Intellectual Property and Tech Law Reports

Dep't of Parks & Recreation v. Bazaar del Mundo Inc.

WARDLAW, Circuit Judge:
The Department of Parks and Recreation for the State of California (the “State”) appeals the denial of its motion to preliminarily enjoin Bazaar del Mundo from using the registered trademarks CASA DE BANDINI and CASA DE PICO in the operation of restaurants located outside the boundaries of the Old Town San Diego State Historic Park (“Old Town”). The critical issue in dispute is whether the State owns any protectible interest in the trademarks. Because we agree with the district court that the State failed to introduce sufficient evidence of ownership of the marks and thereby failed to establish the requisite degree of likelihood of success on the merits, we affirm the district court’s denial of injunctive relief.

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Laws v. Sony Music Entm't

BYBEE, Circuit Judge:
Plaintiff Debra Laws (“Laws”) brought suit against defendant Sony Music Entertainment, Inc. (“Sony”) for misappropriating her voice and name in the song “All I Have” by Jennifer Lopez and L.L. Cool J. The district court found that Sony had obtained a license to use a sample of Laws’s recording of “Very Special” and held that Laws’s claims for violation of her common law right to privacy and her statutory right of publicity were preempted by the Copyright Act, 17 U.S.C. § 101-1332. We agree with the district court that the Copyright Act preempts Laws’s claims, and we affirm.

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Falkner v. Inglis

GAJARSA, Circuit Judge.
This is an appeal from a decision of the Board of Patent Appeals and Interferences (“Board”) in Interference No. 105,187, declared on December 24, 2003, between Falkner et al., U.S. Patent No. 5,770,212 (“the Falkner ’212 patent”) and Inglis et al., U.S. Application Serial No. 08/459,040 (“the Inglis ’040 application”). The Administrative Patent Judge (APJ) designated Inglis as the senior party. On December 29, 2004, the Board issued a final decision, holding that Falkner could not antedate Inglis’ September 25, 1990 priority date, and entered judgment against Falkner on the sole count of the interference. It ordered that Falkner was not entitled to claims 1-19 of the Falkner ’212 patent. It further ordered that Inglis was entitled to claims 9, 10, 29 and 30 of the ’040 application. Falkner filed a timely notice of appeal. This Court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) and 35 U.S.C. §§ 141 and 142. For the reasons discussed below, we affirm the judgment of the Board.

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eBay Inc. v. MercExchange, L.L.C.

Petitioners operate popular Internet Web sites that allow private sellers to list goods they wish to sell. Respondent sought to license its business method patent to petitioners, but no agreement was reached. In respondent’s subsequent patent infringement suit, a juryfound that its patent was valid, that petitioners had infringed the patent, and that damages were appropriate. However, the District Court denied respondent’s motion for permanent injunctive relief. In reversing, the Federal Circuit applied its “general rule that courts will issue permanent injunctions against patent infringement absent exceptional circumstances.” 401 F. 3d 1323, 1339.

Held: The traditional four-factor test applied by courts of equity whenconsidering whether to award permanent injunctive relief to a prevailing plaintiff applies to disputes arising under the Patent Act.That test requires a plaintiff to demonstrate: (1) that it has suffered an irreparable injury; (2) that remedies available at law are inadequate to compensate for that injury; (3) that considering the balanceof hardships between the plaintiff and defendant, a remedy in equity is warranted; and (4) that the public interest would not be disserved by a permanent injunction. The decision to grant or deny such reliefis an act of equitable discretion by the district court, reviewable onappeal for abuse of discretion. These principles apply with equal force to Patent Act disputes. “[A] major departure from the long tradition of equity practice should not be lightly implied.” Weinberger v. Romero-Barcelo, 456 U. S. 305, 320. Nothing in the Act indicates such a departure. Pp. 2–6.

401 F. 3d 1323, vacated and remanded.

THOMAS, J., delivered the opinion for a unanimous Court.

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Wall Data Inc. v. Los Angeles County Sheriff's Dep't

PREGERSON, Circuit Judge: The Los Angeles County Sheriff’s Department purchased 3,663 licenses to Wall Data’s computer software, but installed the software onto 6,007 computers. We are asked to determine whether the Sheriff’s Department’s conduct constituted copyright infringement. The wrinkle in this otherwise smooth question is that, although the software was installed onto 6,007 computers, the computers were configured such that the total number of workstations able to access the installed software did not exceed the total number of licenses the Sheriff’s Department purchased. We have jurisdiction under 28 U.S.C. § 1291 and hold that such copying constitutes copyright infringement despite the Sheriff’s Department’s configuration. We therefore affirm the district court.

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Applied Med. Res. Corp. v. US Surgical Corp.

PROST, Circuit Judge.
Applied Medical Resources Corporation (“Applied”) appeals from a decision of the United States District Court for the Central District of California granting summary judgment of non-infringement of United States Patent No. 5,385,553 (“the ’553 patent”) in favor of United States Surgical Corporation (“U.S. Surgical”). See Applied Med. Res. Corp. v. U.S. Surgical Corp., No. SA CV 03-1267 (C.D. Cal. Mar. 7, 2005) (“Applied Opinion”). Because we conclude that there are genuine issues of material fact regarding infringement of the ’553 patent given the claim construction adopted by the district court, we vacate the district court’s grant of summary judgment and remand for further proceedings consistent with this opinion.

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Bill Graham Archives, LLC. v. Dorling Kindersley Ltd.

Before: KEARSE and RAGGI, Circuit Judges, and RESTANI,* Judge.
Plaintiff-Appellant appeals from a judgment of the United States District Court for the Southern District of New York (George B. Daniels, Judge) granting summary judgment in favor of defendants on their fair use defense and denying plaintiff's motion for summary judgment.
Affirmed.

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Old Town Canoe Co. v. Confluence Holdings Corp.

Before MAYER, SCHALL, and LINN, Circuit Judges.
Opinion for the court filed by Circuit Judge LINN. Dissenting opinion filed by Circuit Judge MAYER.
Old Town Canoe Company (“Old Town”) appeals from the grant of Confluence Holdings Corp.’s (“Confluence”) motion for judgment as a matter of law (“JMOL”) of noninfringement of U.S. Patent No. 4,836,963 (filed May 26, 1987) (“the ’963 patent”). See Old Town Canoe Co. v. Confluence Holdings Corp., No. 02-CV-0093 (D. Or. Nov. 10, 2004). Confluence cross-appeals from the grant of Old Town’s motion for JMOL of no invalidity based on obviousness, lack of enablement, or failure to disclose best mode, and of no unenforceability based on inequitable conduct. See id. Because the district court did not err in its construction of the claims and correctly concluded that no reasonable juror could find infringement, we affirm the judgment of noninfringement. Because we cannot conclude that no reasonable juror could find in favor of Confluence on the invalidity issues, we vacate the District Court’s grant of JMOL on those issues and remand for further proceedings consistent with this opinion. Because the district court did not abuse its discretion in granting Old Town’s motion for JMOL of no inequitable conduct, we affirm on that issue.

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Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc.

Before NEWMAN, DYK, and PROST, Circuit Judges.
Opinion for the court by Circuit Judge NEWMAN; additional views by Circuit Judge NEWMAN.
Inpro II Licensing, S.A.R.L. appeals from the decision of the United States District Court for the District of Delaware, granting judgment of noninfringement of U.S. Patent No. 6,523,079 (the '079 patent) in favor of T-Mobile USA, Inc., Research in Motion Limited, and Research in Motion Corporation (collectively "T-Mobile").1 The parties stipulate that the district court's construction of certain claim terms, including the term "host interface," preclude infringement. We hold that the district court correctly construed "host interface," and on this ground we affirm the judgment of noninfringement. Since this aspect is dispositive of the issue of noninfringement, we do not reach the other aspects of the district court's claim construction.

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Caradon Doors & Windows, Inc. v. Eagle-Picher Indus., Inc.

SUTTON, Circuit Judge. Eagle-Picher Industries emerged from Chapter 11 bankruptcy in November 1996, and in this case seeks to stay a $20 million patent-infringement action filed by Caradon Doors and Windows against it in May 1997. After considerable collateral skirmishing, the merits of the stay motion focused on the following disagreement. Eagle-Picher contends that the patent-infringement claim cannot proceed because the confirmation of the 1996 reorganization plan discharged Caradon’s claim. Caradon responds that the patent-infringement claim arose in the ordinary course of doing business with the debtor and that the plan by its terms excepted this kind of claim from discharge. The bankruptcy court agreed with Eagle-Picher while the district court agreed with Caradon. We agree with the district court and affirm.

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Paymaster Techs., Inc. v. US

MICHEL, Chief Judge.

The United States appeals the final judgment of liability for its use of a patented invention and of damages by the United States Court of Federal Claims in this case under 28 U.S.C. § 1498. Paymaster Techs., Inc. v. United States, 61 Fed. Cl. 593 (2004) (“Paymaster II”). Critical to the trial court’s finding use of the invention of United States Patent No. 5,292,283 (“the ’283 patent”) by two types of money order forms by the United States Postal Service (“USPS”) was its construction of the claim limitations “form set” and “ink permeates through the sheet from said printed front surface to said back surface to provide the indicia in mirror image form on said back surface,” found in all three asserted claims. The government challenges the trial court’s interpretation of these two claim phrases, but agrees that if the constructions stand, so do the rulings of use of the patented invention. The United States also appeals the damage award, alleging that too large a royalty base was used, as no reduction was made for a percentage, allegedly 10%, of one of the form sets that due to production variations does not meet all claim limitations. Paymaster Technologies, Inc. (“Paymaster”) cross appeals the damage award and requests remand to re-determine and increase the royalty rate, particularly if the royalty base is reduced.

As to use of the patented invention, encompassing both types of money orders, because we agree with the trial court’s claim constructions, we affirm. We vacate and remand the damages judgment as to the royalty base for findings consistent with our opinion. We affirm the damages judgment as to the royalty rate of 3.5%. Finally, we commend the trial judge for her painstaking, lucid, and lengthy opinion.

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