Twentieth Century Fox Television v. Empire Distribution

Affirming the district court’s summary judgment in favor of Twentieth Century Fox Television and Fox Broadcasting Company, the panel held that Fox’s use of the name “Empire” was protected by the First Amendment, and was therefore outside the reach of the Lanham Act. Fox sought a declaratory judgment that its television show titled Empire and associated music releases did not violate the trademark rights of record label Empire Distribution, Inc. Empire counterclaimed for trademark infringement and other causes of action.

The panel explained that when an allegedly infringing use is in the title or within the body of an expressive work, the Rogers test is used to determine whether the Lanham Act applies. The panel held that the Rogers test applied to Fox’s use of the mark “Empire.” The panel concluded that the first prong of the test was satisfied because it could not say that Fox’s use of the mark had no artistic relevance to the underlying work; rather, the title Empire supported the themes and geographic setting of the work. The second prong of the test also was satisfied because the use of the mark “Empire” did not explicitly mislead consumers.

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Motion Medical Technologies, LLC v. Thermotek, Inc.

ThermoTek, Inc. convinced a jury that Mike Wilford and his companies engaged in unfair competition and fraud in violation of Texas law. The district court, however, granted judgment as a matter of law to the defendants, concluding that federal law preempted the unfair competition claim and that ThermoTek failed to prove its damages for fraud. We affirm.

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Promega Corp v. Life Technologies, Inc.

This case returns to us on remand from the Supreme Court. See Life Techs. Corp. v. Promega Corp., 137 S. Ct. 734, 741 (2017) (Promega II). Defendants-Appellants (collectively, Life) sought review of our decision in Promega Corp. v. Life Technologies Corp., 773 F.3d 1338 (Fed. Cir. 2014) (Promega I), arguing, inter alia, that we erred in holding that a multicomponent product assembled overseas could infringe a United States patent under 35 U.S.C. § 271(f)(1)1 when only a single component of the product is supplied from the United States. The Supreme Court granted Life’s petition for a writ of certiorari, reversed our judgment, and remanded for further proceedings consistent with its holding that “§ 271(f)(1) does not cover the supply of a single component of a multicomponent invention.” Promega II, 137 S. Ct. at 743.

The Supreme Court’s opinion did not affect several of our prior holdings. First, we held that the asserted claims of four patents owned by Promega Corporation (Promega) were invalid for failure to comply with the enablement requirement in 35 U.S.C. § 112, ¶ 1. Promega I, 773 F.3d at 1346–50. Second, we held that certain of Life’s alleged acts of infringement were not licensed under a 2006 license agreement between Life and Promega.2 Id. at 1357–58. Finally, we held that Life was not required to “actively induce” a third party to combine the components of the accused products to be liable under § 271(f)(1). Id. at 1351–53. Rather, the active inducement requirement could be met if Life had the specific intent to combine the components itself. Id. We reaffirm our holdings on the enablement, licensing, and active inducement issues.

The Supreme Court’s opinion, however, requires us to reconsider two of our prior holdings. First, we must reexamine our reversal of the district court’s grant of Life’s motion for judgment as a matter of law (JMOL) that Promega failed to prove its infringement case under 35 U.S.C. § 271(a)3 and § 271(f)(1).4 See id. at 1358. Second, we must reconsider our vacatur of the district court’s denial of Promega’s motion for a new trial on damages and infringement. Id. For the reasons below, we now affirm the district court’s decisions on these motions.

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Sanofi v. Watson Laboratories Inc.

Sanofi owns U.S. Patent Nos. 8,318,800 and 8,410,167, which describe and claim compositions and uses of the cardiovascular (specifically, antiarrhythmic) drug dronedarone. The ’800 patent, which expires in 2019, claims pharmaceutical compositions containing dronedarone. The ’167 patent, which expires in 2029, claims methods of reducing hospitalization by administering dronedarone to patients having specified characteristics. Sanofi’s subsidiary, Sanofi-Aventis U.S., LLC, received approval in mid-2009 for New Drug Application No. 022425 for 400 mg tablets of dronedarone, sold as Multaq®.

Both the ’800 and the ’167 patents are listed in the Food and Drug Administration’s publication Approved Drug Products with Therapeutic Equivalence Evaluations (the “Orange Book”) as patents claiming either Multaq® or a method of using Multaq®. Watson Laboratories Inc. and Sandoz Inc., hoping to market generic versions of Multaq®, filed abbreviated new drug applications with the Food and Drug Administration. Both firms certified, under 21 U.S.C§ 355(j)(2)(A)(vii)(IV), their beliefs that the ’167 and ’800 patents were invalid and/or that the manufacture, use, and sale of the proposed generic drugs would not infringe either patent. Upon receiving notice of the paragraph IV certifications, the two Sanofi firms, which we will simply call “Sanofi,” sued Watson and Sandoz for infringement of the two patents under 35 U.S.C. § 271(e)(2)(A).

After a three-day bench trial, the district court ruled in crucial respects for Sanofi. Sanofi v. Glenmark Pharm. Inc., USA, 204 F. Supp. 3d 665, 704–705 (D. Del. 2016). As to the ’167 patent, the court made the following rulings of relevance here: Sanofi proved that Watson’s and Sandoz’s sale of their proposed generic drugs, with their proposed labels, would induce physicians to infringe all but one of the asserted claims, id. at 673–84; and Watson and Sandoz did not prove that any of the asserted claims were invalid for obviousness, id. at 685–96. As to the ’800 patent, the district court, rejecting the non-infringement argument made by Watson and Sandoz, concluded that the asserted claims do not exclude compositions containing polysorbate surfactants. Id. at 699–704. The district court then entered a final judgment rejecting the obviousness challenge to claims 1–6, 8–13, and 16 of the ’167 patent; finding inducement of infringement, by both defendants, of all of those claims except claim 5; and finding infringement by both defendants of claims 1–3, 5- 9, and 12–15 of the ’800 patent and by Watson of claims 10 and 11 as well.

Watson and Sandoz appeal. We have jurisdiction under 28 U.S.C. § 1295(a)(1). We affirm.

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Two-Way Media Ltd. v. Comcast Cable Communications, LLC

Two-Way Media Ltd. appeals from a decision of the United States District Court for the District of Delaware that found the claims of the asserted patents to be directed to patent ineligible subject matter under 35 U.S.C. § 101. Because the claims are directed to abstract ideas and contain no additional elements that transform the nature of the claims into a patent-eligible application of the abstract ideas, we affirm.

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