Justia U.S. 1st Circuit Court of Appeals Opinion Summaries

Articles Posted in Intellectual Property
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The First Circuit affirmed the judgment of the district court dismissing Amyndas Pharmaceuticals, S.A.'s claims against Zealand Pharma A/S and vacated the dismissal of Amyndas's claims against Zealand Pharma U.S., Inc., holding that the district court erred in dismissing Amyndas's claims against Zealand Pharma U.S.When Amyndas was considering separate joint ventures with Zealand Pharma and Alexion Pharmaceuticals, Inc. it shared trade secrets before understanding that neither of the joint ventures would materialize. Zealand Pharma and Zealand US, its newly established affiliate, subsequently announced a partnership with Alexion Pharmaceuticals, Inc. Amyndas sued for misappropriation of trade secrets and other confidential information. The district court (1) dismissed Amyndas's claims against Zealand Pharma on the ground that Amyndas was required to litigate those claims in Denmark; and (2) dismissed Amyndas's claims against Zealand US for failure to state a claim. The First Circuit vacated in part and remanded the case for further proceedings, holding that the district court (1) correctly dismissed Amyndas's claims against Zealand Pharma; and (2) erred in concluding that Amyndas's claims against Zealand US were futile. View "Amyndas Pharmaceuticals, S.A. v. Zealand Pharma A/S" on Justia Law

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The First Circuit held that Sanofi-Aventis U.S., LLC improperly submitted a patent for listing in "the Orange Book" and that Sanofi was potentially liable under the antitrust laws to drug purchasers who were allegedly harmed by the effective extension of Sanofi's monopoly.At the center of this appeal was a publication maintained by the FDA called Approved Drug Products with Therapeutic Equivalence Evaluations, known as "the Orange Book," which lists patents said by their owners to claim FDA-approved drugs. When a patent is listed in the Orange Book the patent-owning drug manufacturer has the ability to trigger an automatic, thirty-month suspension of the FDA's approval of a competing product. Plaintiffs alleged that Sanofi artificially restricted competition in the market for insulin glargine by improperly listing a certain patent in the Orange Book, thereby delaying competition in the insulin glargine market and resulting in inflated prices. The district court dismissed Plaintiffs' Sherman Act claims. The First Circuit vacated the dismissal as to Sanofi's alleged improper Orange Book listing of the patent, holding that Sanofi improperly submitted the patent for listing in the Orange Book and that Sanofi potentially liable under the antitrust laws to drug purchasers who were allegedly harmed by the effective extension of Sanofi's monopoly. View "In re Lantus Direct Purchaser Antitrust Litigation" on Justia Law

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Amphastar Pharmaceuticals Inc. and its wholly owned subsidiary (collectively, Amphastar) and Sandoz Inc. were competitors in the U.S. market for generic enoxaparin, an anticoagulant. Momenta Pharmaceuticals Inc. served as Sandoz’s contract laboratory. Amphastar filed a complaint alleging antitrust violations by Sandoz and Momenta based on Defendants’ alleged misrepresentations to the United States Pharmacopeial Convention, a private standard-setting organization charged with ensuring the quality of drugs. Defendants brought an infringement suit against Amphastar, resulting in a temporary restraining order (TRO) and preliminary injunction prohibiting Amphastar from selling enoxaparin. The preliminary injunction was later vacated, but it did prevent Amphastar from selling its generic enoxaparin for approximately three months. Amphastar then filed this suit under the Sherman Act seeking damages for lost profits during the pendency of the TRO and injunction. The district court dismissed the complaint under the Noerr-Pennington doctrine, which immunizes good-faith petition of government entities from antitrust liability. The First Circuit reversed, holding that the district court erred in applying Noerr-Pennington. Remanded for the district court to consider Defendants’ other arguments in the first instance. View "Amphastar Pharmaceuticals, Inc v. Momenta Pharmaceuticals, Inc." on Justia Law

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Plaintiff entered an original song and music video to a variety of companies affiliated with Sony Music Entertainment (Sony) as part of a songwriting contest sponsored by Sony. Plaintiff later sued Sony alleging contract and intellectual property claims. The district court entered an order compelling arbitration and dismissed Plaintiff’s case with prejudice, concluding that the claims were subject to mandatory arbitration under the Federal Arbitration Act and that Plaintiff failed to make a cognizable claim under Fed. R. Civ. P. 12(b)(6). Plaintiff appealed, arguing that the district court erred in ruling that he failed to allege sufficient facts to support his claims. The First Circuit affirmed, holding that because the district court’s rulings that Plaintiff’s claims were subject to mandatory arbitration provided an independent basis for dismissing his claims, the Court did not need to address Plaintiff’s challenge to the district court’s decision to dismiss his complaint on factual sufficiency grounds. View "Cortes-Ramos v. Sony Corp. of America" on Justia Law

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Norbero Colon Lorenzana (Colon) was working for South American Restaurant Corporation (SARCO), a franchisee and operator of Church’s Chicken locations in Puerto Rico, when he suggested to his superiors the concept for a new chicken sandwich that could be included on Church’s menu. Church’s subsequently began selling the item, which it called the “Pechu Sandwich.” SARCO subsequently received a certificate of registration from the Puerto Rico Department of State trademarking the name “Pechu Sandwich” and also received a federal trademark registration for the name “Pechusandwich.” Colon brought suit alleging violations of the Lanham Act and Copyright Act. SARCO filed a motion to dismiss under Fed. R. Civ. P. 12(b)(6), which the district court granted. The First Circuit affirmed, holding (1) the district court properly determined that neither the name “Pechu Sandwich” nor the recipe are eligible for copyright protection; and (2) that Colon failed to sufficiently plead that SARCO committed fraud in the procurement of a federal trademark for the Pechu Sandwich. View "Colon-Lorenzana v. South American Restaurants Corp." on Justia Law

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Biolitec, Inc. (BI), a U.S.-based subsidiary of Biolitec AG (BAG), sold medical equipment to Plaintiff AngioDynamics, Inc. (ADI) and agreed to indemnify ADI or any patent infringement claims. Patent infringement claims were subsequently brought against ADI, and ADI settled the claims. In a separate lawsuit, ADI obtained a $23 million judgment against BI under the indemnification clause. Attempting to secure payment on that judgment, ADI sued BAG, BI, and other related entities (collectively, Defendants) on claims including corporate veil-piercing and violation of the Massachusetts Uniform Fraudulent Transfers Act MUFTA), alleging that BAG looted more than $18 million from BI to move BI's assets beyond reach. The district court granted ADI a preliminary injunction barring Defendants from carrying out the proposed downstream merger of BAG with its Austrian subsidiary and from transferring any ownership interest the held in any other defendant. The First Circuit Court of Appeals affirmed, holding (1) as a matter of law, preliminary injunctive relief was not barred in this case; and (2) the district court did not err in finding that ADI had demonstrated likelihood of success on the merits and irreparable harm. View "AngioDynamics, Inc. v. Biolitec AG" on Justia Law

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Defendant, Building #19, Inc., was an off-price retail store that acquired products and resold them at discounted prices in stores in New England. Defendant advertised in newspapers around New England, and the ads often featured descriptions of the advertised goods. Plaintiff, Swarovski Aktiengesellschaft and Swarovski North American Limited (collectively, Swarovski), was a manufacturer and distributor of crystal and jewelry. It held several registered trademarks for the mark "Swarovski." After Defendant obtained several Swarovski crystal figurines it hoped to resell, Defendant designed a newspaper advertisement printed in a large font with the name "Swarovski." Plaintiffs sought a preliminary injunction barring Defendant from using the Swarovski name or mark in its advertising. The district court granted the injunction in part by limiting Defendant's use of the Swarovski name to a smaller font size. Defendant appealed. The First Circuit Court of Appeals reversed, holding that the district court erred by failing to include necessary findings on whether (1) Swarovski was likely to succeed in its infringement claim against Defendant by establishing that the proposed advertisement was likely to confuse customers, and (2) Swarovski would suffer irreparable harm as a result of the ad. Remanded. View "Swarovski Aktiengesellschaft v. Building #19, Inc." on Justia Law

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in this trade secret misappropriation and breach of contract case, defendant Chance Mold Steel Co. (Chance) appealed from a permanent injunction and from a jury award of damages. The injunction, based on a finding of contract breach, prohibited Chance from selling, displaying, manufacturing, or assisting others in manufacturing a number of ergonomic computer mouse products. The injunction barred sale of specific products that were materially identical to products Chance had previously manufactured for Contour Design, Inc. (Contour) and a new product known as the ErgoRoller. Chance challenged the scope of the injunction and contended that the jury improperly awarded lost profits damages. The First Circuit Court of Appeals (1) reversed the injunction as applied to the ErgoRoller, holding that the record did not support the finding that Chance breached the contract in producing the ErgoRoller; (2) affirmed the scope of the injunction as applied to the other enjoined products; and (3) affirmed the damages award. View "Contour Design, Inc. v. Chance Mold Steel Co., Ltd." on Justia Law

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The Eastern Orthodox monastic order began a spiritual affiliation with the bishops of the Russian Orthodox Church Outside of Russia (ROCOR)in 1965. Although the Monastery concedes it commemorated the bishops of ROCOR until 1986, it considers itself an independent entity. The Monastery's 35 monks worked on translating religious texts from their original Greek into English. The works were in demand amongst parishes, but the Monastery obliged requests on a limited basis. One of the monks went to Colorado where he formed Dormition Skete, dedicated to painting traditional Orthodox icons. A Skete member, the Archbishop, created a website devoted to the Orthodox faith. Based on postings on that site, the Monastery sued the Archbishop, in state court, for copyright infringement. The parties settled with the Archbishop acknowledging the Monastery’s ownership of the works. The website continued to include its translations; the Monastery filed a federal suit, 17 U.S.C. 101. The district ruled in favor of the Monastery, rejecting claims or public domain, that ROCOR was the true owner of the copyrights, and of fair use. The First Circuit affirmed. The Archbishop offered identical or near-identical versions of the works on his website for the precise purpose for which the Monastery originally created them, harming their potential market value. View "Soc'y of the Holy Transfiguration Monastery, Inc. v. Archbishop Gregory of Denver" on Justia Law

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In 2001 BPPR sought a declaratory judgment under the Copyright Act, 17 U.S.C. 101 after several music publishing companies contacted BPPR claiming that they owned and were owed royalties on music compositions that BPPR had produced and distributed in a series of Christmas concerts. BPPR deposited royalties due on the compositions with the district court and asked the court to declare to whom the royalties were due and distribute them accordingly. LAMCO and others countersued for copyright infringement. The district court denied motions for summary judgment. Several co-defendants settled their claims among themselves and with BPPR. The jury found BPPR liable for infringement of two compositions owned by LAMCO and ACEMLA, and awarded $42,941.00 in compensatory damages. The court found ACEMLA liable for violating a GVLI copyright and ordered $43,405.35 in damages. The First Circuit affirmed, rejecting challenges to the sufficiency of the evidence. The district court properly found that the settlement agreement did not preclude future litigation of 12 undisputed LAMCO songs. View "Banco Popular de Puerto Rico v. Asociacion de Compositores" on Justia Law