Posts in District Courts

There are a large number of trademarks owned both by the Cubs and by MLB which are being infringed upon, according to the suit. The Cubs want to prevent the sale of goods including indicia associated with the team including famous former players like Ryne Sandberg and Ernie Banks; references to team successes like 1908, the last year in which the Cubs won the World Series; traditions like the “W” flag or “Go Cubs Go”; broadcast personalities; and famous Cubs managers. The Cubs are also looking to block goods depicting Wrigley Field as the Cubs own word and design marks related to the stadium, its iconic marquee and its ivy-covered red brick walls.

American water treatment company Purolite of Bala Cynwyd, PA, recently filed a federal complaint over misappropriated trade secrets against the American division of Japanese conglomerate Hitachi (TYO:6501). Purolite alleges that Hitachi broke business agreements by sharing Purolite’s confidential trade secrets related to the decontamination of water including radioactive waste with other companies in the hopes of securing a major contract. Purolite filed its lawsuit in the U.S. District Court for the Southern District of New York (S.D.N.Y.).

On Monday, September 12th, Sid Bernstein LLC, a company representing Bernstein who passed away in 2013, filed a lawsuit alleging copyright infringement on the use of the Shea Stadium footage in the recent documentary. The suit charges that Sid Bernstein is the sole owner of the Shea Stadium master tapes by virtue of being a producer of the concert event and the employer for hire of the Beatles. The infringement suit targets both Apple Corps, the multimedia corporation set up by members of the Beatles in 1968 and involved with producing the new documentary, and Subafilms Ltd. The case was filed in the U.S. District Court for the Southern District of New York (S.D.N.Y.).

Trader Joe’s sued Hallatt (d/b/a Pirate Joe’s) for trademark infringement in the Western District of Washington, invoking the court’s federal question and supplemental jurisdiction. Trader Joe’s alleged that: (1) Hallatt misled consumers into falsely believing Pirate Joe’s was authorized or approved by Trader Joe’s; (2) utilized a confusingly similar “South Pacific” trade dress for his Pirate Joe’s store; (3) displayed Trader Joe’s trademarks in connection with the sale of products at Pirate Joe’s; and (4) resold Trader Joe’s products without authorization and without adherence to Trader Joe’s’ strict quality control practices. Trader Joe’s claimed Hallatt’s behavior diluted its trademarks, confused consumers, and damaged Trader Joe’s reputation by associating it with high price, lower quality products. Trader Joe’s sought damages and to permanently enjoin Hallatt from reselling its goods or using its trademarks in Canada.

As the above cases illustrate, PTAB decisions have affected district court cases in different ways. Determining whether the use of a PTAB decision is likely to be permitted or will have any effect requires a multifactorial analysis that considers at least the nature of the PTAB outcome (e.g., final or preliminary), factors contributing to that outcome (e.g., whether they were based on the merits of the case), and potential drawbacks attached to the requested use (e.g., jury confusion). Additional considerations might include, for example, the level of sophistication of the technology already being considered by the jury, which might factor into a court’s analysis of the likelihood of jury confusion. Parties seeking to rely on PTAB decisions in district court should consider these factors. The AIA has only been in place for five years and the law in this area will continue to develop over the next several years.

On Wednesday, August 24th, the Patent Appeal and Trial Board (PTAB) issued decisions in two inter partes review (IPR) filings made against patents owned by private Israeli firm Yeda Research & Development Co. The company is the tech transfer arm of the Weizmann Institute of Science, a public research university located in Rehovot, Israel. The IPRs, which were filed by American pharmaceutical developer Mylan Inc. (NYSE:MYL), resulted in the invalidation of all claims in both Yeda patents. About a week later, on September 1st, PTAB invalidated a third patent owned by Yeda after another IPR challenge was filed by Mylan.

Three of the judicial emergencies, just less than 10 percent of all judicial emergencies in the U.S. federal court system, are in the U.S. District Court for the Eastern District of Texas (E.D. Tex.). With the judicial vacancies in E.D. Tex., the concern is that a growing docket of patent infringement cases could create a bottleneck for the court, greatly increasing the amount of time that it takes the court to issue a decision. Business litigation is typically given a backseat to criminal litigation in district courts as American law upholds a suspected criminal’s right to a speedy trial. The vacancies also naturally result in an increased percentage of U.S. patent infringement cases assigned to Judge Rodney Gilstrap. This January, we reported that Judge Gilstrap could be deciding as much as 20 percent of all patent infringement cases filed in U.S. district courts. The fact that one judge could be deciding as much as one-fifth of the patent infringement docket at the district court level seems a little less than democratic.

Nome, Alaska and San Juan, Puerto Rico are both home to a federal courthouse where, ostensibly, under the recent Acorda Therapeutics holding and subsequent court decisions, a generic pharmaceutical company will be subject to personal jurisdiction if they file an Abbreviated New Drug Application (ANDA) with the Food and Drug Administration (FDA). In Acorda Therapeutics, Inc. v. Mylan Pharmaceuticals, Inc., 817 F.3d 755 (Fed. Cir. 2016), the Federal Circuit held that an ANDA filer opens themselves up to nationwide personal jurisdiction merely by virtue of filing an ANDA application. This is a broad holding that, in effect, subjects a generic company to personal jurisdiction in any forum that has a district court.

The court decided to award enhanced damages in this case because of egregious behavior on behalf of Samsung, including attempts to copy the technology and demonstrably false testimony given by Samsung. For example, Samsung’s representatives testified under oath that they only became aware of Imperium IP’s patents in June 2014, when the infringement action was first brought to court. Depositions and other discovery proved this to be incorrect. One witness who worked at ESS Technologies, the company to which the ‘884 patent was first assigned, testified that Samsung sought specific information on anti-flicker and flash technology. It was also proven that Samsung had previously attempted to purchase the patents-in-suit from Imperium, concealing its identity through a patent broker. Instead of June 2014, the court found that Samsung knew about Imperium’s patents since at least April 2011.

On Wednesday, August 17th, respiratory health device developer ResMed Inc. (NYSE:RMD) of San Diego, CA, announced that it had filed multiple legal actions against Fisher & Paykel Healthcare (NZE:FPH) of Auckland, New Zealand. ResMed is alleging that multiple Fisher & Paykel products are infringing upon multiple patents and is seeking an injunction banning the importation of those products. ResMed filed actions with the U.S. International Trade Commission (ITC) and the U.S. District Court for the Southern District of California (S.D. Cal.) as well as courts in Germany and New Zealand.

Horizon Pharma filed an action for patent infringement against Actavis and Lupin Pharmaceuticals in response to the filing of Abbreviated New Drug Applications (ANDAs) by both defendants for a generic version of Pennsaid, a topical nonsteroidal anti-inflammatory drug (NSAID) marketed in the U.S. by Horizon. Both cases were filed in the U.S. District Court for the District of New Jersey.

On Tuesday, August 9th, Ed Sheeran was named as a defendant in a copyright lawsuit filed by three heirs of American singer-songwriter Lee Townsend. Townsend, who passed away in 2003, was Marvin Gaye’s co-writer for his famous song “Let’s Get It On.” The suit, which also lists among the defendants Warner Music Group, Atlantic Records UK, Sony/ATV Music Publishing and Amy Wadge, Sheeran’s co-writer on “Thinking Out Loud,” alleges that the song “copied the heart” of “Let’s Get It On” and repeated copyright infringing melodic, harmonic and rhythmic compositions throughout the song. The case, Griffin et al v. Sheeran et al, has been filed in the U.S. District Court for the Southern District of New York (S.D.N.Y.).

Global Interactive Media is attempting to enforce its rights on a patent which has expired. The ‘907 patent originally issued in October 2011, lapsed effective last October because of a failure to pay maintenance fees. Despite the expiration of the patent, Global is able to bring suit because of the six year statute of limitations on patent infringement actions. Because the patent was issued on October 4th, 2011, Global must use that as a starting date for any damage reward for patent infringement and doesn’t benefit from the full six year statute. As well, because the patent expired on October 4th, 2015, Global cannot seek damages for infringement occurring after that date.

A lack of written opinion in the Rule 36 affirmance issued by Federal Circuit wasn’t an issue for PCT’s counsel. “These types of results reflect a wholesale rejection of the laundry list of appellate issues Holland had attempted to raise,” Laurus noted. “Prompt resolution of this is better than some lengthy opinion that might issue months down the road.”

There is simply no reason for so many patent cases to wind up in a district with so little relation to those cases. Basic principles of equity and justice don’t vanish just because a patent is involved. The court hearing a patent case should have a real interest in the case, just like any tort or contract case. The Eastern District of Texas has literally created a local industry of patent litigation, intentionally or not. Even local businesses acknowledge it and exploit it. Patent venue reform is long overdue, and it’s something that Congress can and should get done.