Posts in Courts

The Federal Circuit’s decision in Juno v. Kite undermines effective prosecution practice and ultimately patent enforcement. The Juno panel held that to satisfy the written description requirement, a patent needs to demonstrate to a skilled artisan that the inventors possessed and disclosed in their filing the full scope of every genus being claimed. By denying rehearing to the Federal Circuit’s 2021 decision on the scope of the written description requirement, Juno v. Kite demonstrates how once again, the courts never consider anything from a prosecutor’s point of view. Here’s why Juno v. Kite is bad for patent prosecution practice.

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.

Following United States Patent and Trademark Office (USPTO) Director Kathi Vidal’s December 2022 precedential decision that Patent Quality Assurance (PQA) abused the inter partes review (IPR) process in its case against VLSI Technology, PQA has filed a petition seeking mandamus relief in the matter with the U.S. Court of Appeals for the Federal Circuit (CAFC). Vidal ruled in December that PQA abused the IPR process by filing an IPR and threatening to join a separate IPR against VLSI in order to receive a payout from the technology firm. Vidal also found that PQA misrepresented an “exclusive engagement” with a witness, Dr. Adit Singh, who was involved in another IPR petition against VLSI from OpenSky. She wrote in the decision dismissing PQA from the IPR that, “though the behavior here may not be as egregious as that of OpenSky… I find that PQA’s behavior, nonetheless, amounts to an abuse of process.”

The U.S. Department of Justice (DOJ) and the Attorneys General of eight U.S. states on Tuesday announced they are suing Google for antitrust violations of the Sherman Act with respect to the tech company’s monopoly on digital advertising technology. The Attorneys General of California, Colorado, Connecticut, New Jersey, New York, Rhode Island, Tennessee, and Virginia joined the suit. In a 155-page complaint filed in the Eastern District of Virginia, the DOJ and Attorneys General explained that Google “has corrupted legitimate competition in the ad tech industry by engaging in a systematic campaign to seize control of the wide swath of high-tech tools used by publishers, advertisers, and brokers, to facilitate digital advertising.”

Last week, Novartis Pharmaceuticals followed through on its  September 2022 promise that it would appeal the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) June 2022 decision invalidating its patent for a dosing regimen for its multiple sclerosis drug Gilenya to the U.S. Supreme Court, after the CAFC denied its request to rehear the case.

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.

Last November, the U.S. Supreme Court granted a petition for writ of certiorari filed by famed whiskey brand owner Jack Daniel’s Properties. The petition filed by Jack Daniel’s appealed the U.S. Court of Appeals for the Ninth Circuit’s March 2020 ruling that a “Bad Spaniels” dog toy marketed by VIP Products was an expressive work entitled to First Amendment protections against trademark infringement liability under the Rogers test. On January 18, a series of 16 amicus briefs were filed with the Supreme Court, the vast majority of which urged the nation’s highest court to reverse the Ninth Circuit’s ruling and limit the application of the Rogers test to clearly artistic works and exclude consumer products that happened to have some humorous expression. Several amici also pushed back on the Ninth Circuit’s ruling that VIP Products’ use of Jack Daniel’s marks was noncommercial.

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.

Earlier this month, patent owner and casino game innovator New Vision Gaming & Development filed a reply brief in the U.S. Court of Appeals for the Federal Circuit in its latest bid to challenge the Patent Trial and Appeal Board’s (PTAB) institution of covered business method (CBM) review proceedings brought by gambling product company SG Gaming. New  Vision alleged violation of a forum selection clause in an agreement between the two parties and now also points to a final report of the U.S. Government Accountability Office (GAO) as further support for dismissal. New Vision’s most recent brief comes nearly two months after appellee SG Gaming and intervenor USPTO Director Kathi Vidal both filed briefs in the Federal Circuit backing the PTAB’s institution of CBM review proceedings.

The U.S. Supreme Court yesterday invited the U.S. Solicitor General to provide its views on Apple’s petition asking the High Court to clarify the proper application of estoppel in inter partes review (IPR) proceedings. The case stems from a February, 2022, decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in which the court issued a mixed precedential decision that affirmed, vacated, and remanded in part a decision by the U.S. District Court for the Central District of California. That ruling related to a patent infringement suit filed by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively “Broadcom) and Apple Inc.

Engagement in proactive IP litigation by global companies is the bedrock of trademark enforcement, and Adidas is no stranger to this strategy. Since 2008, this athleisure accessories manufacturer has consistently protected its intellectual property by signing over 200 settlement agreements and fighting more than 90 court battles. Most recently, on  January 12, 2023, Adidas’s efforts to sue Thom Browne Inc., a Zegna subsidiary, for trademark infringement of its ‘three-stripes logo’ was foiled. The damages claim of around $7.8 million, or £6.4 million, backfired on the German sportswear giant when it was denied by an eight-person Manhattan jury.

The U.S. Court of Appeals for the Federal Circuit (CAFC) today affirmed one district court decision and dismissed another as moot, finding that Riggs Technology Holdings, Inc.’s U.S. Patent No. 7,299,067 for remote education and training systems is patent ineligible as it is “plainly drawn to an abstract idea.” Judge Chen authored both opinions. Riggs sued Cengage Learning, Inc. in the U.S. District Court for the District of Massachusetts for infringement of the ‘067 patent, but the district court granted Cengage’s Motion to Dismiss based on patent ineligibility. The court held that the patent “is plainly drawn to an abstract idea,” and that “the concept underlying the claims of the ’067 patent—providing, managing, and/or documenting training completed remotely on a handheld device—is akin to those found in claims the Federal Circuit has deemed abstract and ineligible.”

A recent policy change at the U.S. International Trade Commission (ITC) provides a lesson in how to properly draft a key requirement in a Section 337 complaint. The ITC is a popular forum for companies facing unfair competition from imported goods that infringe intellectual property rights. Companies alleging unfair competition can file a complaint asking the ITC to institute what is called a Section 337 investigation and issue exclusion orders barring entry into the United States of the offending goods. To prevail in a Section 337 investigation, the complainant must show, among other things, it has made investments in the US to exploit its intellectual property—the “domestic industry” requirement.