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Case Summaries

Intellectual Property

[10/12] Eurofins Pharma US Holdings v. BioAlliance Pharma SA
In a suit involving the acquisition of intellectual property that includes in vitro phenotyping technology that assists in the development and administration of drugs used to treat HIV and Hepatitis B by testing the effectiveness of those drugs on specific patients' viruses, district court's dismissal of the suit under the doctrine of forum non conveniens is affirmed where: 1) district court's denial of plaintiff's motion for jurisdictional discovery and dismissal of the complaint against BioAlliance Group for lack of personal jurisdiction are affirmed; but 2) district court's dismissal of the breach of loyalty claim against BioAlliance Group's founder and chief operating officer on the ground that it lacked personal jurisdiction over him is vacated; and 3) district court did not abuse its discretion by granting BioAlliance Group's motion to dismiss on forum non conveniens grounds is affirmed as both the private and public interest factors weigh in favor of litigating this dispute in France.

[10/08] Federal Treasury Enterprise Sojuzplodoimport v. Spirits Int'l. N.V.
In an action for trademark infringement by an entity created by the Russian government and purportedly granted rights by the government to manage the trademarks to Stolichnaya Vodka, dismissal of the complaint is reversed where plaintiff was not barred from challenging the validity of the assignment of the trademarks at issue in federal court on the ground that those trademarks were "incontestable" pursuant to 15 U.S.C. section 1065.

[10/06] Teva Pharm., USA, Inc. v. Eisai Co. Ltd.
In an action for a declaratory judgment brought by Teva Pharmaceuticals, Inc. (Teva), that its generic version of the drug donepezil does not infringe four of defendant's Orange Book patents for use in treating Alzheimer's disease, district court's judgment dismissing the case for lack of jurisdiction is reversed and remanded as Teva has alleged a sufficiently concrete injury fairly traceable to defendant's actions, and the injury can be addressed by the requested relief where a declaratory judgment of noninfringement would trigger the first-filer's exclusivity period, which currently blocks FDA approval of the Gate ANDA.

[10/01] Mobile Anesthesiologists Chicago, LLC v. Anesthesia Assoc. of Houston Metroplex, P.A.
In plaintiff's suit claiming that defendant violated the federal anti-cybersquatting statute by registering a domain name confusingly similar to plaintiff's registered trademark, district court's dismissal of the suit for lack of personal jurisdiction is affirmed where: 1) defendant did not waive its personal jurisdiction defense by asking to delay a preliminary injunction hearing or by asking for expedited discovery to prepare for that hearing; and 2) defendant lacked the required "minimum contacts" with Illinois to support personal jurisdiction there, as defendant's contacts are not sufficient to establish that defendant's activities in Texas were calculated to cause harm in Illinois.

[10/01] In re Chippendales USA, Inc.

[09/30] Stayart v. Yahoo! Inc.
In plaintiff's suit against Yahoo! and others for trademark infringement and various other state law claims, claiming that search results that appear with her name improperly gave her endorsement to pornography and online pharmaceuticals, district court's dismissal of the complaint on the ground that plaintiff lacked standing under the Lanham Act to sue for trademark infringement, is affirmed where: 1) plaintiff does not have standing under the Lanham Act to bring suit because she does not have a commercial interest in her name; and 2) district court did not abuse its discretion in denying plaintiff's leave to re-file.

[09/29] UBID, Inc. v. GoDaddy Group, Inc.
In plaintiff's suit against GoDaddy Group, Inc., claiming that defendant violated the Anti-Cybersquatting Consumer Protection Act by intentionally registering domain names that are confusingly similar to plaintiff's trademarks and domain names for the purpose of profiting from plaintiff's marks and exploiting web surfers' confusion by selling advertising for those confusingly similar websites, dismissal of the case for lack of jurisdiction on the ground that defendant, which is headquartered in Arizona, lacked sufficient contacts with Illinois to be sued there, is reversed and remanded where: 1) defendant purposefully availed itself of the Illinois market for its services through its deliberate and continuous exploitation of the market; 2) plaintiff's claim bears a sufficient relationship to defendant's business activities in Illinois to expect defendant to defend itself in Illinois without violating the due process clause; and 3) there is no unfairness in requiring defendant to defend the lawsuit in the courts of the state where, through the very activity giving rise to the suit, it continues to gain so much.

[09/23] Bosem v. Musa Holdings, Inc.
In plaintiff's suit for injunctive relief, fraud, false advertising, and compensatory damages against defendant company for alleged unauthorized use of plaintiff's image or likeness and violation of the Lanham Act, the Fourth District's reversal of the trial court's award of prejudgment interest for the plaintiff is quashed as prejudgment interest is a matter of right under the prevailing "loss theory" of recovery for pecuniary damages, such as damages for economic or tangible losses.

[09/21] The Laryngeal Mask Co. Ltd. v. Ambu A/S, Ambu Inc.
In a patent infringement suit related to artificial airway devices used to deliver anesthetic gases during surgery and to establish unobstructed airways in patients in emergency situations, rulings finding that defendant's products did not infringe the asserted claims of plaintiff's '100 patent and that all claims were invalid for lack of written description under 35 U.S.C. section 112 are vacated and remanded where: 1) district court's summary judgment of no infringement is vacated as it was predicated on the court's erroneous construction of the claim term "backplate"; and 2) district court's judgment of invalidity is vacated and remanded as plaintiff has raised a genuine issue of material fact precluding summary judgment on the issue of written description.

[09/20] Duval Wiedmann, LLC v. InfoRocket.com, Inc.
In an action for breach of a patent license agreement, summary judgment for defendants is affirmed where the district court correctly held that the agreement terminated on November 29, 2004, sixty days after plaintiff received actual notice of termination. However, the order is remanded where the district court did not address what royalties, if any, were owed to plaintiff over a certain time period.

[09/20] Fujitsu Ltd. v. Netgear Inc.
In a patent infringement suit related to patents that describe and claim a different aspect of wireless communication technologies, district court's grant of defendant's motion for summary judgment of noninfringement is affirmed in part, reversed in part, and remanded where: 1) district court correctly granted summary judgment of noninfringement of the asserted claims of the '642 and '993 patents; 2) regarding the '952 patent, summary judgment of noninfringement is affirmed for all products but for the four models for which plaintiff produced appropriate evidence of direct infringement; and 3) with respect to these four models, district court's summary judgment of no contributory and no induced infringement is reversed because genuine issues of material fact remain.

[09/15] Georgia-Pac. Consumer Prods. LP v. Myers Supply, Inc.
In an action for contributory trademark infringement, summary judgment for defendant is affirmed where: 1) the district court did not abuse its discretion in discounting plaintiff's survey evidence and crediting more the testimony from industry insiders, and thus, correctly determined that there is no actual confusion by bathroom consumers; and 2) under Arkansas law, there was a strong presumption that interference with an at-will contract is not improper.

[09/13] Am. Med. Sys., Inc. v. Biolitec, Inc.
In a patent infringement suit related to patents claiming various methods and devices for vaporizing tissue by using laser radiation, district court's grant of summary judgment of noninfringement to defendant is reversed and remanded as the district court erred in construing the phrase "photoselective vaporization" as a claim limitation, rather than merely a label for the invention as a whole.

[09/10] Vernor v. Autodesk, Inc.
In a declaratory judgment action against Autodesk, Inc. to establish that plaintiff's resales of Autodesk, Inc.'s AutoCAD Release 14 software did not infringe Autodesk's copyright, summary judgment for plaintiff is reversed where, because plaintiff did not purchase the Release 14 copies from an owner, he could not invoke the first sale doctrine, and he also could not assert an essential step defense on behalf of his customers.

[09/09] Baseload Energy, Inc. v. Roberts
In plaintiff's action seeking a declaratory judgment that defendant's patent related to a flying wind turbine was invalid and unenforceable, district court's grant of defendant's motion for summary judgment in holding that the terms of the parties' 2008 settlement agreement barred all claims between the parties is reversed as the language of the settlement agreement did not release either claims of infringement of the patent or the accompanying defenses of invalidity or unenforceability.

[09/09] Daiichi Sankyo Co., Ltd. v. Matrix Laboratories, Ltd.
In a patent infringement suit, related to 1-biphenylmethylimidazole compounds and their use as angiotensin receptor blockers (ARBs) for the treatment of high blood pressure, district court's decision sustaining the validity of a patent under 35 U.S.C. section 103 is affirmed as the district court did not err in holding that defendant failed to establish a prima facie case of obviousness because defendant failed to show that one of ordinary skill in the art would have been motivated to select the '902 ARBs as lead compounds or, even if they had, that the skilled artisan would have been motivated to modify the '902 compounds to synthesize the claimed invention.

[09/09] Tri-Star Elec. Int'l, Inc. v. Preci-Dip Durtal, SA
In a patent infringement suit, district court's denial of the motion to dismiss for lack of standing under Federal Rule of Civil procedure 12(b)(1) is affirmed as the assignment transferred ownership to Tri-Star of California and the Tri-Star Delaware corporation has standing to bring this suit.

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