Posts in Litigation

In patent litigation, damages issues are sometimes treated as an afterthought when compared to the issues of infringement and invalidity. However, achieving a client’s goals requires an attorney to place damages at the center of the litigation strategy from the very beginning. Damages, quite simply, can make or break a case. And it is a quickly evolving field, rife with inconsistent judicial decisions, vague standards, and new techniques for measuring damages. Below are some of the current hot topics in patent litigation—and tips for practitioners on both sides of the “v” on how to handle them.

It was a slow week for new patent filings at the Patent Trial and Appeal Board (PTAB) and in the district courts. This week saw only 18 new filings at the PTAB—one of which was a Post Grant Review, while the remaining were inter partes reviews (IPRs). Texas Instruments, Inc. continued challenging Greenthread LLC patents, filing four IPRs against  four patents (bringing the total number of IPRs Texas Instruments has filed up to seven). Amazon filed two IPRs against one Nokia Technologies Oy [associated with Nokia Corporation] patents; Apple filed five IPRs against three Resonant Systems Inc. (d/b/a RevelHMI) patents; and Micron filed two IPRs against two Yangtze memory Technologies Company Ltd.

The U.S. Court of Appeals for the Fourth Circuit on Monday rejected Timberland’s bid to protect its popular boot design. The court explained that the district court did not err in finding that the company failed to prove the design had acquired distinctive meaning…. According to Monday’s ruling, the boot’s design lacks “a distinctive meaning” that identifies them as Timberlands. While the brand’s distinct tree logo remains protected under the Lanham Act, the boot’s design falls short of being “distinguishable” enough to earn the same protection.

The U.S. Supreme Court today reversed an en banc decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in which Judge Pauline Newman dissented, a development Newman’s lawyers say belies CAFC Chief Judge Moore’s opinion that Newman is mentally unfit to serve on the court. The en banc decision was an appeal from the United States Court of Appeals for Veterans Claims in which Judges Newman and Reyna each separately dissented.

The U.S. Supreme Court on Monday denied a petition that challenged the U.S. Court of Appeals for the Ninth Circuit’s decision that found a district court had authority to impose $36 million in sanctions for abusive litigation practices in a trademark case. The underlying case relates to AECOM Energy & Construction, Inc.’s (AECOM) suit against Gary Topolewski, who owned a clothing business called Metal Jeans, Inc., for infringing use of trademarks associated with AECOM’s predecessor, Morrison Knudsen Corporation.

On April 10, Dr. Stephen Thaler filed a reply brief  at the U.S. Court of Appeals for the D.C. Circuit, continuing the artificial intelligence (AI) technologist’s legal challenge to the U.S. Copyright Office’s refusal to register copyright to an artwork generated by Thaler’s Creativity Machine. The reply brief argues that there is no human authorship requirement under the U.S. Copyright Act preventing Thaler from claiming copyright in the AI-generated work, and that standard principles of property law enables ownership of the work to vest in Thaler, who created the AI system at issue in the case.

In a precedential decision issued Friday by Judge Leonard Stark, the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed a district court’s judgment that Luv n’ care, Ltd. and Nouri E. Hakim (LNC) succeeded in proving Lindsey Laurain and Eazy-PZ, LLC (EZPZ) were barred from relief due to unclean hands but vacated the court’s judgment for EZPZ of no inequitable conduct. The CAFC also vacated a grant of partial summary judgment of invalidity and vacated orders denying LNC attorney fees and costs.

Supermarkets compete aggressively for our custom. The entry of upstart discount supermarkets Lidl and Aldi into the market has created new pressures on the established brands, including Tesco— ironically, the original “pile it high and sell it cheap” operation. Supermarkets benchmark their prices against those charged by their competitors and offer loyal customers benefits, including, extremely attractive special offers when customers use their loyalty cards. They are no less aggressive when it comes to using and protecting their trademarks.

In a precedential decision authored by Judge Lourie, the U.S. Court of Appeals for the Federal Circuit affirmed a district court’s final judgment that certain claims of several patents owned by Salix Pharmaceuticals for a drug used to treat irritable bowel syndrome (IBS) and other ailments were invalid as obvious. The CAFC also affirmed an order of the district court that instructed the Food and Drug Administration (FDA) that the effective approval date of generic company Norwich’s Abbreviated New Drug Application (ANDA) may not precede the expiration dates of the claims of three other Salix patents that were found to be valid and infringed by Norwich. Norwich cross-appealed from that order and also from the denial of its motion to modify the district court’s final judgment.

A spate of recent lawsuits is shining light on how some generative AI (GenAI) companies are using copyrighted materials, without permission, as a core part of their products. Among the most recent examples is the New York Times Company’s’ lawsuit against OpenAI, which alleges a variety of copyright-related claims. For their part, some GenAI companies like OpenAI argue that there is no infringement, either because there is no “copying” of protected materials or that the copyright principle of fair use uniformly applies to generative AI activities. These arguments are deeply flawed and gloss over crucial technical and legal issues. They also divert attention from the fact that it is not only possible but practical to be pro-copyright and pro-AI.

The U.S. District Court for the Central District of California ruled on Friday that Shosh Yonay and Yuval Yonay, the widow and son of Ehud Yonay, who authored a 1983 magazine article that inspired the renowned film, Top Gun, were not entitled to damages for copyright infringement related to the 2022 sequel to the film. Yonay authored a magazine article titled “Top Guns,” published in California Magazine on April 21, 1983, that was an account of the experiences of F-14 pilots in training at Navy’s Fighter Weapons School, known as “Top Gun.”

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Monday affirmed an International Trade Commission (ITC) final determination that said Google infringed five of Sonos, Inc.’s patents but which also found three proposed redesigns did not infringe. Sonos owns U.S. Patent Nos. 10,439,896 (“’896 patent”), 9,195,258 (“’258 patent”), 9,219,959 (“’959 patent”), 10,209,953 (“’953 patent”), and 8,588,949 (“’949 patent”). Sonos filed a complaint with the ITC alleging certain Google audio players and controllers infringed the patents and the ITC agreed, issuing a limited exclusion order and a cease-and-desist order (CDO) preventing Google from marketing the infringing products in the United States.

U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal vacated and remanded a decision of the Patent Trial and Appeal Board (PTAB) on Friday that had denied institution of an inter partes review (IPR) requested by auto parts manufacturer, Mahle Behr Charleston, Inc. U.S. Patent No. RE47,494 E is owned by inventor Frank Amidio Catalano and covers “a device to prevent corrosion [in motor vehicle radiators] caused by electrolysis.” Mahle Behr requested IPR of the patent, arguing that a prior art reference called Godefroy anticipates and renders obvious certain claims.

“Many believe the root cause of the patent system’s dysfunction is that the U.S. Patent and Trademark Office [USPTO] is issuing too many invalid patents that unnecessarily drain consumer welfare, stunt productive research, and unreasonably extract rents from innovators.” That quote from Professors Michael Frakes and Melissa F. Wasserman echoes a common complaint in patent policy conversations. The USPTO is widely perceived as issuing too many bad patents.