Articles Posted in New Decisions

This case, originally filed in the United States District Court for the Eastern District of Michigan on claims of patent infringement, was brought on appeal in the United States Court of Appeals for the Federal Circuit. The Court of Appeals issued an opinion affirming the district court’s summary judgment in favor of Defendant-Appellee, Ford Global Technologies, LLC (“Ford”), and against Plaintiff-Appellant, Automotive Body Parts Association (“Automotive”). The originally sealed opinion was issued on July 11, 2019 but was unsealed in full on July 23, 2019.

Ford owns U.S. Patent No. D489,299 (the “D’299 Patent”) and U.S. Patent No. D501,685 (the “D’685 Patent”) for “Exterior of Vehicle Hood”Ford-BlogPhoto-300x138 and “Vehicle Head Lamp”, respectively. These design patents were invented by artists that allegedly selected part designs for the Ford F-150 truck on based on aesthetic appearance alone and not a functional purpose. Automotive is comprised of a group of companies that distribute automotive parts.

Conflict between Automotive and Ford allegedly occurred when Ford accused several Automotive members of infringing the D’299 and D’685 Patents, among others, before the International Trade Commission (“ITC”). The administrative law judge in the ITC proceedings ruled that “‘respondents’ [invalidity] defense that the asserted patents do not comply with the ornamentality requirement of 35 U.S.C. § 171 has no basis in the law’ and that ‘there is no legal basis for respondents’ assertion of [unenforceability based on] either the patent exhaustion or permissible repair doctrines’”. The ITC action settled after the administrative law judge’s ruling.

Bodum USA, Inc. (“Bodum”) originally filed this case against A Top New Casting Inc. (“A Top”) in the Northern District of Illinois on claims of trade dress infringement. After a jury verdict found for Bodum and awarded $2 million in damages, A Top brought this appeal in the United States Court of Appeals for the Seventh Circuit. The Court of Appeals affirmed the findings and damages awarded.

BlogPhoto-1-300x232Bodum began selling French press coffeemakers in the 1970s and began distributing the Chambord French press at issue in this case in 1983. Bodum claimed it acquired exclusive distribution rights to the Chambord French press in 1991 and has since spent millions of dollars in marketing and advertising the product. A Top began selling their French press, the SterlingPro, through Amazon in 2014.

In March 2016, Bodum filed a complaint for “trade dress infringement under the Lanham Act, 15 U.S.C. § 1125(a); common law unfair competition; and violation of the Illinois Uniform Deceptive Trade Practices Act”. While A Top moved for summary judgment twice, these motions were denied, and a jury trial took place in March 2018. The jury found that A Top willfully infringed the Chambord trade dress and awarded Bodum $2 million in damages. The district court denied A Top’s motion for judgment as a matter of law and granted Bodum’s motion for enhanced damages to $4 million dollars and a permanent injunction against A Top selling the SterlingPro products.

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The United States Supreme Court issued a decision in the case of Mission Product Holdings, Inc. (“Mission”)BlogPhoto versus Tempnology, LLC. The original case involved a trademark licensing agreement and whether the Tempnology’s rejection of the agreement during its bankruptcy deprived Mission’s right to use the trademark under the agreement. Justice Kagan delivered the opinion.

Tempnology utilized the brand name “Coolcore” for its manufactured clothing designed to stay cool during exercise. Mission and Tempnology entered into a non-exclusive licensing agreement for Mission to use the Coolcore trademarks anywhere in the world in 2012. While the agreement would have expired in July 2016, Tempnology filed for Chapter 11 bankruptcy in September 2015. Soon after, Tempnology asked for permission to “reject” the licensing agreement it had with Mission under Section 365(a). 11 U.S.C. § 365(a). Pursuant to Section 365 of the Bankruptcy Code, a debtor may reject any contract that neither party has finished performing. That rejection under Section 365 “constitutes a breach of such contract.” 11 U.S.C. § 365(a).

Both parties agreed that Mission has a claim for damages against Tempnology, however, under 365(g), Mission would be in the same boat as an unsecured creditor and would likely not receive its total damages. Tempnology also believed by rejecting the licensing agreement, Mission would no longer be able to utilize the Coolcore trademarks.

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This case, originally filed by Barrington Music Products, Inc. in the Northern District of Indiana, was brought on appeal in the United States Court of Appeals for the Seventh Circuit. After the Northern District awarded Barrington a mere $3,228.00 in damages, Barrington filed aVento-photo-300x120 Federal Rule of Civil Procedure 59(e) motion asking the court to amend the damages awarded to $4,947,200.00. The Northern District denied the 59(e) motion and the Court of Appeals affirmed.

Barrington’s attorney, Sean Quinn, frequently appears before the Northern District of Indiana for intellectual property infringement litigation cases such as this one. In this case, Guitar Center, Music & Arts, and Woodwind were each named as separate defendants. The jury found the sales by Guitar Center Ventus-Photo2were the only infringing sales and awarded the $3,228.00 accordingly.

After the case concluded, Barrington claims it discovered Music & Arts and Woodwind were divisions of Guitar Center and not distinct and separate entities. The Court of Appeals found that the judgment was rationally supported by the evidence and that there is no reason to conclude that the damages awarded would have been different had Guitar Center been the sole defendant. In support of this finding, the Court of Appeals pointed out that the original damages were awarded because the jury did not find that Music & Arts and Woodwind infringed on the “Ventus” mark.

Judges in the Indiana Court of Appeals issued their Opinion in the case of Neptune Generics, LLC, and Fresenius Kabi USA, LLC (collectively Lilly-v-Adocia-photo-300x170“Petitioners”) versus Eli Lilly and Company. The Patent Trial and Appeals Board (the “Board”) previously held in its inter partes review (“IPR”) that claims 1-22 of Eli Lilly’s U.S. Patent No. 7,772,209 (the “’209 Patent”) were not unpatentable for obviousness. The Court of Appeals held the Board did not err in its analysis, that substantial evidence supported underlying fact findings and therefore the Board’s decision was affirmed.

The ‘209 Patent “relates to administering folic acid and a methylmalonic acid (“MMA”) lowering agent, such as vitamin B12, before administering pemetrexed disodium, a chemotherapy agent, in order to reduce the toxic effects of a pemetrexed, an antifolate.” There were three petitions for IPR relating to the ‘209 Patent for obviousness over various patents, patent applications, and articles. In each IPR, the Board found that the claims were not unpatentable for obviousness.

According to the Opinion, the Board found that it was known that pretreatment with folic acid reduces the toxicity relating to the administration of an antifolate, but there was not a reason to pretreat with Vitamin B12 in addition to folic acid before administering pemetrexed for cancer treatment. Further, the FDA, along with others, were skeptical of the treatment that supported their decision for nonobviousness.

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HerffJones-BlogPhoto-300x114Indianapolis, IndianaHerff Jones, based in Indianapolis, Indiana won a multimillion-dollar case against its largest competitor, Jostens Inc., headquartered in Minneapolis, Minnesota. Herff Jones also won significant judgments against John Wiggins and Chris Urnis, former employees of Herff Jones distributor, Brent Gilbert of GradPro Recognition Products in the same case.

Jostens began negotiating employment agreements with Wiggins and Urnis prior to their leaving GradPro, despite their having strict noncompete agreements with GradPro, according to the lawsuit. The lawsuit further claimed one of Jostens authorized representatives took at least five employees from GradPro in an effort to take away business from Herff Jones.

Jostens lost the suit as the jury found it conspired and stole confidential and trade secret information and interfered with Herff Jones’ employment contracts. The jury awarded nearly $1.9 million in compensatory damages against Jostens, Wiggins, and Urnis to Herff Jones, and another $580,000 to Brent Gilbert of GradPro. Punitive damages in the amounts of $650,000, $25,000, and $10,000 were also assessed against Jostens, Wiggins, and Urnis, respectively.

Washington D.C.- Attorneys for Oracle USA, Inc. and Oracle International Corporation (collectively “Oracle”) of Colorado and California, respectively, filed suit in the District Court of Nevada alleging that Rimini Street, Inc. and Seth Ravin, both of Nevada, infringed the copyrights for Oracle Software and Technology, which have been registered by the U.S. Copyright Office. A jury awarded damages to Oracle upon finding that Rimini had indeed infringed Oracle’s copyrights. The District Court awarded Oracle additional fees and costs, which included $12.8 million dollars for litigation expenses including costs for expert witnesses, e-discovery, and jury consulting. After the award of additional fees and costs was affirmed by the U.S. Court of Appeals for the Ninth Circuit, the U.S. Supreme Court held the additional costs were not appropriate under the Copyright Act.us-supreme-court-building-2-300x200

The Ninth Circuit recognized that in granting the additional damages, they were covering expenses not included in the six categories of costs that the federal statutes, 28 U.S.C. §§ 1821 and 1920 authorize. However, they affirmed the District Court’s award based on the Copyright Act giving district courts discretion to award “full costs” under 17 U.S.C. § 505. The Supreme Court held that while the “term ‘full’ is a term of quantity or amount; it does not expand the categories or kinds of expenses that may be awarded as ‘costs’ under the general costs statute.” Therefore, Oracle was not entitled to the additional $12.8 million dollar award for litigation expenses outside of the six statutory categories.

Practice Tip:

Washington D.C.–  The United States Supreme Court has ruled to affirm the United States Court of Appeals for the Eleventh Circuit’sSCOTUS-BlogPhoto decision against the Petitioner, Fourth Estate Public Benefit Corp. (“Fourth Estate”) of Delaware. The Petitioner originally filed a copyright infringement lawsuit in the Southern District of Florida, alleging that Wall-Street.com, LLC (“Wall-Street”) of Florida, infringed over 200 articles pending copyright registration.

Fourth Estate filed suit after Wall-Street failed to remove Fourth Street’s licensed works from its news website after Wall-Street canceled the Parties’ licensing agreement. Petitioner had filed to register its articles with the Copyright Office, but the articles had not been registered at the time the action commenced. Pursuant to 17 U.S.C. § 411(a), the District Court dismissed the complaint and the Eleventh Circuit affirmed holding there is no right to civil action for infringement of a copyright in the United States until registration has occurred, and merely filing an application for registration does not meet the registration burden under the statute. While the Register of Copyrights did refuse registration of the articles at issue in this case after the Eleventh Circuit Decision, that was not a factor in this decision.

An author gains rights including the right to reproduce, distribute, and display their work immediately upon the creation of the work pursuant to 17 U.S.C. § 106. However, generally before filing an infringement claim in court, the claimant must comply with the registration requirements of § 411(a). The exceptions to that rule are for those works that are vulnerable to predistribution infringement, typically movies or musical compositions, which are not found here. In this case, the Court had to decide if registration has been made pursuant to § 411(a) when the application, materials, and fee were submitted, or when the registration was granted by the Copyright Office. The Supreme Court in affirming the Eleventh Circuit’s Decision held that “registration has been made” under § 411(a) when the registration is granted by the Register of Copyrights after examination of a properly filed application.

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The Supreme Court of the United States has affirmed the Federal Circuits’ Decision for the Helsinn Healthcare v. Teva Pharmaceuticals USA case regarding “secret sales” as prior art under the Leahy-Smith America Invents Act (“AIA”). In their Opinion, the Court held that given the pre-AIA precedent that even “secret sales” could invalidate a patent, the same “on sale” language in the AIA provisions should be given the same presumption. Further, the addition of the phrase “or otherwise available to the public” does not allow the Court to conclude that Congress intended to alter the meaning of “on sale,” but instead, means that 35 U.S.C. § 102 could be applied to other non-delineated situations.

us-supreme-court-building-2-300x200Helsinn Healthcare (“Helsinn”) produces a treatment utilizing the chemical palonestron to treat chemotherapy-induced nausea and vomiting. During the development of this product, Helsinn entered into two separate and confidential agreements with MGI Pharma, Inc. (“MGI”) giving MGI the right to distribute, promote, sell, and market a 0.25 g dose of palonosetron in the United States. While the dosage was kept confidential, the agreements were reported to the Securities and Exchange Commission. About two years later, in January 2003, Helsinn filed their provisional patent application covering a 0.25 mg dose of palonestron. Helsinn went on to file four patent applications claiming priority to the January 2003 provisional application, with its fourth patent application being filed in 2013 and being subject to the AIA. This fourth patent application led to the issuance of U.S. Patent No. 8,598,219 (the “‘219 patent”).

Teva Pharmaceutical Industries, Ltd. and Teva Pharmaceuticals USA, Inc. (collectively “Teva”) sought approval to market a generic 0.25 mg palonosetron product. Helsinn, in turn, filed suit against Teva for infringement of the ‘219 patent. Teva claimed that the ‘219 patent was invalid under the AIA because the invention was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.” 35 U.S.C. § 102(a)(1).

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In the Opinion written by Justice David, the Indiana Supreme Court concluded Indiana’s right of publicity statute contains an exception for material of newsworthy value that includes online fantasy sports operators’ use of college players’ likenesses for contests.

The matter of Akeem Daniels, Cameron Stingily, and Nicholas Stoner vs. DraftKings, Inc. and FanDuel, Inc. wasFanduel-BlogPhoto-300x69 initiated as a class action complaint in Marion County alleging that the Defendants were promoting and operating their online fantasy sports contests using the Plaintiff’s names and likenesses without their consent and thus violated their right of publicity under Indiana law. The DraftKings-PhotoDefendants removed the case to the U.S. District Court for the Southern District of Indiana and moved to dismiss. The District Court dismissed the case and the Plaintiffs appealed to the United States Court of Appeals for the Seventh Circuit, which certified a question of Indiana law to the Indiana Supreme Court.

The certified question from the Seventh Circuit Court of Appeals asked, “[w]hether online fantasy-sports operators that condition entry on payment, and distribute cash prizes, need the consent of players whose names, pictures, and statistics are used in the contests, in advertising the contests, or both.” All the Plaintiffs were collegiate student-athletes at different times from 2014-2016. Their statistics, names, and images were used by Defendants in their fantasy sports competitions to allow consumers to build their ideal fantasy team within a capped salary based on artificial prices for each player. The player’s performance translated to a point value determined by Defendants and consumers accumulated these points to become eligible to win cash prizes.

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