WASHINGTON, D.C. — A California federal judge’s conclusion, following a bench trial, that business and litigation misconduct bars Merck & Co. from enforcing two patents against Gilead Sciences Inc. was not clearly erroneous, the Federal Circuit U.S. Court of Appeals ruled April 25 (Gilead Sciences Inc. v. Merck & Co. Inc., et al., No. 16-2302, Fed. Cir.).
RICHMOND, Va. — A North Carolina federal judge’s summary judgment that Walmart Stores Inc. infringed Variety Stores Inc.’s “The Backyard” trademark was premised on an erroneous finding of likely confusion, the Fourth Circuit U.S. Court of Appeals ruled April 24, vacating a subsequent $32.5 million award of disgorged profits (Variety Stores Inc. v. Walmart Stores Inc., No. 17-1503 and 17-1644, 4th Cir., 2018 U.S. App. LEXIS 10317).
SAN FRANCISCO — Although finding that a monkey possesses jurisdictional standing under Article III of the U.S. Constitution, the Ninth Circuit U.S. Court of Appeals on April 23 upheld a California federal judge’s dismissal of the monkey’s copyright claims, citing a lack of statutory standing (Naruto, a Crested Macaque, by and through his Next Friends, People for the Ethical Treatment of Animals, Inc. v. David John Slater, et al., No. 16-15469, 9th Cir., 2018 U.S. App. LEXIS 10129).
PHILADELPHIA — A Pennsylvania federal judge on April 20 denied a motion by UnitedHealthcare Services Inc. for summary judgment declaring that a $125 million memorandum of understanding (MOU) between health payers and Teva Pharmaceutical Industries Ltd. in a Provigil reverse settlement case is not binding and enforceable (Teva Pharmaceutical Industries, LTD, et al. v. UnitedHealthcare Services, Inc., No. 16-4870, E.D. Pa., 2018 U.S. Dist. LEXIS 66710).
WASHINGTON, D.C. — A Florida federal judge’s dismissal of patent infringement allegations levied against a maker of automated voting systems was upheld April 20 by the Federal Circuit U.S. Court of Appeals (Voter Verified Inc. v. Election Systems & Software LLC, No. 17-1930, Fed. Cir., 2018 U.S. App. LEXIS 10026).
WASHINGTON, D.C. — In its April 23 orders list, the U.S. Supreme Court invited the views of the solicitor general in a case that presents the question of whether proof of “but-for” causation, without more, satisfies the principle that patent damages be apportioned between patented and unpatented features (EVE-USA Inc., et al. v. Mentor Graphics Corp., No. 17-804, U.S. Sup.).
WASHINGTON, D.C. — Upon institution of inter partes review (IPR), the Patent Trial and Appeal Board must decide the validity of all patent claims challenged in the underlying petition, a divided U.S. Supreme Court ruled April 24 (SAS Institute Inc. v. Andrei Iancu, Director, U.S. Patent and Trademark Office, No. 16-969, U.S. Sup.).
WASHINGTON, D.C. — A divided U.S. Supreme Court on April 24 upheld the constitutionality of the inter partes review (IPR) procedure introduced in 2012 by the Leahy-Smith America Invents Act (AIA), 35 U.S.C. § 100 (Oil States Energy Services LLC v. Greene's Energy Group LLC, No. 16-712, U.S. Sup.).
WASHINGTON, D.C. — When asserting that an inter partes review (IPR) petition is time-barred under Section 315(b) of the America Invents Act (AIA), 35 U.S.C. § 315(b), a patent owner must demonstrate that the petitioner had “sufficient control” over prior district court litigation to establish privity, a divided Federal Circuit U.S. Court of Appeals ruled April 20 (Wi-Fi One LLC v. Broadcom Corp., Nos. 15-1944, Fed. Cir., 2018 U.S. App. LEXIS 10024).
CHICAGO — Allegations by the operator of a trading website that a customer opened an account solely with the intention of copying the plaintiff’s business model and associated intellectual property can proceed, an Illinois federal judge ruled April 18 (TopstepTrader LLC v. OneUp Trader LLC, et al., No. 17-4412, N.D. Ill., 2018 U.S. Dist. LEXIS 64815).
WASHINGTON, D.C. — Because a patent expressly claimed priority only to an immediately preceding application, and incorporated by reference a provisional application before that, the patent cannot claim the benefit of the earlier filing date, the Federal Circuit U.S. Court of Appeals ruled April 19, upholding a determination of obviousness by the Patent Trial and Appeal Board (Droplets Inc. v. E*Trade Bank, et al., Nos. 16-2504 & 16-2602, Fed. Cir., 2018 U.S. App. LEXIS 9895).
NEW YORK — A Spanish-language media firm in an April 17 appellee brief asks the Second Circuit U.S. Court of Appeals to uphold a ruling that its radio stations’ broadcast of certain songs did not infringe their copyrights, arguing that the plaintiff failed to establish any ownership in the works (Latin American Music Company Inc., et al. v. Spanish Broadcasting System Inc., No. 17-1953, 2nd Cir.).
ALEXANDRIA, Va. — The Patent Trial and Appeal Board on April 18 sided with inter partes review petitioner eBay Inc., concluding that two claims of a patented graphical user interface (GUI) do not pass muster under Section 103 of the Patent Act, 35 U.S.C. § 103 (eBay Inc. v. Global Equity Management [SA] Pty. Ltd., No. IPR2016-01828, PTAB).
NEW YORK — A New York federal judge on April 18 ordered a lighting design company and its owner to pay Restoration Hardware Inc. $1.3 million in statutory damages, following entry of a default judgment on allegations of copyright infringement and false designation of origin (Restoration Hardware Inc. v. Lighting Design Wholesalers Inc., No. 17-5553, S.D. N.Y., 2018 U.S. Dist. LEXIS 65099).
WASHINGTON, D.C. — In upholding an award of attorney fees on behalf of AT&T Corp. and Microsoft Corp. on April 18, the Federal Circuit U.S. Court of Appeals adopted the U.S. Supreme Court’s rationale in CRST Van Expedited, Inc. v. EEOC, finding that a favorable judgment on the merits is not necessary to make a determination of prevailing party status in patent cases (Keith Raniere v. Microsoft Corporation, et al., Nos. 17-1400, -1401, Fed. Cir., 2018 U.S. App. LEXIS 9775).
WASHINGTON, D.C. — In an April 18 holding, the Federal Circuit U.S. Court of Appeals affirmed a decision by a California federal judge that dismissed a claim for correction of patent inventorship under Section 265 of the Patent Act in light of the purported co-inventor’s failure to list the patents at issue in a schedule of assets during bankruptcy proceedings (Sally Perrie v. Kenneth Perrie, No. 17-1087, Fed. Cir.).
SAN FRANCISCO — Defendants in a trade secrets misappropriation and patent infringement lawsuit have not shown that there is a substantial likelihood of success on the merits or that they will be irreparably harmed if a stay of an injunction order is not granted while appealing a contempt order over their alleged violation of a stipulated protective order (SPO), a Federal Circuit U.S. Court of Appeals panel ruled April 17 in denying the motion (Codexis Inc. v. EnzymeWorks Inc., No. 16-0826, N.D. Calif.).
WASHINGTON, D.C. — In an April 12 appellee brief filed with the Federal Circuit U.S. Court of Appeals, Nike Inc. defended a decision by the Patent Trial and Appeal Board that rejected allegations by adidas AG that two Nike patents covering the manufacture of footwear with a textile upper would have been obvious to a person of skill in the art (POSITA) (adidas AG v. Nike Inc., No. 18-1180, Fed. Cir.).
CHARLESTON, S.C. — A South Carolina federal judge on April 17 granted leave to amend a complaint to add “constituent organizations” acting under the leadership of a bishop accused of false advertising and trademark infringement under the Lanham Act, 15 U.S.C. § 1051 et seq. (Bishop Charles G. vonRosenberg, et al., v. Bishop Mark J. Lawrence, et al., No. 13-587, D. S.C., 2018 U.S. Dist. LEXIS 63350).
WASHINGTON, D.C. — A final written decision by the Patent Trial and Appeal Board that two claims of an ultrasonic consumption meter patent were anticipated and rendered obvious by prior art was affirmed April 17 by the Federal Circuit U.S. Court of Appeals, amid findings that a patent owner failed to adequately corroborate an inventor’s testimony of conception and reduction to practice (Apator Miitors ApS v. Kamstrup A/S, No. 17-1681, Fed. Cir.).