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December 2016
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Cumberland Pharmaceuticals, Inc. v. Mylan Institutional LLC

Cumberland Pharmaceuticals, Inc. owns U.S. Patent No. 8,399,445, which describes and claims acetylcysteine compositions substantially free of chelating agents. It is listed in the Food and Drug Administration’s Approved Drug Products with Therapeutic Equivalence Evaluations (the Orange Book) as covering Cumberland’s chelatingagent-free formulation of Acetadote®, an intravenous antidote for overdoses of acetaminophen. When Mylan Institutional LLC filed an abbreviated new drug application to market its own chelating-agent-free acetylcysteine formulation, Cumberland brought this patentinfringement action in the Northern District of Illinois against Mylan Institutional LLC and Mylan Inc. (hereafter “Mylan,” individually or jointly). Mylan stipulated to infringement but asserted invalidity on two grounds: derivation of the claimed invention from someone at the FDA and obviousness. The district court rejected both challenges after a bench trial. In particular, the court found that Mylan proved neither (1) that anyone at the FDA conceived of the claimed invention before the patentnamed inventor nor (2) that there was a reasonable expectation that the claimed formulations, without any chelating agents, would succeed. Cumberland Pharm., Inc. v. Mylan Institutional LLC, 137 F. Supp. 3d 1108, 1121–22, 1127 (N.D. Ill. 2015). We affirm.

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Tinnus Enterprises, LLC v. Telebrands Corp.

This is an appeal from the grant of a preliminary injunction. The United States District Court for the Eastern District of Texas ruled for the patentee, Tinnus Enterprises, LLC, and entered a preliminary injunction barring Telebrands Corporation from selling its accused product, Balloon Bonanza, or any colorable imitation thereof. Telebrands alleges that the district court abused its discretion by concluding that (1) the asserted claims were likely infringed; (2) the claims were not vulnerable on indefiniteness or obviousness grounds; and (3) Tinnus made a showing of irreparable harm. For the reasons stated below, we disagree with Telebrands and affirm the district court’s grant of a preliminary injunction.

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Perfect 10, Inc. v. Giganews, Inc.

The panel affirmed the district court’s judgment in favor of the defendants in a copyright case involving the Usenet, an international collection of organizations and individuals whose computers connect to one another and exchange messages posted by Usenet users.

Defendant Giganews, Inc., owns and operates several Usenet servers and provides its subscribers with fee-based access to content stored on its own servers as well as content stored on the servers of other Usenet providers. Defendant Livewire Services, Inc., provides its subscribers with access to the Usenet content stored on Giganews’s servers. Plaintiff Perfect 10, Inc., owns the exclusive copyrights to tens of thousands of adult images, many of which have been illegally distributed over Giganews’s servers.######### The panel affirmed the district court’s partial dismissal and partial grant of summary judgment on Perfect 10’s direct copyright infringement claim. The panel held that causation, also referred to as “volitional conduct,” by the defendant is one of the elements of a prima facie case of direct infringement. The panel held that the volitional conduct requirement was not met on Perfect 10’s theories that the defendants directly infringed its display rights and distribution rights. The panel concluded that the evidence showed only that Giganews’s actions were akin to passively storing material at the direction of users in order to make that material available to other users upon request, or automatically copying, storing, and transmitting materials upon instigation by others. The volitional conduct requirement also was not met as to the claim that Giganews directly infringed on Perfect 10’s right to reproduce by uploading infringing content onto the Usenet or Giganews’s servers.

The panel held that Giganews was not liable for contributorycopyright infringement because Perfect 10 failed to raise a triable issue of fact as to whether Giganews materially contributed to or induced infringement of Perfect 10’s copyrights. The panel held that there were no simple measures available that Giganews failed to take to remove Perfect 10’s works from its servers. The panel affirmed the district court’s summary judgment on Perfect 10’s vicarious infringement claim. The panel held that Perfect 10 failed to demonstrate a causal link between the infringing activities and a financial benefit to Giganews. The panel affirmed the district court’s award of attorney’s fees to the defendants under the Copyright Act and its denial of defendants’ request for supplemental fees. The panel also affirmed the district court’s denial of defendants’ request to amend the judgment to add a judgment debtor as Perfect 10’s alter ego.

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Kelly Services, Inc. v. Creative Harbor, L.L.C.

CLAY, Circuit Judge. Defendant Creative Harbor, LLC (“Creative Harbor”) appeals the judgment entered by the district court on February 1, 2016, voiding Creative Harbor’s trademark applications numbered 86198230 and 86198309, respectively. Creative Harbor challenges the district court’s determinations that: (1) Creative Harbor lacked a bona fide intention to use its requested mark in commerce with respect to some of the goods and services identified in its trademark applications, in violation of § 1(b) of the Lanham Act, 15 U.S.C. § 1051(b); and (2) if Creative Harbor lacked such intent with respect to any of the goods and services, the applications must be voided in their entirety. We have jurisdiction over this appeal pursuant to 28 U.S.C. § 1291. For the reasons set forth below, we AFFIRM IN PART and VACATE IN PART the district court’s judgment. We REMAND for further proceedings consistent with this opinion.

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Slep-Tone Entertainment Corp. v. Wired for Sound Karaoke

The panel affirmed the district court’s dismissal of claims for trademark infringement and unfair competition brought under the Lanham Act by a producer of karaoke music tracks. The plaintiff alleged that the defendants performed karaoke shows using unauthorized “media-shifted” files that had been copied onto computer hard drives from the compact discs released by the plaintiff. Agreeing with the Seventh Circuit, the panel held that the plaintiff did not state a claim under the Lanham Act because there was no likelihood of consumer confusion about the origin of a good properly cognizable in a claim of trademark infringement. In a concurrently filed memorandum disposition, the panel reversed the district court’s summary judgment on a claim for breach of a settlement agreement. Judge Hurwitz concurred in part and dissented in part from the memorandum disposition.

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Ultraflo Corp. v. Pelican Tank Parts, Inc.

This appeal requires us to again consider the preemptive force of the Copyright Act. Plaintiff Ultraflo Corporation asserts an unfair competition by misappropriation claim under Texas law alleging that a competitor stole its drawings showing how to design valves and then used them to make duplicate valves. We have previously held that copyright preempts this Texas cause of action when the intellectual property at issue is within the subject matter of copyright. Alcatel USA, Inc. v. DGI Techs., Inc., 166 F.3d 772, 785–89 (5th Cir. 1999). Ultraflo contends that its claim escapes preemption because its valve design, when separated from the drawing itself, is afforded no protection under the Copyright Act. Because copyright preemption prohibits state interference with Congress’s decision not to grant copyright protection just as much as it protects a decision to provide protection, the district court correctly found that the state claim is preempted.

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Hart v. Amazon.com, Inc.

Granted, there is counterfeiting of books (especially text‐ books), in which Amazon may be involved to the extent of advertising and selling such books, though without neces‐ sarily knowing they’re counterfeit. See, e.g., Eliza Green, “The Problem of Fake Books on Amazon,” May 9, 2012, http://elizagreenbooks.com/the‐problem‐of‐fake‐books‐on‐ amazon/ (visited Dec. 24, 2016, as was the next website cit‐ ed). But counterfeiting can’t be presumed. For example, “all of the apparent copycat books that Fortune found on Ama‐ zon were made through CreateSpace, which is a division of Amazon.” Mario Aguilar, “Amazon Is Overrun With a Plague of Bestseller Knockoffs,” April 16, 2012, http://gizmodo.com/5902283/amazon‐is‐overrun‐with‐a‐plag ue‐of‐fake‐books. Hart’s obscure self‐published titles are a far cry from the pirated bestsellers regularly found on Ama‐ zon, and his assertion that the Internet giant must have un‐ dertaken the cost of reproducing his hardcover books be‐ cause they were “not sourced” by him and lack his nail in‐ dentations (when neither do his self‐published books, if one may judge from the photos) doesn’t meet even a minimum standard of plausibility. The judgment of the district court dismissing his suit with prejudice is therefore AFFIRMED.

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Eli Lilly and Co. v. Teva Parenteral Medicines, Inc.

Eli Lilly & Co. (“Eli Lilly”) is the owner of U.S. Patent No. 7,772,209 (“’209 patent”). It filed this consolidated Hatch-Waxman suit against Teva Parenteral Medicines, Inc.; APP Pharmaceuticals LLC; Pliva Hrvatska D.O.O.; Teva Pharmaceuticals USA, Inc.; and Barr Laboratories, Inc. (collectively, “Defendants”) to prevent Defendants from launching a generic version of a chemotherapy drug with accompanying product literature that would allegedly infringe methods of treatment claimed by the ’209 patent. The United States District Court for the Southern District of Indiana held two bench trials, one on infringement and one on invalidity. The district court found that no single actor performs all steps of the asserted claims because the actions of both physicians and patients are required. Nonetheless, under Akamai Technologies, Inc. v. Limelight Networks, Inc. (Akamai V), 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc) (per curiam), cert. denied, 136 S. Ct. 1661 (2016), the court found direct infringement attributable to physicians and held Defendants liable for inducing that infringement. The court also determined that the asserted claims were not invalid for, inter alia, indefiniteness, obviousness, or obviousnesstype double patenting.

For the reasons below, we affirm.

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Phigenix, Inc. v. Immunogen, Inc.

Appellant Phigenix, Inc. (“Phigenix”) sought inter partes review of U.S. Patent No. 8,337,856 (“the ’856 patent”), alleging that claims 1–8 (“the Asserted Claims”) of the subject patent are unpatentable as obvious over various prior art references. In its final written decision, the U.S. Patent and Trademark Office’s (“USPTO”) Patent Trial and Appeal Board (“PTAB”) found the Asserted Claims nonobvious. See generally Phigenix, Inc. v. ImmunoGen, Inc., No. IPR2014-00676, 2015 WL 6550500 (P.T.A.B. Oct. 27, 2015). Phigenix appeals. We possess subject matter jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A) (2012). Because Phigenix has not offered sufficient proof establishing that it has suffered an injury in fact, it lacks standing to bring suit in federal court. We dismiss.

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Sonix Technology Co., Ltd. v. Publications International, Ltd.

Sonix Technology Co., Ltd. (“Sonix”) appeals from the district court’s grant of summary judgment following its determination that claims 9, 25, 35–36, 52–55, 57–60, 62– 64, 66, 68, 71–77, 79–82, and 85–90 (“the asserted claims”) of Sonix’s U.S. Patent 7,328,845 (“the ’845 patent”) are invalid as indefinite. See Sonix Tech. Co. v. Publ’ns. Int’l, Ltd., No. 13-cv-2082, 2015 WL 8153600, at *9–17 (N.D. Ill. Dec. 8. 2015) (“Opinion”). Specifically, the district court concluded that the term “visually negligible” rendered the asserted claims indefinite under 35 U.S.C. § 112 ¶ 2.1 For the reasons that follow, we reverse the determination of indefiniteness and hence the summary judgment of invalidity.

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