Posts in District Courts

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion on Monday that reversed and vacated in part a previous lower court ruling in a patent case related to fuel tank sensors. In 2020, SSI Technologies filed a lawsuit against Dongguan Zhengyang Electronic Mechanical LTD (DZEM), alleging infringement of two patents that covered fuel tank sensor technology. SSI accused DZEM of producing systems to reduce emissions for diesel truck engines that infringed U.S. Patent Nos. 8,733,153 and 9,535,038. In September 2021, a Wisconsin district court dismissed the patent infringement claims by SSI, as well as DZEM’s counterclaims that the patents were invalid.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision affirming a Delaware court’s grant of summary judgment for Elysium Health that the asserted claims of ChromaDex, Inc.’s patent on an isolated form of vitamin B3 are directed to unpatentable subject matter under Section 101. Judge Prost authored the opinion. ChromaDex sells dietary supplements embodying the patent, which it licenses from Dartmouth College, and sued Elysium for patent infringement in 2018. Elysium moved for summary judgment that the claims were invalid under Section 101 and the district court agreed, finding that the claims were directed to a natural phenomenon, specifically, “compositions comprising isolated [NR], a naturally occurring vitamin present in cow milk.”

Luxury fashion brand Hermès won their trademark lawsuit against Mason Rothschild, the creator of the non-fungible tokens (NFT) MetaBirkins, on Wednesday. The trial was the first legal case that tested the bounds of artistic expression in NFTs against the country’s intellectual property laws. A nine-member New York jury ordered Rothschild to pay Hermès $110,000 for infringing on the luxury brand’s trademark, and $23,000 for cybersquatting. The jury ruled that Rothschild had to pay the cybersquatting damages because he used a domain name confusingly similar to that of Hermès.

In February 2020, ParkerVision filed a patent infringement lawsuit against Intel in Judge Alan Albright’s Waco, Texas, courthouse in the Western District of Texas.  Only three years later, and through the pandemic, today, the case settled all pending matters. ParkerVision still has remaining patent infringement cases in process against TCL, LG, MediaTek and RealTek in Judge Albright’s court.  A settled case is the best way to close a patent infringement dispute. It not only reduces costs for the parties, but it also reduces the court’s burden of a trial. When the parties agree to settle, everyone goes home happy.

In June 2020, a few months into the pandemic, a group of four large publishing houses—Hachette Book Group, HarperCollins Publishers, John Wiley & Sons, and Penguin Random House (collectively, the Publishers)—sued Internet Archive (IA) in the Southern District of New York for “willful mass copyright infringement.” The spat centers around IA’s Open Library project, which scans millions of physical books and delivers them digitally across the globe for free to anyone with an internet connection. IA proclaims that the “ultimate goal of the Open Library is to make all the published works of humankind available to everyone in the world,” but it conspicuously fails to mention that its utopian vision doesn’t include getting permission from copyright owners before offering their works on its virtual bookshelves. IA argues before the court that it doesn’t need permission because its actions qualify as fair use under the dubious new theory of controlled digital lending (CDL), which it claims to be “fundamentally the same as traditional library lending” since it “poses no new harm to authors or the publishing industry.”

It was a relatively average week for patent filings, with 58 district court complaints and 19 new Patent Trial and Appeal Board petitions filed—that’s a tad low—all inter partes reviews (IPRs). There were more fake meat IPRs filed against Impossible Foods by Motif Foodworks; no discretionary denials last week; lots of frequent litigants saw IPRs instituted against asserted patents this week; unknown Qualserve Solutions LLC sued Samsung on what appears to be standard-essential LTE networking functions, though it’s unclear how handsets would exactly infringe; AGIS and Verizon appear to have settled; Speir Technologies [Magentar Capital] went down the line and hit TCL (after reportedly offering a five-year RPX license to settle all Magnetar suits with their members).

During the PTAB Masters 2023 program, which was held this week on Tuesday and Wednesday at IPWatchdog’s headquarters in Ashburn, Virginia, former U.S. Patent and Trademark Office (USPTO) Director David Kappos explained on a panel about potential reform of the Patent Trial and Appeal Board (PTAB) that the PTAB was meant to be an alternative to district court, but “that hasn’t worked out.” Kappos was Director during the enactment and implementation of the America Invents Act (AIA), which established the PTAB.

Earlier this month, patent owner Cellspin Soft filed a motion for recusal  under 28 U.S.C. § 455 seeking the vacatur of a summary judgment order entered in the Northern District of California by U.S. District Judge Yvonne Gonzalez Rogers releasing several defendants from infringement liability, including Fitbit. Cellspin Soft’s motion points to several financial interests between Judge Gonzalez Rogers and Fitbit’s parent company Google, including business relationships developed by Judge Gonzalez Rogers’ husband through McKinsey & Company, as requiring recusal under Section 455, a statute that was recently raised by a petition for writ denied last December by the U.S. Supreme Court.

As economists predict market slowdowns, companies focus on the need to protect their market share by enforcing their intellectual property (IP) rights or possibly monetizing it to bring value to their balance sheet. A company’s value, reputation, and success can be directly tied to its intellectual property, and therefore, it is critically important to safeguard that IP. According to the United States Patent and Trademark Office (USPTO), economic growth is driven by innovation and supported through intellectual property. Thus, it is essential that we study the relationship that exists between innovation-related growth and the trends in IP data.

On January 24, the U.S. District Court for the Southern District of New York held EscapeX IP LLC’s U.S. Patent No. 9,009,113 patent ineligible as being directed to an abstract idea. The patent covers a process for allowing users to upload “dynamic albums” to be stored on their devices. The district court granted Block, Inc.’s (better known as music streaming platform Tidal) motion to dismiss the patent infringement suit pursuant to Rule 12(b)(6) of the Federal Rules of Civil Procedure. According to the district court opinion, the patent’s specification states that “the patent seeks to remedy certain problems that currently exist with music streaming, including artists’ inability to effectively monetize their music, their lack of control over content once users have downloaded it, and the disconnect between streaming services and artists’ social media pages.”

Bristol Myers filed a lawsuit Monday claiming AstraZeneca has infringed on a patent related to its Yervoy cancer drug. The pharmaceutical company launched the suit in the United States District Court for the District of Delaware. Bristol Myers claimed AstraZeneca’s Imjudo cancer treatment infringes on its patent and that AstraZeneca failed to first obtain a license or permission. The cancer treatment in question is known as cancer immunotherapy, which according to the lawsuit “represents a scientific breakthrough that has revolutionized cancer treatment by manipulating a patient’s immune system to eliminate cancer cells.” Yervoy has been approved by the U.S. Food and Drug Administration (FDA) to treat melanoma, renal cell carcinoma, colorectal cancer, hepatocellular carcinoma, non-small cell lung cancer (NSCLC), malignant pleural mesothelioma, and esophageal cancer, either alone or in combination with the company’s drug, Opdivo.

Brooks Sports, a sports apparel company that was sued by Puma SE and Puma North America, Inc. (for patent and trademark infringement in Indiana, won its motion to transfer the case to a new district court on January 20. Judge Richard L. Young of the United States District Court for the Southern District of Indiana ruled Friday that the case will be transferred to the Western District of Washington. Brooks Sports’ headquarters is based in Seattle, Washington. Brooks argued that moving the case closer to its base would be convenient for both parties as well as witnesses. Judge Young agreed and cited Puma’s lack of presence in Indiana as another supporting reason to move the case to Washington.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today denied General Motors’ petition for a writ of mandamus seeking to compel Judge Alan Albright to transfer a patent infringement case brought against GM by Intellectual Ventures (IV) to the U.S. District Court for the Eastern District of Michigan. IV sued GM in Albright’s Western District of Texas court for infringing 12 patents covering services and products installed in GM cars, including certain features of GM’s OnStar service. GM moved to transfer the case to Michigan, arguing that “the employees most knowledgeable about the design and development of the accused products and certain third-party component suppliers” are based there. IV countered that GM has “an IT Innovation Center” in Austin, Texas, where employees knowledgeable about the accused technology work.

The U.S. Court of Appeals for the Federal Circuit (CAFC) ruled today in a split precedential decision authored by Judge Reyna that a district court properly found Personalized Media Communications’ (PMC) patent unenforceable due to prosecution laches. Judge Stark dissented, arguing that, although he agreed PMC’s delay in prosecuting its patent was “unreasonable and inexcusable,” Apple failed to establish that it suffered prejudice during the period of delay. PMC sued Apple in the U.S. District Court for the Eastern District of Texas in 2015, alleging that Apple’s digital rights management software, FairPlay, infringed claim 13 of PMC’s U.S. Patent No. 8,191,091. A jury found that Apple infringed at least one of claims 13-16, but in a subsequent bench trial the district court found that the patent was unenforceable due to prosecution laches under Hyatt v. Hirshfeld.