Canadian Standards Association v. P.S. Knight Company Limited

Court: US Court of Appeals for the Fifth Circuit

Docket: 23-50081

Opinion Date: July 16, 2024

Judge: King

Areas of Law: Copyright, Intellectual Property, International Law

The case involves the Canadian Standards Association (CSA), a Canadian not-for-profit corporation that holds Canadian copyrights for various model codes. CSA alleged that P.S. Knight Company, Limited, PS Knight Americas, Incorporated, and Gordon Knight (collectively, Knight) infringed its copyrights by selling competing versions of CSA’s codes. These codes had been incorporated by reference into Canadian statutes and regulations. Knight argued that his actions were permissible under U.S. copyright law, as the codes had become "the law" of Canada.

The United States District Court for the Western District of Texas found in favor of CSA, granting its motion for summary judgment and issuing a permanent injunction against Knight. The district court held that Knight's copying of CSA’s codes constituted copyright infringement and declared Knight’s U.S. copyright registration invalid. Knight appealed the decision, arguing that the district court improperly applied the law.

The United States Court of Appeals for the Fifth Circuit reviewed the case de novo. The court found that the district court had improperly applied the holding of Veeck v. Southern Building Code Congress International, Inc., which states that once model codes are enacted into law, they become "the law" and may be reproduced or distributed as such. The Fifth Circuit held that because CSA’s model codes had been incorporated into Canadian law, Knight’s copying of those codes did not constitute copyright infringement under U.S. law.

The Fifth Circuit reversed the district court’s summary judgment decisions, vacated the grant of injunctive relief, and remanded the case with instructions to grant summary judgment in favor of Knight and to dismiss CSA’s copyright infringement claim.

Zimmer Biomet Holdings, Inc. v. Insall

Court: US Court of Appeals for the Seventh Circuit

Docket: 23-1888

Opinion Date: July 12, 2024

Judge: LEE

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

Dr. John Insall, an orthopedic surgeon, developed and patented knee replacement devices, which he licensed to Zimmer Biomet Holdings, Inc. In return, Zimmer agreed to pay royalties to Insall, and later to his estate after his death. When Insall’s last patent expired in 2018, Zimmer ceased royalty payments, claiming the obligation had ended. The dispute was submitted to arbitration, where the Estate prevailed. Zimmer then sought to vacate the arbitration award in district court, arguing that continuing royalty payments violated public policy. The district court confirmed the arbitration award.

The United States District Court for the Northern District of Illinois reviewed the case. Zimmer argued that the arbitration award should be vacated based on public policy grounds, citing Supreme Court decisions in Brulotte v. Thys Co. and Kimble v. Marvel Entertainment, LLC, which prohibit collecting royalties on expired patents. The district court rejected Zimmer’s argument and confirmed the arbitration award, leading to Zimmer’s appeal.

The United States Court of Appeals for the Seventh Circuit reviewed the case. The court emphasized the limited scope of judicial review over arbitration awards under the Federal Arbitration Act (FAA). The court found that the arbitration panel had correctly interpreted the 1998 amendments to the agreement, which untethered the royalty payments from the patents themselves, making them based on the marketing and branding of the NexGen Knee products. Consequently, the court held that the arbitration award did not violate public policy as outlined in Brulotte and Kimble. The Seventh Circuit affirmed the district court’s decision and confirmed the arbitration award in favor of Insall’s Estate.

BACKERTOP LICENSING LLC v. CANARY CONNECT, INC.

Court: US Court of Appeals for the Federal Circuit

Docket: 23-2367

Opinion Date: July 16, 2024

Judge: Hughes

Areas of Law: Civil Procedure, Intellectual Property, Legal Ethics, Patents, Professional Malpractice & Ethics

Backertop Licensing LLC and Lori LaPray appealed the U.S. District Court of Delaware’s orders requiring LaPray to appear in-person for testimony regarding potential fraud and imposing monetary sanctions for her failure to appear. The District Court identified potential misconduct in numerous related patent cases involving IP Edge and Mavexar, which allegedly created shell LLCs, assigned patents for little consideration, and directed litigation without disclosing their ongoing rights. The court was concerned that this arrangement concealed the real parties in interest and potentially perpetrated fraud on the court.

The District Court ordered LaPray, the sole owner of Backertop, to produce documents and appear in-person to address these concerns. LaPray moved to set aside the order, citing travel difficulties and requesting to appear telephonically, which the court denied. The court rescheduled the hearing to accommodate her schedule but maintained the requirement for in-person testimony to assess her credibility. LaPray did not attend the rescheduled hearing, leading the court to hold her in civil contempt and impose a daily fine until she appeared.

The United States Court of Appeals for the Federal Circuit reviewed the case. The court held that the District Court’s orders were within its inherent authority and not an abuse of discretion. The court found that Federal Rule of Civil Procedure 45, which limits the geographic range of subpoenas, did not apply to the court’s sua sponte orders. The court affirmed the District Court’s orders, emphasizing the necessity of in-person testimony to investigate potential misconduct and assess credibility. The monetary sanctions for LaPray’s failure to appear were also upheld.

MILLER MENDEL, INC. v. CITY OF ANNA, TEXAS

Court: US Court of Appeals for the Federal Circuit

Docket: 22-1753

Opinion Date: July 18, 2024

Judge: Cunningham

Areas of Law: Intellectual Property, Patents

Miller Mendel, Inc. sued the City of Anna, Texas, alleging that the City’s use of the Guardian Alliance Technologies software platform infringed claims 1, 5, and 15 of U.S. Patent No. 10,043,188, which relates to a software system for managing pre-employment background investigations. The United States District Court for the Eastern District of Texas granted the City’s motion for judgment on the pleadings, concluding that the asserted claims do not claim patent-eligible subject matter under 35 U.S.C. § 101. The district court also denied the City’s motion for attorneys’ fees.

The district court found that the claims were directed to the abstract idea of performing a background check and did not contain an inventive concept that would transform the abstract idea into a patent-eligible application. Miller Mendel’s motion for reconsideration was denied, with the court clarifying that its decision only invalidated claims 1, 5, and 15. The City’s motion for attorneys’ fees was denied on the grounds that the case was not exceptional.

The United States Court of Appeals for the Federal Circuit reviewed the case and affirmed the district court’s decision. The Federal Circuit agreed that the claims were directed to an abstract idea and lacked an inventive concept. The court also upheld the district court’s decision to limit its invalidity finding to claims 1, 5, and 15, as Miller Mendel had narrowed the scope of the asserted claims before the court ruled on the motion. Additionally, the Federal Circuit found no abuse of discretion in the district court’s denial of attorneys’ fees, concluding that Miller Mendel’s litigation conduct did not make the case exceptional.

Natera, Inc. v. NeoGenomics Laboratories, Inc.

Court: US Court of Appeals for the Federal Circuit

Docket: 24-1324

Opinion Date: July 12, 2024

Judge: MOORE

Areas of Law: Intellectual Property, Patents

Natera, Inc. and NeoGenomics Laboratories, Inc. are healthcare companies in the oncology testing industry. Natera owns two patents, U.S. Patent No. 11,519,035 and U.S. Patent No. 11,530,454, which cover methods for amplifying and sequencing DNA to detect cancer relapse. Natera uses these methods in its Signatera product, while NeoGenomics offers a competing product called RaDaR. Natera sued NeoGenomics, alleging that RaDaR infringed its patents and sought a preliminary injunction to stop NeoGenomics from using, selling, or promoting RaDaR.

The United States District Court for the Middle District of North Carolina granted the preliminary injunction, finding that Natera was likely to succeed on the merits of its infringement claim for the ’035 patent. The court did not address the ’454 patent. The district court determined that Natera demonstrated a likelihood of irreparable harm due to direct competition in a two-player market, and that the balance of equities and public interest favored the injunction. The injunction was tailored to allow ongoing use of RaDaR for existing patients and certain clinical trials.

The United States Court of Appeals for the Federal Circuit reviewed the district court’s decision. The Federal Circuit affirmed the preliminary injunction, agreeing that Natera showed a likelihood of success on the merits and that NeoGenomics did not raise a substantial question of validity. The court found no error in the district court’s handling of claim construction, irreparable harm analysis, or public interest considerations. The Federal Circuit concluded that the district court did not abuse its discretion in granting the preliminary injunction.