Posts in District Courts

Heirs to Author of Article That Inspired Top Gun Crash and Burn in California District Court

The U.S. District Court for the Central District of California ruled on Friday that Shosh Yonay and Yuval Yonay, the widow and son of Ehud Yonay, who authored a 1983 magazine article that inspired the renowned film, Top Gun, were not entitled to damages for copyright infringement related to the 2022 sequel to the film. Yonay authored a magazine article titled “Top Guns,” published in California Magazine on April 21, 1983, that was an account of the experiences of F-14 pilots in training at Navy’s Fighter Weapons School, known as “Top Gun.”

A Case Study on the ‘Crime-Fraud’ Exception to Attorney-Client Privilege

The protection of privilege in communications between clients and lawyers is a very important one under U.S. law. The basic rule is that when a client seeks legal advice from a lawyer, the communication between the client and the lawyer is confidential and cannot be discovered during litigation. An important purpose of this rule is to encourage clients to communicate fully and freely with lawyers in the process of seeking legal help. The lawyers here include both external lawyers and in-house lawyers.

CAFC Precedential Decision on Rule 12(b)(6) Affirms Patent Ineligibility of Medical Scan Visualization Claims

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision decision authored by Judge Reyna today affirming a district court’s grant of a Rule 12(b)(6) motion alleging that AI Visualize’s patent claims were ineligible under Section 101. AI Visualize owns U.S. Patent Nos. 8,701,167 (’167 patent), 9,106,609 (’609 patent), 9,438,667 (’667 patent), and 10,930,397 (’397 patent), which all relate to visualization of medical scans. AI Visualize sued Nuance Communications, Inc. and Mach7 Technologies, Inc. for patent infringement. Nuance filed a motion to dismiss for failure to state a claim, arguing the claims were directed to patent ineligible subject matter. Since AI Visualize’s Amended Complaint provided no further information about the eligibility of the claims and neither party asked for claim construction, the district court reviewed the eligibility of the claims and concluded they were all ineligible.

CAFC Affirms District Court Dismissal of Pro Se Inventor’s Procedural and Patent Claims

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday affirmed a number of district court orders against inventor Urvashi Bhagat, whose patent application  was rejected by the U.S. Patent and Trademark Office (USPTO). Bhagat’s U.S. patent application No. 13/877,847 covers orally-delivered nutritional formulations containing omega-6 fatty acids and antioxidants. The application was filed in 2013 and the USPTO examiner rejected all claims as obvious, two claims as lacking written description, several other claims as indefinite and others for improper dependency. On appeal to the PTAB, the Board summarily affirmed the dependency and indefiniteness rejections, affirmed the obviousness rejection on the merits and reversed the written description rejection. Bhagat then appealed to the U.S. District Court for the Eastern District of Virginia, claiming the USPTO erroneously rejected her patent claims and asking for damages due to the Office’s bad faith and for taking her property.

Patent Filings Roundup: Financed IP Edge Patents Back From the Dead; Toyota Challenges InfoGation Patents at PTAB

In a nod to Mark Twain’s famous quote, the rumors of the death of IP Edge are greatly exaggerated. It appears the prolific NPE aggregator has either sold or transferred at least one portfolio (and potentially up to 40) to a new entity, Inferential Capital, LLC, which after hiring, has begun asserting again—more below.  On the stats, it was a slightly below average week at both the Patent Trial and Appeal Board (PTAB) and in the district courts. At the PTAB, there were 25 new patent filings, with one post-grant review and 24 inter partes reviews (IPR). 

Ninth Circuit Says District Court Properly Canceled Cannabis Trademark Applications for Lack of Bona Fide Intent to Use

On April 1, the U.S. Court of Appeals for the Ninth Circuit issued a ruling in BBK Tobacco & Foods LLP v. Central Coast Agriculture, Inc. affirming a lower court’s ruling that canceled trademark applications pending at the U.S. Patent and Trademark Office (USPTO). The Ninth Circuit panel majority determined that the district court had statutory authority to invalidate a trademark application for no bona fide intent to use over a dissent authored by U.S. Circuit Judge Patrick Bumatay, who argued that district courts lacked the authority to cancel trademarks before registration by the USPTO.

CAFC Sends Janssen Schizophrenia Treatment Claims Back to District Court for New Obviousness Analysis

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled in a precedential decision authored by Judge Prost on Monday that certain claims of Janssen Pharmaceuticals Inc.’s patent for a schizophrenia drug are not indefinite but vacated and remanded the district court’s finding that Teva Pharmaceuticals had not proven all of the claims obvious.

No Presents for Gift Card Patent Owner from Federal Circuit

AlexSam, Inc. lost its patent infringement cases against Simon Property Group/Blackhawk Network and Cigna Corporation in two separate decisions issued by the U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday, April 1. AlexSam owns U.S. Patent No. 6,000,608, which discloses a “multifunction card system.” Essentially, the invention is a type of gift card that “can serve a number of functions, thus allowing the consumer to have one card which may act as their card for financial transactions, long-distance telephone calls, loyalty information, and medical information.”

VLSI-PQA Saga Continues in Virginia County/ Federal Courts

After VLSI Technology filed a complaint against Patent Quality Assurance (PQA) and its representative, Joseph Uradnik, in the Circuit Court of the City of Alexandria in late January this year, Uradnik recently filed a Notice of Removal with the U.S. District Court for the District of Alexandria, Alexandria Division, arguing the case should be tried there instead. VLSI’s complaint alleged abuse of the inter partes review (IPR) system and is seeking approximately $3.2 million in legal fees from Uradnik, according to the March Notice of Removal.

Federal Circuit Clarifies WesternGeco Approach to Foreign Damages

In a lengthy, precedential opinion authored by Judge Taranto, the U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday, March 27, affirmed a district court’s decision invalidating the claims of two of Trading Technologies’ (TT’s) patents as being patent ineligible under Section 101 and also clarified the application of a 2018 Supreme Court ruling on foreign damages. Harris Brumfield, as Trustee for Ascent Trust, is the successor to TT, which sued IBG LLC in 2010 for infringement of four patents: U.S. Patent Nos. 6,766,304; 6,772,132; 7,676,411; and 7,813,996. All of the patents’ specifications describe “assertedly improved graphical user interfaces for commodity trading and methods for placing trade orders using those interfaces.”

CAFC: Jury Instructions Must Address Each Objective Indicia of Nonobviousness Raised by Patent Owner

On March 27, the U.S. Court of Appeals for the Federal Circuit issued a precedential ruling in Inline Plastics Corp. v. Lacerta Group, LLC, on appeal from the District of Massachusetts. Judge Richard Taranto authored the opinion and held that an improper jury instruction given at trial by the district court required vacatur of the court’s final judgment that Inline’s patent claims were invalid for obviousness. The Federal Circuit remanded that portion of the case for a new trial so that the jury can properly consider each objective indicia of nonobviousness raised by Inline at trial.

Consumers Target Apple Following DOJ Antitrust Suit

A number of individual consumers have filed suit against Apple, Inc. in California and New Jersey courts, piggybacking on the U.S. Department of Justice’s (DOJ’s) March 21 complaint accusing Apple of “broad-based, exclusionary conduct” amounting to monopolization of the smartphone market. The DOJ’s sweeping complaint included a number of U.S. states as plaintiffs and charged Apple with “thwart[ing] innovation” and throttle[ing] competitive alternatives via its practices around the iPhone platform.

Second Circuit Okays Hard Seltzer Sales in Blow to Modelo

The U.S. Court of Appeals for the Second Circuit on Monday, March 25, affirmed a district court’s denial of summary judgment to beer company Modelo, owned by AB InBev, which alleged that sublicensee, Constellation Brands, had violated the terms of a licensing agreement to sell Modelo beer products in the United States. Modelo argued that Constellation violated the sublicense, which defined “Beer” as “beer, ale, porter, stout, malt beverages, and any other versions or combinations of the foregoing, including non-alcoholic versions of any of the foregoing,” by selling hard seltzer products under Modelo’s MODELO and CORONA trademarks.

Lourie Dissents from CAFC View that Heart Valve Transport was Not Infringing

The U.S. Court of Appeals for the Federal Circuit (CAFC) today held in a precedential split decision authored by Judge Stoll that the safe harbor provision of 35 U.S.C.§ 271(e)(1) applied to Meril Life Sciences’ importation of two demonstration samples of its transcatheter heart valves to a medical conference. Judge Lourie dissented, explaining that both the district court and the Federal Circuit have erred in interpreting the statute, specifically by failing to adequately consider the word “solely,” under which interpretation it could be reasonably held that Meril “at least partially” imported the valves for commercial reasons.

Patent Filings Roundup: Mixed Results in DraftKings IPRs; Key Patent Innovations Entity Launches First Campaign Asserting Former BlackBerry Patents; Pointwise Ventures Aims for Numerous Targets

It was a below-average week in both the Patent Trial and Appeal Board (PTAB) and in district courts this week for new patent filings, with only 27—all inter partes review (IPR)—at the PTAB and 47 new filings in district court…. The PTAB issued institution  decisions in 16 proceedings this week, denying institution in two IPRs (both on the merits) and ordering institution in 12 IPRs and two post-grant reviews (PGR). Instituted proceedings include two IPRs filed by Palo Alto Networks and Keysight Technologies challenging one Centripetal Networks patent; two IPRs filed by Samsung Electronics Co., challenging two Headwater Research Patents; and two IPRs filed by Motorola Solutions Inc., challenging two Sta Group LLC patents.