Previous month:
October 2016
Next month:
December 2016

In re: Rearden, LLC

The defendants in the underlying case, Rearden LLC, Rearden MOVA LLC, MO2, LLC, and MOVA, LLC, petition for a writ of mandamus to challenge the district court’s order compelling them to produce allegedly privileged documents. We conclude we have jurisdiction to decide their petition. We further conclude that petitioners’ arguments fail to carry the high burden required on mandamus to overturn the district court’s discovery determination. We therefore deny their petition.

Download In re Rearden, LLC

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Christian Faith Fellowship Church v. Adidas AG

Christian Faith Fellowship Church appeals a final judgment of the Trademark Trial and Appeal Board that, in response to a petition filed by adidas AG, cancelled its trademarks for failing to use the marks in commerce before registering them. The Board held that the Church’s documented sale of two marked hats to an outof-state resident were de minimis and therefore did not constitute use of the marks in commerce under the Lanham Act. Because the Lanham Act defines commerce as all activity regulable by Congress, and because the Church’s sale to an out-of-state resident fell within Congress’s power to regulate under the Commerce Clause, we reverse the Board’s cancellation of the Church’s marks on this basis and remand for further proceedings.

Download Christian Faith Fellowship Church v. Adidas AG

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Alfred E. Mann Foundation for Scientific Research v. Cochlear Corp.

The Alfred E. Mann Foundation for Scientific Research sued Cochlear Corporation and Cochlear Ltd. for infringing claims 1 and 10 of U.S. Patent No. 5,609,616 and claims 6–7 of U.S. Patent No. 5,938,691, which cover implantable cochlear stimulators. After conducting a jury trial and a bench trial on separate issues, the district court entered judgment finding claim 10 of the ’616 patent infringed and claim 1 of the ’616 patent and claims 6–7 of the ’691 patent invalid for indefiniteness. The court also granted Cochlear’s JMOL of no willful infringement and its motion for a new trial on damages. Both parties appeal. Because we find that the district court did not err in its infringement determination or in finding claims 6–7 indefinite, but did err in finding claim 1 indefinite, we affirm-in-part and reverse-in-part. We vacate and remand the district court’s determination regarding willfulness in light of the Supreme Court’s decision in Halo Electronics, Inc. v. Pulse Electronics, Inc., 579 U.S. __, 136 S. Ct. 1923 (2016). We also conclude that we do not have jurisdiction over the damages issue.

Download Alfred E. Mann Foundation for Scientific Research v. Cochlear Corp.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Unwired Planet, LLC v. Google, Inc.

Unwired Planet, LLC (“Unwired”) appeals from the final written decisions of the Patent Trial and Appeal Board (“Board”) in Inter Partes Review (“IPR”) No. 2014- 00036 and Covered Business Method (“CBM”) Patent Review No. 2014-00005. Google Inc. v. Unwired Planet, LLC, IPR2014-00036, 2015 WL 1478653 (P.T.A.B. Mar. 30, 2015) (“IPR Final Decision”); Google Inc. v. Unwired Planet, LLC, CBM2014-00005, 2015 WL 1519056 (P.T.A.B. Mar. 30, 2015) (“CBM Final Decision”). For the reasons stated below, we affirm the Board’s decision that the challenged claims of U.S. Patent No. 7,024,205 (the “’205 patent”) are invalid as obvious in the IPR appeal and dismiss the CBM appeal as moot.

Download Unwired Planet, LLC v. Google, Inc.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Perfect Surgical Techniques, Inc. v. Olympus America, Inc.

Perfect Surgical Techniques, Inc. (“PST”) appeals from a decision of the Patent Trial and Appeal Board (“Board”) invalidating claims 1, 4–6, 8, 9, 11, 12, 38, 41– 44, 46, 47, and 49 of U.S. Patent No. 6,030,384 (“’384 patent”). For the reasons set forth below, we vacate and remand.

Download Perfect Surgical Techniques, Inc. v. Olympus America, Inc.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Warner Bros. Entertainment v. X One X Productions

X One X Productions, A.V.E.L.A., Inc., Art-Nostalgia.com, Inc., and Leo Valencia (collectively, “AVELA”) appeal a permanent injunction prohibiting them from licensing images from the films Gone with the Wind and The Wizard of Oz, as well as the animated short films featuring cat-and-mouse duo Tom and Jerry. The district court issued the permanent injunction after granting summary judgment in favor of Warner Bros. Entertainment, Inc., Warner Bros. Consumer Products, Inc., and Turner Entertainment Co. (collectively, “Warner”) on their claim that AVELA infringed their trademarks and engaged in unfair competition by licensing iconic pictures and phrases from the films. For the reasons discussed below, we affirm.

Download Warner Bros. Entertainment v. X One X Productions

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

NuVasive, Inc.

NuVasive, Inc. owns U.S. Patent No. 8,187,334, which describes and claims implants for spinal fusion surgery. Medtronic, Inc.—which settled with NuVasive and has withdrawn from the present appeals—filed two petitions for inter partes review with the Patent and Trademark Office, which the Patent Trial and Appeal Board instituted as IPR2013-507 (IPR507) and IPR2013-508 (IPR508). The Board ultimately cancelled all but one of the challenged claims under 35 U.S.C. § 103, finding in one priorart reference, i.e., Michelson’s U.S. Patent No. 5,860,973, a spinal fusion implant that meets two of the claim requirements of the ’334 patent—having a length both greater than 40 mm and at least 2.5 times its width. Medtronic, Inc. v. NuVasive, Inc., IPR2013-507, 2015 WL 996353 (PTAB Feb. 11, 2015) (IPR507 Board Decision); Medtronic, Inc. v. NuVasive, Inc., IPR2013-508, 2015 WL 996354 (PTAB Feb. 11, 2015) (IPR508 Board Decision).

On appeal, NuVasive contends that it did not receive adequate notice of or opportunity to address that reading of Michelson and its consequences for the overall obviousness analysis. We agree in part. In IPR507, Medtronic’s petition put NuVasive on notice that Medtronic was relying on particular portions of Michelson to teach the ’334 patent’s claimed long-and-narrow implants. In that proceeding, we see neither procedural nor other error in the Board’s decision, and we therefore affirm. In IPR508, however, Medtronic’s petition did not notify NuVasive of the assertions about the pertinent portions of Michelson that later became critical. In that proceeding, we conclude, the Board’s ultimate reliance on that material, together with its refusal to allow NuVasive to respond fully once that material was called out, violated NuVasive’s rights under the Administrative Procedure Act. Our affirmance in IPR507 resolves the unpatentability of the ’334 patent’s claims 1–5, 10, 11, 14, 15, and 19–28, but claims 16 and 17 are at issue only in IPR508. We vacate the Board’s IPR508 decision and remand for further proceedings on claims 16 and 17.

Download NuVasive, Inc.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

REG Synthetic Fuels, LLC v. Neste Oil Oyj

This appeal arises from a petition for inter partes review filed by Neste Oil Oyj (Neste) against claims 1–5 and 8 of U.S. Patent No. 8,231,804 (’804 patent), which is owned by REG Synthetic Fuels, LLC (REG). The United States Patent and Trademark Office, Patent Trial and Appeal Board (Board) instituted trial, and in its final written decision, the Board found claims 1, 3, 4, and 8 anticipated by U.S. Patent No. 4,992,605 (Craig), and claims 1–3, 5, and 8 anticipated by U.S. Published Patent Application No. 2008/0312480 (Dindi). Neste Oil Oyj v. REG Synthetic Fuels, LLC, No. IPR2013-00578, 2015 WL 1263029, at *14, 17 (PTAB Mar. 12, 2015). During trial, both parties filed motions to exclude documentary evidence, and the Board excluded several REG exhibits based on hearsay and other grounds. REG appeals the Board’s unpatentability determinations and its exclusion of certain REG exhibits. For the reasons stated herein, we affirm-in-part, reverse-in-part, vacate-in-part, and remand for further proceedings.

Download REG Synthetic Fuels, LLC v. Neste Oil Oyj

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Cross Commerce Media, Inc. v. Collective, Inc.

Collective, Inc. and Cross Commerce Media, Inc., two companies that provide data‐driven analytic software to businesses, dispute whether several of Collectiveʹs trademarks are valid and, if so, have been infringed by Cross Commerce Mediaʹs marks.  In a series of decisions, the United States District Court for the Southern District of New York (Katherine B. Forrest, Judge) granted summary judgment for Cross Commerce Media and awarded it attorneyʹs fees under the Lanham Act.  We reverse those decisions in part, vacate them in part, and remand for further proceedings.

Download Cross Commerce Media, Inc. v. Collective, Inc.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

EMI Christian Music Group, Inc. v. MP3tunes, LLC

In this appeal, we principally address one requirement of the Digital Millennium Copyright Act (“DMCA”) safe harbor: that an internet service provider “adopt[] and reasonably implement[]” a policy to terminate “repeat infringers.”  17 U.S.C. § 512.  The plaintiffs, all record companies and music publishers, brought this copyright infringement suit against MP3tunes, LLC and its founder and Chief Executive Officer Michael Robertson.  The plaintiffs alleged that two websites created by MP3tunes— MP3tunes.com, which primarily served as a locker service for storing digital music, and sideload.com, which allowed users to search for free music on the internet—infringed their copyrights in thousands of sound recordings and musical compositions.  After the parties filed cross‐motions for summary judgment, the United States District Court for the Southern District of New York (Pauley, J.) determined, among other things, that MP3tunes had a reasonably implemented repeat infringer policy.  A jury ultimately returned a verdict in favor of the plaintiffs that was partially overturned by the District Court.  

We AFFIRM in part, VACATE in part, REVERSE in part, and REMAND for further proceedings.

Download EMI Christian Music Group, Inc. v. MP3tunes, LLC

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.