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Posts in District Courts

Patent Filings Round-up: Claims from $25 Million Verdict Held Unpatentable After Stay Denied; Panel Denies IPR Over Lengthy Reexam History

It was a relatively consistent week in terms of overall patent filings, with 24 inter partes reviews (IPRs) and two post grant reviews (PGRs) and 77 new district court complaints. The district court saw a couple of new higher-profile cases involving Google, one by small company, Flypsi, and another a declaratory judgment (DJ) action against small smart thermostat maker (and aggressive enforcer), Ecofactor.

CAFC Grants Mandamus on Netflix Motion to Transfer Out of Gilstrap’s Court

The U.S. Court of Appeals for the Federal Circuit (CAFC) today granted Netflix, Inc.’s Petition for Writ of Mandamus to transfer a case brought against it by CA Inc. and Avago Technologies from Judge Rodney Gilstrap’s Eastern District of Texas court to the Northern District of California. The Order is the latest in a series of decisions from the CAFC censuring Texas courts for their refusal to transfer cases. In today’s ruling, the CAFC said the district court’s denial of transfer was a clear abuse of discretion and ordered the court to transfer the case, but did not address Netflix’s motion to dismiss the case for lack of venue.

Court Unseals Documents in Gilead Lawsuit Alleging Massive Counterfeit HIV Drug Scheme

The U.S. District Court for the Eastern District of New York yesterday unsealed documents in an anticounterfeiting suit filed last year by Gilead Sciences, Inc. against a slew of defendants who Gilead alleges sold, marketed, and distributed counterfeits of its HIV medications. Gilead’s complaint seeks immediate monetary and injunctive relief, including seizure at certain of the defendants’ premises, as well as relief for trademark and trade dress infringement and trademark dilution, among other alleged violations…. According to the unsealed complaint and motion for relief, the accused companies sold “authentic-looking bottles of Gilead HIV and other medication to distributors and pharmacies throughout the United States, including in New York City, who in turn dispensed them to patients.”

CAFC Nixes District Court Claim Construction in Win for Firearms Patent Owner

The U.S. Court of Appeals for the Federal Circuit (CAFC) on Friday ruled that a California district court erred in its claim construction relating to Evolusion Concepts, Inc.’s patent for a method of converting a semi-automatic rifle with a detachable magazine to one with a fixed magazine. The CAFC reversed the court’s grant of summary judgment of non-infringement for Juggernaut Tactical, Inc., reversed a denial of summary judgment of direct infringement, vacated the award of attorneys’ fees and remanded for further proceedings.

Patent Filings Roundup: New Litigation-Funded Campaign; PTAB Denies Under NHK-Fintiv Despite Sotera(ish) Stipulation

Apologies for missing last week, which was a light, short holiday recap—nothing much of note beyond less-than-average filings, given the holidays. This week was back to the new normal at the Board, with 24 petitions—one post grant review (PGR) and 23 inter partes reviews (IPRs)—and 50 new filings, with fewer than usual file-and-settle suits (as it’s the beginning of a quarter, year, and month). Another unusually high 92 terminations are mostly due to the end of file-and-settle suits from last year. A few new campaigns of note below, more discretionary denials, and a bunch of IPR denials filed against a German microbattery company round out the week.

D.C. Court Says FTC’s Antitrust Claim Against Facebook Can Proceed

On Tuesday, January 11, the United States District Court for the District of Columbia denied Facebook’s motion to dismiss a complaint brought against it by the U.S.  Federal Trade Commission (FTC), holding that the FTC had stated a plausible claim for relief under Section 2 of the Sherman Act. The FTC filed a complaint on December 9, 2020, asserting one count of monopoly maintenance under Section 2 of the Sherman Act. Facebook moved to dismiss both this case, and a related state case. The district court dismissed the Commission’s complaint but granted the FTC the opportunity to amend. Following a leadership change from when the complaint was initially filed, the FTC filed an amended complaint in August of 2021. L

Federal Circuit Will Soon Hear Case that Threatens the Statutory Presumption Afforded Copyright Registration

On January 13, the U.S. Court of Appeals for the Federal Circuit (CAFC) will hear oral argument in SAS Institute, Inc. v. World Programming, Ltd., a copyright infringement suit with far-reaching consequences for American creativity. SAS is a North Carolina-based software company, well known for its highly successful analytics software. World Programming, Ltd (WPL) is a British software company that, by its own admission, set out to “clone” SAS’s creative and popular software. The litigation that followed has been lengthy and stretched from North Carolina to the U.K. and back. While WPL largely prevailed in its home court, the litigation in North Carolina resulted in a verdict that WPL engaged in fraud and unfair and deceptive trade practices. The litigation in North Carolina did not decide the copyright infringement issues, so SAS was forced to file a separate suit, this time in Texas. But the judge in that case made a critical error, which is now on appeal.

Unified Report: Reexaminations Double; Samsung, Apple and Google Dominate PTAB Filings

Reexaminations continue to gain favor, seeing a 47% increase over last year; the Patent Trial and Appeal Board (PTAB) sees fewer filings; and filings by non-practicing entities (NPEs) rose by 4%, according to Unified Patents’ 2021 Patent Dispute Report: Year in Review, published earlier this week. The PTAB saw a nearly 12% decline in filings from the previous year, whereas district court proceedings remained unchanged, said the report. It added: “Operating companies filed 5.5% less cases in district court and over 10% less filings at the PTAB.”

In Dissent to CAFC Ruling for Novartis on Written Description, Chief Judge Argues ‘Silence is not Disclosure’

The U.S. Court of Appeals for the Federal Circuit (CAFC) yesterday affirmed a district court’s ruling that Novartis’ U.S. Patent No. 9,187,405 is not invalid and that HEC Pharm Co., Ltd. and HEC Pharm USA Inc.’s Abbreviated New Drug Application (ANDA) infringed the patent. The CAFC found no clear error in the district court’s finding that the patent’s claims did not fail the written description requirement under 35 U.S.C. § 112(a). Chief Judge Moore dissented, arguing that the district court’s analysis was inconsistent with the CAFC’s established precedent. The ‘405 patent covers methods of treating relapsing remitting multiple sclerosis (RRMS) with fingolimod (an immunomodulating medication) or a fingolimod salt “at a daily dosage of 0.5 mg without an immediately preceding loading dose.”

Top 2021 FRAND/RAND Licensing Developments in the United States: Part II

This is Part II of a two-part article discussing FRAND (fair, reasonable, and non-discriminatory) licensing developments taking place in the United States in 2021. Read Part I here. After a slow summer on the FRAND licensing front, the Court of Appeals for the Fifth Circuit’s ruling in the matter of HTC v. Ericsson came in the dog days of August. As we wrote about here, the August 31 ruling dealt with, amongst other things, an appeal challenging the district court’s instructions to the jury regarding whether or not the license terms offered by Ericsson were FRAND and, more specifically, with respect to the issue of apportionment. Beyond finding that the failure to give instructions on an undisputed issue did not impair HTC’s ability to present its claims, the majority found that HTC’s proposed instructions “were not ‘substantially correct’ statements of law”.

Trademarks in 2021: Recounting the Most High-Profile Trademark Developments of the Year

The past year has seen the implementation of brand-new trademark legislation, significant analysis of trademark liability for new technologies, renewed focus on the doctrine of initial interest confusion, the transformation of Nikes into “Satan Shoes,” the functionality of chocolate dipped cookies, and the end to a long-running case involving two multi-million dollar jury awards for willful infringement. As 2021 comes to an end, we look forward to what 2022 has in store.

Warhol Foundation Tells SCOTUS Second Circuit’s Fair Use Ruling ‘Threatens a Sea-Change’ in Copyright Law

The Andy Warhol Foundation has petitioned the U.S. Supreme Court, asking it to review a decision of the U.S. Court of Appeals for the Second Circuit holding  that Andy Warhol’s Prince Series did not constitute fair use of Lynn Goldsmith’s photograph. The Second Circuit held in March that “the district court erred in its assessment and application of the fair-use factors and the works in question do not qualify as fair use.” The Court of Appeals further concluded that the Prince Series works were substantially similar to the Goldsmith Photograph “as a matter of law.” The Supreme Court petition argues that “the Second Circuit’s decision…creates a circuit split and casts a cloud of legal uncertainty over an entire genre of visual art.”

Patent Filings Roundup: Cal Tech Sues Samsung After $1 Billion Apple Verdict; Joao Entity Sues UT’s Health System; Intel Loses Six Against Bill Chu’s Acqis LLC

Another 82 district court terminations this week was again high, though careful analysis has revealed that many of those cases were terminated voluntarily and refiled elsewhere. The Patent Trial and Appeal Board (PTAB) saw just 22 inter partes reviews (IPRs) this week; a few parties walked away from their patents, including Litl LLC [TRI Ventures, Inc.], after a challenge by Microsoft. District court was up this week to 94 patent filings, and the year looks poised to end with filings up substantially over years past. The Board again exercised its Fintiv muscles in an IPR with a case pending in the International Trade Commission (ITC), this one an entity funded by Techquity Captial Management. Other semiconductor patents asserted by NPEs went down on Final Written Decision in IPR, including one of the patents asserted by Vector Capital’s Monterey Research; it’s worth noting that the semiconductor companies have collectively spent a lot of time before the Board this year after the increase in NPE suits there this year.

Albright Grants Rare Preliminary Injunction Against Fitness Company

On December 1, Judge Alan Albright, sitting in the Waco Division of the Western District of Texas, granted a preliminary injunction (PI) to Gonza LLC, finding that all four factors of the judicial test for injunctive relief favored Gonza. IPWatchdog is told it is one of only a handful of PIs Albright has issued. On July 28, 2021, Gonza LLC sued Mission Competition Fitness Equipment (MCF) in the Waco Division of the Western District of Texas. Gonza sought both injunctive relief and damages arising out of MCF’s alleged infringement of its U.S. Patent No. 11,007,405 (the ‘405 patent). Gonza asserted that it developed the subject matter of the ‘405 patent, which discloses a neck exercise device with resistance bands that can be used to improve neck capabilities, during a period of over two years. In its complaint, Gonza contended that MCF released a knock-off device that used lower quality materials, but nonetheless infringed the ‘405 patent. Gonza argued that MCF’s infringement of their ‘405 patent created a loss of goodwill, eroded the market price, and caused extreme negative consequences for Gonza’s business.

Good Sports: Cleveland MLB and Roller Derby Teams Share GUARDIANS Name

The MLB baseball team formerly known as the Cleveland Indians has a new name that pays homage to the history of Cleveland. The team last rebranded in 1915, when it left behind its former name, the “Naps” (short for “Napoleons”) in favor of the “Indians.” Now, over a century later, the team has joined other sports franchises in retiring Native American names, mascots, and imagery imbued with negative and racist connotations. With the help of actor and Cleveland Indians fan Tom Hanks, the baseball team announced on July 23, 2021 that it would adopt a new name: the Cleveland Guardians.