Justia Civil Procedure Opinion Summaries

Amgen Inc., a biotechnology company, holds patents in the U.S. and South Korea for denosumab, a drug used in treating certain bone cancers. Amgen filed patent infringement suits against Celltrion Inc. (Celltrion Korea) in both countries. To support its case, Amgen sought discovery from Celltrion Korea’s subsidiary, Celltrion USA, located in New Jersey. Amgen filed an application under 28 U.S.C. § 1782 in the District of New Jersey to subpoena Celltrion USA for documents and testimony related to Celltrion Korea’s denosumab products.The Magistrate Judge granted Amgen’s § 1782 application, rejecting Celltrion USA’s argument that § 1782 cannot compel it to produce information held by its foreign parent company. The Judge also found the request not unduly burdensome and ordered the parties to meet and confer to agree on a confidentiality agreement. The District Court affirmed the Magistrate Judge’s order, leading Celltrion USA to appeal.The United States Court of Appeals for the Third Circuit reviewed the case to determine if the order under § 1782 was final and thus appealable under 28 U.S.C. § 1291. The Court concluded that the order was not final because the scope of permissible discovery had not been conclusively defined. The Court emphasized that without a definite scope of discovery, it could not properly review whether the District Court had abused its discretion. Consequently, the Third Circuit dismissed the appeal for lack of jurisdiction, holding that an order granting discovery under § 1782 but leaving the scope of discovery unresolved is not a final order under § 1291. View "Amgen Inc v. Celltrion USA Inc" on Justia Law

Dolby Laboratories Licensing Corporation (Dolby) owns U.S. Patent No. 10,237,577, which is directed to a prediction method using an in-loop filter. Unified Patents, LLC (Unified) filed a petition for inter partes review (IPR) challenging claims 1, 7, and 8 of the patent as anticipated and obvious. Unified certified it was the sole real party in interest (RPI). Dolby identified nine other entities it believed should also have been named as RPIs. The Patent Trial and Appeal Board (Board) declined to adjudicate whether these entities were RPIs and instituted the review with Unified as the sole RPI. The Board ultimately held that Unified failed to show any of the challenged claims were unpatentable.The Board's final written decision did not address the RPI dispute, explaining that there was no evidence any of the alleged RPIs were time-barred or estopped from bringing the IPR, or that Unified purposefully omitted any RPIs to gain an advantage. Dolby appealed the Board's decision, arguing that the Board's refusal to adjudicate the RPI dispute caused various harms, including potential breaches of license agreements, conflicts of interest, improper estoppel in future proceedings, and disincentivizing Unified from filing IPRs.The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that Dolby failed to establish an injury in fact sufficient to confer standing to appeal. The court found Dolby's claims of harm to be too speculative, noting that Dolby did not provide evidence of any actual or imminent injury. The court dismissed the appeal for lack of standing and did not reach the merits of Dolby's substantive challenges. View "Dolby Laboratories Licensing Corporation v. Unified Patents, LLC" on Justia Law

Plaintiff Jana Romanova, a professional photographer, filed a lawsuit against Defendant Amilus Inc. for willful copyright infringement. Romanova alleged that Amilus published her photograph on its website without authorization. Despite being served, Amilus did not respond or appear in court. Romanova moved for a default judgment, but the district court ordered Amilus to show cause why the motion should not be granted. After receiving no response from Amilus, the court then ordered Romanova to show cause why the use of her photograph did not constitute fair use. The district court ultimately dismissed Romanova’s complaint with prejudice, concluding that Amilus’s use of the photograph was fair use.The United States District Court for the Southern District of New York dismissed Romanova’s claim, finding that the fair use defense was clearly established on the face of the complaint. The court reasoned that Amilus’s publication of the photograph communicated a different message than the original, which justified the fair use defense. Romanova appealed the decision, arguing that the court erred in its substantive finding of fair use and in raising the defense sua sponte for a non-appearing defendant.The United States Court of Appeals for the Second Circuit reviewed the case and reversed the district court’s judgment. The appellate court found that the district court misunderstood the fair use doctrine, particularly the requirement for a transformative purpose and justification for copying. The appellate court held that Amilus’s use of the photograph did not communicate a different message and lacked any valid justification for copying. Consequently, the appellate court remanded the case with instructions to enter a default judgment in favor of Romanova. View "Romanova v. Amilus Inc." on Justia Law

Incyte Corporation appealed a post-grant review (PGR) final written decision from the Patent Trial and Appeal Board (Board) which held that Incyte failed to prove claims 1–7 and 9–21 of U.S. Patent No. 10,561,659 were unpatentable. The '659 patent, owned by Sun Pharmaceutical Industries, Inc., discloses a method of treating hair-loss disorders using deuterium-modified ruxolitinib. Incyte petitioned for PGR, arguing the claims were obvious, but the Board found Incyte's arguments unpersuasive and upheld the claims. Incyte's request for rehearing was also denied.The United States Court of Appeals for the Federal Circuit reviewed the case. Sun argued that Incyte lacked Article III standing to appeal. The court noted that standing is a threshold jurisdictional issue that must be addressed before reaching the merits of an appeal. To establish standing, Incyte needed to demonstrate an injury in fact, which it attempted to do by claiming potential infringement liability and invoking the competitor standing doctrine.The court found that Incyte's plans to develop a deuterated ruxolitinib product were too speculative to establish concrete plans for future activity that would create a substantial risk of future infringement. The court also determined that Incyte's reliance on the competitor standing doctrine was insufficient because Incyte did not show it was currently engaging in or had nonspeculative plans to engage in conduct covered by the claims of the '659 patent.Ultimately, the United States Court of Appeals for the Federal Circuit dismissed the appeal for lack of jurisdiction, concluding that Incyte failed to establish an injury in fact sufficient to confer Article III standing. View "INCYTE CORPORATION v. SUN PHARMACEUTICAL INDUSTRIES, INC. " on Justia Law

Honeywell International, a Delaware corporation, and OPTO Electronics, a Japanese company, are competitors in the barcode-scanning equipment market. In May 2019, Honeywell sued OPTO for patent infringement, alleging that OPTO's barcode products infringed on seven of Honeywell's patents. The parties settled in January 2020 with a patent-licensing agreement, allowing OPTO to use Honeywell's patents in exchange for royalty payments. In March 2021, Honeywell audited OPTO and claimed that OPTO had underreported its revenues, leading to a dispute over the definition of "2D Barcode Products." Honeywell then sued OPTO for breach of contract in September 2021, alleging unpaid royalties.The United States District Court for the Western District of North Carolina handled the case. A jury found that OPTO's laser-scanning barcode readers were "2D Barcode Products" but awarded Honeywell only $859,741. The district court also rejected OPTO's counterclaim of patent misuse, concluding that Honeywell had not engaged in such conduct. Both parties filed post-trial motions, which the district court denied. Honeywell sought attorney's fees, and OPTO moved to set aside the jury verdict, but both requests were denied.The United States Court of Appeals for the Fourth Circuit reviewed the case. The court determined that it could not reach the merits because the United States Court of Appeals for the Federal Circuit has exclusive appellate jurisdiction over the appeal due to the patent-related counterclaim asserted by OPTO. The Fourth Circuit dismissed the appeal, allowing the parallel appeal pending in the Federal Circuit to proceed. The main holding was that the Federal Circuit has exclusive jurisdiction over appeals involving patent claims and counterclaims, even if the primary dispute is over a contract. View "Honeywell International, Inc. v. OPTO Electronics Co., Ltd." on Justia Law

Plaintiffs Republic Technologies (NA), LLC and Republic Tobacco, L.P. manufacture and market OCB brand organic hemp rolling papers, while defendant BBK Tobacco & Foods, LLP (HBI) markets RAW brand rolling papers. Republic sued HBI in 2016 for a declaration that OCB’s trade dress did not infringe RAW’s trade dress and later added false advertising claims. HBI counterclaimed, alleging that OCB’s trade dress infringed RAW’s trade dress. A jury trial in 2021 resulted in a mixed verdict, and the district court issued a permanent injunction against some of HBI’s advertising practices.The United States District Court for the Northern District of Illinois found HBI liable under Illinois law for false advertising but not under the federal Lanham Act. The jury also found that OCB’s trade dress for its 99-cent promotional pack infringed RAW’s trade dress, but not the full-priced pack. Republic’s motions for judgment as a matter of law and for a new trial were denied.The United States Court of Appeals for the Seventh Circuit reviewed the case. The court affirmed the district court’s decision, holding that the district court did not abuse its discretion in responding to the jury’s question about the definition of “consumer” and in denying Republic’s motion for a new trial. The court also upheld the jury’s finding of trade dress infringement, noting that sufficient evidence supported the jury’s verdict. Additionally, the court affirmed the district court’s permanent injunction, rejecting HBI’s arguments that the injunction was vague, overbroad, and improperly applied nationwide. The court concluded that the injunction was appropriately tailored to provide complete relief to Republic. View "Republic Technologies (NA), LLC v BBK Tobacco & Foods, LLP" on Justia Law

Bigfoot Ventures Limited brought a shareholder derivative action on behalf of NextEngine, Inc. against Mark S. Knighton, ShapeTools, LLC, and NextEngine. Bigfoot alleged that the agreement between NextEngine and ShapeTools was not intended to benefit NextEngine or its shareholders. Bigfoot had a history of litigation against NextEngine, including disputes over loans and intellectual property (IP) rights.The United States District Court for the Central District of California dismissed Bigfoot’s suit, finding that Bigfoot could not fairly or adequately represent the interests of NextEngine’s shareholders as required by Federal Rule of Civil Procedure 23.1. The court considered the ongoing litigation between Bigfoot and NextEngine, which suggested that the derivative action was being used as leverage in other lawsuits. The court also found that Bigfoot’s personal interest in gaining control of NextEngine’s IP outweighed its interest in asserting rights on behalf of NextEngine.The United States Court of Appeals for the Ninth Circuit affirmed the district court’s dismissal. The Ninth Circuit clarified that courts are not required to assess each of the eight factors from Larson v. Dumke when determining plaintiff adequacy in a shareholder derivative action. The court held that the district court did not err in considering the ongoing litigation as an outside entanglement and found that the record supported the district court’s conclusion that Bigfoot was an inadequate plaintiff. The Ninth Circuit also held that the district court did not abuse its discretion by vacating the trial to hear the motion to dismiss, as it raised significant issues that needed to be resolved before trial. View "BIGFOOT VENTURES LIMITED V. KNIGHTON" on Justia Law

Sisvel S.p.A. owns U.S. Patent No. 7,869,396, which relates to a data transmission and retransmission method in a wireless communication system. The patent describes a method where data is packaged into protocol data units (PDUs) and assigned sequence numbers. The method includes a variation of the automatic repeat request (ARQ) method, where a receiver activates a timer when a PDU is detected as missing. If the missing PDU is not received before the timer expires, a reception failure is reported to the transmitter. If the missing PDU is received before the timer expires, the timer is stopped.The Patent Trial and Appeal Board (Board) held claims 1, 2, and 6–8 of the '396 patent to be unpatentable as anticipated by and obvious in view of International Patent Application Publication No. WO 02/091659 (Sachs). However, the Board held that claims 3–5, 9, and 10 were not shown to be unpatentable. Appellants Sierra Wireless, ULC; Honeywell International Inc.; and Telit Cinterion Deutschland GmbH appealed the Board’s decision regarding claims 3–5, 9, and 10. Sisvel cross-appealed the Board’s decision regarding claims 1, 2, and 6–8.The United States Court of Appeals for the Federal Circuit reviewed the case. The court found that the Board erred in its construction of the claim limitations and that its finding that Sachs disclosed certain limitations was not supported by substantial evidence. The court also determined that the Board abused its discretion by relying on testimony from Sisvel’s expert, Mr. Bates, without finding that he was qualified as an ordinarily skilled artisan.The Federal Circuit vacated the Board’s holdings that claims 1, 2, and 6–8 were unpatentable and remanded the case for further proceedings. The court did not reach the arguments regarding the patentability of claims 3–5, 9, and 10 due to the vacatur of the independent claims. View "SIERRA WIRELESS, ULC v. SISVEL S.P.A. " on Justia Law

Vicor Corporation supplied power converter modules to Foxconn for years. Vicor alleged that Foxconn switched to manufacturing and importing knock-off modules that infringed Vicor's patents. In July 2023, Vicor filed a complaint with the International Trade Commission (ITC) alleging patent infringement by Foxconn. Simultaneously, Vicor sued Foxconn for patent infringement in the United States District Court for the Eastern District of Texas, which stayed the case pending the ITC's resolution. Foxconn then initiated arbitration in China, claiming Vicor had agreed to arbitrate disputes based on terms in purchase orders. Vicor filed a new lawsuit in the United States District Court for the District of Massachusetts, seeking to enjoin the arbitration and declare it was not bound by the arbitration or license terms.The district court granted a temporary restraining order (TRO) and later a preliminary injunction against the arbitration, despite Foxconn's request for a stay under 28 U.S.C. § 1659. The court acknowledged that Section 1659 applied but concluded it could still grant preliminary relief based on the All Writs Act and its inherent authority to preserve its jurisdiction.The United States Court of Appeals for the First Circuit reviewed the case. The court concluded that Section 1659 required the district court to stay proceedings because Vicor's claims involved issues also present in the ITC proceeding. The appellate court held that the district court erred in granting the preliminary injunction despite Foxconn's request for a stay. Consequently, the First Circuit vacated the preliminary injunction and remanded the case for further proceedings consistent with its opinion. View "Vicor Corp. v. FII USA Inc." on Justia Law

Odyssey Logistics & Technology Corp. filed a patent application for a web service interface for transit time calculation in 2007. The application was rejected by a patent examiner in 2015, and the Patent Trial and Appeal Board (PTAB) affirmed the rejection in 2018. Odyssey appealed to the United States Court of Appeals for the Federal Circuit, which affirmed the PTAB's decision in 2020. Odyssey did not raise an Appointments Clause challenge during this appeal.After the Supreme Court's decision in United States v. Arthrex, Inc. in 2021, which held that PTAB administrative judges' unreviewable authority violated the Appointments Clause, Odyssey requested Director review of the PTAB's 2018 decision. The United States Patent and Trademark Office (PTO) denied this request, stating that it did not accept requests for Director review of ex parte appeal decisions. Odyssey then filed a complaint in the United States District Court for the Eastern District of Virginia, seeking to compel the Director to consider its request. The district court dismissed the case for lack of subject matter jurisdiction.The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court's dismissal, but on different grounds. The Federal Circuit concluded that the PTO did not abuse its discretion in denying Odyssey's request for Director review, noting that Odyssey had forfeited its Appointments Clause challenge by not raising it during the initial appeal. The court held that the PTO's decision to deny the request for review was reasonable given the significant delay and lack of justification for Odyssey's failure to raise the issue earlier. The Federal Circuit affirmed the district court's decision for failure to state a claim for relief under Rule 12(b)(6). View "ODYSSEY LOGISTICS & TECHNOLOGY CORP. v. STEWART" on Justia Law