Justia Intellectual Property Opinion Summaries

Heritage Alliance offers voter guides under the names “iVoterGuide” and “iVoterGuide.com.” In January 2019, the American Policy Roundtable (APR) filed for registration of the marks “iVoters” and “iVoters.com.” Heritage opposed APR’s registration, claiming that APR’s marks would likely be confused with Heritage’s marks, for which Heritage claimed priority of use. The Trademark Trial and Appeal Board (Board) of the United States Patent and Trademark Office (PTO) found that Heritage’s prior-use marks were not protectable because they were highly descriptive and had not acquired distinctiveness, and dismissed the opposition.The Board determined that Heritage had begun using its iVoterGuide marks well before APR’s first use date. However, the Board found that APR effectively conceded likelihood of confusion. Despite this, the Board ruled that Heritage’s prior-use marks were not protectable as trademarks because they were highly descriptive and had not acquired distinctiveness. The Board found that the marks were highly descriptive as they clearly described the service offered, and that Heritage’s evidence of acquired distinctiveness was insufficient.The United States Court of Appeals for the Federal Circuit reviewed the Board’s decision. The court affirmed the Board’s findings that the iVoterGuide marks were highly descriptive and had not acquired distinctiveness. The court found that the Board’s determination was supported by substantial evidence, including the descriptive nature of the marks and the limited additional evidence of acquired distinctiveness. The court concluded that the Board’s decision to dismiss the opposition was correct and affirmed the dismissal. View "HERITAGE ALLIANCE v. AMERICAN POLICY ROUNDTABLE " on Justia Law

Azurity Pharmaceuticals, Inc. filed a lawsuit against Alkem Laboratories Ltd. under the Hatch-Waxman Act, alleging infringement of claims 5, 7, 8, and 9 of U.S. Patent No. 10,959,948. The patent pertains to non-sterile drinkable liquid formulations containing the antibiotic vancomycin. Alkem had submitted an Abbreviated New Drug Application (ANDA) for a product that Azurity claimed infringed on their patent.The United States District Court for the District of Delaware conducted a two-day bench trial and concluded that Alkem’s ANDA did not infringe any of the asserted claims of the ’948 patent. The court found that Azurity had disclaimed any presence of propylene glycol in the prosecution history of the ’948 patent. Since Alkem’s ANDA product contained propylene glycol, the court ruled in favor of Alkem. Azurity argued that a stipulation made during discovery should preclude Alkem’s disclaimer argument, but the district court found this interpretation unpersuasive.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court’s decision. The Federal Circuit agreed that Azurity had clearly and unmistakably disclaimed propylene glycol during the prosecution of the ’948 patent. The court also found that the stipulation regarding suitable flavoring agents did not preclude the application of the disclaimer. Consequently, the presence of propylene glycol in Alkem’s ANDA product established non-infringement of the ’948 patent claims. The Federal Circuit affirmed the district court’s judgment, holding that Alkem’s ANDA product did not infringe the asserted claims of the ’948 patent. View "AZURITY PHARMACEUTICALS, INC. v. ALKEM LABORATORIES LTD. " on Justia Law

Pemco and Boeing entered into a contractual "teaming arrangement" to bid for a 2008 Air Force contract, which included a master agreement, a work share agreement, and a non-disclosure agreement. The relationship soured, leading Pemco to sue Boeing for breach of contract and trade secret misappropriation under the Missouri Trade Secrets Act. The district court initially dismissed the trade secrets claim as time-barred but allowed the breach of contract claims to proceed, resulting in a jury awarding Pemco $2,132,038 in direct damages.On appeal, the Eleventh Circuit reversed the dismissal of the trade secrets claim, holding that the Missouri statute of limitations applied, not Alabama's. After remand, Pemco filed a new complaint asserting only the trade secrets claim. The district court dismissed this claim, concluding that the contractual limitation of liability provision barred all additional damages since Pemco had already recovered the maximum amount allowed for breach of contract.The Eleventh Circuit reviewed the case de novo and held that the limitation of liability provision in the master agreement applies to Pemco’s trade secrets claim, barring most categories of damages, including incidental, punitive, and consequential damages. However, the court found that the provision does not bar recovery for unjust enrichment, which Pemco had alleged. The court noted that unjust enrichment damages are distinct from the direct, out-of-pocket damages Pemco had already recovered and are not categorically barred by the limitation provision.The court reversed the district court’s dismissal of Pemco’s trade secrets claim and remanded the case for further proceedings, allowing Pemco to pursue recovery based on Boeing’s alleged unjust enrichment. The court denied Pemco’s request to reassign the case to a different district judge. View "Alabama Aircraft Industries Inc. v. Boeing Company, The" on Justia Law

In 2008, the plaintiff, ams-OSRAM USA Inc. (formerly Texas Advanced Optoelectronic Solutions, Inc. or TAOS), sued Renesas Electronics America, Inc. (formerly Intersil Corporation) in the Eastern District of Texas. TAOS alleged patent infringement and state-law claims of trade secret misappropriation and breach of a confidentiality agreement related to ambient-light sensors. The patent claim is no longer at issue. TAOS claimed that Intersil used confidential information disclosed during merger discussions to develop competing products.The district court entered a judgment in 2015 based on a jury verdict, awarding TAOS damages for trade secret misappropriation but not for breach of contract, deeming the latter duplicative. In 2018, the Federal Circuit affirmed Intersil’s liability for trade secret misappropriation on a narrower basis, vacated the monetary award, and remanded for further proceedings. The court also vacated the judgment denying contract damages as duplicative.On remand, the district court held additional proceedings, including a new jury trial. The court awarded TAOS $8,546,000 in disgorged profits for trade secret misappropriation, $17,092,000 in exemplary damages, and reasonable royalties for breach of contract totaling $6,637,693. The court also awarded prejudgment interest and attorneys’ fees. Both parties appealed.The United States Court of Appeals for the Federal Circuit affirmed the district court’s findings on the trade secret and contract claims, including the disgorgement and exemplary damages awards. However, the court reversed the finding that the trade secret became properly accessible in January 2006, determining the correct date to be February 28, 2005. The court affirmed the 26-month head-start period and the inclusion of profits from sales to Apple for the iPod Touch in the disgorgement award. The court vacated the prejudgment interest awards and remanded for further consideration of the appropriate accrual dates for interest on sales occurring after the complaint was filed. View "AMS-OSRAM USA INC. v. RENESAS ELECTRONICS AMERICA, INC. " on Justia Law

In 2018, DeWolff, Boberg & Associates, Inc. (DB&A), a management consulting firm, hired Justin Pethick as a regional vice president of sales. In 2020, Pethick accepted a job offer from The Randall Powers Company (the Powers Co.), a competitor. After Pethick joined the Powers Co., some prospective DB&A clients hired the Powers Co. DB&A alleged that Pethick stole its trade secrets and used them to poach clients.The United States District Court for the Northern District of Texas excluded DB&A’s damages expert under Daubert v. Merrell Dow Pharmaceuticals, Inc., and granted summary judgment to the defendants, citing DB&A’s lack of evidence of damages. DB&A appealed, contesting the exclusion of its expert and the summary judgment on its misappropriation of trade secrets claim.The United States Court of Appeals for the Fifth Circuit reviewed the case. The court noted that to prevail on a misappropriation of trade secrets claim under Texas law, a plaintiff must show that a trade secret existed, it was acquired through a breach of a confidential relationship or discovered by improper means, and the defendant used the trade secret without authorization. The court found that DB&A failed to identify specific trade secrets within its databases and did not provide evidence that Pethick or the Powers Co. used or disclosed any trade secrets. Consequently, the court affirmed the summary judgment dismissal of DB&A’s misappropriation claim on these alternative grounds. View "DeWolff, Boberg & Associates, Inc. v. Pethick" on Justia Law

Donald Forest submitted a patent application for an "Apparatus for Selecting from a Touch Screen" to the United States Patent and Trademark Office (USPTO) on December 27, 2016. The Patent Trial and Appeal Board (PTAB) affirmed in part the examiner’s rejection of certain claims under 35 U.S.C. § 103 and nonstatutory double patenting. Forest appealed this decision.The PTAB reviewed the case and upheld the examiner's rejection of certain claims in Forest's patent application. Forest did not dispute that his application was filed more than a year after the expiration date of any resulting patent, which would have been in 2015. The USPTO raised a jurisdictional issue, arguing that Forest had no personal stake in the appeal because he could not be granted enforceable rights by a patent with zero term. Forest argued that he would still acquire "provisional rights" under 35 U.S.C. § 154(d) if the USPTO issued him an expired patent.The United States Court of Appeals for the Federal Circuit reviewed the case and disagreed with Forest's interpretation of the statute. The court held that provisional rights are granted only when a patent would issue with exclusionary rights, meaning before its expiration date. Since Forest's patent would issue after its expiration date, he would not receive any enforceable rights. Consequently, the court dismissed the appeal. View "In Re FOREST " on Justia Law

Bigfoot Ventures Limited brought a shareholder derivative action on behalf of NextEngine, Inc. against Mark S. Knighton, ShapeTools, LLC, and NextEngine. Bigfoot alleged that the agreement between NextEngine and ShapeTools was not intended to benefit NextEngine or its shareholders. Bigfoot had a history of litigation against NextEngine, including disputes over loans and intellectual property (IP) rights.The United States District Court for the Central District of California dismissed Bigfoot’s suit, finding that Bigfoot could not fairly or adequately represent the interests of NextEngine’s shareholders as required by Federal Rule of Civil Procedure 23.1. The court considered the ongoing litigation between Bigfoot and NextEngine, which suggested that the derivative action was being used as leverage in other lawsuits. The court also found that Bigfoot’s personal interest in gaining control of NextEngine’s IP outweighed its interest in asserting rights on behalf of NextEngine.The United States Court of Appeals for the Ninth Circuit affirmed the district court’s dismissal. The Ninth Circuit clarified that courts are not required to assess each of the eight factors from Larson v. Dumke when determining plaintiff adequacy in a shareholder derivative action. The court held that the district court did not err in considering the ongoing litigation as an outside entanglement and found that the record supported the district court’s conclusion that Bigfoot was an inadequate plaintiff. The Ninth Circuit also held that the district court did not abuse its discretion by vacating the trial to hear the motion to dismiss, as it raised significant issues that needed to be resolved before trial. View "BIGFOOT VENTURES LIMITED V. KNIGHTON" on Justia Law

Dyson Technology, Ltd., a UK-based company, filed a trademark infringement lawsuit against multiple e-commerce stores for selling counterfeit Dyson products. Dyson sought remedies under the Lanham Act, which allows trademark holders to recover profits, damages, and costs from infringing parties. The defendants did not appear in court, leading to a default judgment in Dyson's favor. However, the district court awarded only $1,000 in statutory damages and denied Dyson's request to recover the infringing sellers' profits, stating that Dyson had only provided evidence of revenue, not profits.The United States District Court for the Northern District of Illinois, Eastern Division, handled the initial case. The court's decision to limit Dyson's award was based on its interpretation that revenue and profits are not the same, and it declined to assume that all revenue equaled profits.The United States Court of Appeals for the Seventh Circuit reviewed the case. The appellate court held that the district court erred in its interpretation of the Lanham Act. According to the Act, a prevailing plaintiff is entitled to the defendant's profits, and the defendant bears the burden of proving any costs or deductions. The appellate court found that Dyson's evidence of revenue was sufficient to establish profits, as the defendants did not provide evidence to the contrary. The court reversed the district court's decision and remanded the case for further proceedings, allowing the district court to adjust the award if deemed just based on the case's circumstances. View "Dyson Technology Limited v David 7 Store" on Justia Law

The case involves an appeal by the named inventors of U.S. Patent Application No. 11/005,678, which is directed to logistics systems and methods for the transportation of goods. The application was rejected by an Examiner under pre-AIA 35 U.S.C. § 102(e) as anticipated by a published patent application (Lettich) and under 35 U.S.C. § 103 as obvious over Lettich in view of another reference (Rojek). The inventors appealed the rejection to the U.S. Patent Trial and Appeal Board (Board).The Board initially reversed the Examiner's rejections but later granted the Examiner's request for rehearing, determining that Lettich did qualify as prior art under pre-AIA § 102(e). The Board then sustained the Examiner's anticipation and obviousness rejections. The inventors appealed the Board's decision to the United States Court of Appeals for the Federal Circuit.The Federal Circuit reviewed the case and found that the Board conducted an incomplete analysis in determining whether Lettich qualifies as prior art under § 102(e). Specifically, the court held that it is not sufficient to show that a single claim in the prior art application is supported by the provisional application; the specific portions of the application relied on in the rejection must also be supported by the provisional application. The court vacated the Board's decision and remanded the case for further analysis to determine whether the Lettich Provisional Application provides written description support for the specific disclosures in Lettich that the Examiner identified and relied on in the prior art rejections. View "In Re RIGGS " on Justia Law

Wash World Inc. sought to reverse a final judgment that it infringed Belanger Inc.'s 8,602,041 patent. Wash World contended that the district court erred in not construing three claim terms and that Belanger could not prove infringement under the correct constructions. Wash World also disputed the jury's decision to award Belanger $9.8 million in lost profits damages and requested a remittitur of approximately $2.6 million. Belanger argued that Wash World forfeited these issues by not preserving them in the district court.The United States District Court for the Eastern District of Wisconsin ruled that no construction was needed for the disputed terms and denied Wash World's motion for summary judgment of noninfringement. The jury found that Wash World’s Razor EDGE car wash system infringed Belanger’s patent and awarded $9.8 million in lost profits and $260,000 in reasonable royalties. The district court denied Wash World’s post-trial motions for judgment as a matter of law, a new trial, or remittitur.The United States Court of Appeals for the Federal Circuit reviewed the case. It found that Wash World forfeited its arguments regarding the constructions of "outer cushioning sleeve" and "predefined wash area" by not presenting them adequately in the district court. However, the court agreed with the district court's construction of "dependingly mounted" and affirmed the judgment of infringement.On the issue of damages, the Federal Circuit concluded that the jury's award improperly included $2,577,848 for convoyed sales, which lacked sufficient evidence of a functional relationship with the patented product. The court vacated the damages portion of the judgment and remanded with instructions to remit the damages by $2,577,848, resulting in a total award of $7,482,152 in favor of Belanger. View "WASH WORLD INC. v. BELANGER INC. " on Justia Law