Posts in District Courts

Beatles’ 1965 Shea Stadium concert is the subject of copyright suit filed on behalf of former promoter

On Monday, September 12th, Sid Bernstein LLC, a company representing Bernstein who passed away in 2013, filed a lawsuit alleging copyright infringement on the use of the Shea Stadium footage in the recent documentary. The suit charges that Sid Bernstein is the sole owner of the Shea Stadium master tapes by virtue of being a producer of the concert event and the employer for hire of the Beatles. The infringement suit targets both Apple Corps, the multimedia corporation set up by members of the Beatles in 1968 and involved with producing the new documentary, and Subafilms Ltd. The case was filed in the U.S. District Court for the Southern District of New York (S.D.N.Y.).

Trader Joe’s and Extraterritorial Application of the Lanham Act

Trader Joe’s sued Hallatt (d/b/a Pirate Joe’s) for trademark infringement in the Western District of Washington, invoking the court’s federal question and supplemental jurisdiction. Trader Joe’s alleged that: (1) Hallatt misled consumers into falsely believing Pirate Joe’s was authorized or approved by Trader Joe’s; (2) utilized a confusingly similar “South Pacific” trade dress for his Pirate Joe’s store; (3) displayed Trader Joe’s trademarks in connection with the sale of products at Pirate Joe’s; and (4) resold Trader Joe’s products without authorization and without adherence to Trader Joe’s’ strict quality control practices. Trader Joe’s claimed Hallatt’s behavior diluted its trademarks, confused consumers, and damaged Trader Joe’s reputation by associating it with high price, lower quality products. Trader Joe’s sought damages and to permanently enjoin Hallatt from reselling its goods or using its trademarks in Canada.

Use of PTAB Decisions in District Court Litigation

As the above cases illustrate, PTAB decisions have affected district court cases in different ways. Determining whether the use of a PTAB decision is likely to be permitted or will have any effect requires a multifactorial analysis that considers at least the nature of the PTAB outcome (e.g., final or preliminary), factors contributing to that outcome (e.g., whether they were based on the merits of the case), and potential drawbacks attached to the requested use (e.g., jury confusion). Additional considerations might include, for example, the level of sophistication of the technology already being considered by the jury, which might factor into a court’s analysis of the likelihood of jury confusion. Parties seeking to rely on PTAB decisions in district court should consider these factors. The AIA has only been in place for five years and the law in this area will continue to develop over the next several years.

PTAB invalidates three patents covering Teva’s Copaxone, opens door for Mylan’s generic version

On Wednesday, August 24th, the Patent Appeal and Trial Board (PTAB) issued decisions in two inter partes review (IPR) filings made against patents owned by private Israeli firm Yeda Research & Development Co. The company is the tech transfer arm of the Weizmann Institute of Science, a public research university located in Rehovot, Israel. The IPRs, which were filed by American pharmaceutical developer Mylan Inc. (NYSE:MYL), resulted in the invalidation of all claims in both Yeda patents. About a week later, on September 1st, PTAB invalidated a third patent owned by Yeda after another IPR challenge was filed by Mylan.

10% of judicial emergencies are in EDTX, the preferred venue for patent litigation

Three of the judicial emergencies, just less than 10 percent of all judicial emergencies in the U.S. federal court system, are in the U.S. District Court for the Eastern District of Texas (E.D. Tex.). With the judicial vacancies in E.D. Tex., the concern is that a growing docket of patent infringement cases could create a bottleneck for the court, greatly increasing the amount of time that it takes the court to issue a decision. Business litigation is typically given a backseat to criminal litigation in district courts as American law upholds a suspected criminal’s right to a speedy trial. The vacancies also naturally result in an increased percentage of U.S. patent infringement cases assigned to Judge Rodney Gilstrap. This January, we reported that Judge Gilstrap could be deciding as much as 20 percent of all patent infringement cases filed in U.S. district courts. The fact that one judge could be deciding as much as one-fifth of the patent infringement docket at the district court level seems a little less than democratic.

Is Nome, Alaska ready for Paragraph 4 ANDA litigation? How about San Juan, Puerto Rico?

Nome, Alaska and San Juan, Puerto Rico are both home to a federal courthouse where, ostensibly, under the recent Acorda Therapeutics holding and subsequent court decisions, a generic pharmaceutical company will be subject to personal jurisdiction if they file an Abbreviated New Drug Application (ANDA) with the Food and Drug Administration (FDA). In Acorda Therapeutics, Inc. v. Mylan Pharmaceuticals, Inc., 817 F.3d 755 (Fed. Cir. 2016), the Federal Circuit held that an ANDA filer opens themselves up to nationwide personal jurisdiction merely by virtue of filing an ANDA application. This is a broad holding that, in effect, subjects a generic company to personal jurisdiction in any forum that has a district court.

EDTX triples damages award against Samsung due to false testimony, discovery violations

The court decided to award enhanced damages in this case because of egregious behavior on behalf of Samsung, including attempts to copy the technology and demonstrably false testimony given by Samsung. For example, Samsung’s representatives testified under oath that they only became aware of Imperium IP’s patents in June 2014, when the infringement action was first brought to court. Depositions and other discovery proved this to be incorrect. One witness who worked at ESS Technologies, the company to which the ‘884 patent was first assigned, testified that Samsung sought specific information on anti-flicker and flash technology. It was also proven that Samsung had previously attempted to purchase the patents-in-suit from Imperium, concealing its identity through a patent broker. Instead of June 2014, the court found that Samsung knew about Imperium’s patents since at least April 2011.

ResMed brings infringement suit over sleep apnea treatment devices

On Wednesday, August 17th, respiratory health device developer ResMed Inc. (NYSE:RMD) of San Diego, CA, announced that it had filed multiple legal actions against Fisher & Paykel Healthcare (NZE:FPH) of Auckland, New Zealand. ResMed is alleging that multiple Fisher & Paykel products are infringing upon multiple patents and is seeking an injunction banning the importation of those products. ResMed filed actions with the U.S. International Trade Commission (ITC) and the U.S. District Court for the Southern District of California (S.D. Cal.) as well as courts in Germany and New Zealand.

Horizon Pharma sues Actavis, Lupin for Paragraph IV certifications on generic Pennsaid

Horizon Pharma filed an action for patent infringement against Actavis and Lupin Pharmaceuticals in response to the filing of Abbreviated New Drug Applications (ANDAs) by both defendants for a generic version of Pennsaid, a topical nonsteroidal anti-inflammatory drug (NSAID) marketed in the U.S. by Horizon. Both cases were filed in the U.S. District Court for the District of New Jersey.

Ed Sheeran targeted by heirs of ‘Let’s Get It On’ co-writer in copyright infringement suit

On Tuesday, August 9th, Ed Sheeran was named as a defendant in a copyright lawsuit filed by three heirs of American singer-songwriter Lee Townsend. Townsend, who passed away in 2003, was Marvin Gaye’s co-writer for his famous song “Let’s Get It On.” The suit, which also lists among the defendants Warner Music Group, Atlantic Records UK, Sony/ATV Music Publishing and Amy Wadge, Sheeran’s co-writer on “Thinking Out Loud,” alleges that the song “copied the heart” of “Let’s Get It On” and repeated copyright infringing melodic, harmonic and rhythmic compositions throughout the song. The case, Griffin et al v. Sheeran et al, has been filed in the U.S. District Court for the Southern District of New York (S.D.N.Y.).

Sirius XM Holdings is latest patent target for Global Interactive Media

Global Interactive Media is attempting to enforce its rights on a patent which has expired. The ‘907 patent originally issued in October 2011, lapsed effective last October because of a failure to pay maintenance fees. Despite the expiration of the patent, Global is able to bring suit because of the six year statute of limitations on patent infringement actions. Because the patent was issued on October 4th, 2011, Global must use that as a starting date for any damage reward for patent infringement and doesn’t benefit from the full six year statute. As well, because the patent expired on October 4th, 2015, Global cannot seek damages for infringement occurring after that date.

PCT International keeps permanent injunction thanks to Rule 36 affirmance

A lack of written opinion in the Rule 36 affirmance issued by Federal Circuit wasn’t an issue for PCT’s counsel. “These types of results reflect a wholesale rejection of the laundry list of appellate issues Holland had attempted to raise,” Laurus noted. “Prompt resolution of this is better than some lengthy opinion that might issue months down the road.”

Opposition to Venue Reform Misses Target

There is simply no reason for so many patent cases to wind up in a district with so little relation to those cases. Basic principles of equity and justice don’t vanish just because a patent is involved. The court hearing a patent case should have a real interest in the case, just like any tort or contract case. The Eastern District of Texas has literally created a local industry of patent litigation, intentionally or not. Even local businesses acknowledge it and exploit it. Patent venue reform is long overdue, and it’s something that Congress can and should get done.

CAFC: Reasonable Litigation Defenses No Defense to Willfulness; Permanent Injunction Denial Was Abuse of Discretion

Under the Federal Circuit’s reading of Halo, companies can no longer rely solely on reasonable litigation-inspired defenses to prevent a finding of willfulness… The Federal Circuit also found that the district court abused its discretion in failing to issue a permanent injunction. While there is a public interest in safer generators, there is also a public interest in the security of patent rights. The patent owner presented evidence that it had sufficient production abilities to satisfy market demand for the product. Finally, in similar contexts, Congress has expressly indicated that permanent injunctions may issue to prevent infringement of other life-saving goods like pharmaceuticals.

Patent litigation returning to pre-2013 levels, says Lex Machina

During 2016’s second quarter, plaintiffs filed a total of 1,282 patent infringement cases in U.S. district court. This is a 33 percent increase in the 958 patent cases filed during the first quarter but data suggests that the second quarter tends to see the highest level of infringement cases over all other quarters according to Lex Machina data scientists Brian Howard. “We would expect a jump up from the first quarter,” he said. The first quarter was also a trough for patent infringement cases after last November’s massive number of 847 patent cases, just more than 100 cases less than the entire docket for this year’s first quarter. “The rise we’ve seen puts this year on track with 2011 or 2012 rather than the last two years,” Howard said.