Posts in District Courts

Novartis is currently involved in a multi-district patent litigation campaign to block generic entrants for Entresto®, which is Novartis’ blockbuster heart medication. In the fall of 2022, Novartis went to trial on the validity of one of the asserted patents, U.S. Patent No. 8,101,659 (“the ‘659 patent”). On July 7, 2023, the district court invalidated the patent for lack of written description despite rejecting an enablement defense based upon the same evidence. The district court’s decision highlights a clear tension between claim construction and enablement that, if left to stand, could permit pharmaceutical companies to block lower-cost generic medications with patents they did not actually invent.

Last week, comedian Sarah Silverman and authors Christopher Golden and Richard Kadrey sued OpenAI in a U.S. district court, alleging the company’s generative AI product, ChatGPT, infringes on their copyrighted content. In addition to copyright infringement, the trio also claimed that the AI company violated the Digital Millennium Copyright Act (DMCA), unfair competition laws and unjustly enriched the company. The lawsuit accuses OpenAI of “copying massive amounts of text” used to train ChatGPT to produce new text from prompts. Language models like OpenAI rely on datasets of text or other media to train its generative capabilities.

The U.S. Court of Appeals for the Federal Circuit today issued a precedential opinion that said claim preclusion does not apply to allegations of induced infringement based on an earlier finding of direct infringement. The case involves U.S. Patent No. 8,206,987, owned by Inguran, LLC and directed to “a method for sorting bull sperm cells according to a specific DNA characteristic in order to preselect the gender of a domestic animal’s offspring,” according to the opinion. Inguran does business as STGenetics (ST). ST has been involved in litigation with “bull stud” company, ABS Global, Inc., since 2014.

On June 28, a group of 16 individuals filed a class action complaint in the Northern District of California against generative artificial intelligence (GAI) developer OpenAI on several alleged violations of federal and state law on privacy, unfair business practices and computer fraud. The class action lawsuit’s discussion on property interests in consumer data underscores the intellectual property issues that have arisen since the advent of generative AI platforms like ChatGPT, which scrapes personal data and IP-protected material to train its GAI systems.

On June 14, a series of 17 music publishers, members of the National Music Publishers’ Association (NMPA), filed a lawsuit in the Middle District of Tennessee against the social media platform, Twitter. The music publishers’ suit alleges claims of direct, vicarious and contributory copyright infringement by Twitter involving about 1,700 copyrighted songs, many of which continue to remain accessible in…

In what may foreshadow upcoming changes to case allocations in the Western District of Texas, Judge Alan Albright of the Waco Division appears to have revived his former practice of retaining cases transferred from the Waco Division to the Austin Division following granted Section 1404 motions (i.e., convenience transfers). In his first years on the bench, Judge Albright habitually retained cases transferred out of Waco to the “sister” Austin Division on his personal docket. As one of the more notable examples, all three of the (much-covered) VLSI v. Intel litigations were transferred to Austin and retained by Judge Albright; two of the three cases were then retransferred back to Waco to allow trial to timely proceed, notwithstanding COVID-related closures in Austin.

On June 9, the U.S. Chamber of Commerce and several affiliate organizations filed a lawsuit in the Southern District of Ohio raising a series of constitutional challenges to provisions of the Inflation Reduction Act (IRA). At issue in the lawsuit are several statutes granting the U.S. Department of Health & Human Services (HHS) the authority to set prices for Medicare drugs. The U.S. Chamber is challenging a lack of oversight for so-called “negotiation” procedures as well as an onerous excise tax on several grounds, including separation of powers and due process violations.

On Tuesday, the U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision affirming a district court ruling that denied attorney fees to oil drilling equipment company, FMC Technologies. OneSubsea, a competitor in the offshore oil extraction industry, originally sued FMC for patent infringement in 2015; FMC subsequently countersued. At the heart of the patent infringement dispute was whether fluid flows through FMS’s device, as in the OneSubsea patent.

Real estate data firm CoStar and real estate digital marketplace CREXi are currently engaged in a high-profile intellectual property fight. Costar, which runs Apartments.com, alleges that CREXi is violating the Digital Millennium Copyright Act (DMCA) by using its images on Crexi.com without regard to its terms of service. The company has gone so far as to say that “CREXi is attempting to build its own online commercial real estate marketplace and auction platform by free-riding on CoStar’s billions of dollars of investments and the thirty-plus years of hard work by CoStar’s employees.” CrEXi, on the other hand, argues that all the images on the site are uploaded at brokers’ (not CrEXi’s) direction and thus the company can’t be held liable for IP violations. 

U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Pauline Newman yesterday filed a complaint in the United States District Court for the District of Columbia against CAFC Chief Judge Kimberly Moore and Judges Prost and Taranto, as members of the Special Committee of the Judicial Council of the Federal Circuit appointed by Moore to investigate Newman. The complaint called Moore’s March 24 Order characterizing Newman as being unfit to carry out her duties on the court “riddled with errors” and cited 12 counts warranting claims for relief.

United States Patent and Trademark Office (USPTO) Director Kathi Vidal issued a sua sponte Director Review decision on Tuesday explaining that the Patent Trial and Appeal Board’s (PTAB’s) reading of the inter partes review (IPR) statute was incorrect, and directing the Board to revisit a petition brought by Volvo Penta of the Americas, LLC and to analyze the Fintiv factors in view of a parallel district court proceeding.

The U.S. Court of Appeals for the Federal Circuit (CAFC), in a precedential decision, today reversed a district court holding that an inventor should be added as a joint inventor for his contributions to a patent for methods of pre-cooking bacon and meat pieces. The CAFC said the inventor’s contribution did not satisfy the three-part test articulated in Pannu v. Iolab Corp. because the contribution was “insignificant in quality.”

Brand owners frequently encounter significant challenges in obtaining federal trade dress registration. The recent ruling in the Eastern District of Virginia confirmed that TBL Licensing, LLC, the brand owner of Timberland boots, was not an exception to this struggle. Unlike a word mark, a product design can never be inherently distinctive as a matter of law because consumers are aware that such designs are intended to render the goods more useful or appealing rather than identifying their source. Wal-Mart Stores, Inc. v. Samara Bros., Inc., 529 U.S. 205, 212-213 (2000). In order to obtain a federal trademark registration for a product design, the applicant must establish secondary meaning.

It was another low patent-filing week at the Patent Trial and Appeal Board (PTAB), with just 12 new petitions (about half of last year’s average); district court filings were average with 47 new filings. Acacia subsidiary Atlas Global received more petitions on patents that are part of its broad assertion campaign; some Centripetal patents were instituted by a defendant in that going campaign; Intellectual Ventures appears to have settled the latest round of automotive litigation before Judge Albright, ending that case; and IP Edge continues to not file new cases and settle old ones, in the wake of the end of the year discovery battles. Zillow was instituted on patents IBM had asserted or threatened; and the Vidal administration is the latest recipient of yet another Gil Hyatt suit.

The Dominion Voting Systems lawsuit against Fox News attracted lots of attention. Claims of defamation, damages of $1.6 billion, the role of the First Amendment, and the press’ right to free speech were all key talking points around this lawsuit. What was not a part of these discussions were the implications to Fox’s trademark, FOX NEWS®. This case, even though it just settled, may have just cost Fox News a lot more than the $787.5 million settlement and the subsequent departure of Tucker Carlson—it could cost their name and brand.