Mealey's Intellectual Property

  • November 22, 2017

    Federal Circuit Sides With Apple, Affirms Patent Claim Construction

    WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals on Nov. 22 upheld the claim construction of various disputed terms proffered by a California federal judge in a win for Apple Inc. (Rembrandt Patent Innovations LLC, et al. v. Apple Inc., No. 16-2324, Fed. Cir.).

  • November 22, 2017

    Microsoft Seeks Inter Partes Review Of Remote Control Zoom Patent

    ALEXANDRIA, Va. — In a Nov. 17 petition for inter partes review (IPR) by the Patent Trial and Appeal Board, Microsoft Corp. challenged the patentability of seven claims of a patented remote control with an auto-zoom feature, which allows for easier button selection on a touch screen (Microsoft Corp. v. Koninklijke Philips N.V., No. IPR2018-00185, PTAB).

  • November 22, 2017

    Federal Circuit Vacates Relief, Orders New Trial On Patent Damages

    WASHINGTON, D.C. — Although affirming a California federal judge’s determination that various claims of a capacitor patent are not indefinite under Section 112 of the Patent Act, 35 U.S.C. § 112, the Federal Circuit U.S. Court of Appeals on Nov. 21 reversed an award of lost profits and grant of permanent injunctive relief in the case (Presidio Components Inc. v. American Technical Ceramics Corp., Nos. 16-2607, -2650, Fed. Cir.).

  • November 22, 2017

    On Remand, Texas Federal Judge Won’t Dismiss Copyright Infringement Claim

    HOUSTON — In a Nov. 21 ruling, a Texas federal judge interpreted the phrase “lawfully made under this title” as it appears in Section 109 of the Copyright Act, 17 U.S.C. § 109, to mean “that a copy is lawful if it was made in the United States in compliance with Title 17 or in a foreign country in a manner that would comply with Title 17 if United States copyright law applied” (Geophysical Services Inc. v. TGS Nopec-Geophysical Services, No. 14-1368, S.D. Texas, 2017 U.S. Dist. LEXIS 192803).

  • November 21, 2017

    Company’s Claims In Trade Secrets, Copyright Suit Survive Motion To Dismiss

    SHERMAN, Texas — A company has properly stated a claim for relief in seeking declaratory relief against several former employees and its direct competitor for alleged trade secret misappropriation and patent and copyright infringement, among other things, and its claims under the Copyright Act provide a federal district court with federal question jurisdiction, a federal judge in Texas ruled Nov. 20 in denying the defendants’ motion to dismiss (Performance Pulsation Control Inc. v. Sigma Drilling Technologies LLC, et al., No. 17-0450, E.D. Texas, 2017 U.S. Dist. LEXIS 191530).

  • November 21, 2017

    Copyright, Trademark Claims Survive Dismissal Request In Illinois Court

    CHICAGO — Efforts by two defendants to obtain dismissal of allegations they committed copyright and trademark infringement by copying and exhibiting photographs by the late Vivian Maier were unsuccessful on Nov. 20, when an Illinois federal judge deemed claims by a public administrator appointed to Maier’s estate upon her death in 2009 adequately pleaded (The Estate of Vivian Maier v. Jeffrey Goldstein, et al., No. 17-2951, N.D. Ill., 2017 U.S. Dist. LEXIS 191294).

  • November 21, 2017

    Delaware Federal Magistrate Judge: Don’t Dismiss Patent Case Against WhatsApp

    WILMINGTON, Del. — A Delaware federal magistrate judge on Nov. 20 recommended that allegations that WhatsApp Inc. infringed two electronic messaging patents should proceed, rejecting a request for dismissal on grounds of patent ineligibility (TriPlay Inc. v. WhatsApp Inc., No. 13-1703, D. Del., 2017 U.S. Dist. LEXIS 191330).

  • November 20, 2017

    Federal Circuit Remands Indefiniteness Holding By Delaware Federal Judge

    WASHINGTON, D.C. — A judgment of patent invalidity based upon findings that certain language in a patented catalytic conversion system is indefinite was reversed Nov. 20 by the Federal Circuit U.S. Court of Appeals (BASF Corporation v. Johnson Matthey Inc., No. 16-1770, Fed. Cir.).

  • November 20, 2017

    9th Circuit Affirms: Use Of ‘Empire’ Mark Protected By 1st Amendment

    SAN FRANCISCO — Two broadcasters were properly granted a summary judgment that their use of the name “Empire” is protected under the First Amendment to the U.S. Constitution, the Ninth Circuit U.S. Court of Appeals ruled Nov. 16 (Twentieth Century Fox Television, et al. v. Empire Distribution Inc., No. 16-55577, 9th Cir.).

  • November 20, 2017

    Federal Circuit: Patent Board Properly Rejected Application As Anticipated

    WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals on Nov. 17 turned away an inventor’s challenge to a decision by the Patent Trial and Appeal Board that rejected — as anticipated — various claims of a patent application (In re:  C. Douglass Thomas, No. 17-1100, Fed. Cir., 2017 U.S. App. LEXIS 23135).

  • November 20, 2017

    Federal Circuit Affirms Delayed Motion To Amend Dooms Patent Complaint

    WASHINGTON, D.C. — A Florida federal judge’s decision to dismiss a patent infringement complaint without prejudice following a plaintiff’s delayed efforts to add a co-inventor was upheld by the Federal Circuit U.S. Court of Appeals on Nov. 17 (Cobra International Inc. v. BCNY International Inc., et al., Nos. 16-2103, -2173, -2635, Fed. Cir., 2017 U.S. App. LEXIS 23133).

  • November 16, 2017

    Patent Board Priority Determination Disputed In Appeal To Federal Circuit

    WASHINGTON, D.C. — A decision by the Patent Trial and Appeal Board that granted priority was “logically inconsistent” with other findings by the board that the reference that triggered priority was not anticipatory of an interfering patent, the party asserting anticipation recently told the Federal Circuit U.S. Court of Appeals (Otonomy Inc. v. Auris Medical AG, Nos. 17-1850, -1880, Fed. Cir.).

  • November 17, 2017

    Distinctiveness, Infringement Of ‘Sturgis’ Trademarks Argued In 8th Circuit

    ST. LOUIS — A South Dakota organization affiliated with the Sturgis Motorcycle Rally tells the Eighth Circuit U.S. Court of Appeals in a Nov. 6 brief that a jury correctly found its “Sturgis” trademarks to be valid and infringed by the sale of unlicensed Sturgis items.  However, the plaintiff appeals a post-verdict ruling that vacated a damages award for the infringement (Sturgis Motorcycle Rally Inc. v. Rushmore Photo & Gifts Inc., et al., Nos. 17-1762, -1869, -2712 and -2731, 8th Cir.).

  • November 17, 2017

    Proper Adjustment Of Patent Term To Be Decided By Federal Circuit

    WASHINGTON, D.C. — The Federal Circuit U.S. Court of Appeals on Dec. 9 will hear oral arguments in a case that seeks to clarify the extent to which the U.S. Patent and Trademark Office (PTO) is permitted, under the Patent Term Adjustment (PTA) statute, 35 U.S.C. § 154(b), to reduce an applicant’s PTA (Supernus Pharmaceuticals Inc., et al. v. U.S. Patent and Trademark Office, No. 17-1357, Fed. Cir.).

  • November 17, 2017

    Tech Firm To High Court: Federal Circuit Can Review PTAB Patent Determinations

    WASHINGTON, D.C. — Opposing Google LLC’s petition for certiorari in a Nov. 9 brief, a mobile technology firm tells the U.S. Supreme Court that, per the America Invents Act (AIA), the Federal Circuit U.S. Court of Appeals has authority to review and reverse patent ineligibility determinations by the Patent Trial and Appeal Board (PTAB) made during a covered business method (CBM) review (Google LLC  v. Unwired Planet LLC., No. 17-357, U.S. Sup.).

  • November 17, 2017

    Singapore Jurisdiction Debated In Appeal Of Hotel Photos Copyright Suit

    NEW YORK — In a Nov. 1 reply brief, an intellectual property holding company tells the Second Circuit U.S. Court of Appeals that a trial court erred in dismissing its copyright infringement claims against a Singapore firm for forum non conveniens, arguing that the defendant’s business ties in the United States, as well as its acts of infringement, adequately established New York jurisdiction (The Wave Studio LLC v. General Hotel Management Ltd., et al., No. 17-1018, 2nd Cir.).

  • November 17, 2017

    Adult Site Operator Tells High Court Usenet Provider Benefitted From Infringement

    WASHINGTON, D.C. — The Ninth Circuit U.S. Court of Appeals mistakenly held that a usenet service provider did not profit from the millions of unauthorized copyrighted images on its fee-based websites, an adult website operator argues in a Nov. 8 reply brief to the U.S. Supreme Court, seeking a writ of certiorari to resolve what it says is a circuit split over a copyright holder’s duty to establish an infringer’s profits directly attributable to its works (Perfect 10 Inc. v. Giganews Inc., et al, No. 17-320, U.S. Sup.).

  • November 16, 2017

    Refusal To Register ‘Sensi’ Trademark Upheld By Federal Circuit

    WASHINGTON, D.C. — Findings by the Trademark Trial and Appeal Board that the “Sensi” trademark in Class 5 of the Trademark Classifications for Goods and Services for diapers would likely cause confusion with two previously registered marks for “Sensi-Care” for use in connection with a treatment for diaper rash were not erroneous, the Federal Circuit U.S. Court of Appeals ruled Nov. 13 (In re: P.T. Arista Latindo, No. 17-1292, Fed. Cir., 2017 U.S. App. LEXIS 22637).

  • November 16, 2017

    Rehearing By Patent Board Sought, Reliance On General Plastic Factors Disputed

    ALEXANDRIA, Va. — A recent ruling by the Patent Trial and Appeal Board that established a series of factors to consider when multiple petitions for inter partes review (IPR) of one patent are filed by one party should not have been relied on by the board in turning away a petition for IPR in October, the petitioner asserts in a Nov. 13 request for rehearing (NetApp Inc. v. Realtime Data LLC, No. IPR2017-01196, PTAB).

  • November 16, 2017

    Architectural Expert’s Testimony Restricted In Home Design Copyright Case

    TOLEDO, Ohio — An architectural expert in a home design copyright infringement action cannot opine that a company’s designs do not merit copyright protection because the opinion is an impermissible legal conclusion, though the expert can testify about the similarities and differences between the parties’ designs, an Ohio federal judge held Nov. 14 (Design Basics LLC v. Forrester Wehrle Homes, Inc., et al., No. 3:15-cv-00666, N.D. Ohio, 2017 U.S. Dist. LEXIS 188005).