04134, N.D. Calif.).

    Mealey's IP/Tech - D.C. Federal Judge: Domain Registration Would Not Change Trial Outcome

    WASHINGTON, D.C. - Efforts by a defendant to obtain a new trial in a dispute over the "La Indita Michoacana" trademark in light of newly discovered evidence were denied March 30 by a District of Columbia federal judge (Paleteria La Michoacana Inc., et al. v. Productos Lacteos Tocumbo S.A. De C.V., No. 11-1623, D. D.C.).

    Mealey's IP/Tech - 11th Circuit Panel Says Groucho's Trademark Suit Barred By Laches

    ATLANTA - An 11th Circuit U.S. Court of Appeals panel on March 29 affirmed summary judgment in favor of a delicatessen in a lawsuit in which a restaurant chain franchisor said the deli's name infringed on its registered service mark, saying the complaint was barred by laches (Groucho's Franchise Systems LLC v. Grouchy's Deli Inc., No. 16-16279, 11th Cir., 2017 U.S. App. LEXIS 5437).

    Mealey's IP/Tech - Illinois Federal Judge Finds Ethics Violation In Trademark Case

    CHICAGO - All previous pleadings by counsel for three common-law trademark defendants were stricken March 28 by an Illinois federal judge as a sanction for ethics violations (Lectric Limited v. DGW Inc., No. 15-7744, N.D. Ill., 2017 U.S. Dist. LEXIS 44867).

    Mealey's IP/Tech - Patent Owner Requests Adverse Judgment Before Patent Board

    ALEXANDRIA, Va. - The Patent Trial and Appeal Board on March 24 granted a patent owner's request to cancel 19 claims of a single-serve beverage brewing machine patent, on the heels of a January decision by the board that granted inter partes review (Keurig Green Mountain Inc. v. Touch Coffee & Beverages LLC, No. IPR2016-01394, PTAB).

    Mealey's IP/Tech - 5th Circuit: Volitional Conduct Needed For Direct Copyright Infringement

    NEW ORLEANS - A Texas federal judge did not err in granting a defendant summary judgment on the question of direct copyright infringement because the judge properly found an absence of volitional conduct, the Fifth Circuit U.S. Court of Appeals ruled March 27 (BWP Media USA, et al. v. T&S Software Associates, No. 16-10510, 5th Cir., 2017 U.S. App. LEXIS 5340).

    Mealey's IP/Tech - Supreme Court Declines To Hear Case On DMCA Safe Harbor For Pre-1972 Recordings

    WASHINGTON, D.C. - The Second Circuit U.S. Court of Appeals' finding that Digital Millennium Copyright Act (DMCA) safe-harbor provisions apply to pre-1972 recordings will stand, as the U.S. Supreme Court on March 27 denied a group of record labels' petition for certiorari in their dispute with an online video-sharing service that they accused of infringing their copyrighted works (Capitol Records LLC, et al. v. Vimeo LLC, et al., No. 16-771, U.S. Sup., 2017 U.S. LEXIS 2055).

    Mealey's IP/Tech - Patent Board In Final Decision Says Invention Claims Abstract Idea

    ALEXANDRIA, Va. - A claimed method of processing merchandise discounts based upon a computerized membership system does not pass muster under Section 101 of the Patent Act, 35 U.S.C. 1 et seq., the Patent Trial and Appeal Board ruled March 27 in a final written decision (The Kroger Company, et al. v. Nexuscard Inc., No. CBM2015-00183, PTAB).

    Mealey's IP/Tech - Patent Board Deems All 4 Challenged Claims Obvious In Final Decision

    WASHINGTON, D.C. - A challenger of a dentistry patent prevailed before the Patent Trial and Appeal Board March 26 when in a final written decision the board deemed four claims obvious in light of three pieces of prior art (ClearCorrect Operating LLC v. Align Technology Inc., No. IPR2016-00270, PTAB).

    Mealey's IP/Tech - Twitter Seeks Inter Partes Review Of Web Content Patent

    ALEXANDRIA, Va. - Asserting eight separate grounds of unpatentability, Twitter Inc. on March 24 took aim at a patent directed at creating and sharing web content in a new petition for inter partes review (IPR) with the Patent Trial and Appeal Board (Twitter Inc. v. Yootoo Technologies LLC, No. IPR2017-01131, PTAB).

    Mealey's IP/Tech - Supreme Court Holds Oral Arguments In Dispute Over Patent Venue Statute

    WASHINGTON, D.C. - A petitioner told the U.S. Supreme Court on March 27 that venue is proper only in a defendant's place of incorporation and that, accordingly, allegations of patent infringement by Kraft Foods Group Brands LLC should have been levied in Indiana federal court and not in Delaware, where allegedly infringing products were shipped (TC Heartland LLC d/b/a Heartland Food Products Group v. Kraft Foods Group Brands LLC, No. 16-341, U.S. Sup.).

    Mealey's IP/Tech - Panel: Architect Did Not Have 'Deemed Allowed' Claim That Constitutes Res Judicata

    NEW ORLEANS - The Fifth Circuit U.S. Court of Appeals on March 24 denied an architect's appeal seeking to reverse a ruling in favor of a home builder's insurer in a breach of contract dispute arising from an underlying $63,471,000 copyright infringement dispute, rejecting the architect's argument that an unobjected-to proof of claim in a bankruptcy case should be allowed and should become a final judgment when the bankruptcy case is closed (Kipp Flores Architects, LLC v. Mid-Continent Casualty Co., No. 16-20255, 5th Cir., 2017 U.S. App. LEXIS 5241).

    Mealey's IP/Tech - Indiana Federal Judge Says Copyright Claims Not Time-Barred

    FORT WAYNE, Ind. - Efforts by a copyright infringement defendant to obtain summary judgment were unsuccessful on March 24 when an Indiana federal judge found that the U.S. Supreme Court's ruling in Petrella v. Metro-Goldwyn-Mayer, Inc., 134 S. Ct. 1962 (2014), did not change the Seventh Circuit U.S. Court of Appeals' "discovery rule" for determining when an allegation of infringement has accrued (Design Basics LLC v. Westport Homes of Fort Wayne Inc., et al., No. 16-170, N.D. Ind., 2017 U.S. Dist. LEXIS 43060).

    Mealey's IP/Tech - Supreme Court Grants Certiorari, Remands Trio Of Patent Cases

    WASHINGTON, D.C. - On the heels of its March 21 decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 580 U. S. ___ (2017), the U.S. Supreme Court on March 27 granted petitions for certiorari in three patent cases for the limited purpose of vacating and remanding to the Federal Circuit U.S. Court of Appeals (Medinol Ltd. v. Cordis Corp., et al., No. 15-998; Endotach LLC v. Cook Medical LLC, No. 16-127; Romag Fasteners Inc. v. Fossil Inc., et al., No. 16-202, U.S. Sup.).

    Mealey's IP/Tech - New Expert Report In Spying Software Suit Struck, Deemed To Be Too Late

    ERIE, Pa. - A second expert report filed by the lead plaintiffs in a proposed class action over spying software when they filed their reply brief in support of their renewed motion for class certification was filed too late, a Pennsylvania federal magistrate judge ruled March 22, striking the new report (Crystal Byrd, et al. v. Aaron's, Inc., et al., No. 11-101, W.D. Pa., 2017 U.S. Dist. LEXIS 41030).