Puritan Medical Products Co. v. Copan Italia S.p.A.

Maine Supreme Court decision under Maine’s Actions for Bad Faith Assertion of Patent Infringement statute, Me. Rev. Stat. 14, 8701-8702.

Puritan Medical Products Company LLC appeals from a summary judgment entered in the Business and Consumer Docket (Mulhern, J.) in favor of Copan Italia S.p.A. on Puritan’s claim that Copan violated Maine’s Actions for Bad Faith Assertion of Patent Infringement statute, 14 M.R.S. §§ 8701-8702 (2017). Although the court granted Copan’s motion for summary judgment after finding no genuine issues of material fact and determining that Copan was entitled to judgment as a matter of law, Copan filed a cross-appeal to preserve its separate argument that Puritan’s claim was preempted by federal patent law. Because we conclude that Puritan’s claim is preempted, we affirm the grant of summary judgment in favor of Copan on other grounds.

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Power Integrations, Inc. v. Fairchild Semiconductor International, Inc.

Power Integrations, Inc. owns U.S. Patent Nos. 6,212,079 (“the ’079 patent”) and 6,538,908 (“the ’908 patent”). Power Integrations sued Fairchild Semiconductor Corporation and Fairchild (Taiwan) Corporation (collectively “Fairchild”) for infringement. A jury found Fairchild literally infringed claims 31, 34, 38, and 42 of the ’079 patent and infringed claims 26 and 27 of the ’908 patent under the doctrine of equivalents. In a second trial, a jury awarded damages of roughly $140 million, finding that the entire market value rule applied in calculating damages for infringement of the ’079 patent. The district court denied Fairchild’s motions for judgment as a matter of law. Fairchild appeals.

We affirm the district court’s judgments of infringement. We conclude that the entire market value rule cannot be used here to calculate damages. We vacate the damages award and remand for further proceedings.

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Adidas AG v. Nike, Inc.

IT IS ORDERED THAT:

(1) The motion to remand is granted. The Board is directed to promptly issue a final written decision as to all grounds raised in Adidas’s petitions.

(2) Each side shall bear its own costs.

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Pinkette Cothing, Inc. v. Cosmetic Warriors Limited

The panel affirmed the district court’s judgment in favor of Pinkette Clothing, Inc., which sells LUSH-branded women’s fashions, in a case in which Cosmetic Warriors Limited (CWL), which sells LUSH-branded cosmetics and related goods, sought (a) an injunction restraining Pinkette from infringing on CWL’s LUSH trademark and (b) the cancellation of Pinkette’s registration of its own LUSH trademark.

Distinguishing Perella v. Metro-Goldwin-Mayer, Inc., 134 S. Ct. 1962 (2014) (Copyright Act), and SCA Hygiene Products v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017) (Patent Act), the panel held that laches is available as a defense to CWL’s cancellation claim because the Lanham Act has no statute of limitations and expressly makes laches a defense to cancellation.

The panel held that the district court applied the correct standard when it applied the factors set forth in E-Sys., Inc. v. Monitek, Inc., 720 F.2d 604 (9th Cir. 1983), to CWL’s claim for injunctive relief. The panel wrote that analysis of the ESystems factors validates the strong presumption in favor of laches created by CWL’s delaying past the expiration of the most analogous state statute of limitations. The panel concluded that the district court did not abuse its discretion in applying laches to bar CWL’s cancellation and infringement claims.

The panel held that the district court did not abuse its discretion in declining to apply the doctrine of unclean hands to preclude Pinkette from asserting laches, and that the inevitable confusion doctrine is inapplicable. The panel also held that evidence of Pinkette’s LUSH mark in Canada was not relevant to the infringement-related questions for which the jury was the sole trier of fact, and that any error in excluding the disputed evidence from the jury’s hearing was harmless because CWL was allowed to present all of its evidence to the district court after the jury was dismissed. Rejecting CWL’s argument that the words “other than clothing” in the district court’s judgment is inconsistent with the jury’s verdict and in error, the panel concluded that the judgment, read as a whole, accurately reflects the court’s disposition of the case.

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Impax Laboratories Inc. v. Lannett Holdings Inc.

Lannett Holdings Inc. and Lannett Co. Inc. (together, “Lannett”) appeal from the decision of the United States District Court for the District of Delaware concluding, after a bench trial, that claims 4, 11, 12, and 14 of U.S. Patent 6,760,237 (“the ’237 patent”) and claims 6 and 14– 16 of U.S. Patent 7,220,767 (“the ’767 patent”) were not shown to be invalid, see Impax Labs., Inc. v. Lannett Holdings Inc., 246 F. Supp. 3d 1024 (D. Del. 2017) (“Opinion”), entering judgment in favor of Impax Laboratories Inc. (“Impax”), AstraZeneca AB, and AstraZeneca UK Limited (together, “AstraZeneca”), and entering an injunction against Lannett pursuant to 35 U.S.C. § 271(e)(4), see Impax Labs. Inc. v. Lannett Holdings Inc., No. 1:14-cv-00984-RGA (D. Del. Apr. 17, 2017), ECF No. 174; J.A. 1–4. For the reasons that follow, we affirm.

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WesternGeco LLC v. ION Geophysical Corp., 585 U.S. __ (2018)

WesternGeco’s award for lost profits was a permissible domestic application of §284 of the Patent Act. Pp. 4–10.

(a) The presumption against extraterritoriality assumes that federal statutes “apply only within the territorial jurisdiction of the United States.” Foley Bros., Inc. v. Filardo, 336 U. S. 281, 285. The two-step framework for deciding extraterritoriality questions asks, first, “whether the presumption . . . has been rebutted.” RJR Nabisco, Inc. v. European Community, 579 U. S. ___, ___. If not, the second step asks “whether the case involves a domestic application of the statute.” Id., at ___. Courts make the second determination by identifying “the statute’s ‘focus’ ” and then asking whether the conduct relevant to that focus occurred in United States territory. Ibid. If so, the case involves a permissible domestic application of the statute. It is “usually . . . preferable” to begin with step one, but courts have the discretion to begin with step two “in appropriate cases.” Id., at ___, n. 5. The Court exercises that discretion here. Pp. 4–5.

(b) When determining “the statute’s ‘focus’ ”—i.e., “the objec[t] of [its] solicitude,” Morrison v. National Australia Bank Ltd., 561 U. S. 247, 267—the provision at issue is not analyzed in a vacuum. If it works in tandem with other provisions, it must be assessed in concert with those provisions. Section 284, the Patent Act’s general damages provision, states that “the court shall award the claimant damages adequate to compensate for the infringement.” The focus of that provision is “the infringement.” The “overriding purpose” of §284 is to “affor[d] patent owners complete compensation” for infringements. General Motors Corp. v. Devex Corp., 461 U. S. 648, 655. Section 271 identifies several ways that a patent can be infringed. Thus, to determine §284’s focus in a given case, the type of infringement that occurred must be identified. Here, §271(f)(2) was the basis for WesternGeco’s infringement claim and the lost-profits damages that it received. That provision regulates the domestic act of “suppl[ying] in or from the United States,” and this Court has acknowledged that it vindicates domestic interests, see, e.g., Microsoft Corp. v. AT&T Corp., 550 U. S. 437, 457. In sum, the focus of §284 in a case involving infringement under §271(f)(2) is on the act of exporting components from the United States. So the conduct in this case that is relevant to the statutory focus clearly occurred in the United States. Pp. 5–8.

(c) ION’s contrary arguments are unpersuasive. The award of damages is not the statutory focus here. The damages themselves are merely the means by which the statute achieves its end of remedying infringements, and the overseas events giving rise to the lost profit damages here were merely incidental to the infringement. In asserting that damages awards for foreign injuries are always an extraterritorial application of a damages provision, ION misreads a portion of RJR Nabisco that interpreted a substantive element of a cause of action, not a remedial damages provision. See 579 U. S., at ___. Pp. 8–9.

837 F. 3d 1358, reversed and remanded.

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Experian Information Solutions, Inc. v. Nationwide Marketing Services, Inc.

The panel affirmed in part and reversed in part the district court’s summary judgment in favor of the defendant in a copyright case.

Plaintiff Experian Information Systems, Inc., compiled the ConsumerView Database, which contains more than 250 million records, each pertaining to an individual consumer. The database includes compiled pairings of names and addresses.

Affirming in part, the panel held that the name and address pairings were copyrightable as compilations but were entitled only to limited protection under the copyright laws. The panel held that Experian failed to show that its copyright was infringed because it did not establish a bodily appropriation of its work.

Reversing the district court’s grant of summary judgment on a state law trade secret claim, the panel held that, if proper safeguards were maintained, then Experian’s lists could be protected as trade secrets under Arizona law. The panel concluded that there were triable issues of fact as to the defendant’s knowledge of misappropriation. The panel remanded for further proceedings on the trade secret claim.

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Cortes-Ramos v. Martin-Morales

This case concerns Luis Adrián Cortés-Ramos' appeal from a District Court order that dismissed his claims that the singer Enrique Martin-Morales violated various articles of the Puerto Rico Civil Code and federal copyright and trademark laws. The suit arises in connection with a songwriting contest held in Puerto Rico in 2014.

For purposes of this appeal, Cortés-Ramos does not dispute that, as a contestant, he agreed to the terms of the contest's rules and that they included an arbitration provision that compelled the submission to arbitration of those of his claims that "aris[e] in connection with, touch[e] upon or relat[e] to" those rules. He contends, though, that the District Court erred in granting Martin's motion to dismiss his claims based on that arbitration provision.

We agree with Cortés-Ramos. We therefore reverse the order dismissing his claims pursuant to Federal Rule of Civil Procedure 12(b)(6).

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Stevens v. CoreLogic, Inc.

The panel affirmed the district court’s grant of summary judgment in favor of CoreLogic, Inc., on professional real estate photographers’ claims that CoreLogic removed copyright management information from their photographs and distributed their photographs with the copyright management information removed, in violation of 17 U.S.C. § 1202(b)(1)-(3), a part of the Digital Millennium Copyright Act.

The photographers alleged that CoreLogic’s Multiple Listing Services software removed copyright management information metadata from their photographs. The panel held that § 1202(b) requires a showing that the defendant knew the prohibited act would “induce, enable, facilitate, or conceal” infringement. The panel concluded that the photographers did not offer evidence to satisfy this mental state requirement because they did not provide evidence from which one could infer that future infringement was likely, albeit not certain, to occur as a result of the removal or alteration of copyright management information.

The panel affirmed the district court’s rulings regarding discovery and costs.

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Royal Crown Co., Inc.. v. The Coca-Cola Co.

Royal Crown Company, Inc. and Dr Pepper/Seven Up, Inc. (together, “Royal Crown”) appeal a decision of the Trademark Trial and Appeal Board (“the Board”) dismissing Royal Crown’s opposition to the registration of The Coca Cola Company’s (“TCCC”) trademarks for various soft drinks and sports drinks including the term ZERO. Royal Crown Co. v. Coca-Cola Co. (TTAB Decision), Opposition No. 91178927 (Parent Case), 2016 TTAB LEXIS 234 (T.T.A.B. May 23, 2016). Because we conclude that the Board erred in its legal framing of the question of the claimed genericness of TCCC’s marks, and failed to determine whether, if not generic, the marks were at least highly descriptive, we vacate the Board’s determination and remand for further proceedings.

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