Appliance v. Axis Supply

Court: US Court of Appeals for the Fifth Circuit

Docket: 23-50413

Opinion Date: June 21, 2024

Judge: Smith

Areas of Law: Intellectual Property, Trademark

The case involves a trademark dispute between two appliance companies, Appliance Liquidation Outlet, L.L.C. (ALO) and Axis Supply Corporation (Axis). ALO had been operating under its name for over two decades when Axis opened a store in 2021, using a large banner with the words “Appliance Liquidation.” ALO claimed that this led to confusion among customers who believed ALO operated both stores. When Axis refused to change its name, ALO sued for trademark infringement.

The district court found that ALO had valid trademarks in the words “Appliance Liquidation Outlet” and “Appliance Liquidation,” and that Axis’s banner infringed those marks. The court ruled in favor of ALO, prohibiting Axis from using ALO’s marks or causing confusion with ALO’s brand, and awarded ALO attorney’s fees.

Axis appealed, arguing that the marks were not valid, its banner did not infringe those marks, and the district court erred in awarding ALO attorney’s fees. The United States Court of Appeals for the Fifth Circuit agreed in part, finding that the district court erred in ruling that “Appliance Liquidation” is a valid trademark, but did not err in finding that “Appliance Liquidation Outlet” is a valid mark that Axis’s banner infringed. The court reversed the judgment as to the “Appliance Liquidation” mark, affirmed as to the “Appliance Liquidation Outlet” mark, and vacated the fee award.

Ascension Data v. Pairprep

Court: US Court of Appeals for the Fifth Circuit

Docket: 23-11026

Opinion Date: June 25, 2024

Judge: Wiener

Areas of Law: Arbitration & Mediation, Contracts, Intellectual Property

Ascension Data & Analytics, Rocktop Partners, and Rocktop Holdings II (collectively, "Ascension") entered into a contract with Pairprep, Inc. for data extraction services. The contract was terminated due to an alleged data breach and Pairprep's failure to extract reliable data. Ascension then contracted with another vendor, Altada Technologies Solutions, but that contract was also terminated early due to Altada's financial crisis. Ascension initiated arbitration proceedings against Pairprep to recover remediation costs incurred as a result of the data breach. Pairprep counterclaimed, alleging breach of contract and violation of the federal Defend Trade Secrets Act. The arbitration panel rejected Ascension's defenses and granted Pairprep a monetary award.

Ascension filed an application in the Northern District of Texas to vacate the arbitration award, arguing that Pairprep's counterclaims were barred by res judicata due to a previous dismissal of identical claims against Altada. Pairprep filed an application to confirm the arbitral award in a Texas state court, which was granted. The district court dismissed Ascension's application for lack of subject matter jurisdiction and denied its motion for preliminary injunctive relief.

The United States Court of Appeals for the Fifth Circuit affirmed the district court's decision. The court applied the Supreme Court's decision in Badgerow v. Walters, which held that a district court must have an independent jurisdictional basis to consider applications to confirm, modify, or vacate arbitral awards under the Federal Arbitration Act. The court found that Ascension had not established an independent basis for subject matter jurisdiction, as the parties were not diverse and Ascension did not identify any federal law entitling it to relief. Therefore, the court concluded that the dispute over the enforceability of the arbitral award must be litigated in state court.

Apprio, Inc. v. Zaccari

Court: US Court of Appeals for the District of Columbia Circuit

Docket: 22-7057

Opinion Date: June 21, 2024

Judge: Wilkins

Areas of Law: Contracts, Copyright, Intellectual Property

The case revolves around a dispute between Apprio, Inc., a government contractor, and its former employee, Neil Zaccari. Zaccari, a Senior Technical Manager at Apprio, had developed a regulatory compliance software prior to his employment. During his tenure, he updated the software, demonstrated it at work, and handed it over to Apprio upon request. Apprio then sent Zaccari a document titled “Proprietary Information and Assignment of Inventions Agreement,” which Zaccari acknowledged through Apprio’s human resources portal. After his termination, Zaccari copyrighted the updated software and sued Apprio for breaching the agreement when it allegedly forced him to turn over a copy of the software to an Apprio client. In response, Apprio countersued Zaccari for breaching the agreement when he refused to assign his rights in the updated software to Apprio.

The District Court combined the cases, dismissed Zaccari’s case for failure to state a claim, and granted partial and full summary judgment for Apprio with respect to contractual assignment of rights in the updated software and its breach of contract claim. Zaccari appealed, arguing that the agreement is not an enforceable contract and, alternatively, that the agreement neither supports the assignment of his rights in the updated software to Apprio nor a finding that he breached the agreement.

The United States Court of Appeals for the District of Columbia Circuit disagreed with Zaccari's arguments. The court held that Zaccari’s “acknowledgment” of the agreement created an enforceable contract that requires Zaccari to assign his rights in the updated software to Apprio. Accordingly, Zaccari breached the binding agreement by failing to assign those rights to Apprio and disclosing the updated software’s underlying code to the U.S. Copyright Office in order to obtain the copyright. The court affirmed the District Court's decision.

AMARIN PHARMA, INC. v. HIKMA PHARMACEUTICALS USA INC.

Court: US Court of Appeals for the Federal Circuit

Docket: 23-1169

Opinion Date: June 25, 2024

Judge: Lourie

Areas of Law: Drugs & Biotech, Health Law, Intellectual Property, Patents

The case involves Amarin Pharma, Inc., Amarin Pharmaceuticals Ireland Limited, and Mochida Pharmaceutical Co., Ltd. (collectively, “Amarin”) and Hikma Pharmaceuticals USA Inc. and Hikma Pharmaceuticals PLC (collectively, “Hikma”). Amarin markets and sells icosapent ethyl, an ethyl ester of an omega-3 fatty acid commonly found in fish oils, under the brand name Vascepa®. In 2012, the U.S. Food and Drug Administration (“FDA”) approved Vascepa for the treatment of severe hypertriglyceridemia. In 2019, following additional research and clinical trials, the FDA approved Vascepa for a second use: as a treatment to reduce cardiovascular risk in patients having blood triglyceride levels of at least 150 mg/dL.

In the United States District Court for the District of Delaware, Hikma moved to dismiss Amarin’s complaint for failure to state a claim. The court granted Hikma’s motion, concluding that Amarin’s allegations against Hikma did not plausibly state a claim for induced infringement.

The United States Court of Appeals for the Federal Circuit reversed the decision of the district court. The court held that Amarin had plausibly pleaded that Hikma had induced infringement of the asserted patents. The court noted that the case was not a traditional Hatch-Waxman case or a section viii case, but rather a run-of-the-mill induced infringement case arising under 35 U.S.C. § 271(b). The court concluded that the totality of the allegations, taken as true, plausibly plead that Hikma “actively” induced healthcare providers’ direct infringement.

BETEIRO, LLC v. DRAFTKINGS INC.

Court: US Court of Appeals for the Federal Circuit

Docket: 22-2275

Opinion Date: June 21, 2024

Judge: Stark

Areas of Law: Gaming Law, Intellectual Property, Patents

The case involves Beteiro, LLC, which owns several patents related to facilitating gaming or gambling activities at a remote location. The patents disclose an invention that allows a user to participate in live gaming or gambling activity via a user communication device, even if the user is not in the same location as the gaming venue. Beteiro filed multiple patent infringement cases against various companies, alleging that they infringe certain claims of the patents by providing gambling and event wagering services.

The United States District Court for the District of New Jersey dismissed Beteiro's cases for failure to state a claim based on the subject matter ineligibility of the patent claims. The court found that the claims were directed to an abstract idea and did not contain an inventive concept. Beteiro appealed the decision.

The United States Court of Appeals for the Federal Circuit affirmed the district court's decision. The court agreed that Beteiro's claims were directed to the abstract idea of exchanging information concerning a bet and allowing or disallowing the bet based on where the user is located. The court also found that the claims did not provide an inventive concept because they achieved the abstract steps using several generic computers. The court concluded that Beteiro's claims amounted to nothing more than the practice of an abstract idea using conventional computer equipment, including GPS on a mobile phone, which are not eligible for patent under current Section 101 jurisprudence.