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Eastland Music v. Lionsgate

The title of a work of intellectual property can infringe another author’s mark only if the title falsely implies that the latter author is its origin. Dastar Corp. v. Twentieth Century Fox Film Corp., 539 U.S. 23 (2003). The titles of Truman Capote’s novella Breakfast at Tiffany’s, and the movie of the same name, do not infringe the rights of Tiffany & Co. because no reasonable reader or moviegoer thinks that the jeweler is the source of the book or the movie. (We do not consider the possibil- ity of relief under dilution statutes.) Dastar held that trademark law cannot be used to obtain rights over the content of an artistic work; that would amount to an indefinite extension of a copyright. Titles of songs and movies cannot be copyrighted (see Peters, 629 F.3d at 635–36; 37 C.F.R. §202.1(a)); Dastar tells us not to use trademark law to achieve what copyright law forbids. Only a confusion about origin supports a trademark claim, and “origin” for this purpose means the “producer of the tangible product sold in the marketplace.” 539 U.S. at 31. Eastland Music’s complaint does not (and could not plausibly) allege that consumers treat it as the producer or source of the film 50/50, or treat Lionsgate as the producer of the 2003 rap album. AFFIRMED

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Gunn v. Minton

Held: Section §1338(a) does not deprive the state courts of subject matter jurisdiction over Minton’s malpractice claim. Pp. 4–13.

(a) Congress has authorized the federal district courts to exercise original jurisdiction over “any civil action arising under any Act of Congress relating to patents,” and further decreed that “[n]o State court shall have jurisdiction over any [such] claim.” §1338(a). Be- cause federal law did not create the cause of action asserted by Min- ton’s legal malpractice claim, the claim can “aris[e] under” federal pa- tent law only if it “necessarily raise[s] a stated federal issue, actually disputed and substantial, which a federal forum may entertain with- out disturbing any congressionally approved balance of federal and state judicial responsibilities.” Grable, 545 U. S., at 314. Pp. 4–6.

(b) Applying Grable’s inquiry here, it is clear that Minton’s legal malpractice claim does not arise under federal patent law. Pp. 6–12. (1) Resolution of a federal patent question is “necessary” to Min- ton’s case. To prevail on his claim, Minton must show that an experimental-use argument would have prevailed if only petitioners had timely made it in the earlier patent litigation. That hypothetical pa- tent case within the malpractice case must be resolved to decide Min- ton’s malpractice claim. P. 7. (2) The federal issue is also “actually disputed.” Minton argues that the experimental-use exception applied, which would have saved his patent from the on-sale bar; petitioners argue that it did not. Pp. 7–8.

(3) Minton’s argument founders, however, on Grable’s substantiality requirement. The substantiality inquiry looks to the importance of the issue to the federal system as a whole. Here, the federal issue does not carry the necessary significance. No matter how the state courts resolve the hypothetical “case within a case,” the real-world result of the prior federal patent litigation will not change. Nor will allowing state courts to resolve these cases undermine “the development of a uniform body of [patent] law.” Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U. S. 141, 162. The federal courts have exclusive jurisdiction over actual patent cases, and in resolving the nonhypothetical patent questions those cases present they are of course not bound by state precedents. Minton suggests that state courts’ answers to hypothetical patent questions can sometimes have real-world effect on other patents through issue preclusion, but even assuming that is true, such “fact-bound and situation-specific” effects are not sufficient to establish arising under jurisdiction, Empire HealthChoice Assurance, Inc. v. McVeigh, 547 U. S. 677, 701. Finally, the federal courts’ greater familiarity with patent law is not enough, by itself, to trigger the federal courts’ exclusive patent jurisdiction. Pp. 8–12.

(4) It follows from the foregoing that Minton does not meet Grable’s fourth requirement, which is concerned with the appropriate federal-state balance. There is no reason to suppose that Congress meant to bar from state courts state legal malpractice claims simply because they require resolution of a hypothetical patent issue. P. 12.

355 S. W. 3d 634, reversed and remanded.

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Brilliant Instruments, Inc. v. GuideTech, LLC

GuideTech, LLC (GuideTech) appeals from the dis- trict court’s grant of summary judgment that Brilliant Instruments, Inc. (Brilliant) did not infringe three related GuideTech patents: U.S. Patent Nos. 6,226,231 (’231 patent), 6,091,671 (’671 patent), and 6,181,649 (’649 patent). See Brilliant Instruments, Inc. v. GuideTech, Inc., No. C. 09-5517 SW, 2011 WL 3515904 (N.D. Cal. Aug. 11, 2011) (Summary Judgment Order). Because the court erred in granting summary judgment, we reverse and remand.

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Cephalon, Inc. v. Watson Pharm., Inc.

This action arises out of the filing of an Abbreviated New Drug Application (“ANDA”) by Watson Pharmaceuticals, Inc., Watson Laboratories, Inc., and Watson Pharma, Inc. (collectively, “Watson”) for a generic version of FENTORA®. In response to Watson’s ANDA filing, Cephalon, Inc. and CIMA Labs, Inc. (collectively, “Cephalon”) instituted this patent infringement suit at the United States District Court for the District of Delaware asserting U.S. Patent Nos. 6,200,604 (“the ’604 patent”) and 6,974,590 (“the ’590 patent”). After a bench trial, the district court found that Watson’s ANDA products did not infringe and held the asserted patents invalid for lack of enablement. Cephalon, Inc. v. Watson Pharms., Inc., 769 F. Supp. 2d 729, 761 (D. Del. 2011). We reverse on the issue of enablement because Watson failed as a matter of law to show with clear and convincing evidence that Cephalon’s patents require undue experimentation to practice the invention. As to the noninfringement finding, the district court did not clearly err. Thus, we reverse– in–part and affirm–in–part.

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Function Media, L.L.C. v. Google, Inc.

In this patent case, Function Media, L.L.C. (“FM”) appeals the district court’s invalidation of one of FM’s patents as indefinite and the jury’s verdict that two other FM patents are invalid and also not infringed. FM raises several other issues on appeal, including a claim that the district court abdicated to the jury its responsibility to construe disputed claim terms, an argument that the district court incorrectly denied its motion for a new trial on the grounds that the verdict was against the great weight of the evidence, and an argument that the verdicts of infringement and invalidity are irreconcilable. For the reasons explained below, we affirm.

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Semiconductor Energy Lab. Co., Inc. v. Nagata

Semiconductor Energy Laboratory Co., Ltd. (“SEL”) appeals from the order of the United States District Court for the Northern District of California dismissing SEL’s complaint with prejudice pursuant to Fed. R. Civ. P. 12(b)(1) for lack of subject matter jurisdiction under 28 U.S.C. § 1338(a) and declining to exercise supplemental jurisdiction over a number of state law claims. Semiconductor Energy Lab. Co. v. Nagata, No. 11-02793, 2012 WL 177557, at *8 (N.D. Cal. Jan. 23, 2012). Because the district court did not err in holding that there is no federal cause of action based on assignor estoppel and did not abuse its discretion in declining supplemental jurisdiction over the state law claims, we affirm.

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Tekelec, Inc. v. Verint Systems, Inc.

This appeal arises out of a contract dispute between Verint Systems, Inc. (“Verint”) and Tekelec, Inc. (“Tekelec”). The district court awarded summary judgment to Tekelec and denied Verint’s cross-motion for summary judgment. We affirm.

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United States v. Howley

In this case, a jury convicted Clark Roberts and Sean Howley of seven counts of stealing trade secrets, see 18 U.S.C. § 1832(a), and three counts of engaging in wire fraud, see 18 U.S.C. §§ 1343 and 1349. We affirm their convictions but reverse their sentences.

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Arkema v. Honeywell

Defendant Honeywell International, Inc. (“Honeywell”) and plaintiffs Arkema Inc. and Arkema France (“Arkema”) compete in the manufacture and sale of automotive refrigerants. Honeywell owns United States Patent No. 8,033,120 (“the ’120 patent”) and United States Patent No. 8,065,882 (“the ’882 patent”). Arkema sought a declaratory judgment that by entering into contracts to supply HFO-1234yf (“1234yf”), a nextgeneration automotive refrigerant, to automobile manufacturers for use in automobile air conditioning systems, it would not incur liability as an indirect infringer under the ’120 and ’882 patents, which cover methods of using 1234yf in automobile air conditioning systems. The district court refused to entertain Arkema’s request for declaratory judgment, denying Arkema’s motion to supplement its complaint to add declaratory claims with respect to the ’120 and ’882 patents on the grounds that there was no justiciable controversy. We find that the district court erred in its determination that there is no justiciable controversy, and reverse the district court’s denial of Arkema’s motion to supplement. We remand for further proceedings consistent with this opinion.

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Accent Packaging, Inv. v. Leggett & Platt, Inc.

Accent Packaging, Inc. (“Accent”) appeals the district court’s grant of summary judgment to Leggett & Platt, Inc. (“Leggett”) of noninfringement of claims 1-5 of U.S. Patent No. 7,373,877 (“’877 patent”) and of claims 1, 3, 4, 7, and 10-14 of U.S. Patent No. 7,412,992 (“’992 patent”). As part of its appeal, Accent challenges the district court’s construction of the terms “each” and “a respective one” in the claims of the ’877 patent. Because the district court erred in its construction, we reverse the district court’s grant of summary judgment to Leggett with respect to claims 1-4 of the ’877 patent and remand to the district court to enter summary judgment in favor of Accent on those claims. We affirm, however, the district court’s grant of summary judgment to Leggett with respect to claim 5 of the ’877 patent and all of the asserted claims of the ’992 patent. We also affirm the district court’s denial of Accent’s motion for additional discovery pursuant to Fed. R. Civ. P. 56(d), as well as its dismissal of Accent’s Missouri Uniform Trade Secrets Act (“MUTSA”) cause of action.

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