Posts in Litigation

Google v. Oracle America, a case pending before the United States Supreme Court, is a seemingly never-ending battle, since 2010, between two Silicon Valley behemoths. But now that battle may finally be nearing its conclusion. On January 7, the first of the amicus briefs were filed, signaling that both sides are marshaling their arguments for one final push toward the…

A case now pending before the Ninth Circuit, LTTB LLC v. Redbubble, Inc., Docket No. 19-16464, has the potential to clarify the controversial doctrine of aesthetic functionality. Aesthetic functionality has puzzled courts for decades. Particularly before the U.S. Supreme Court issued its modern guidance on functionality in Inwood Labs., Inc. v. Ives Labs., Inc., 456 U.S. 844 (1982); TrafFix Devices v. Mktg. Displays, Inc., 532 U.S. 26 (2001), and Qualitex Co. v. Jacobson Prods. Co., 514 U.S. 159 (2d Cir. 2009), courts struggled with how to apply the aesthetic functionality doctrine and issued opinions that, in some instances, muddied the already murky aesthetic functionality waters. Perhaps the most notorious aesthetic functionality case is International Order of Job’s Daughters v. Lindeburg & Co., 633 F.2d 912 (9th Cir. 1980), a case that many observers believed to be abrogated by subsequent Supreme Court and Ninth Circuit opinions but that has recently continued to wreak havoc on trademark law.

On Tuesday, the Supreme Court heard oral arguments in Romag Fasteners v. Fossil, Inc., Fossil Stores, I. Inc., Macy’s Inc, and Macy’s Retail Holdings, Inc. to decide whether a successful trademark plaintiff must establish that infringement was willful as a hard prerequisite to an award of the infringer’s profits, rather than being just one of multiple factors to be weighed when determining entitlement to a profits award. Under the latter scheme, profits may be awardable even if the infringement was not willful. Taking the Justices’ comments at face value, it seems likely that Romag will prevail and profits may be disgorged for less-than willful infringement.

Last Friday, the Federal Circuit affirmed a district court decision that found for the CBS Corporation in its defense against infringement and invalidity as to three claims of U.S. Patent No. 8,112,504 owned by Personal Audio, LLC. While the jury initially found for Personal Audio, the Patent Trial and Appeal Board (PTAB) later invalidated the ‘504 patent and the district court ultimately entered final judgment for CBS. The ‘504 patent describes a system for organizing audio files, “by subject matter, into ‘program segments.’ The patent utilizes a “session schedule,” which allows a user to navigate through the schedule by skipping the remainder of a segment, restarting a segment, listening to bookmarked “highlight passages,” or switching over to a “cross-referenced position” in another segment.

On the morning of Monday, January 13, the U.S. Supreme Court heard oral arguments in Lucky Brand Dungarees Inc. v. Marcel Fashion Group Inc. The case asks the High Court to decide “whether, when a plaintiff asserts new claims, federal preclusion principles can bar a defendant from raising defenses that were not actually litigated and resolved in any prior case between the parties.” While the case originally involved allegations of trademark infringement, oral arguments indicated that the Justices of the Supreme Court will issue a decision with far-reaching implications on the question of what constitutes a single cause of action.

The Supreme Court this morning released its orders list, in which it denied all pending petitions for certiorari on cases concerning patent eligibility. The Court has now made it fully clear that it does not plan to wade back into the Section 101 debate, leaving it up to Congress to clarify the law. Thus—with an impeachment trial and presidential election looming this year—a quick 101 fix seems increasingly unlikely. The Court considered a number of petitions concerning Section 101 on Friday. Of them, Athena Diagnostics v. Mayo Collaborative Services was thought to have the best chance of being granted. In December, the United States Office of the Solicitor General (SG) weighed in on the petition in Hikma Pharmaceuticals v. Vanda Pharmaceuticals, recommending against granting cert in that case in favor of hearing one like Athena instead.

U.S.-based online outdoor goods retailer, Backcountry.com, has faced a significant social media backlash over the past month, with both customers and competitors publicly reacting to its aggressive trademark enforcement campaign. It all started when news broke that the brand had taken action against a huge number of smaller companies that happened to use the term “backcountry” in their names. Public documents revealed that Backcountry.com had been attempting to cancel trademarks against businesses using the term, filing lawsuits against a multitude of smaller companies over the past two years. The impact was far ranging, with disputed trademarks, product and business names including American Backcountry, Backcountry Babes, Marquette Backcountry Skis, Backcountry Denim Co., Backcountry Nitro, Cripple Creek Backcountry and many more.

On January 9, the Court of Appeals for the Federal Circuit (CAFC) affirmed a decision of the U.S. District Court for the Northern District of Illinois, holding claim 6 of U.S. Patent No. 8,648,106 (the ‘106 patent) invalid as obvious. The ‘106 patent, owned by Hospira, Inc. (Hospira), is one of many patents covering Hospira’s dexmedetomidine products under the brand Precedex, such as the ready-to-use Precedex Premix product. Hospira sued Fresenius Kabi USA LLC (Fresenius) for infringement of claim 6 of the ‘106 patent, over its filing of an Abbreviated New Drug Application (ANDA) regarding its ready-to-use generic dexmedetomidine product.

Writing about tips for trying patent jury trials is, in some ways, like teaching skills for hunting dinosaurs. To start, patent jury trials are challenging, which (presumably, at least) would be true for hunting a T-Rex. But patent jury trials have also trended toward the same fate as dinosaurs over the last several years. Creating the Patent Trial and Appeal Board (PTAB) and Inter Partes Review (IPR) process has shifted patent litigation from district court to the U.S. Patent and Trademark Office (USPTO). The now infamous patent “death squads” at the PTAB have mooted the need for many jury trials. At the same time, the Federal Circuit and district courts have used the Supreme Court’s Alice decision and Section 101 as a tool to dismiss large swaths of cases on the pleadings with no discovery, let alone the opportunity to offer evidence or call witnesses at trial. Finally, changes in the law on venue selection have limited patent holders’ ability to select a venue with an express reverence for the right to trial by jury, like the Eastern District of Texas. Thus, like the overall trend in civil cases in general, patent jury trials today are in decline compared with even the last decade.  

On January 6, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed the Patent Trial and Appeal Board’s (PTAB) decision that Google failed to prove Koninklijke Philips’ (Philips) U.S. Patent No. RE44,913 (the ‘913 patent) obvious. The patent describes a method for entering primary and secondary characters on the keypad of a device such as a handheld mobile device. After Philips sued Acer, Inc. and other companies for infringement based on devices that use Google operating systems, Google petitioned the PTAB for inter partes review (IPR) of the ‘913 patent and the board found for Philips. Google appealed the Board’s decision to the CAFC, which held that the Philips invention would have been obvious in light of the prior art.

In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the United States Supreme Court discussed legal principles of obviousness in the patent context. Justice Anthony Kennedy wrote for the Court: “Common sense teaches, however, that familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to fit the teachings of multiple patents together like pieces of a puzzle.” This simile, comparing obviousness analysis to the fitting together of pieces of a puzzle, has been referenced and quoted by a number of trial and appellate courts. Expert witnesses have used it in their testimonies. It also appears twice in the current Manual of Patent Examining Procedure (MPEP). With due respect to former Justice Kennedy, may we dispense with this terrible analogy? Although it has at least one redeeming aspect, the puzzle simile does more to confuse than to enlighten.

On December 27, U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Jimmie Reyna authored an opinion affirming the U.S. District Court for the District of Delaware’s finding that the asserted claims of U.S. Patent Nos. 9,265,760 (‘760) and 9,339,499 (‘499), both titled “Treating Pain in Patients with Hepatic Impairment,” held by Persion Pharmaceuticals LLC,  were invalid due to obviousness. The CAFC found no reversible error in the district court’s decision and therefore affirmed.

As the year winds down, IPWatchdog is running a series of articles on the top stories of 2019 and what’s ahead for the year to come. In Europe, all eyes will be on Brexit and its effect on IP rights, the Unwired Planet case, and the Skykick trademark decision, among others. Overall, IP law developments across the EU have offered decidedly more clarity for IP owners than in the United States this year. Here are the highlights:  

The pharmaceutical industry presents some of the most important and challenging issues lying at the intersection of the patent and antitrust laws. On the one hand, patents play a crucial role in the industry, which is unique in the cost and duration of reaching the market. But on the other, a complicated regulatory regime and the event of generic entry (which dramatically lowers price and which the brand firm has interest in delaying) opens the door for potentially anticompetitive behavior. One area where this tension has surfaced in recent years has involved the settlement of patent litigation. In 2013, in FTC v. Actavis, the Supreme Court held that agreements by which brand-name drug companies pay generics to settle patent litigation and delay entering the market could have “significant anticompetitive effects” and violate the antitrust laws.

On December 2, the U.S. Supreme Court heard oral argument in the matter of Georgia v. Public.Resource.Org, Inc. The issue on appeal was on whether annotations to the Official Code of the State of Georgia, which were prepared by Mathew Bender & Co under the supervision of Georgia’s Code Revision Commission, which was itself created by Georgia’s General Assembly, were capable of copyright protection, or whether they were an integral part of the laws of the State of Georgia, which, like all legislation, is part of the public domain and cannot be copyrighted. The outcome of this decision will affect legal publishing schemes in a number of states which, similar to Georgia, contract the work of preparing annotations to private sector companies, which then monetize those copyrights through a license fee structure. Indeed, concern for states’ publishing schemes led to the Solicitor General’s office and various other states joining in on the side of petitioner, the State of Georgia, who is seeking to establish that the annotations are subject to copyright. The case also presents a fascinating, almost philosophical discussion on the nature of annotations and the legal or persuasive force they should be afforded.