Justia Civil Procedure Opinion Summaries

MRT filed suit against Microsoft, alleging patent infringement stemming from MRT's development of a technology to protect electronic files from content piracy. The Ninth Circuit held that claim preclusion barred the claims in this suit that accrued at the time of MRT's patent-infringement action, because these claims arose from the same events—Microsoft's alleged misappropriation of MRT's software—as the prior patent infringement claims. Furthermore, they merely offer different legal theories for why Microsoft's alleged conduct was wrongful. Accordingly, the panel affirmed the dismissal of these claims.However, the panel held that, under Howard v. City of Coos Bay, 871 F.3d 1032 (9th Cir. 2017), claim preclusion did not bar MRT from asserting copyright infringement claims that accrued after it filed its patent-infringement suit: namely, claims arising from the sale of Microsoft products after MRT filed its patent-infringement suit. Therefore, the panel reversed the district court's dismissal of these copyright infringement claims and remanded for further proceedings. View "Media Rights Technologies, Inc. v. Microsoft Corp." on Justia Law

The Eleventh Circuit affirmed the district court's grant of summary judgment based on its finding that Kroma EU lacked standing to enforce the KROMA trademark. By Lee Tillett, Inc. was the owner and registrant of the mark and had the rights to use the KROMA mark in the United States. Some time after Tillett granted an exclusive license to Kroma EU, defendants (the Kardashian sisters) endorsed a cosmetic line called "Khroma Beauty," that was sold and manufactured by Boldface. The California district court subsequently granted Tillett's motion for a preliminary injunction against Boldface, finding that Tillett had demonstrated a likelihood of success on the trademark infringement claim.On appeal here, the court adopted the position taken by the district courts in this circuit and held that a licensee's right to sue to protect the mark largely depends on the rights granted to the licensee in the licensing agreement. The court held that the licensing agreement at issue did not give Kroma EU sufficient rights in the name to sue under the Lanham Act. In this case, the plain language of the licensing agreement demonstrated that the parties' intent was for Tillett to retain all ownership and enforcement rights; the agreement plainly authorized Tillett to file suit against infringers; and Kroma EU was limited in its available recourse. View "Kroma Makeup EU, LLC v. Boldface Licensing + Branding, Inc." on Justia Law

A jury awarded Oracle damages after finding that Rimini had infringed Oracle copyrights. The court awarded Oracle fees and costs, including $12.8 million for litigation expenses such as expert witnesses, e-discovery, and jury consulting. The Ninth Circuit affirmed, acknowledging that the award covered expenses not included within the six categories of costs identified in 28 U.S.C. 1821 and 1920, and citing the Copyright Act, which gives district courts discretion to award “full costs” to a party in copyright litigation, 17 U.S.C. 505. A unanimous Supreme Court reversed in part. The term “full costs” in the Copyright Act means costs specified in the general costs statute (sections 1821 and 1920), which defines what the term “costs” encompasses in subject-specific federal statutes such as section 505. Courts may not award litigation expenses that are not specified in sections 1821 and 1920 absent explicit authority. The Copyright Act does not explicitly authorize the award of litigation expenses beyond the six categories; the six categories do not authorize an award for expenses such as expert witness fees, e-discovery expenses, and jury consultant fees. Oracle has not shown that the phrase “full costs” had an established legal meaning that covered more than the full amount of the costs listed in the applicable costs schedule. View "Rimini Street, Inc. v. Oracle USA, Inc." on Justia Law

Fourth Estate, a news organization that licensed works to Wall-Street.com, a news website. sued Wall-Street for copyright infringement of articles that Wall-Street failed to remove from its website after canceling the license agreement. Fourth Estate had applied to register the articles with the Copyright Office, but the Register had not acted on those applications. No civil infringement action “shall be instituted until . . . registration of the copyright claim has been made,” 17 U.S.C. 411(a). The Eleventh Circuit and a unanimous Supreme Court affirmed the dismissal of the suit. Registration occurs, and a copyright claimant may commence an infringement suit, upon registration; a copyright owner can then recover for infringement that occurred both before and after registration. In limited circumstances, copyright owners may file suit before undertaking registration. For example, an owner who is preparing to distribute a work that is vulnerable to predistribution infringement—e.g., a movie or musical composition—may apply for preregistration; an owner may also sue for infringement of a live broadcast before registration. The Court rejected Fourth Estate’s “application approach” argument that registration occurs when a copyright owner submits a proper application. In 1976 revisions to the Copyright Act, Congress both reaffirmed that registration must precede an infringement suit. The Act safeguards copyright owners by vesting them with exclusive rights upon creation of their works and prohibiting infringement from that point forward. To recover for such infringement, copyright owners must apply for registration and await the Register’s decision. An administrative lag in processing applications does not allow revision of section 411(a)’s congressionally-composed text. View "Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC" on Justia Law

Maxchief has its principal place of business in China and distributes one of the plastic tables it manufactures (UT-18) exclusively through Meco, which is located in Tennessee. Meco sells the UT-18 tables to retailers. Wok competes with Maxchief in the market for plastic folding tables, and also has its principal place of business in China. Wok owns patents directed to folding tables. Wok sued Maxchief’s customer, Staples, in the Central District of California, alleging that Staples’ sale of Maxchief’s UT-18 table infringed the Wok patents. Staples requested that Meco defend and indemnify Staples. Meco requested that Maxchief defend and indemnify Meco and Staples. The Staples action is stayed pending the outcome of this case. Maxchief then sued Wok in the Eastern District of Tennessee, seeking declarations of non-infringement or invalidity of all claims of the Wok patents and alleging tortious interference with business relations under Tennessee state law. The district court dismissed the declaratory judgment claim for lack of personal jurisdiction. With respect to the state law tortious interference claim, the district court concluded it lacked subject matter jurisdiction. The Federal Circuit affirmed. Wok lacked sufficient contacts with the forum state of Tennessee for personal jurisdiction as to both the declaratory judgment claim and the tortious interference claim. View "Maxchief Investments Ltd. v. Wok & Pan, Ind., Inc." on Justia Law

Plaintiffs sued Oath in the Eastern District of New York, alleging patent infringement. Oath conducts business in New York, but is incorporated in Delaware; it does not have “a regular and established place of business” in the Eastern District as defined in the patent statute venue provision, 28 U.S.C. 1400(b) In 2016, Oath moved under FRCP 12(b)(6) to dismiss for failure to state a claim but did not object to venue. Oath withdrew its motion and filed an answer, admitting the complaint’s venue allegations but expressly reserving the right to challenge venue based upon any change in law, including the Supreme Court’s "TC Heartland" decision. The Supreme Court subsequently issued that decision, holding that, under section 1400(b), “a domestic corporation ‘resides’ only in its State of incorporation,” rejecting Federal Circuit precedent that a domestic corporation “resides” in any judicial district in which the defendant is subject to personal jurisdiction. Oath moved to dismiss. Plaintiffs argued that Oath had waived the venue defense because it was “available” in 2016. The district court agreed. In November 2017, the Federal Circuit held (Micron) that “TC Heartland changed the controlling law ... making the waiver rule ... inapplicable” but that venue rights might be forfeited by delay in asserting them in some circumstances. On reconsideration, the district court again denied Oath’s motion. The Federal Circuit remanded with instructions to either dismiss or transfer the case. The district court provided no analysis of why these circumstances supported a finding of forfeiture under section 1406(b) and erred in failing to apply the Micron precedent. View "In re: Oath Holdings, Inc." on Justia Law

M-I Drilling, a U.K. company owns five U.S. patents; M-1 LLC, a U.S. company, is an exclusive licensee of the patents, which are claimed to cover pneumatic conveyance systems installed around oil drilling rigs and used to transfer drill cuttings from the oil rigs to ships. DAL, organized under the laws of and with its principal place of business in Brazil, is a subsidiary of Dynamic, a Minnesota corporation. The Brazilian state-owned oil company Petrobras requested proposals for the installation of pneumatic conveyance systems on ships. DAL won the bid and designed, manufactured, and operated conveyance systems from offshore oil drilling rigs onto two U.S.-flagged ships. M-I sued DAL in the District of Minnesota, alleging infringement. The court dismissed the case, finding that, although the alleged infringing activities took place on U.S.-flagged ships that are U.S. territory, the contract between Petrobras and DAL did not identify the ships on which DAL would make installations, so DAL did not purposefully avail itself of the privilege of conducting activities within the U.S. The Federal Circuit reversed. The district court erroneously focused on the contract between Petrobras and DAL. Even if the contract directed where the systems were installed and operated, DAL controlled the specifics of its continued performance. DAL kept the systems operating on the ships. Such deliberate presence of DAL and its systems in the U.S. enhance its affiliation with the forum and “reinforce the reasonable foreseeability of suit there.” View "M-I Drilling Fluids, U.K. Ltd. v. Dynamic Air Ltda." on Justia Law

Defendants produce or sell patented drug products containing the antiviral agent tenofovir alafenamide fumarate (TAF), which is used in the treatment of AIDS. Healthcare provides medical care to persons afflicted with AIDS, including providing antiviral drugs, including the TAF products that Healthcare buys from Defendants. Healthcare sought declarations of invalidity for patents purportedly covering TAF and various combination products so that it could partner with generic makers and purchase generic TAF on the expiration of the five-year New Chemical Entity exclusivity s(21 U.S.C. 355(j)(5)(F)(ii)). Healthcare filed suit two months after the FDA approved Genvoya®—the first TAF-containing product to receive FDA approval; other TAF products were still undergoing clinical trials. No unlicensed source was offering a TAF product or preparing to do so. Healthcare told the court that “none of the generic makers wanted to enter the market because there was the fear of liability.” The court ruled that Healthcare’s actions in encouraging others to produce generic TAF products and interest in purchasing such products did not create an actual controversy under the Declaratory Judgment Act. The Federal Circuit affirmed. The declaratory requirement of immediacy and reality is not met by litigation delay. Healthcare has not otherwise shown that there is a controversy of sufficient immediacy and reality to create declaratory judgment jurisdiction. Liability for inducing infringement requires that there be direct infringement. An interest in buying infringing product is not an adverse legal interest for declaratory jurisdiction. View "AIDS Healthcare Foundation, Inc. v. Gilead Sciences, Inc." on Justia Law

Oil States sued Greene's Energy for infringement of a patent relating to technology for protecting wellhead equipment used in hydraulic fracturing. Greene’s challenged the patent’s validity in court and petitioned the Patent Office for inter partes review, 35 U.S.C. 311-319. The district court issued a claim-construction order favoring Oil States; the Board concluded that Oil States’ claims were unpatentable. The Federal Circuit rejected a challenge to the constitutionality of inter partes review. The Supreme Court affirmed. Inter partes review does not violate Article III. Congress may assign adjudication of public rights to entities other than Article III courts. Inter partes review falls within the public-rights doctrine. Patents are “public franchises” and granting patents is a constitutional function that can be carried out by the executive or legislative departments without “judicial determination.’ Inter partes review involves the same basic matter as granting a patent. Patents remain “subject to [the Board’s] authority” to cancel outside of an Article III court. The similarities between the procedures used in inter partes review and judicial procedures does not suggest that inter partes review violates Article III. The Court noted that its decision “should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.” When Congress properly assigns a matter to adjudication in a non-Article III tribunal, “the Seventh Amendment poses no independent bar to the adjudication of that action by a nonjury factfinder.” View "Oil States Energy Services, LLC v. Greene's Energy Group, LLC" on Justia Law

The Ninth Circuit affirmed the district court's dismissal of copyright infringement claims brought by a monkey over selfies he took on a wildlife photographer's unattended camera. Naruto, a crested macaque, took several photos of himself on the camera, and the photographer and Wildlife Personalities subsequently published the Monkey Selfies in a book. PETA filed suit as next friend to Naruto, alleging copyright infringement. The panel held that the complaint included facts sufficient to establish Article III standing because it alleged that Naruto was the author and owner of the photographs and had suffered concrete and particularized economic harms; the monkey's Article III standing was not dependent on the sufficiency of PETA; but Naruto lacked statutory standing because the Copyright Act did not expressly authorize animals to file copyright infringement suits. Finally, the panel granted defendants' request for attorneys' fees on appeal. View "Naruto v. Slater" on Justia Law