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Case Summaries

Intellectual Property

[07/21] Eisai Co. Ltd. v. Dr. Reddy's Lab., Ltd.
In a patent case involving a class of drugs known as proton pump inhibitors, summary judgment for plaintiff ruling that its patent was enforceable is affirmed where defendants failed to present sufficient evidence to establish that: 1) the patent in dispute was invalid for obviousness; or 2) plaintiffs had engaged in inequitable conduct by attempting to deceive the Patent Office.

[07/16] Serdarevic v. Advanced Med. Optics, Inc.
In a suit seeking correction of inventorship and raising state law claims for unjust enrichment and fraud, summary judgment for defendants is affirmed where: 1) the presumption of laches applied since plaintiff delayed more than six years after she knew of the issuance of the patents; 2) plaintiff failed to rebut the presumption of laches; 3) plaintiff failed to identify conduct that gave rise to an unclean hands defense; 4) unjust enrichment claims failed as defendants had assigned the patents more than six years before plaintiff's complaint; 5) claims for fraud were time barred; and 6) there was no abuse of discretion in denying plaintiff's Rule 56(f) motion.

[07/15] Jang v. Boston Scientific Corp.
In a suit for breach of contract arising from defendants' failure to make payments for the sale of certain devices allegedly covered by patents, a consent judgment based on the district court's claim construction order is vacated and remanded where: 1) it was impossible to discern from the stipulated judgment which of the district court's claim construction rulings would actually affect the issue of infringement; and 2) the stipulated judgment did not provide any context with respect to how the disputed claim construction rulings related to the accused products.

[07/14] Plumley v. Mockett
In a suit for malicious prosecution arising from an underlying patent case, an order denying defendants' motion to strike the complaint under Civil Procedure section 425.16 is reversed where plaintiff failed to make a prima facie showing that defendants lacked probable cause to bring the patent action.

[07/14] Muniauction, Inc. v. Thomson Corp.
In a patent infringement suit involving electronic methods for conducting "original issuer auctions of financial instruments," a jury verdict for plaintiff is reversed as to a claim of nonobviousness and infringement, and the remainder of the judgment is vacated where: 1) defendant clearly and convincingly established a prima facie case that some of the patent claims were obvious as a matter of law; and 2) defendant did not infringe some of the claims as a matter of law since it neither performed every step of the claimed methods, nor had any party done so on its behalf.

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Copyright

[07/11] Classic Media, Inc. v. Mewborn
In actions seeking declaratory relief as to the parties' respective copyright interests in works involving the famous children's story and novel, Lassie Come Home, the circuit court rules that the Copyright Act of 1976's termination of transfer right, 17 U.S.C. section 304(c), was not extinguished by a post-1978 re-grant of the very rights previously assigned before 1978.

[05/27] Mostly Memories, Inc. v. For Your Ease Only, Inc.
In a suit alleging copyright infringement and various state-law claims, denial of attorney's fees for defendants and sua sponte dismissal of their counter claims is reversed and remanded where: 1) the district court did not explain why it dismissed the counterclaims and its apparent rationale, a defect in jurisdiction or venue, was unsupported by the record; and 2) defendant was the prevailing party and was entitled to an award of attorney's fees under section 505 of the Copyright Act.

[05/14] Oravec v. Sunny Isles Luxury Ventures, L.C.
In an action brought by plaintiff-architect under the Copyright Act alleging that defendants infringed his copyrighted architectural designs via the design, development, and construction of certain Trump buildings, summary judgment for defendants, as well as a denial of a motion for leave to file a third amended complaint, are affirmed where a thorough review of the record indicated that the district court properly made its rulings under the specific facts of the case and did not abuse its discretion in denying the motion for leave to amend.

[05/06] U.S. v. Armstead
Convictions for felony willful copyright infringement for private financial gain are affirmed over allegations that the government failed to produce sufficient evidence that DVDs sold had an aggregate value of more than $2,500 in "retail value" as used in section 2319(b)(1).

[04/28] Litecubes, LLC v. N. Light Prods., Inc.
In a patent and copyright infringement case, denial of a motion to dismiss by the defendant-appellant for lack of subject matter jurisdiction and the denial of a judgment as a matter of law (JMOL) is affirmed where: 1) the district court need not consider whether the alleged patent infringement occurred in the U.S. in order to determine subject matter jurisdiction; 2) the extraterritorial limits of the Copyright Act apply to the elements of the claim, and not to the question of subject matter jurisdiction; 3) the court predicts that Eighth Circuit law would find that the term "sale" should be interpreted consistently in copyright and patent law; and 4) there was sufficient evidence for the jury verdict and the denial of a JMOL.

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Trademark

[07/17] Guaranty Bank v. Chubb Corp.
In a suit involving an insurer's obligation to defend its insured under an "advertising injury" policy when the insured was sued over the similarity of its name to a competitor's, summary judgment to the defendant-insurer is affirmed where: 1) plaintiff-insured had failed to give defendant timely notice of the suit and 2) plaintiff had been sued for common-law trademark infringement and unfair competition, but plaintiff's policy covered only suits involving registered trademarks.

[05/29] UT Lighthouse Ministry v. Found. for Apologetic Info. and Research
In an action claiming trademark infringement, unfair competition, and cybersquatting, summary judgment for defendant is affirmed where: 1) trademark infringement and unfair competition claims failed as plaintiff did not show that "Utah Lighthouse" was protectable, that defendant's use was in connection with any goods or services, and that defendant was likely to cause confusion among consumers as to the source of goods sold on its online bookstore; 2) defendant lacked a bad faith intent to profit from the use of plaintiff's trademark in several domain names under the Anti-Cybersquatting Protection Act (ACPA); and 3) defendant's website met safe harbor conditions of the ACPA since it was a parody.

[05/29] Stoller v. Pure Fishing, Inc.
In a trademark dispute, default judgment against plaintiff on a counterclaim and dismissal of his appeal for failure to prosecute is affirmed where: 1) the arguments made in plaintiff's Rule 60(b) motion could have been addressed by the court of appeals in the underlying appeal that was dismissed for failure to prosecute; 2) the district court's one line order denying his motion did not violate Circuit Rule 50 since the court's reasoning was clear from the record and a brief statement; and 3) plaintiff's appeal of a determination that he was a vexatious litigant was not a proper issue in the present appeal as the court's decision on the underlying merits was not before the appeals court.

[05/23] Paulsson Geophysical Servs. Inc. v. Sigmar
Grant of a preliminary injunction in order to prevent defendant from using plaintiff's trademarks and other proprietary information is affirmed where: 1) the court had proper subject matter jurisdiction since defendant's activities had a substantial effect on U.S. commerce under the Lanham Act; 2) defendant used plaintiff's exact marks, supporting the court's finding of a likelihood of confusion; 3) plaintiff would have been irreparably harmed if defendant would have been allowed to work using plaintiff's mark.

[05/06] Estate of Coll-Monge v. Inner Peace Movement
In an action for trademark infringement and related claims, summary judgment for defendants-non-profits is reversed in part and remanded where: 1) the district court erred in holding that a non-profit corporation cannot be a related company whose use of the trademark is controlled by the mark's registrant; and 2) there remain disputed issues of fact regarding both the doctrine's applicability in this case, and the capacity in which testator registered the marks with the USPTO.

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Patent

[07/21] Eisai Co. Ltd. v. Dr. Reddy's Lab., Ltd.
In a patent case involving a class of drugs known as proton pump inhibitors, summary judgment for plaintiff ruling that its patent was enforceable is affirmed where defendants failed to present sufficient evidence to establish that: 1) the patent in dispute was invalid for obviousness; or 2) plaintiffs had engaged in inequitable conduct by attempting to deceive the Patent Office.

[07/16] Serdarevic v. Advanced Med. Optics, Inc.
In a suit seeking correction of inventorship and raising state law claims for unjust enrichment and fraud, summary judgment for defendants is affirmed where: 1) the presumption of laches applied since plaintiff delayed more than six years after she knew of the issuance of the patents; 2) plaintiff failed to rebut the presumption of laches; 3) plaintiff failed to identify conduct that gave rise to an unclean hands defense; 4) unjust enrichment claims failed as defendants had assigned the patents more than six years before plaintiff's complaint; 5) claims for fraud were time barred; and 6) there was no abuse of discretion in denying plaintiff's Rule 56(f) motion.

[07/15] Jang v. Boston Scientific Corp.
In a suit for breach of contract arising from defendants' failure to make payments for the sale of certain devices allegedly covered by patents, a consent judgment based on the district court's claim construction order is vacated and remanded where: 1) it was impossible to discern from the stipulated judgment which of the district court's claim construction rulings would actually affect the issue of infringement; and 2) the stipulated judgment did not provide any context with respect to how the disputed claim construction rulings related to the accused products.

[07/14] Plumley v. Mockett
In a suit for malicious prosecution arising from an underlying patent case, an order denying defendants' motion to strike the complaint under Civil Procedure section 425.16 is reversed where plaintiff failed to make a prima facie showing that defendants lacked probable cause to bring the patent action.

[07/14] Muniauction, Inc. v. Thomson Corp.
In a patent infringement suit involving electronic methods for conducting "original issuer auctions of financial instruments," a jury verdict for plaintiff is reversed as to a claim of nonobviousness and infringement, and the remainder of the judgment is vacated where: 1) defendant clearly and convincingly established a prima facie case that some of the patent claims were obvious as a matter of law; and 2) defendant did not infringe some of the claims as a matter of law since it neither performed every step of the claimed methods, nor had any party done so on its behalf.

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Trade Secrets

[05/15] Topps Co., Inc. v. Cadbury Stani S.A.I.C.
In an action alleging breach of contract and misappropriation of trade secrets involving a chewing gum licensing agreement, summary judgment for defendant is reversed and remanded where: 1) the licensing agreement was ambiguous as to defendant's entitlement to continual usage of trade secrets after the agreement's terminate date; and 2) extrinsic evidence did not weigh overwhelmingly in defendant's favor to permit a resolution of the agreement's ambiguity by summary judgment.

[05/12] Othentec Ltd. v. Phelan
In an action raising claims under the Virginia Computer Crimes Act and the Virginia Uniform Trade Secrets Act, summary judgment for defendants is affirmed where: 1) plaintiffs failed to present evidence that defendant had used a computer to withdraw funds he was not authorized to withdraw for an illegal or unauthorized purpose; and 2) plaintiffs did not present sufficient evidence to show that defendants were using plaintiffs' trade secrets in their manufacturing process.

[03/27] TSMC N. Am. v. Semiconductor Mfg. Int'l Corp.
In an action seeking to enjoin proceedings instituted in Beijing People's High Court in China pursuant to choice of law and forum selection provisions in a purported "settlement agreement" between the parties, denial of a motion for an antisuit injunction is affirmed in light of international comity and judicial restraint considerations.

[02/29] Heritage Mktg. & Ins. Servs., Inc. v. Chrustawka
In action for breach of contract, conspiracy to defraud, defamation, tortious interference with economic advantage, and violation of the California Trade Secrets Act, summary adjudication on five causes of action based on the expiration of the statute of limitations is affirmed as Code of Civil Procedure section 351 did not toll the various limitations periods.

[02/20] CytoDyn, Inc. v. Amerimmune Pharm., Inc.
In suit claiming unjust enrichment based on the alleged misappropriation of plaintiff's patents and trademarks, award of attorney's fees is reversed where the trial court erred in awarding attorney's fees under a provision of the Uniform Trade Secrets Act, as the complaint cannot be read as alleging a claim for misappropriation of trade secrets. The court also erred in concluding that attorney's fees were recoverable under the indemnification clause of a licensing agreement.

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