IP Law Daily, WORTH NOTING—Other IP law developments, (May 19, 2023)

By WK Editorial Staff

A periodic roundup of other items of interest to the Intellectual Property community.

PATENT—Fed. Cir.: Patent owner Centripetal Networks, LLC was not entitled to a writ of mandamus directing the Patent Trial and Appeal Board to vacate all decisions in a proceeding for inter partes review (“IPR”) of U.S. Patent No. 9,917,856 (“the ’856 patent”) and to form a new panel of administrative patent judges (“APJs”) to reconsider the IPR petition. Centripetal had moved for APJ McNamara’s recusal and vacatur of the institution decision on the ground that he owned Cisco stock. In its motion, Centripetal relied on a 2022 Federal Circuit decision vacating a district court’s damages award against Cisco (based on the ’856 patent) after the court concluded that disqualification was required under 28 U.S.C. § 455(b)(4) because the spouse of the trial judge owned Cisco stock. However, this IPR proceeding consolidated three petitions, and Cisco’s petition was filed and joined after the first APJ panel (which included ALJ McNamara) decided to institute review. APJs McNamara and Amundson withdrew from the proceeding and were replaced by two other APJs. The new panel rejected Centripetal’ s argument that APJ McNamara’s ownership of stock in Cisco required vacatur of the decision instituting the IPR. According to the Federal Circuit, Centripetal “did not show a clear and indisputable right to vacatur, particularly given the lack of any evidence that Cisco was involved in the proceedings at the time of institution, Cisco’s backup capacity status, and the fact that APJ McNamara will not be a member of the panel that decides the ultimate merits in the IPR proceeding.” Centripetal also provided no evidence that it would be unable to raise its arguments after a final written decision, which is expected to issue shortly (In re: Centripetal Networks, LLC, May 16, 2023, Wallach, E.).

PATENT—Fed. Cir.: Patent infringement, antitrust, and unjust enrichment claims filed by inventor Larry Golden against Apple Inc. in the Northern District of California were properly dismissed with prejudice as frivolous, the U.S. Court of Appeals for the Federal Circuit determined. Golden—who owns various patents disclosing systems for locking, unlocking, or disabling a lock upon the detection of chemical, radiological, or biological hazard—previously had filed at least six other lawsuits in three jurisdictions asserting the same patent infringement claims against Apple. Each case was dismissed as frivolous, duplicative, or for failure to state a claim. The claims in the present case were “nothing more than another attempt by Mr. Golden to circumvent prior dismissals in other jurisdictions” (Golden v. Apple Inc., May 12, 2023, per curiam).

TRADEMARK—3d Cir.: A retail supermarket business and its owner were not entitled to an award of attorney fees under the Lanham Act after a district court dismissed trademark infringement, false advertising, and unfair competition claims brought by retailer-owned supermarket cooperative Wakefern, the U.S. Court of Appeals for the Third Circuit has ruled. Although the individual defendant made false statements to a real estate broker that he was the owner of supermarkets affiliated with Wakefern’s ShopRite brand in order to obtain a commercial lease, Wakefern’s claims failed because the defendants did not use Wakefern’s mark in commerce. The district court properly rejected the defendants’ argument that the case was exceptional because Wakefern failed to sufficiently plead its claims, did not send a cease and desist letter before filing suit, and moved for expedited discovery (Wakefern Food Corp. v. Marchese, May 17, 2023, Chagares, M.).

FEDERAL CIRCUIT NEWS—Federal Circuit Judge Pauline Newman has filed a complaint in the federal district court in Washington, D.C., against Chief Judge Moore, Circuit Judges Prost and Taranto, and the Judicial Council of the Federal Circuit, seeking declaratory and injunctive relief to prevent the defendants from removing Judge Newman from her position on the court. The lawsuit was prompted by a judicial complaint (Complaint No. 23-90015), against Judge Newman under the Rules for Judicial Conduct and Judicial-Disability Proceedings. Chief Judge Moore appointed Judges Prost, Taranto and herself to a Special Committee to investigate whether Judge Newman, age 95, is able to perform the duties of her office. Among other thing, the lawsuit asks for a declaration that the Judicial Conduct and Disability Act of 1980, 28 U.S.C. §§ 351-64, is unconstitutional; a declaration that any continued proceedings against Judge Newman by the Judicial Council of the Federal Circuit are unconstitutional as violative of due process; and an order terminating any ongoing proceedings (Newman v. Moore, May 10, 2023).

Attorneys: Matthew James Dowd (Dowd Scheffel PLLC) for Centripetal Networks, LLC. Douglas Hallward-Driemeier (Ropes & Gray LLP) for Palo Alto Networks, Inc. Larry Golden, pro se. Julia K. York (Skadden, Arps, Slate, Meagher & Flom LLP) for Apple Inc. Anthony Argiropoulos (Epstein Becker & Green, P.C.) for Wakefern Food Corp. Vahbiz P. Karanjia (Epstein Ostrove, LLC) for Christopher Marchese a/k/a Family Markets Ltd., Liability Co. John Julian Vecchione (New Civil Liberties Alliance) for Pauline Newman.

Companies: Centripetal Networks, LLC; Palo Alto Networks, Inc.; Apple Inc.; Wakefern Food Corp.; Family Markets Ltd., Liability Co.

News: Patent TechnologyInternet Trademark FedCirNews