Sirona Dental Systems GMBH v. Institut Straumann AG

Sirona Dental Systems GmbH appeals the final written decision of the Patent Trial and Appeal Board (“Board”) holding claims 1–8 of U.S. Patent No. 6,319,006 unpatentable as obvious over the combination of German Patent No. 195 10 294 (“Bannuscher”) and U.S. Patent No. 5,842,858 (“Truppe”), and denying Sirona’s contingent motion to amend the claims. Institut Straumann AG and Dental Wings Inc. (collectively, “Petitioners”) cross-appeal the Board’s decision holding patentable claims 9–10 of the ’006 patent. For the following reasons, we affirm-in-part, vacate-in-part, and remand-in-part.

Download Sirona Dental Systems GMBH v. Institut Straumann AG

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

FastShip, LLC v. United States

Appellant FastShip, LLC (“FastShip”) sued the United States (“the Government”) in the U.S. Court of Federal Claims, seeking damages for patent infringement pursuant to 28 U.S.C. § 1498 (2012). According to FastShip, the U.S. Department of the Navy’s (“Navy”) Freedom-class Littoral Combat Ships (“LCS”), specifically the LCS-1 and LCS-3, infringe claims 1 and 19 of U.S. Patent No. 5,080,032 (“the ’032 patent”) and claims 1, 3, 5, and 7 of U.S. Patent No. 5,231,946 (“the ’946 patent”) (collectively, “the Asserted Claims”) (together, the “Patents-in-Suit”).

Following the Court of Federal Claims’ opinion construing various terms of the Patents-in-Suit, see FastShip, LLC v. United States (FastShip I), 114 Fed. Cl. 499 (2013), the Government filed a motion for partial summary judgment pursuant to Rule 56 of the Rules of the Court of Federal Claims (“RCFC”), arguing that the LCS3 was not “manufactured” by or for the Government within the meaning of § 1498 before the Patents-in-Suit expired, J.A. 164. The Court of Federal Claims granted the Government’s Motion. See FastShip, LLC v. United States (FastShip II), 122 Fed. Cl. 71, 86 (2015). The Court of Federal Claims then convened a bench trial and issued a post-trial opinion, holding that LCS-1 infringed the Asserted Claims and awarding FastShip $6,449,585.82 in damages plus interest. See FastShip, LLC v. United States (FastShip III), 131 Fed. Cl. 592, 627 (2017); J.A. 82 (Judgment).

FastShip appeals the Court of Federal Claims’ grant of the Government’s Motion in FastShip II and damages calculation in FastShip III. The Government crossappeals, alleging that, in FastShip III, the Court of Federal Claims improperly modified a claim construction from FastShip I, thereby resulting in a determination that LCS-1 infringed. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(3). We affirm, with modification to the damages award.

Download FastShip LLC v. United States

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Sazerac Brands, LLC v. Peristyle, LLC

Colonel Edmund Haynes Taylor, Jr., “the most remarkable man to enter the whiskey industry during the post-Civil War years,” built the Old Taylor Distillery in 1887. Once the “most magnificent plant of its kind in Kentucky,” the distillery fell into disrepair after the Colonel’s death. Will Arvin and Wesley Murry sought to turn things around. In 2014, they formed Peristyle to purchase the property, renovate it, and eventually resume bourbon production there. Peristyle regularly referred to its location at “the Former Old Taylor Distillery” or “Old Taylor” during the renovation period.

That generated heartburn for the next player in our case, Sazerac, a company that bought the trademark rights to “Old Taylor” and “Colonel E.H. Taylor” in 2009. Sazerac objected to Peristyle’s use of the Taylor name and sued Peristyle for infringement. Because Peristyle used the Old Taylor name descriptively and in good faith, it finds shelter under the Lanham Act’s fair use defense. We affirm.

Download Sazerac Brands LLC v. Peristyle LLC

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Stone Basket Innovations, LLC v. Cook Medical LLC

Appellee Stone Basket Innovations, LLC (“Stone”) sued Appellant Cook Medical LLC (“Cook”) in the U.S. District Court for the Southern District of Indiana (“District Court”), alleging infringement of U.S. Patent No. 6,551,327 (“the ’327 patent”). Following a dismissal with prejudice, see Stone Basket Innovations, LLC v. Cook Med. LLC (Stone Basket I), No. 1:16-cv-00858-LJM-TAB (S.D. Ind. Jan. 11, 2017) (J.A. 1157), Cook filed, inter alia, a motion for attorney fees pursuant to 35 U.S.C. § 285 (2012) (“the § 285 Motion”). The District Court issued an order denying the § 285 Motion. Stone Basket Innovations, LLC v. Cook Med. LLC (Stone Basket II), No. 1:16-cv-00858-LJM-TAB, 2017 WL 2655612, at *1 (S.D. Ind. June 20, 2017). Cook appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (2012). We affirm.

Download Stone Basket Innovations LLC v. Cook Medical LLC

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Medtronic, Inc. v. Barry

This is a consolidated appeal from two related decisions of the U.S. Patent and Trademark Office’s Patent Trial and Appeals Board (Board) in inter partes review (IPR) proceedings. The Board concluded that the petitioner, Medtronic, Inc., had not proven that the challenged patent claims are unpatentable. We affirm-in-part and vacate-in-part. Substantial evidence supports the Board’s determination that the challenged claims would not have been obvious over two references: 1) U.S. Patent Application No. 2005/0245928 (the ’928 Application); and (2) a book chapter which appears in Masters Techniques in Orthopaedic Surgery: The Spine (2d ed.) (MTOS). However, we vacate the Board’s conclusion that certain other references, i.e., a video entitled “Thoracic Pedicle Screws for Idiopathic Scoliosis” and slides entitled “Free Hand Thoracic Screw Placement and Clinical Use in Scoliosis and Kyphosis Surgery” (Video and Slides), were not prior art because the Board did not fully consider all the factors for determining whether the Video and Slides were publicly accessible. We thus remand for further proceedings.

Download Medtronic Inc. v. Barry

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Alliance for Water Efficiency v. Fryer

James Fryer and the Alliance for Water Efficiency set out to produce a study about drought. Unfortunately, the collaboration ran dry, and the Alliance sued Fryer under the Copyright Act, 17 U.S.C. §§ 101 et seq. The lawsuit proved to be far less troublesome than the ensuing settlement. While the parties were supposed to part ways and publish their own reports, they instead find themselves in the fourth year of protracted litigation.

The parties’ disputes center on their obligations under the settlement. Years ago the district court ordered Fryer to turn over certain data sets to the Alliance and refrain from acknowledging a number of organizations in his study. On appeal we reversed solely on the acknowledgment issue. Alliance for Water Efficiency v. Fryer, 808 F.3d 1153 (7th Cir. 2015). Fryer then returned to the district court and sought restitution for injuries caused by the court’s erroneous injunction. He also moved for attorney’s fees under § 505 of the Copyright Act for having prevailed in the first appeal. A magistrate judge denied both motions and Fryer appealed.

We affirm. Fryer does not present genuine claims for restitution; he seeks to relitigate unrelated claims for breach of the settlement. His request for attorney’s fees is also unsuccessful because he did not prevail on the Alliance’s copyright claim as § 505 requires. The parties compromised their positions, obtained some relief, and walked away from the underlying lawsuit. At no time has any court entered judgment on the Alliance’s copyright claim.

Download Alliance for Water Efficiency v. Fryer

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

PGS Geophysical AS v. Iancu

PGS Geophysical AS owns U.S. Patent No. 6,906,981, which describes and claims methods and systems for performing “marine seismic surveying” to determine the structure of earth formations below the seabed. WesternGeco, L.L.C., a competitor of PGS’s, filed three petitions requesting inter partes reviews (IPRs) of claims 1– 38 of the ’981 patent. The Patent Trial and Appeal Board of the Patent and Trademark Office (PTO), acting as the PTO Director’s delegate, instituted three IPRs, but it specified for review only some of the claims WesternGeco challenged and only some of the grounds for WesternGeco’s challenges, not all claims or all grounds. In its final written decisions in the IPRs, the Board ruled partly for PGS and partly for WesternGeco on the reviewed claims and grounds. Both PGS and WesternGeco appealed, but WesternGeco then settled with PGS and withdrew, leaving only PGS’s appeals as to certain claims of the ’981 patent that the Board ruled unpatentable for obviousness. The Director intervened to defend the Board’s decisions. 35 U.S.C. § 143. We affirm. We first conclude that, although SAS Institute, Inc. v. Iancu, 138 S. Ct. 1348 (2018), now makes clear that the Board erred in limiting the scope of the IPRs it instituted and hence the scope of its final written decisions, we have jurisdiction to address the merits of the Board’s final written decisions and that we need not, and will not, sua sponte revive the “non-instituted” claims and grounds. We then conclude that the Board committed no error justifying disturbance of its obviousness decisions on their merits.

Download PGS Geophysical AS v. Iancu

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Wilson v. Dynatone Publishing Co.

Plaintiffs appeal from the dismissal of their suit by the United States District Court for the Southern District of New York (Paul A. Engelmayer, District Judge). Plaintiffs John Wilson, Charles Still, and Terrance Stubbs are former members of a musical group called “Sly Slick & Wicked.” They claim authorship of, and ownership of the renewal term copyrights in, the musical composition and sound recording of a song entitled “Sho’ Nuff,” pursuant to 17 U.S.C. § 304(a)(3)(A) & (B). Plaintiffs brought this action alleging that Defendants, Dynatone Publishing Company, UMG Recordings, Inc., and Unichappell Music, Inc., collected royalties from the sampling of Sho’ Nuff in 2013, during the renewal terms, and that Plaintiffs were entitled to those royalty payments. The district court granted Defendants’ Rule 12(b)(6) motion to dismiss for untimeliness. We AFFIRM the dismissal of Plaintiffs’ state law accounting claim and otherwise VACATE the judgment and REMAND to the district court.

Download Wilson v. Dynatone Publishing Co.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Moldex-Metric, Inc. v. McKeon Products, Inc.

The panel reversed the district court’s summary judgment in favor of the defendant in a suit for trademark infringement.

Moldex-Metric, Inc., a producer of foam ear plugs with a specific bright green color, alleged that McKeon Products, Inc., infringed its mark by using a similar green color for ear plugs. The district court concluded that the green color mark was functional and thus not protectable as trade dress.

Reversing, the panel held that the existence or nonexistence of alternative designs is probative of functionality or nonfunctionality. Thus, evidence of alternative colors must be considered in deciding the functionality of Moldex’s mark. The panel concluded that there remained a dispute of material fact as to whether Moldex’s bright green color was functional. The panel vacated the district court’s grant of summary judgment and remanded for the district court to consider McKeon’s arguments both that Molex’s green color lacked secondary meaning and that there was no likelihood of confusion, and then if necessary go to trial.

Download Moldex-Metric Inc. v. McKeon Products Inc.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Zeroclick, LLC v. Apple Inc.

Zeroclick, LLC sued Apple Inc. in the U.S. District Court for the Northern District of California, asserting claims 2 and 52 of U.S. Patent No. 7,818,691 and claim 19 of U.S. Patent No. 8,549,443. The district court found the asserted claims invalid for indefiniteness, reasoning that the claims recited means-plus-function terms for which the specifications do not disclose sufficient structure. Because the district court failed to undertake the relevant inquiry and make related factual findings to support its conclusion that the asserted claims recited means-plus-function terms, we vacate and remand.

Download Zeroclick LLC v. Apple Inc.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.