WASHINGTON, D.C. — A California federal judge erred in denying a patent owner a jury trial on the calculation of a release payment based upon retrospective “fair, reasonable and non-discriminatory” (FRAND) rates for past unlicensed sales by appellees, the Federal Circuit U.S. Court of Appeals ruled Dec. 4 (TCL Communication Technology Holdings Ltd., et al., v. Ericsson Inc., et al., Nos. 2018-1363, -1732, Fed. Cir., 2019 U.S. App. LEXIS 36090).
ALEXANDRIA, Va. — A Blackberry Ltd. patent claiming a system and method for pushing information to a handheld device will be subject to upcoming inter partes review (IPR) by the Patent Trial and Appeal Board, the board announced Dec. 4 (Facebook Inc., et al. v. Blackberry Ltd., No. IPR2019-00941, PTAB).
WASHINGTON, D.C. — In a Dec. 4 order, the full Federal Circuit U.S. Court of Appeals rejected an Enzo Life Sciences Inc. petition for en banc rehearing of an August holding that retroactive application of inter partes review to patents issued before the Leahy-Smith America Invents Act (AIA) is not unconstitutional (Enzo Life Sciences Inc. v. Becton, Dickinson & Company, et al., Nos. 2018-1232, -1233, Fed. Cir.).
WILMINGTON, Del. — In a Dec. 4 holding, a federal judge in Delaware granted New Balance Athletics Inc. summary judgment on allegations the domestic distributor of Chinese counterfeit New Balance sneakers is liable for trademark infringement and dilution (New Balance Athletics Inc. v. USA New Bunren International Co. Ltd., No. 17-1700, D. Del., 2019 U.S. Dist. LEXIS 208759).
ALEXANDRIA, Va. — In a Dec. 3 ruling, the Patent Trial and Appeal Board found that a petitioner for inter partes review (IPR) demonstrated a reasonable likelihood that it will prevail with regard to allegations that at least one claim of a patented method for connecting a golf club shaft with a golf club head is obvious (Club Champion LLC v. True Spec Golf LLC, No. IPR2019-01148, PTAB).
WASHINGTON, D.C. — A grant of summary judgment by a federal judge in Delaware that an accused product does not infringe a patented method of manufacturing plastic fuel tanks was affirmed Nov. 21 in a sealed decision by a Federal Circuit U.S. Court of Appeals panel majority and was unsealed Dec. 3 (Plastic Omnium Advanced Innovation and Research v. Donghee America Inc., No. 18-2087, Fed. Cir., 2019 U.S. App. LEXIS 35823).
PITTSBURGH — A trademark infringement counterclaimant on Dec. 3 won a preliminary injunction barring a false advertising plaintiff from prosecuting a petition to cancel “The Big Switch” and “Big Switch” trademarks with the U.S. Patent and Trademark Office (USPTO) (Mazcon v. BEG Group LLC, et al., No. 19-40, W.D. Pa., 2019 U.S. Dist. LEXIS 207942).
CHARLOTTE, N.C. — A federal judge in North Carolina held Nov. 26 that an insurance policy’s intellectual property exclusion “unequivocally bars coverage” for an underlying trademark lawsuit brought against the insured, granting the insurer’s motion for summary judgment (Direct Technologies International, Inc. v. Maxum Indemnity Co., No. 19-81, W.D. N.C., 2019 U.S. Dist. LEXIS 205158).
GREENSBORO, N.C. — Sportswear giant Nike Inc. on Dec. 2 was enjoined from use of the phrase “Sport Changes Everything,” after a North Carolina federal judge found that the owner of the “Change Everything” and “Running Changes Everything” trademarks is likely to succeed on its allegation of infringement (Fleet Feet Inc. v. Nike Inc., No. 19-885, M.D.N.C., 2019 U.S. Dist. LEXIS 207068).
WASHINGTON, D.C. — In a Nov. 26 ruling, the Federal Circuit U.S. Court of Appeals vacated and remanded findings by the Patent Trial and Appeal Board that one claim of a Wyeth LLC patent directed to formulations for stabilizing polysaccharide-protein conjugate vaccines is not obvious (Merck Sharp & Dohme Corp. v. Wyeth LLC, No. 18-2133, Fed. Cir., 2019 U.S. App. LEXIS 35352).
WASHINGTON, D.C. — An attorney for the state of Georgia argued before the U.S. Supreme Court on Dec. 2 that the 11th Circuit U.S. Court of Appeals erred in finding that annotations to the Official Code of Georgia Annotated (OCGA) are categorically ineligible for copyright protection (Georgia, et al. v. Public.Resource.Org Inc., No. 18-1150, U.S. Sup.).
CHARLESTON, S.C. — In a Nov. 26 holding, a federal judge in South Carolina found that his August 2019 preliminary injunction must be modified to require a plaintiff to post bond (George Sink P.A. Injury Lawyers v. George Sink II Law Firm LLC, et al., No. 19-1206, D. S.C., 2019 U.S. Dist. LEXIS 204840).
WASHINGTON, D.C. — In a Nov. 27 per curiam, unsigned order, the Federal Circuit U.S. Court of Appeals agreed with an appellee that its global settlement with an appellant of allegations that a patented sleep apnea breathing mask is infringed deprived the court of authority to consider the merits of a decision of patentability by the Patent Trial and Appeal Board (Fisher & Paykel Healthcare Ltd. v. ResMed Limited, No. 18-2262, Fed. Cir.).
WASHINGTON, D.C. — In a Nov. 7 brief, houseware maker Bodum USA Inc. tells the U.S. Supreme Court that a competitor’s petition for certiorari in a dispute over the trade dress of a Bodum French press coffee maker should be denied because the petitioner misstates controlling case law and is attempting to rehash the trial court’s ruling against it (A Top New Casting Inc. v. Bodum USA Inc., No. 19-462, U.S. Sup.).
WASHINGTON, D.C. — With Dec. 9 oral arguments in the U.S. Supreme Court approaching, the petitioner, respondent and the United States have all filed merits briefs addressing whether a decision by the Patent Trial and Appeal Board (PTAB) to institute inter partes review of a patent is reviewable by a court under provisions of the American Invents Act (AIA) (Thryv Inc. v. Click-To-Call Technologies L.P., et al., No. 18-916, U.S. Sup.).
WASHINGTON, D.C. — On Nov. 12, Viacom International Inc. and Penguin Random House LLC filed a notice in the U.S. Supreme Court indicating that they waived their right to respond to a petition for certiorari brought by the children’s book author who claims that her copyright infringement suit against the companies was dismissed because the Third Circuit U.S. Court of Appeals wrongly excluded scènes à faire when deciding whether an accused book was substantially similar to hers (Jennie Nicassio v. Viacom International Inc., et al., No. 19-560, U.S. Sup.).
NEW YORK — In a Nov. 25 ruling, the Second Circuit U.S. Court of Appeals found no error in a New York federal judge’s dismissal of copyright infringement allegations against Buffalo News Inc., publisher of “The Buffalo News” newspaper (Joel Joseph v. Buffalo News Inc., No. 18-2793, 2nd Cir., 2019 U.S. App. LEXIS 35105).
AKRON, Ohio — A federal judge in Ohio on Nov. 21 ruled that a company that develops self-inflating tire technology is required to supply a “closed” response to an interrogatory filed by defendants in a patent inventorship and trade secret misappropriation lawsuit describing in sufficient detail what trade secrets were alleged orally disclosed to the defendants in two 2009 meetings set up to discuss the parties’ potential partnership in the commercialization of the plaintiff’s technology (CODA Development s.r.o., et al. v. Goodyear Tire & Rubber Company, et al., No. 15-1572, N.D. Ohio, 2019 U.S. Dist. LEXIS 202114).
SAN FRANCISCO — In a Nov. 25 order, a federal judge in California rejected a defendant’s request for dismissal of allegations that it infringed the “Steeped Coffee” trademark (Steeped Inc. v. NuZee Inc., No. 19-3763, N.D. Calif., 2019 U.S. Dist. LEXIS 203545).
SAN FRANCISCO — Dismissal of state and federal trade secret law claims brought against Facebook and one of its affiliates and the trustees of Princeton University is warranted because a home design website developer has failed to sufficiently show that it took reasonable steps to protect secrecy of its data files, which were publicly available on the website, a federal judge in California ruled Nov. 21 (UAB “Planner 5D” v. Facebook Inc., et al., No. 19-3132, N.D. Calif., 2019 U.S. Dist. LEXIS 203618).