Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In an unpublished opinion, the Ninth Circuit reinstated a jury verdict of willfulness in a copyright infringement case against Zazzle. Basically, Zazzle was found to be using copyrighted prints on merchandise without the permission of the copyright owner. In copyright cases, willfulness may typically be shown by demonstrating that the defendant was “reckless” in connection with the infringing activities. Here, the Ninth Circuit reinstated the jury’s willfulness finding by confirming that “an infringer’s knowing reliance on obviously insufficient oversight mechanisms” in terms of policing claims of infringement can constitute willful infringement. In an interesting footnote, the Ninth Circuit also denied requests for judicial notice based on web pages on particular dates finding the materials to be noticed to be unreliable. The key takeaway here is the detail on the type of activities that are reckless, and thus willful, in a copyright context.

2. In a recent opinion, the Federal Circuit reversed a summary judgment of design patent infringement. The design patent, as is typical, claimed an ornamental design as shown and described in the design patent. The district court, in analyzing the design patent and accused product, however, identified certain features as not being part of the design patent claim and did not consider such features as part of the infringement analysis. The issue was that the differences between the design patent and accused product existed in the elements the district court declined to consider in its analysis. The Federal Circuit reversed because the overall visual impression of the patented and accused designs are to be considered and a logo on the accused product was not considered as part of the analysis. The district court also erred by considering isolated portions of the designs as opposed to the designs as a whole, as well as by making findings of fact on summary judgment in terms of how an ordinary observer would perceive the patented and accused designs in light of the prior art. This case will likely be cited for the proposition that logos may be considered as creating a difference in overall visual impression in a design patent context. The case, however, reaffirms some key considerations in the design patent infringement analysis, including the impropriety of considering independently only those design elements that affect the similarity analysis, as opposed to considering the overall visual impression created by each design. This latter point was from Amini Innovation Corp v. Anthony California, Inc., a Federal Circuit appeal handled by Cislo & Thomas and the author of these takeaways. We are pleased to see that it remains good law!

3. In an opinion out of the District of New Jersey, the Court granted the Plaintiff/Counterclaim-Defendants’ motion to dismiss a series of antitrust counterclaims in a patent context (the patents were for a treatment of hypotrichosis of eyelashes). Duke University and Allergan had a series of related patents invalidated for obviousness in a succession of prior cases. Duke then secured a newer, allegedly related patent, and both Duke and Allergan again sued Akorn for patent infringement in connection with an Abbreviated New Drug Application (ANDA). Akorn’s antitrust and related counterclaims were based on the assertion that the current patent was related to patents previously invalidated, and that Duke and Allergan were simply using the patents to improperly control and monopolize the market, in violation of antitrust laws. The district court granted Duke and Allergan’s motion to dismiss the antitrust counterclaims finding, in part, that the “sham litigation” exception to the Noerr-Pennington doctrine (a doctrine that generally allows one to petition government and/or the courts for redress of perceived wrongs and avoid antitrust liability therefor unless the claims were objectively baseless) could not be satisfied in the case because the appellate result in the prior case that found that related patents invalid were mixed, and that it could not be proven that the claims were objectively baseless at the time they were filed. In addition, and of note for this takeaway, is that the Court identified a distinction in Octane Fitness between the exceptional case standard under 35 U.S.C. 285 and the objectively baseless standard for the sham litigation exception to Noerr-Pennington immunity. Specifically, the district court found that because the exceptional case standard is lower than objectively baseless, the lack of an exceptional case finding in the previous litigation between the parties precludes a finding that the current case between these parties constitutes sham litigation.