Posts in Litigation

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.

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.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) earlier this week shot down a petition for writ of mandamus filed by Amazon.com, Inc. asking the court to vacate an Order by Judge Alan Albright of the U.S. District Court for the Western District of Texas denying Amazon transfer of a case to the Northern District of California. VoIP-Pal sued Amazon in the Western District of Texas, alleging infringement of its patents through the sale of Amazon’s “’communications platform,’ including the server structure, Alexa calling devices, and Alexa software applications running on those devices.” Amazon sought transfer to California, claiming that the middleware of the accused products was developed by employees based there. In its opposition, VoIP-Pal submitted evidence that “[t]echnical documentation relating to the work of the DeviceOS and Echo Platform Software teams is maintained at the Austin offices.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) today ruled in a precedential decision that the U.S. District Court for the Southern District of Texas incorrectly found the term “enlarged chamber” indefinite, but affirmed the court’s construction of another claim term. The case stems from Grace Instrument Industries, LLC’s May 19, 2020, suit against Chandler Instruments Company, LLC for infringement of its U.S. Patent No. 7,412,877 through the sale of Chandler’s Model 7600 viscometer. The ‘877 patent is titled “High Pressure Viscometer with Chamber Preventing Sample Contamination.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential order yesterday granted a petition for writ of mandamus vacating Judge Rodney Gilstrap’s transfer of two cases out of the Eastern District of Texas to California. The petition was brought by Stingray IP Solutions, LLP and was opposed by TP-Link Technologies, a Chinese company, which Stingray accused of patent infringement. Stingray first filed the patent infringement suits in the Eastern District of Texas and TP-Link moved to dismiss for lack of personal jurisdiction or to transfer the cases to the Central District of California pursuant to 28 U.S.C. § 1406. After the Texas court granted transfer under Section 1406, Stingray petitioned the Federal Circuit for mandamus “solely on the issue of whether TP-Link’s unilateral, post-suit consent to personal jurisdiction in another state (California) defeated application of Rule 4(k)(2).”

The U.S. Court of Appeals for the Federal Circuit (CAFC) in a precedential decision today vacated a Patent Trial and Appeal Board (PTAB) finding that certain claims of Google, LLC’s U.S. Patent Application No. 14/628,093 were obvious. The CAFC opinion, authored by Chief Judge Moore, said the U.S. Patent and Trademark Office’s (USPTO’s) arguments on appeal “cannot sustain the Board’s decision below because they do not reflect the reasoning or findings the Board actually invoked.” Google’s patent application has to do with methods for filtering the results of an internet search query such that only age-appropriate results for a user are displayed. At issue were two prior art references: Parthasarathy, which “discloses methods of filtering search results by comparing a “search-query-intent score” to a predetermined safety threshold” and Rose, which is titled “System and Method for Improving the Ranking of Information Retrieval Results for Short Queries.”

Tattoos have been around for millennia, but their popularity is increasing significantly. According to 2021 data, roughly 13% of Baby Boomers had at least one tattoo, compared to 32% of Generation X and 41% of Millennials. Other than disagreements about the appropriateness of visible tattoos in certain workplaces, tattoos generally cause few headaches for their owners, and certainly not legal headaches. That may no longer be the case, however, as tattoos become more common among celebrities and other high-profile individuals whose likenesses are commonly portrayed in digital media. While there has been relatively little litigation concerning tattoo copyrights, 2023 could be the year that changes.

Following a Motion for Recusal and Vacatur filed on December 30 by Centripetal Networks, Inc., a Patent Trial and Appeal Board (PTAB) judge has now withdrawn from an inter partes review (IPR) proceeding in a stated effort to “reduce the number of issues and simplify the briefing.” Centripetal filed the December 30 Motion in an IPR brought against it in November 2021 by Palo Alto Networks, which Cisco Systems, Inc. successfully petitioned to join. The Motion argued that Administrative Patent Judge (APJ) Brian McNamara created at least the appearance of actual bias in failing to provide “notice, divestiture, or any apparent attempt to recuse” himself from proceedings involving Cisco despite owning Cisco stock and being “paid a significant amount of money (apparently a share of the profits) from one of Cisco’s lobbyist law firms,” according to the Motion.

On January 3, a total of 14 amicus briefs and one motion for leave to participate in oral argument were filed with the U.S. Supreme Court on the question presented by Amgen Inc. v. Sanofi, on which the Supreme Court granted certiorari this past November. While organizations representing the most powerful interests in the technology industry supported the Federal Circuit’s holding that Amgen’s patent claims were invalid for lack of enablement, a wide swath of patent stakeholders are urging the Supreme Court to correct the enablement standard to continue the encouragement of genus patent claims. Below is a collection of arguments raised by several of the recent amicus filings from earlier this week.

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Wednesday issued two orders denying mandamus relief for petitioners seeking to end the U.S. District Court for the District of Delaware’s “judicial inquisition” concerning disclosure of their owners and third-party litigation funders. Chief Judge Colm Connolly’s standing orders on initial disclosures in patent litigation cases have been the subject of much controversy and are presently being appealed at the CAFC in a separate case. They require up front disclosures from companies in patent cases assigned to Connolly of 1) “the name of every owner, member, and partner of the party, proceeding up the chain of ownership until the name of every individual and corporation with a direct or indirect interest in the party has been identified”; and 2) the identity of any third-party litigation funders.

The patent world is trained on the upcoming Supreme Court Amgen v. Sanofi case. That case is the first time in over 75 years that the Supreme Court is evaluating the meaning and scope of the enablement requirement of 35 U.S.C. § 112. The case offers the Court an opportunity to correct a negative trend in enablement law that has made it more difficult to protect groundbreaking, pioneering inventions. Waiting in the wings, however, is an equally important Section 112 case: . There, the petitioner sought review on whether “the ‘written description of the invention’ [is] to be measured by the statutory standard of ‘in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use the same.’” As is apparent, Juno’s written description issue is highly intertwined with the Section 112 enablement issue in Amgen v. Sanofi.

The United States Patent and Trademark Office (USPTO) stayed active over the holiday period with several big announcements, and today Director Kathi Vidal continued that trend by designating as precedential the December 21 decision in Apple v. Zipit Wireless. Also in December, the United States Government Accountability Office (GAO) released its full report on the Patent Trial and Appeal Board (PTAB), recommending, among other suggestions, that the Office make public any policies and directives to judges that could impact substantive decision-making.