Justia Legal Ethics Opinion SummariesArticles Posted in Intellectual Property
In re PersonalWeb Techs., LLC
In 2011, PersonalWeb sued Amazon in Texas, alleging that Amazon’s S3 technology infringed PersonalWeb’s “True Name” patents. After the court construed the claim terms, PersonalWeb stipulated to dismissal. In 2018, PersonalWeb asserted the same patents against 85 Amazon customers for their use of Amazon S3. Amazon intervened and filed a declaratory judgment action. The customer cases and Amazon’s declaratory judgment action were consolidated. PersonalWeb represented that if it lost its “Twitch” customer case, it could not prevail in the other customer cases. The court stayed the other cases; the Twitch case and Amazon’s declaratory judgment action proceeded. PersonalWeb counterclaimed against Amazon, alleging that Amazon S3 infringed its True Name patents and accused another Amazon product, CloudFront, of infringement.The Federal Circuit affirmed partial summary judgment of non-infringement of the S3 product, based on claim preclusion and summary judgment of non-infringement as to CloudFront because, under the earlier claim construction, PersonalWeb admittedly could not prove infringement. The district court granted Amazon and Twitch attorneys’ fees and costs, 35 U.S.C. 285, determining that the case was exceptional because PersonalWeb’s claims related to Amazon S3 were objectively baseless in light of the Texas Action; PersonalWeb frequently changed positions; PersonalWeb unnecessarily prolonged litigation after claim construction foreclosed its infringement theories; PersonalWeb’s positions regarding the customer cases were unreasonable; and PersonalWeb submitted declarations that it should have known were not accurate. The Federal Circuit affirmed an award of $5,401,625.06, including $5,187,203.99 in attorneys’ fees. View "In re PersonalWeb Techs., LLC" on Justia Law
Bliss Collection, LLC v. Latham Companies, LLC
In 1999, Latham, McLean, and Vernooy formed Bliss to sell children’s clothing under the name “bella bliss.” In 2003, Shannon left Bliss and started Latham to sell her own children’s clothing under the name “little english.” Bliss’s logo is a lowercase “b” drawn out as if stitched in thread. Bliss has registered trademarks for this logo. Bliss has several designs that it claims as signature looks of the bella bliss brand that have “become famous and widely known and recognized as symbols of unique and high-quality garments.” There has been previous litigation between the parties.In 2020, Bliss filed federal claims for copyright, trademark, and trade dress infringement; false designation of origin and misappropriation of source; and unfair competition. The district court dismissed Bliss’s claims and granted Latham attorney’s fees for defending the copyright claim but found that Bliss filed its action in good faith and that the trademark and trade dress claims were not so “exceptionally meritless” that Latham merited a rare attorney’s fees award under 15 U.S.C. 1117. The Sixth Circuit affirmed in part. Bliss stated claims for federal and state trademark infringement but has not stated a claim for trade dress infringement. The district court did not err in denying attorney’s fees to Latham for defending the trademark and trade dress infringement claims. View "Bliss Collection, LLC v. Latham Companies, LLC" on Justia Law
Live Face on Web, LLC v. Cremation Society of Illinois, Inc.
The defendants each licensed computer code from Live Face for $328. Live Face then sued them for copyright infringement, seeking about $483,000 in damages. Live Face has roughly 200 copyright suits pending. After more than five years, with summary judgment pending, Live Face successfully moved to dismiss its suit with prejudice. It argued that a 2021 Supreme Court case (Google) made the defendants’ fair-use defense insurmountable. The defendants sought fees; the district court denied the motion, finding that the defendants did not prevail because of their defenses but rather due to a fortuitous, unforeseen change in the law.The Seventh Circuit vacated and remanded. The Copyright Act authorizes prevailing parties to recover costs and fees, 17 U.S.C. 505. Four nonexclusive factors are relevant: the frivolousness of the suit; the losing party’s motivation for bringing or defending against a suit; the objective unreasonableness of the claims advanced by the losing party; and the need to advance considerations of compensation and deterrence. The defendants did prevail because of their defenses, including their fair-use defense. No matter which side prevailed in Google, the law would favor one of these parties. It is unclear whether Google changed anything relevant here, without a proper analysis of how Google affected Live Face’s claims. Even if Google did change something fundamental, the defendants raised defenses apart from fair use, which might have defeated Live Face’s claims. View "Live Face on Web, LLC v. Cremation Society of Illinois, Inc." on Justia Law
La Bamba Licensing, LLC v. La Bamba Authentic Mex. Cuisine, Inc.
La Bamba Licensing operates Mexican restaurants in the Midwest under the name “La Bamba.” In 1998, La Bamba registered “LA BAMBA” as a trademark for restaurant services and for various food items. Nearly two decades later, La Bamba Authentic Mexican Cuisine opened a Mexican restaurant under the name “La Bamba Authentic Mexican Cuisine” with one location in Lebanon, Kentucky—about 65 miles from one of La Bamba’s restaurants in Louisville. In May 2016, La Bamba sent Cuisine a cease-and-desist letter, citing La Bamba’s federal trademark registrations. La Bamba subsequently sued, alleging trademark infringement and unfair competition under the Lanham Act and Kentucky common law. In October 2017, Cuisine changed the name of its restaurant to “La Villa Rica Authentic Mexican Cuisine, Inc.”The district court granted La Bamba summary judgment and awarded La Bamba $50,741.76 ($22,907.26 in profits; $27,309.50 for attorneys’ fees; and $525.00 for court costs. The Sixth Circuit affirmed, Under the Lanham Act, a plaintiff who succeeds on an infringement claim “shall be entitled” subject to equitable principles, to recover a defendant’s profits, any damages sustained by the plaintiff, and the costs of the action, 15 U.S.C. 1117(a). The district court did not abuse its discretion in considering the relevant factors and making the awards. View "La Bamba Licensing, LLC v. La Bamba Authentic Mex. Cuisine, Inc." on Justia Law
OneSubsea IP UK Ltd. v. FMC Technologies, Inc.
FMC and OSS own patents that cover structures for subsea oil and gas recovery. OSS sued, alleging that FMC’s Enhanced Vertical Deepwater Tree equipped with FMC’s Retrievable Choke and Flow Module infringed 95 claims across 10 OSS patents. The infringement question in the suit boiled down to whether fluid flows through FMC’s accused device as required by the OSS Patents. Finding that OSS failed to raise a genuine issue of material fact regarding whether FMC’s accused devices met the “divert” limitations of the OSS Patents, the district court granted FMC summary judgment.FMC sought Attorneys’ Fees and Non-Taxable Costs under 35 U.S.C. 285, which applies to “exceptional cases.” FMC argued that the Markman Order foreclosed any legitimate diverter infringement claims going forward, making OSS’s litigation position on infringement objectively baseless and that the substantive weakness of OSS’s infringement claims is shown by OSS’s failure to produce any admissible evidence. FMC alleged litigation misconduct by OSS as unreasonably prolonging the case.Applying the Supreme Court's “Octane Fitness” test the district court denied FMC’s motion. The Federal Circuit affirmed, rejecting FMC’s arguments that OSS’s case was objectively baseless after the claim construction order and that rejection of OSS’s evidence demonstrated the substantive weakness of OSS’s case. OSS that it had no obligation to revise its litigation strategy just because the Patent Board had invalidated diverter claims in different patents. View "OneSubsea IP UK Ltd. v. FMC Technologies, Inc." on Justia Law
United Cannabis Corp. v. Pure Hemp Collective Inc.
UCANN sued Hemp for infringing its patent, entitled “Cannabis Extracts and Methods of Preparing and Using the Same.” UCANN filed for bankruptcy, which automatically stayed the litigation. After the bankruptcy petition was dismissed, the parties stipulated to the dismissal of the patent case. UCANN’s infringement claims were dismissed with prejudice; Hemp’s invalidity and inequitable conduct counterclaims were dismissed without prejudice.Hemp sought attorney fees under 35 U.S.C. 285, 28 U.S.C. 1927, and the court’s inherent authority, claiming that UCANN’s prosecution counsel had committed inequitable conduct by copying text from a piece of prior art into the specification of the patent and not disclosing it to the Patent and Trademark Office as prior art and UCANN’s litigation counsel purportedly took conflicting positions in its representation of UCANN and another client (the owner of the prior art). Hemp expressly notified the court that it did not seek any further proceedings, including a trial or evidentiary hearing, in connection with its motion. The district court denied the motion based on the existing record.The Federal Circuit affirmed upholding findings that Hemp failed to establish that it is the prevailing party under section 285, that this is an “exceptional” case warranting an attorney’s fee award, or that UCANN’s counsel acted in a vexatious or otherwise unreasonable manner. While Hemp’s position was extremely weak, it was neither “frivolous as filed” nor “frivolous as argued.” View "United Cannabis Corp. v. Pure Hemp Collective Inc." on Justia Law
Realtime Adaptive Streaming LLC v. Netflix, Inc.
Realtime filed patent infringement actions against Netflix in the District of Delaware. While that action was ongoing, Netflix filed petitions for inter partes review (IPR) and moved to dismiss the complaint, arguing patent ineligibility under 35 U.S.C. 101. Following the institution of the IPR proceedings and a recommendation from the Delaware magistrate finding certain claims ineligible, Realtime voluntarily dismissed the Delaware action—before the district court ruled on the magistrate’s findings. The next day, Realtime reasserted the same patents against Netflix in the Central District of California—despite having previously informed the Delaware court that transferring the Delaware action to the Northern District of California would be an unfair burden on Realtime. Netflix then moved for attorneys’ fees and to transfer the actions back to Delaware. Before a decision on either motion, Realtime again voluntarily dismissed its case.Netflix renewed its motion for attorneys’ fees for the California actions, the Delaware action, and IPR proceedings. The district court awarded fees for both California actions under 35 U.S.C. 285, and, alternatively, the court’s inherent equitable powers. The court declined to award fees for the Delaware action or IPR proceedings The Federal Circuit affirmed. The district court did not abuse its discretion in awarding fees under its inherent equitable powers or in denying fees for the related proceedings The court did not address whether the award satisfies section 285's requirements. View "Realtime Adaptive Streaming LLC v. Netflix, Inc." on Justia Law
Hyatt v. Hirshfeld
Hyatt is a prolific patent filer and litigant. In 1995, Hyatt filed “hundreds of extraordinarily lengthy and complex patent applications,” including the four at issue; he adopted an approach "that all but guaranteed indefinite prosecution delay” in an effort to submarine his patent applications and receive lengthy patent terms. The examination of these patents has cost the Patent and Trademark Office (PTO) millions of dollars. After adverse results regarding the patents at issue, Hyatt sued the PTO under 35 U.S.C. 145. The PTO moved to dismiss the actions for prosecution laches. The district court ordered the PTO to issue a patent covering some of the claims.While an appeal was pending, Hyatt sought attorney’s fees under the Equal Access to Justice Act as a “prevailing party” 28 U.S.C. 2412(b). The district court granted this motion in part. The Sixth Circuit vacated, holding that the PTO had carried its initial burden of demonstrating prosecution laches. The PTO sought reimbursement of its expert witness fees. Under 35 U.S.C. 145, “[a]ll the expenses of the proceedings shall be paid by the applicant.” The district court noted the American Rule presumption against fee-shifting and denied expert fees. The Federal Circuit vacated. Hyatt is not entitled to attorney’s fees under 28 U.S.C. 2412(b) and cannot be considered a prevailing party. The court affirmed the denial of expert fees because section 145 does not specifically and explicitly shift expert witness fees. View "Hyatt v. Hirshfeld" on Justia Law
Spectrum Association Management of Texas, LLC v. Lifetime HOA Management LLC
Spectrum filed suit against Lifetime and Jay Tuttle for trademark violations under the Lanham Act over a domain name. After Spectrum was awarded statutory damages, the district court declined to award attorneys' fees to Spectrum.The Fifth Circuit affirmed the district court's admission of certain deposition testimony at trial and agreed with the Fourth Circuit that the plain text of Federal Rule of Civil Procedure 32(a)(4)(B) is clear that "the place of trial" is the courthouse where trial takes place. In this case, the Lifetime Defendants were not prejudiced by the transfer of trial venue from San Antonio to Waco, and the court rejected the Lifetime Defendants' contention that the witness was not an unavailable trial witness. The court affirmed the district court's statutory damages award, concluding that the district court did not abuse its broad discretion, under 15 U.S.C. 1117(d), in awarding $100,000 for the Infringing Domain. However, the court reversed the district court's finding that Spectrum was not entitled to attorneys' fees in this exceptional case where the record confirms that the Lifetime Defendants engaged in willful, bad-faith infringement of Spectrum's trademarks, justifying an award of maximum statutory damages. The court remanded for a determination of reasonable attorneys' fees. View "Spectrum Association Management of Texas, LLC v. Lifetime HOA Management LLC" on Justia Law
Alliance for Good Government v. Coalition for Better Government
Alliance and Coalition are nonprofit organizations that endorse political candidates in New Orleans. Alliance filed suit against Coalition, seeking to enjoin use of its trade name and logo for federal trademark infringement under the Lanham Act, state trademark infringement, and unfair trade practices. The district court subsequently joined Darleen Jacobs as a third party to the case.The Fifth Circuit affirmed the district court's award of attorney's fees to Alliance for federal trademark infringement under the Lanham Act. The court concluded that the district court's procedure for joining Jacobs met the demands of due process, and the district court did not abuse its discretion in holding her directly liable for the fee award. The court found it appropriate to extend the interpretation of the Patent Act fee-shifting provision to its interpretation of the Lanham Act and found that district courts do have the authority to award appellate fees under the Lanham Act. The court concluded that the district court's decision to award fees for further litigation of the attorney's fee award did not contravene the mandate rule; even if appellants are correct that Alliance's billing entries are flawed, the proper remedy is "a reduction of the award by a percentage intended to substitute for the exercise of billing judgment," which the district court did; and the district court considered each of appellants' objections to Alliance's fees motion. Finally, the court declined to address appellants' First Amendment argument, which was not addressed in Alliance I. View "Alliance for Good Government v. Coalition for Better Government" on Justia Law