Justia Civil Procedure Opinion Summaries

This appeal stemmed from the parties' longstanding dispute over the literary works of John Steinbeck. In this case, a federal jury in Los Angeles unanimously awarded plaintiff, as executrix of Elaine's estate (Elaine was the widow of Steinbeck), compensatory damages for slander of title, breach of contract, and tortious interference with economic advantage, and punitive damages against defendants.Determining that it had jurisdiction, the Ninth Circuit affirmed the orders granting summary judgment and striking defendants' defenses to tortious interference on grounds of collateral estoppel. Furthermore, the panel explained that it follows that the district court's decisions to exclude evidence related to defendants' different understanding of the agreement at issue or the validity of the prior court decisions were not abuses of discretion. The panel affirmed the compensatory damages award, holding that the record contained substantial evidence to support the awards on each cause of action independently. Furthermore, the compensatory damages were not speculative. The panel held that there was more than ample evidence of defendants' malice in the record to support the jury's verdict, thus triggering entitlement to punitive damages. However, the panel vacated and remanded with instructions to dismiss the punitive damages claims against Gail, Steinbeck's daughter-in-law, based on lack of meaningful evidence of Gail's financial condition and her ability to pay. View "Kaffaga v. The Estate of Thomas Steinbeck" on Justia Law

University of Texas System (UT) sued BSC for patent infringement in the Western District of Texas. The patents resulted from research conducted at UT and are directed to implantable drug-releasing biodegradable fibers. BSC is a Delaware corporation with a principal place of business in Massachusetts. BSC does not own or lease any property or maintain a business address in the Western District of Texas but has 46 employees in the District; all maintain home offices and do not work in spaces that are owned or controlled by BSC. UT asserted that venue was proper because UT has sovereign immunity. The district court transferred the case to the District of Delaware. The Federal Circuit affirmed, first holding that it had jurisdiction to hear the appeal under the collateral order doctrine. State sovereignty principles do not grant UT the right to bring suit in an otherwise improper venue; 28 U.S.C. 1400(b) is the sole and exclusive provision controlling venue in patent infringement actions and venue is proper where a defendant resides or has a regular and established place of business. Sovereign immunity is a shield, not a sword. There was no claim or counterclaim against UT that placed it in the position of a defendant. View "Board of Regents of the University of Texas System v. Boston Scientific Corp." on Justia Law

The University, an agent or instrumentality of the Swiss Confederation, having a place of business in Bern, Switzerland, granted an exclusive license of its 114 patent to the German company LABOKLIN, whose principal place of business is in Bad Kissingen, Germany. Under the License Agreement, LABOKLIN was required to commercialize the invention in North America. LABOKLIN entered into sublicenses in the U.S. PPG, a corporation headquartered in Washington State, offers laboratory services. After obtaining the University’s consent, LABOKLIN sent a cease-and-desist letter to PPG in Spokane, Washington. PPG sued LABOKLIN and the University, requesting a declaratory judgment that the Asserted Claims of the 114 patent are ineligible under 35 U.S.C. 101 for failing to claim patent-eligible subject matter. The Federal Circuit affirmed that the district court had jurisdiction over both LABOKLIN and the University. LABOKLIN had sufficient minimum contacts with the U.S. to comport with due process; the University, a foreign sovereign in the U.S., had engaged in “commercial activity” sufficient to trigger an exception to jurisdictional immunity under 28 U.S.C. 1605(a)(2) by “obtain[ing] a patent and then threaten[ing] PPG by proxy with litigation.” PPG had stipulated to infringement of the Asserted Claims; the courts found those Claims patent-ineligible as directed to patent-ineligible subject matter, namely the discovery of the genetic mutation that is linked to HNPK. View "Genetic Veterinary Sciences, Inc. v. LABOKLIN GMBH & Co. KG" on Justia Law

Hill built Commerce Bank from a single commercial bank location in 1973 by emphasizing customer loyalty through initiatives such as extended hours, quick account openings, and free perks. His success brought personal acclaim. The relationship between Hill and Commerce soured, culminating in Hill’s 2007 termination and TD Bank’s acquisition of Commerce for $8.5 billion. The publication of a book Hill had written during his Commerce tenure was canceled. In 2012, Hill wrote a new book. TD filed a copyright lawsuit alleging that parts of the 2012 book infringe the earlier book. In enjoining Hill from publishing or marketing his book, the district court concluded that TD owned the copyright under a letter agreement and that Hill’s book irreparably violated its “right to not use the copyright.” The Third Circuit vacated the injunction, reasoning that the district court had made “sweeping conclusions” that would justify the issuance of an injunction in every copyright case. Instead of employing “categorical rule[s]” that would resolve the propriety of injunctive relief “in a broad swath of cases,” courts should issue injunctive relief only upon a sufficient showing that such relief is warranted under particular circumstances. Although the agreement between the parties did not vest initial ownership of the copyright by purporting to designate the manuscript a work “for hire,” it did transfer any ownership interest Hill possessed to TD, so Hill’s co-ownership defense fails. View "TD Bank NA v. Hill" on Justia Law

The U.S. Patent and Trademark Office has, on a few occasions, found that “capsule” was “merely descriptive” of cellphone cases, a finding that precludes registration on the Principal Register. The Office has also found otherwise and allowed Uncommon to register “capsule.” Rival case manufacturers still use the term. Uncommon sued Spigen for trademark infringement and unfair competition, 15 U.S.C. 1114, 1125(a). Spigen sought cancellation of the mark. In discovery, Spigen produced a survey to prove that consumers did not associate “capsule” with Uncommon’s cases, and disclosed the person who conducted the survey as a “non-testifying expert,” but without foundational expert testimony to explain the survey’s methodology, it was inadmissible, FRCP 26(a). The district court excused Spigen’s error and granted Spigen summary judgment on the merits. The Seventh Circuit affirmed. Spigen’s disclosure was inaccurate but harmless. Spigen carried its burden to defeat Uncommon’s presumption of inherent distinctiveness. Spigen demonstrated that there is no issue of material fact regarding the descriptiveness of the “capsule” mark. With the survey, there was no genuine issue of material fact as to the mark’s invalid registration. Nor was there an issue of fact regarding the unlikelihood of consumer confusion. View "Uncommon, LLC v. Spigen, Inc." on Justia Law

The asserted patents were originally assigned to AMD, which later purported to transfer “all right, title and interest” in the patents to Lone Star, with several limitations. For example, Lone Star agreed to only assert the covered patents against “Unlicensed Third Party Entit[ies]” specifically listed in the agreement. New entities can only be added if both parties agree to add them. If Lone Star sues an unlisted entity, AMD has the right, without Lone Star’s approval, to sublicense the covered patents to the unlisted target. AMD can prevent Lone Star from assigning the patents or allowing them to enter the public domain. AMD and its customers can continue to practice the patents; AMD shares in any revenue Lone Star generates from the patents through “monetization efforts." Lone Star sued parties listed as Unlicensed Third Party Entities in the agreement, asserting infringement and alleging that AMD transferred “all right, title, and interest” in the asserted patents to Lone Star. The district court concluded that Lone Star does not own the patents and could not assert them. The Federal Circuit vacated the dismissal, while agreeing that Lone Star cannot assert the patents on its own. The court should not have dismissed the case without considering whether AMD should have been joined (Federal Rule of Civil Procedure 19. View "Lone Star Silicon Innovations, LLC v. Nanya Technology Corp." on Justia Law

Presidio's 639 patent describes and claims single-layer ceramic capacitors with certain features. Competitor AVX, which manufactures and sells various electronic components, including capacitors, petitioned for an inter partes review (IPR), under 35 U.S.C. 311−319, of all 21 claims of the 639 patent, asserting obviousness (35 U.S.C. 103). The Patent Trial and Appeal Board instituted a review (35 U.S.C. 314), held claims 13–16 and 18 unpatentable, but held that AVX failed to establish unpatentability of all other claims. Presidio did not appeal the as to the unpatentable claims. AVX appealed as to the upheld claims. Presidio responded to AVX on the merits and argued that AVX lacked Article III standing. The Federal Circuit dismissed the appeal, rejecting AVX’s estoppel and “competitor standing” theories and concluding that AVX lacks standing. A person does not need Article III standing to file an IPR petition and obtain a Board decision, because Article III requirements do not apply to administrative agencies, but AVX has no present or nonspeculative interest in engaging in conduct arguably covered by the patent claims at issue. AVX has not shown that it is engaging in or has nonspeculative plans to engage in, conduct arguably covered by the upheld claims of the patent. View "AVX Corp. v. Presidio Components, Inc." on Justia Law

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