Decisions in Brief

• Author: John C. Gatz
• Position: John C. Gatz is a member of the firm Nixon Peabody in Chicago, Illinois. Column contributors include the following writers: Copyrights: Zachary J. Smolinski, Smolinski Rosario Law P.C.; Michael N. Spink, Brinks, Hofer, Gilson & Lione; and Mark R. Anderson, Akerman LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter, Daniel M. ...
• Pages: 61-65

PATENTS

Decisions in Brief

COPYRIGHTS By John C. Gatz

Published in Landslide® magazine, Volume 11, Number 2, a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2018 by the American Bar Association. Reproduced with permission. All rights reserved.

This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.

Attorney Fees

Stone Basket Innovations, LLC v. Cook Medical LLC, 892

F.3d 1175, 127 U.S.P.Q.2d 1296 (Fed. Cir. 2018). The Federal

Circuit af rmed the district court’s denial of Cook’s motion

seeking attorney fees pursuant to 35 U.S.C. § 285. The Fed-

eral Circuit found that the district court did not abuse its

discretion. The substantive strength of the plaintiff’s litigat-

ing position was not exceptionally weak. Moreover, Cook did

not take any steps during the litigation to inform the plaintiff

of the speci c invalidity argument on which Cook relied on

appeal to support its contention that the plaintiff should have

known its conduct was clearly unreasonable or so objectively

baseless as to merit attorney fees.

Claim Construction

Blackbird Tech LLC v. ELB Electronics, Inc., 895 F.3d 1374,

127 U.S.P.Q.2d 1290 (Fed. Cir. 2018). The Federal Circuit

vacated and remanded the district court’s  nding of nonin-

fringement with respect to one claim based on incorrect claim

construction of the term “attachment surface.”

Damages

WesternGeco LLC v. ION Geophysical Corp., 138 S. Ct.

2129, 127 U.S.P.Q.2d 1001 (2018). The U.S. Supreme Court

held that a patentee that proves infringement of its patent by

a company that ships the parts to be assembled overseas is

entitled to recover lost foreign pro ts. In deciding whether

lost foreign pro ts could be awarded, the Court followed a

two-step process for determining extraterritoriality. First,

the question is whether the presumption against extraterrito-

riality has been rebutted. If not, then the question is whether

the case involves a domestic application of the statute. Here,

the Supreme Court found the case to be resolved with this

second step. The Supreme Court found 35 U.S.C. § 284 (as

it relates to infringement under 35 U.S.C. § 271(f)(2)) is

domestic—it refers to the act of exporting components from

the United States.

Battle over Terms of Grumpy Cat License Agreement

Grumpy Cat Ltd. v. Grenade Beverage LLC, No. SA CV

15-2063-DOC (DFMx), 2018 U.S. Dist. LEXIS 91342, 2018

WL 2448126 (S.D. Cal. May 31, 2018). Grumpy Cat Ltd. is

the owner of the intellectual property (IP) rights in images of

Tardar Sauce, a cat with a grumpy face. In 2013, Grenade Bev-

erage entered into a contract with Grumpy Cat Ltd. to use the

cat’s likeness in promoting iced coffee products. Grenade used

the cat’s image to promote not only iced coffees, but also non-

iced products, including ground coffee. Grumpy Cat Ltd. sued

Grenade for using the cat images in a way that went beyond

the bounds of the contract. The contract text allowed Grenade

to use Tardar Sauce’s likeness to promote “a line of Grumpy

Declaratory Judgment

AIDS Healthcare Foundation, Inc. v. Gilead Sciences, Inc.,

890 F.3d 986, 126 U.S.P.Q.2d 1690 (Fed. Cir. 2018). The

Federal Circuit con rmed the district court’s decision of dis-

missing the declaratory judgment action of Healthcare for

lack of an actual controversy. The Federal Circuit noted that

Healthcare’s requests for generic production of the patentee’s

products elicited no response from the solicited pharmaceu-

tical manufacturers. Neither Healthcare nor any producer of

the patentee’s products is infringing or preparing to infringe

any patent. An adverse economic interest alone is insuf cient

for maintaining a declaratory judgment action.

Double Patenting

UCB, Inc. v. Accord Healthcare, Inc., 890 F.3d 1313, 127

U.S.P.Q.2d 1010 (Fed. Cir. 2018). The Federal Circuit

af rmed the district court’s conclusion that the asserted

claims were not invalid. The district court applied the cor-

rect legal standards in its obviousness-type double patenting,

obviousness, and anticipation analyses.

Inequitable Conduct/Attorney Fees

Energy Heating, LLC v. Heat On-The-Fly, LLC, 889 F.3d 1291,

126 U.S.P.Q.2d 1566 (Fed. Cir. 2018). The Federal Circuit

af rmed the district court’s inequitable conduct ruling, as well

as various state law rulings connected with a tortious interfer-

ence claim. The Federal Circuit found that the patentee failed

to disclose certain on-sale bar activities to the U.S. Patent and

Trademark Of ce (USPTO). However, the Federal Circuit

reversed and remanded the district court’s denial of attorney

fees because the court failed to articulate a basis for denying

attorney fees following the inequitable conduct  nding.

Infringement/Damages

FastShip, LLC v. United States, 892 F.3d 1298, 127

U.S.P.Q.2d 1165 (Fed. Cir. 2018). The Federal Circuit

af rmed the U.S. Court of Federal Claims’ (USCFC’s)

Cat–branded coffee products,” which was determined by the

jury to be limited to iced coffee. The district court reached the

question as to whether contract text stating that “additional

products within the Product Category [nonalcoholic beverages]

that may, upon the Parties’ mutual approval, be marketed here-

under” was a covenant or a condition. If it were determined

to be a covenant, Grenade could not be sued for copyright or

trademark infringement. If it was a condition, they could be

sued for copyright and trademark infringement. The district

court determined the language amounted to a condition, and

therefore Grenade was not entitled to declaratory judgment on

the copyright and trademark infringement questions.