Posts in District Courts

CAFC Reverses District Court, Finds California Jurisdiction Proper in Declaratory Judgment Action

On May 12, the U.S. Court of Appeals for the Federal Circuit (CAFC) reversed and remanded the dismissal of a declaratory judgment action in an appeal from the U.S. District Court for the Northern District of California. The complaint was brought by Trimble, Inc. (Trimble) and Innovative Software Engineering, LLC (ISE) against PerDiemCo, seeking a declaratory judgment that neither Trimble nor ISE infringed any of the 11 patents that PerDiemCo asserted against it.

Federal Circuit Affirms Jury Verdict Invalidating Pacific Biosciences Patents

Yesterday, the CAFC affirmed a ruling by the U.S. District Court for the District of Delaware, where a jury found Oxford Nanopore Technologies, Inc. and Oxford Nanopore Technologies, Ltd. (collectively, Oxford) infringed all claims of Pacific Biosciences of California, Inc.’s (PacBio) patents, U.S. Patent Nos. 9,546,400 (the ‘400 patent) and 9,772,323 (the ‘323 patent), but also found the patents invalid for lack of enablement under 35 U.S.C. §112. The district court denied PacBio’s motion for judgment as a matter of law (JMOL) and denied their request for a new trial due to Oxford’s alleged improper remarks made during opening, related to the COVID-19 crisis.

CAFC Clears L’Oréal of Trade Secret Misappropriation, Orders New Trial on Patent Infringement

On May 6, the U.S. Court of Appeals for the Federal Circuit (CAFC), reversed in part, affirmed in part, vacated in part, dismissed in part, and remanded a judgment in an appeal from the U.S. District Court for the District of Delaware. L’Oréal USA, Inc., L’Oréal USA Products, Inc., L’Oréal USA S/D, Inc., and Redken 5th Avenue NYC, LLC. (collectively, “L’Oréal”) appealed the district court’s ruling in favor of plaintiffs Liqwd, Inc. and Olaplex, LLC, which sued L’Oréal for patent infringement, misappropriation of trade secrets, and breach of a non-disclosure agreement. 

Patent Filings Roundup: Litigation Explosion Fueled by IP Edge; Patent Plaintiff Seeking Defendants; Companies File Declaratory Judgment Against Landmark as Troll

The district courts saw an explosion of new patent filings last week (183, more than 100 over the weekly average to date), driven largely by dozens and dozens of new IP Edge complaints filed by an array of entities. There were no discretionary denials at the Patent Trial and Appeal Board, and Board filings were normal, with 32, including another post grant review (PGR) in the ongoing iRobot/SharkNinja battle. A number of Longhorn Vaccine’s diagnostics patents were challenged by competitor Spectrum Solutions LLC; and Johnson & Johnson continued to be challenged at the Board by Alcon on various Lasik patents.

Lessons from Ice Cube’s Lawsuit Against Stock Trading App in Right of Publicity/Trademark Infringement Case

The multi-talented Ice Cube famously said “It was a good day” in his hit song of the same name. But the hip-hop icon and his team probably weren’t having a good day when they saw a digital ad featuring an image of Ice Cube and an altered version one of his most famous lyrics—that he claims was posted without his knowledge or consent. On March 31, 2021, Ice Cube (also known as O’Shea Jackson, Sr.) filed a lawsuit against Robinhood Financial LLC, and Robinhood Markets, Inc.,  financial services providers, alleging Lanham Act violations as well as violations of  California law, including misappropriation of likeness and unfair competition. He is just the latest celebrity to seek to protect his/her rights of publicity (giving a person commercial control of their name, image and likeness) through legal action. Based on outcomes of well-known cases filed by basketball legend Michael Jordan, film/TV actress Katherine Heigl, and beauty and style mogul Kim Kardashian West, Ice Cube would appear to be on well-trod legal ground in his court battle with the trading app.

A New Trial is Ordered with Respect to Damages in Optis Wireless v. Apple, Despite No FRAND Claims at Issue

On April 14, 2021, in a somewhat surprising about face, Judge Rodney Gilstrap ordered a new trial with respect to damages in Optis Wireless Technology, LLC et al. v. Apple Inc., Civil Action No. 2:19-cv-00066-JRG (E.D. Texas), despite previously ruling that no FRAND based claims remained in the case. This ruling adds even more silt to the already murky waters of damages for patents related to standardized technology. In a previous article, we discussed the confusing and problematic convergence of FRAND licensing rates and reasonable royalty damages for patent infringement, despite these two concepts having different origins and seeking to achieve different objectives: i.e., patent damages being a creature of statute and case law and seeking to compensate a patent owner for infringement, whereas FRAND commitments are rooted in contract and seek, amongst other things, to ensure that licenses can be obtained for standardized technology and that royalty stacking does not become an issue (e.g. as reflected in “top-down” approaches used to determine FRAND rates for standards essential patents). As noted in that article, one problem with this convergence is that it facilitates hold out. Why put money in the parking meter if the fine is no more that the fee?