Justia Legal Ethics Opinion Summaries

The patents-in-suit relate to soybeans genetically engineered to tolerate herbicide, and, particularly, to the Bayer-developed dmmg gene. The parties disagreed over the scope of Bayer’s license of the patents to MS Tech, specifically, whether the license granted MS Tech a broad license to commercialize and sublicense the soybean technology. MS Tech had sublicensed to Dow. When Bayer sued Dow for infringement, Dow raised that sublicense as an affirmative defense. The district court entered summary judgment in favor of Dow; the Federal Circuit affirmed. The district court then awarded Dow attorney fees under 35 U.S.C. 285, declaring this an "exceptional case.” The Federal Circuit affirmed, noting Bayer’s weak positions on the merits and litigation conduct. “Bayer’s own witnesses as well as key documents contradicted Bayer’s contorted reading of the contract.” Bayer’s arguments were “fallacious” because they were “implausible” and “made no business sense” in light of the facts surrounding the agreements and their negotiation. View "Bayer Cropscience AG v. Dow Agrosciences LLC" on Justia Law

MOVA technology can capture an actor’s facial performance for use in motion picture special effects and video games; it is secured by trademarks, copyrights, and patents, and is reflected in hardware, source code, and physical assets. VGHL claims that Perlman, the head of Rearden, declined to acquire the MOVA assets from OL2 and proposed OL2 sell to a Rearden employee, LaSalle. Perlman introduced LaSalle to Rearden’s corporate attorney who helped LaSalle establish his own company, MO2, and negotiated with OL2. Perlman later demanded that LaSalle convey the MOVA assets to Rearden and terminated LaSalle’s employment when LaSalle refused. MO2 sold the MOVA assets to SHST, which hired LaSalle, and began selling the technology. The Rearden parties claimed that SHST never obtained ownership and that LaSalle was simply hired to handle the acquisition on Rearden’s behalf. SHST sued, alleging that Rearden had made “false or misleading representations ... concerning the ownership of the MOVA Assets ... to mislead the public and actual and prospective users and licensees” and had falsely recorded assignments of the MOVA patents. During discovery, SHST moved to compel Rearden to produce documents exchanged between MO2 and Rearden’s corporate attorney. The district court granted the request, concluding that Rearden had not shown entitlement to assert attorney-client privilege on behalf of MO2 and that LaSalle waived privilege when he shared documents. The Federal Circuit denied a petition for mandamus. Rearden's arguments failed to carry the high burden required on mandamus to overturn the court’s discovery determination. View "In re: Rearden, LLC" on Justia Law

This appeal stems from an intellectual property dispute between two religious organizations. Plaintiff filed suit alleging that defendant is infringing its registered service marks in violation of the Lanham Act, 15 U.S.C. 1114, and Florida law. The district court granted judgment for defendant. In the first appeal, the court reversed in part and remanded for reconsideration of whether the parties' marks are likely to be confused. The court was also critical of disparaging comments that the district judge made about the parties. On remand, the court concluded that the district court misapplied several factors in its analysis of likely confusion, incorrectly assessed the Florida Priory’s defense of prior use, relied on historical testimony that the court previously deemed inadmissible, and misinterpreted the court's instructions about consulting facts outside the record. The court declined to order reassignment after balancing the three factors in United States v. Torkington. Accordingly, the court vacated and remanded. View "Sovereign Military Hospitaller v. The Florida Priory of the Knights Hospitallers" on Justia Law

Cypress sued, alleging that Maxim, had misappropriated a trade secret, or was in the process of doing so, by seeking to hire away specialists in touchscreen technology, a field in which Cypress and Maxim compete. Maxim responded that it was entitled to solicit prospective employment candidates in Cypress’s workforce and that there was no evidence it had acquired, or was seeking to acquire, any trade secret. After failing to secure temporary injunctive relief, and failing to obtain an order placing under seal evidence derived by Maxim from public sources, Cypress dismissed the action. The trial court awarded Maxim attorney fees under Civil Code 3426.4, which authorizes such an award to the prevailing party where a claim for misappropriation of trade secrets is found to have been made in bad faith. The court of appeal affirmed, stating that the finding of bad faith was amply supported by evidence that defendants did no more, and Cypress accused them of no more, than attempting to recruit the employees of a competitor. Cypress dismissed the suit to avoid an adverse determination on the merits. View "Cypress Semiconductor Corp. v. Maxim Integrated Prods., Inc." on Justia Law

AF Holdings, represented by Prenda Law, filed suit in district court against 1,058 unnamed John Does who it alleged had illegally downloaded and shared the pornographic film "Popular Demand" using a file-sharing service known as BitTorrent. Prenda Law's general approach was to identify certain unknown persons whose IP addresses were used to download pornographic films, sue them in gigantic multi-defendant suits that minimized filing fees, discover the identities of the persons to whom these IP addresses were assigned by serving subpoenas on the Internet service providers to which the addresses pertained, and then negotiate settlements with the underlying subscriber. The providers refused to comply with the district court's issuance of subpoenas compelling them to turn over information about the underlying subscribers, arguing that the subpoenas are unduly burdensome because venue is improper, personal jurisdiction over these Doe defendants is lacking, and defendants could not properly be joined together in one action. The court agreed, concluding that AF Holdings clearly abused the discovery process by not seeking information because of its relevance to the issues that might actually be litigated here. AF Holdings could not possibly have had a good faith belief that it could successfully sue the overwhelming majority of the John Doe defendants in this district. Although AF Holdings might possibly seek discovery regarding individual defendants in the judicial districts in which they are likely located, what it certainly may not do is improperly use court processes by attempting to gain information about hundreds of IP addresses located all over the country in a single action, especially when many of those addresses fall outside of the court's jurisdiction. Given AF Holdings' decision to name and seek discovery regarding a vast number of defendants who downloaded the film weeks and even months apart - defendants who could not possibly be joined in this litigation - one can easily infer that its purpose was to attain information that was not, and could not be, relevant to this particular suit. Accordingly, the court vacated the order and remanded for further proceedings, including a determination of sanctions, if any, for AF Holdings' use of a possible forgery in support of its claim.View "AF Holdings, LLC v. Does 1-1058" on Justia Law

In an infringement suit, the district court declared Minton’s patent invalid under the “on sale” bar since he had leased his interactive securities trading system to a brokerage more than one year before the patent application, 35 U. S. C. 102(b). Seeking reconsideration, Minton argued for the first time that the lease was part of testing and fell within the “experimental use” exception to the bar. The Federal Circuit affirmed denial of the motion, concluding that the argument was waived. Minton sued for legal malpractice in Texas state court. His former attorneys argued that Minton’s claims would have failed even if the experimental-use argument had been timely raised. The trial court agreed. Minton then claimed that the court lacked jurisdiction under 28 U. S. C. 1338(a), which provides for exclusive federal jurisdiction over any case “arising under any Act of Congress relating to patents.” The Texas Court of Appeals rejected Minton’s argument and determined that Minton failed to establish experimental use. The state’s highest court reversed. The Supreme Court reversed, holding that Section 338(a) does not deprive state courts of subject matter jurisdiction over Minton’s malpractice claim. Federal law does not create that claim, so it can arise under federal patent law only if it necessarily raises a stated federal issue, actually disputed and substantial, which may be entertained without disturbing an approved balance of federal and state judicial responsibilities. Resolution of a federal patent question is “necessary” to Minton’s case and the issue is “actually disputed,” but it does not carry the necessary significance. No matter the resolution of the hypothetical “case within a case,” the result of the prior patent litigation will not change. Nor will allowing state courts to resolve these cases undermine development of a uniform body of patent law. View "Gunn v. Minton" on Justia Law

In an infringement suit, the district court declared Minton’s patent invalid under the “on sale” bar since he had leased his interactive securities trading system to a brokerage more than one year before the patent application, 35 U. S. C. 102(b). Seeking reconsideration, Minton argued for the first time that the lease was part of testing and fell within the “experimental use” exception to the bar. The Federal Circuit affirmed denial of the motion, concluding that the argument was waived. Minton sued for legal malpractice in Texas state court. His former attorneys argued that Minton’s claims would have failed even if the experimental-use argument had been timely raised. The trial court agreed. Minton then claimed that the court lacked jurisdiction under 28 U. S. C. 1338(a), which provides for exclusive federal jurisdiction over any case “arising under any Act of Congress relating to patents.” The Texas Court of Appeals rejected Minton’s argument and determined that Minton failed to establish experimental use. The state’s highest court reversed. The Supreme Court reversed, holding that Section 338(a) does not deprive state courts of subject matter jurisdiction over Minton’s malpractice claim. Federal law does not create that claim, so it can arise under federal patent law only if it necessarily raises a stated federal issue, actually disputed and substantial, which may be entertained without disturbing an approved balance of federal and state judicial responsibilities. Resolution of a federal patent question is “necessary” to Minton’s case and the issue is “actually disputed,” but it does not carry the necessary significance. No matter the resolution of the hypothetical “case within a case,” the result of the prior patent litigation will not change. Nor will allowing state courts to resolve these cases undermine development of a uniform body of patent law. View "Gunn v. Minton" on Justia Law

The two patents in suit relate to systems for minimizing the cost of placing long-distance telephone calls. Mediatrix manufactures and sells equipment that modifies existing telephone systems to convert them to voice-over-Internet-protocol systems. Over the course of infringement litigation, plaintiff (RTI) was ordered on four separate occasions to respond to a specific contention interrogatory propounded by Mediatrix: “Separately for each claim of the Patents-in-suit that [RTI] contends is infringed, state the basis for that contention, including without limitation, identification on an element-by-element basis of the component, structure, feature, functionality, method or process of each accused Mediatrix product that allegedly satisfies each element.” A magistrate determined that RTI never adequately responded to the interrogatory and that the failure to comply with the court’s orders was willful, and recommended dismissing the case and imposing monetary sanctions against RTI’s attorney, Hicks, and RTI in the amount of $86,965.81, to be split evenly between them. The district court adopted the recommendation. Hicks appealed the monetary sanction. RTI did not appeal. The Federal Circuit affirmed. View "Rates Tech., Inc. v. Mediatrix Telecom, Inc." on Justia Law

This case arose from a trademark infringement suit involving the sale of counterfeit versions of defendant's hoisin sauce. The district court subsequently imposed sanctions in fees and costs pursuant to FRCP 11 against plaintiffs and their attorneys in favor of defendant. The attorneys appealed, contending that the district court erred in its application of Rule 11. Defendant cross-appealed, contending that the district should have awarded substantially more in fees and costs and moved to sanction the attorneys for filing a purportedly frivolous appeal. The court held that the safe harbor requirement under Rule 11 was satisfied in these circumstances; the attorneys have failed to show that the district court abused its discretion in concluding that the action was frivolous; nor have the attorneys shown that the district court abused its discretion in deciding to impose monetary sanctions. The court rejected defendant's arguments on cross appeal and affirmed the judgment of the district court. View "Star Mark Mgmt., Inc. v. Koon Chun Hing Kee Soy & Sauce Factory, Ltd." on Justia Law

Plaintiff worked as an airplane mechanic, in the Navy and for several airlines. In the 1960s, he devised a tool that could reach deep inside airplane engines without disassembling external components. In 2000, a patent issued to plaintiff for the extended reach pliers, based on an application written and prosecuted by defendant. Danaher, a customer of plaintiff's business, subsequently developed its own version of the ERP and began competing against the device. Plaintiff sued for malpractice, alleging that the patent was so negligently drafted that it offered no meaningful protection against infringers. Its expert proposed alternate claim language that allegedly could have been enforced against Danaher. The district court granted defendant summary judgment, based on the element of causation. The Federal Circuit affirmed. Plaintiff did not raise a genuine dispute of material fact as to the patentability of its alternate claims. Plaintiff failed to raise a single material fact in dispute as to the nonobviousness of the proposed alternate claims. View "Minkin v. Gibbons, P.C." on Justia Law