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Fla. Virtual Sch. v. K12, Inc.

This case is before the Court to answer a question under Florida law certified by the United States Court of Appeals for the Eleventh Circuit that is essential in determining an action pending in that court and for which there appears to be no controlling Florida precedent. We have jurisdiction. Art. V, § 3(b)(6), Fla. Const. In Florida VirtualSchool v. K12, Inc., 735 F.3d 1271, 1275 (11th Cir. 2013), the Eleventh Circuit certified the following question:

Does Florida VirtualSchool’s statutory authority to “acquire, enjoy, use, and dispose of . . . trademarks and any licenses and other rights or interests thereunder or therein” necessarily include the authority to bring suit to protect those trademarks, or is that authority vested only in the Department of State?

Because the statute quoted by the Eleventh Circuit includes additional language that is relevant to our resolution of the issue presented, and that federal court specifically stated that our analysis is not limited, we rephrase the certified question as follows:

Does the Florida Virtual School’s statutory authority to “acquire, enjoy, use, and dispose of . . . trademarks and any licenses and other rights or interests thereunder or therein,” and the designation of its board of trustees as a “body corporate with all the powers of a body corporate and such authority as is needed for the proper operation and improvement of the Florida Virtual School,” necessarily include the authority to file an action to protect those trademarks?

For the reasons expressed below, we answer the question in the affirmative.

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SCA Hygiene Prods v. First Quality Baby Prods., LLC

SCA owns U.S. Patent No. 6,375,646 (the ’646 patent), which relates to certain adult incontinence products. After SCA sued a competitor, First Quality, for infringement of the ’646 patent, the district court dismissed the case, finding that SCA’s claims were barred by both laches and equitable estoppel. Because the district court properly concluded that SCA’s more than six-year delay in filing suit warranted dismissal based on laches, we affirm the court’s grant of summary judgment in that regard. But given SCA and First Quality’s limited interactions, there remain genuine issues of material fact pertaining to equitable estoppel. Accordingly, we reverse the district court’s grant of summary judgment as to equitable estoppel and remand for further proceedings consistent with this opinion.

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Jang v. Boston Scientific Corp.

Boston Scientific Corporation and Scimed Life Systems, Inc. petition for permission to appeal an order of the United States District Court for the Central District of California that denied summary judgment. The district court certified the order for appeal under 28 U.S.C.§ 1292(b). On June 9, 2014, this court ordered the parties to address whether this court has jurisdiction over this petition in light of Gunn v. Minton, 133 S. Ct. 1059 (2013), or whether this petition should be transferred to the United States Court of Appeals for the Ninth Circuit. We have considered the submissions of the parties and for the reasons provided here decline to transfer and deny the petition for interlocutory review.

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VirnetX, Inc. v. Cisco Sys., Inc.

Apple Inc. appeals from a final judgment of the U.S. District Court for the Eastern District of Texas, in which a jury found that Apple infringed U.S. Patent Nos. 6,502,135 (“’135 patent”), 7,418,504 (“’504 patent”), 7,490,151 (“’151 patent”), and 7,921,211 (“’211 patent”). The jury further found that none of the infringed claims were invalid and awarded damages to plaintiffs-appellees VirnetX, Inc. and Science Applications International Corporation (“SAIC”) in the amount of $368,160,000. For the reasons that follow, we affirm the jury’s findings that none of the asserted claims are invalid and that many of the asserted claims of the ’135 and ’151 patents are infringed by Apple’s VPN On Demand product. We also affirm the district court’s exclusion of evidence relating to the reexamination of the patents-in-suit. However, we reverse the jury’s finding that the VPN On Demand product infringes claim 1 of the ’151 patent under the doctrine of equivalents. We also reverse the district court’s construction of the claim term “secure communication link” in the ’504 and ’211 patents and remand for further proceedings to determine whether the FaceTime feature infringes those patents under the correct claim construction. Finally, we vacate the jury’s damages award and remand for further proceedings consistent with this opinion.

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Vehicle Market Research v. Mitchell International

This is a judicial estoppel case, which is controlled by two principles: our reluctance to impose the harsh remedy of judicial estoppel, and the failure by the party asserting judicial estoppel to bear its burden to point to clearly inconsistent statements in support of its arguments.

The case involves statements made by plaintiff Vehicle Market Research, Inc. (VMR) in a breach of contract case that were allegedly inconsistent with earlier statements by the sole owner and alter-ego of that company, John Tagliapietra, in his Chapter 7 bankruptcy proceeding. Specifically, VMR developed and owned certain intellectual property (referred to in the contract as “Materials and Intellectual Property”)—including a software system to calculate the value of a total loss of an automobile for the purposes of the automobile insurance industry (the “TLSS Product”) and certain “pre-existing software tools, utilities, concepts, techniques, text, research or development” used in the development of TLSS (the “Pre-Existing Materials”). (R. Vol. I at 261, ¶8.1.) When Mr. Tagliapietra filed for personal bankruptcy, he asserted that his shares in VMR were worth nothing. A few years later, as the bankruptcy was winding down, VMR sued Mitchell International, Inc. (Mitchell), the company to which it had exclusively licensed the Materials and Intellectual Property, seeking up to $4.5 million in damages for the alleged misappropriation of the Materials and Intellectual Property. The question before us is whether the statements by VMR and Mr. Tagliapietra in the litigation against Mitchell were so clearly contrary to the statements made by Mr. Tagliapietra in his bankruptcy proceeding that VMR should be judicially estopped from proceeding with its suit against Mitchell.

There is no doubt that when Mr. Tagliapietra filed his bankruptcy, he listed the value of VMR’s stock as 0.00. He did not amend that statement, except to approve the bankruptcy Trustee’s valuation of the shares at a value of “unknown” at some point in 2009, around the time that he was preparing to file his lawsuit (in the shoes of VMR) against Mitchell. As a result of Mr. Tagliapietra’s representations in the bankruptcy court, the Trustee and the bankruptcy court awarded Mr. Tagliapietra a discharge of his debts based in part on the assumption that his company was worthless.

Turning to the VMR litigation at hand against Mitchell, VMR alleged in the unverified complaint that it was entitled to up to $4.5 million on its contract with Mitchell authorizing Mitchell to use the Materials and Intellectual Property. In Mr. Tagliapietra’s 2011 deposition in the instant litigation, he acknowledged that the Pre-Existing Materials, the existence of which preceded the filing of his bankruptcy, were worth $4 million in 2009.

We review the doctrine of judicial estoppel with guidance telling us we should apply it sparingly and require a clearly inconsistent statement before invoking it. We conclude that neither VMR’s litigation claim for payments until they reach a cap of $4.5 million nor Mr. Tagliapietra’s deposition testimony in that lawsuit—that VMR was entitled to “up to” $4 million in royalties and that, in 2009, the Pre-Existing Materials were worth $4 million—is clearly inconsistent with his valuation of 0.00 for his VMR stock at the time of his bankruptcy petition in 2005, the date when the initial bankruptcy representations were made.

If there were grounds for judicial estoppel, it would have to be based on a duty by Mr. Tagliapietra to amend his bankruptcy pleadings to report a possible increased value for his VMR stock at least as of the time that VMR filed its suit against Mitchell in 2009. However, our precedent is not clear on whether a debtor has a continuing duty to amend his bankruptcy schedules when the estate’s assets change in value. Given our reluctance to invoke judicial estoppel, and keeping in mind that judicial estoppel is an affirmative defense that its proponent must prove, we conclude that in this case Mitchell has not met its burden of showing any clearly inconsistent statements that would warrant that relief. We therefore REVERSE the district court’s opinion as an abuse of discretion.

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Kienitz v. Sconnie Nation, LLC

Two things can be said for Kienitz. First, defendants did not need to use the copyrighted work. They wanted to mock the Mayor, not to comment on Kienitz’s skills as a photographer or his artistry in producing this particular photograph. There’s no good reason why defendants should be allowed to appropriate someone else’s copyrighted efforts as the starting point in their lampoon, when so many non-­copyrighted alternatives (including snapshots they could have taken themselves) were available. The fair-­use privilege under §107 is not designed to protect lazy appropriators. Its goal instead is to facilitate a class of uses that would not be possible if users always had to negotiate with copyright proprietors. (Many copyright owners would block all parodies, for example, and the administrative costs of finding and obtaining consent from copyright holders would frustrate many academic uses.)

Second, this use may injure Kienitz’s long-­range commercial opportunities, even though it does not reduce the value he derives from this particular picture. He promises his subjects that the photos will be licensed only for dignified uses. Fewer people will hire or cooperate with Kienitz if they think that the high quality of his work will make the photos more effective when used against them! But Kienitz does not present an argument along these lines, and the consideration in the preceding paragraph is not enough to offset the fact that, by the time defendants were done, almost none of the copyrighted work remained. The district court thus reached the right conclusion.

AFFIRMED

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Interval Licensing LLC v. AOL, Inc.

Interval Licensing LLC (“Interval”) appeals from four stipulated final judgment orders of the United States District Court for the Western District of Washington. Each order granted: (1) final judgment of invalidity of claims 4–8, 11, 34, and 35 of U.S. Patent 6,034,652 (“the ’652 patent”) and claims 1–4 and 7–15 of U.S. Patent 6,788,314 (“the ’314 patent”), based on the court’s determination that those claims are indefinite; and (2) final judgment of non-infringement of claims 15–18 of the ’652 patent, based on the court’s claim construction of the phrase “during operation of an attention manager.” While we agree with the court’s indefiniteness determination, we do not agree with the court’s construction of “attention manager” and thus modify that construction. Additionally, we modify the court’s construction of the term “instructions.” For the reasons set forth below, we affirm the judgments of invalidity, vacate the judgments of noninfringement, and remand for further proceedings.

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Scientific Plastic Prods., Inc. v. Biotage AB

Scientific Plastics Products, Inc. (SPP) is the owner of the three United States Patents here at issue: No. 7,138,061 (the ’061 patent), No. 7,381,327 (the ’327 patent), and No. 7,410,571 (the ’571 patent), which relate to a resealable cartridge for low pressure liquid chromatography (LPLC). The ’061 patent claims a method of performing LPLC using the cartridge, the ’571 patent claims the cartridge, and the ’327 patent claims a modified cartridge. After SPP filed suit against Biotage AG for patent infringement, Biotage requested inter partes reexamination of the three patents. The district court then stayed the infringement litigation.

The patent examiner rejected all claims of the three patents on the ground of obviousness, and the Patent Trial and Appeal Board affirmed the rejections and cancelled all claims.  We affirm the Board’s decisions.

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EPOS Techs. Ltd. v. Pegasus Techs., Ltd.

Appellants, Pegasus Technologies Ltd. and Luidia, Inc., own several patents relating to digital pens and receiver devices which, they allege, the Appellees have infringed. Following claim construction of certain terms in the patents, the district court granted summary judgment of noninfringement in favor of Appellees. Because we conclude that the district court erred in construing four claim terms and in granting summary judgment of noninfringement, we vacate-in-part, reverse-in-part, and remand for further proceedings consistent with this opinion.

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Oracle Corp. v. SAP AG

The panel affirmed in part and vacated in part the district court’s judgment after a jury trial on damages for infringement of enterprise software copyrights owned by Oracle Corp. and other plaintiffs.

The jury awarded Oracle $1.3 billion as the fair market value of a hypothetical license from Oracle encompassing the defendants’ infringement of Oracle’s copyrights. The district court granted judgment as a matter of law on the ground that Oracle failed to provide enough evidence to permit the jury to establish an objective, non-speculative hypothetical-license price. The district court ordered a new trial, conditioned on Oracle’s rejection of a $272 million remittitur measured by the copyright holder’s lost profits plus infringer’s profits, rather than by hypothetical-license damages. Oracle rejected the remittitur. The district court ruled that, if a second trial were conducted, Oracle would not be able to argue for, or present evidence of, hypothetical-license damages. Oracle and the defendants stipulated to a $306 million judgment.

Affirming the district court’s grant of JMOL, the panel held that in order to recover hypothetical-license damages, Oracle did not have to show that it actually would have granted a license to defendants. The panel also held that the hypothetical-license damage award was based on undue speculation. The panel affirmed the district court’s grant of defendants’ motion for new trial conditioned on Oracle’s rejection of a remittitur, as well as the district court’s ruling that Oracle could not pursue hypothetical-license damages at a second trial.

The panel vacated the district court’s ruling selecting $272 million as the remittitur amount because that amount was below the maximum amount sustainable by the proof. The panel remanded with instructions to condition any new trial on Oracle’s rejection of a $356.7 million remittitur.

The panel affirmed the district court’s denial of Oracle’s motion to exclude testimony by defendants’ damages expert during a second trial. The panel declined to reach additional issues concerning a second trial.

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