Posts in Courts

Bringing Unwilling Licensors to the Table

Some months ago, two courts in Germany granted injunctions against Oppo, one based on a standard essential patent (SEP), and another on a non-SEP related to Wi-Fi. Rather than cave to the demands of Nokia, Oppo has since decided to pull its products out of the German market. Since then, some commentators have claimed that this is another example of so-called “implementers” engaging in hold out. They point to the need for strong injunctive relief in order to force these “unwilling” licensees to the table.

Intel Asks Delaware Court to Dismiss $4 Billion VLSI Patent Suit

Intel Corp. has asked the United States District Court for the District of Delaware to throw out a $4.1 billion patent lawsuit from VLSI Technology in a filing unsealed Friday, December 9. Intel claimed that VLSI “has repeatedly failed to disclose its full ownership as required,” and the company’s “opaque ownership structure is an entrenched feature of hedge fund-driven patent litigation.” In its filing, Intel argued that VLSI has failed to comply with U.S. District Judge Colm Connolly’s standing order for the company to identify “every individual and corporation with a direct or indirect interest.”

High Court Asks Solicitor General for Views on Genius-Google Copyright Preemption Case

The U.S. Supreme Court today invited the Solicitor General’s views in a copyright case that asks the High Court to grant a petition on the question of whether the Copyright Act’s preemption clause allows a business “to invoke traditional state-law contract remedies to enforce a promise not to copy and use its content?” The petition was brought by ML Genius Holdings (Genius), an online platform for transcribing and annotating song lyrics, against Google and LyricFind, which Genius claims breached its website Terms of Service by “stealing Genius’s work and placing the lyrics on its own competing site, drastically decreasing web traffic to Genius as a result.”

Federal Circuit Rejects Mandamus Plea Seeking to Dodge Delaware Judge’s Disclosure Orders

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday denied a petition for writ of mandamus asking the Delaware district court to vacate an order to produce certain documents to ensure compliance with Chief Judge Connolly’s standing orders on initial disclosures in patent litigation cases. Nimitz Technologies LLC petitioned the CAFC asking it to vacate a November 10, 2022, order by the Delaware court demanding Nimitz produce documents including communications between Nimitz owner, Mark Hall, his counsel, and patent assertion entity IP Edge and the related entity, Mavexar. Following a failure to timely comply with the standing orders, Nimitz had initially told the court that Hall was the sole owner and LLC member of Nimitz and asserted in a statement that Nimitz “has not entered into any arrangement with a Third-Party Funder, as defined in the Court’s Standing Order Regarding Third-Party Litigation Funding Arrangements.”

Patent Owner Scores Partial Win Against Google at CAFC

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential decision partially reversing and partially affirming a Patent Trial and Appeal Board (PTAB) decision that had found Google failed to prove certain claims of Hammond Development International’s U.S. Patent No. 10,270,816 unpatentable. Hammond’s patent covers “a communication system that allows a communication device to remotely execute one or more applications.”

EU Unified Patent Court Delays Opening by Two Months

The European Union Unified Patent Court (UPC) announced this week that the court’s Sunrise Period will be delayed by two months. The Sunrise Period has a new planned opening date of March 1, 2023, with the entry into force of the UPC Agreement (UPCA) pushed to June 1, 2023. In an official announcement, Klaus Grabinski, President of the UPC Court of Appeal, and Johannes Karcher, Acting Chairman of the Administrative Committee, said, “the additional time is intended to allow future users to prepare themselves for the strong authentication which will be required to access the Case Management System (CMS) and to sign documents.”

Supreme Court Denies Centripetal’s Petition Asking for Clarification on Judicial Recusal Statue

The U.S. Supreme Court today denied certiorari in Centripetal Networks v. Cisco Systems, Inc., a case that asked the Court to consider the question “[w]hether placing stock in a blind trust satisfies [28 U.S.C.] §455(f) and, if not, whether…[it] constitutes harmless error under Liljeberg v. Health Services Acquisition Corp., 486 U.S. 847 (1988).” James Edwards, a consultant to Centripetal and to amici Eagle Forum ELDF and Committee for Justice, as well as head of amicus, Conservatives for Property Rights, wrote on IPWatchdog last week that Centripetal and other amici hoped the High Court would take the case to clarify the judicial recusal statute. The Federal Circuit’s June 2022 ruling “cast doubt upon the judiciary’s impartiality and [risks] public confidence in the judicial system,” Edwards wrote, summarizing the petitioner’s argument.

UK Judge Delivers Mixed Ruling on Copyright Infringement in the Famous Love Story that Inspired Doctor Zhivago

Anna Pasternak is the Claimant in a recent copyright case at the UK High Court of Justice and author of Lara: The Untold Love Story That Inspired Doctor Zhivago (“Lara”). Lara is a non-fiction, historical book that was published in the United Kingdom in August 2016. It is a love story of Pasternak’s great uncle, Boris Pasternak, poet and author of the book Doctor Zhivago, and his mistress and muse, Olga Ivinskaya, who is portrayed as Lara Antipova in Doctor Zhivago. The Claimant is also the owner of the copyright in a translation of extracts from a book called Légendes de la Rue Potapov” (“the Légendes Translation”). Lara Prescott is the Defendant in the case at issue and author of The Secrets We Kept (“TSWK”), a historical, fictional account of a late 1950s CIA operation, which used copies of Doctor Zhivago as propaganda against the Soviet Union. Prescott, who is named after Lara Antipova, has always been fascinated by the novel. TSWK was published both in the United States and the United Kingdom in September 2019.

Eleventh Circuit Rules for Viacom in FLORA-BAMA Trademark Case

The U.S. Court of Appeals for the Eleventh Circuit earlier this week ruled in favor of Viacom in a trademark fight over the media conglomerate’s Floribama Shore reality television show. MGFB, the company that filed the appeal, owns the “FLORA-BAMA” trademark and owns and operates the Flora-Bama Lounge on the border of Florida and Alabama. The company filed a cease-and-desist letter in 2017 when Viacom first aired Floribama Shore in 2017. The appeals court judges cited the First Amendment as protecting Viacom’s right to artistic use of “Floribama”. “Creative works of artistic expression are firmly ensconced within the protections of the First Amendment,” wrote the judges.

Considerations in Divided Infringement Based on Recent Case Law

Divided patent infringement—also called “joint infringement”—is a doctrine plaintiffs can use to allege infringement where more than one party may have participated in a patent’s claimed steps. While the fundamental rules here have been set since 2015, a few recent district court cases set out some new considerations for both plaintiffs and defendants. A handful of U.S. Court of Appeals for the Federal Circuit decisions have been instrumental in shaping this area of law. The Akamai v. Limelight Networks case clarified that a single entity can be found liable for infringement if it “directs or controls” another’s action or forms a joint enterprise. It also created a new test for finding joint infringement, if an entity conditions participation or receipt of a benefit on performance of the patented method, and controls the manner and timing of the performance. Later cases Eli Lilly & Company v. Teva Parenteral Medicines and Travel Sentry v. Tropp clarified how this “conditions or benefits” test applies in the context of pharmaceutical and mechanical method patents.

Michael Bynum Names New Defendants in Proposed Amended Complaint to 12th Man Copyright Lawsuit

On November 23, sportswriter Michael Bynum and his publishing label Epic Sports filed a motion for leave  to file a second amended complaint and a proposed second amended complaint in the Southern District of Texas. The filings seek to revive copyright infringement claims filed by Bynum against employees at Texas A&M University for their roles in unauthorized distributions of Bynum’s biography of E. King Gill, a former Texas A&M student who inspired the 12th Man tradition at Texas A&M, by adding several new defendants who were actually responsible for the unauthorized copying at issue in the case.

Federal Circuit: District Court Properly Struck Expert Testimony that Failed to Apply Agreed-Upon Claim Construction

The U.S. Court of Appeals for the Federal Circuit (CAFC) today issued a precedential opinion affirming a district court order that struck parts of an infringement expert report and also granted summary judgment of non-infringement to Valve Corporation. The CAFC held that it is proper to strike expert testimony that did not rely on the agreed upon claim construction adopted by the district court. Treehouse Avatar, LLC owns U.S. Patent 8,180,858, which relates to a method of presenting data based on choices made by users with respect to characters in a network site, such as choosing clothing and hairstyles for the characters. The case turned on the meaning of “character-enabled (CE) network sites” (“CE limitation”) in the claims, which the Patent Trial and Appeal Board (PTAB) had construed in an earlier inter partes review (IPR) proceeding to mean “a network location, other than a user device, operating under control of a site program to present a character, object, or scene to a user interface.”

SCOTUS to Consider Granting Centripetal’s Cert Petition in Patent Infringement Qua Judicial Recusal Case

The U.S. Supreme Court will this Friday, December 2, consider whether to grant certiorari in the case of Centripetal Networks Inc. v. Cisco Systems Inc. What began as a patent infringement case has swerved into judicial ethics waters, due to the ruling of the Federal Circuit Court of Appeals. The cert decision holds significant consequences, particularly for patent owners and inventors who find themselves the target of patent infringement, sue to assert their patent rights, and whom patent infringers then pull into a litigation vortex between federal courts and administrative tribunals at the U.S. Patent and Trademark Office (USPTO).

Juno Asks Supreme Court to Reconsider Denial of Petition on Section 112 Question in Light of Amgen Review

Following the denial of Juno Therapeutics’ petition to the U.S. Supreme Court earlier this month, Juno last week petitioned the High Court for rehearing, arguing that the grant of certiorari in Amgen v. Sanofi warrants reconsideration. Juno explained that the issues presented in the Amgen case “are tightly related, and the outcome in Amgen is likely to at least affect, if not be outcome-determinative of, this case.” Juno is asking that the Court grant the petition for rehearing, vacate the denial of certiorari, and hold the case pending the outcome in Amgen.

CAFC Says Burden of Reexamination Following Denied IPR Does Not Warrant Mandamus Relief

The U.S. Court of Appeals for the Federal Circuit (CAFC) last week denied a petition requesting mandamus relief to vacate the U.S. Patent and Trademark Office’s (USPTO’s) grant of a request for ex parte reexamination of Sound View Innovations’ U.S. Patent No. 6,708,213 by DISH Network LLC. The ‘213 patent covers a “Method for Streaming Multimedia Information Over Public Networks.” DISH originally petitioned the USPTO for inter partes review (IPR) of claim 16 of the ‘213 patent on the ground that it was anticipated and/or obvious based on two prior art references called Sen and Geagen.