Appeals courts kept churning out rulings in the commercial sphere last week, but even more than usual dealt with IP issues—10 of 12 by my count, with one oil and gas and one class action rounding out the dozen.

The Supreme Court Itself spoke up, ruling in a trademark death-match that the end of previous phase of the feud didn’t preclude the Hatfields from upholstering a new defensive weapon. That trickle will turn into a flood, as the 2019 Term nears its June end.

Stay safe, keep doing good, and be well.

Federal Drug & Cosmetic Act preempted state-law claims about liquid products you can’t fully dispense. ca2.uscourts.gov/decisions/isys

Copyright owner had burden to show terms of license didn’t allow licensee to use works as it did. ca2.uscourts.gov/decisions/isys

Any case that turns on copyright validity and infringement can trigger award of fees to winner. cdn.ca9.uscourts.gov/datastore/opin

Post-suit reformation of patent assignment applied retroactively, giving plaintiff right to sue at time of filing. cafc.uscourts.gov/sites/default/

Terms of firm’s winning bid for lead class counsel spot sets starting point for fee award. cdn.ca9.uscourts.gov/datastore/opin

A jury could find “Engineered Tax Services” service mark inherently distinctive. media.ca11.uscourts.gov/opinions/pub/f

Patent claimed abstract idea of giving advance notice of delivering something. cafc.uscourts.gov/sites/default/
Patent claimed abstract idea of giving advance notice of delivering something. cafc.uscourts.gov/sites/default/
Chalk holder that looks like chubby pencil loses design patent, copyright, trade dress, and unfair competition claims. cafc.uscourts.gov/sites/default/
Patent on hearing aid that uses head bone to conduct sound to non-deaf ear survives preamble-as-limiting and some obviousness attacks. cafc.uscourts.gov/sites/default/
Doctrine of ”defense preclusion” might not be a thing, but if it is, it doesn’t bar defense in second suit against new claim. supremecourt.gov/opinions/19pdf
Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, energy, and intellectual property–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Appeals Roundup.

Check out my profile on the Susman Godfrey website.

Decisions by appeals court have started to slow as the judges work through backlogs and adjust to remote oral arguments, remote conferences, and home offices with yappy dogs and bitey cats. The Week of May 4 produced 7 opinions that rated tweets on @contingencyblog, most of them dealing with intellectual property. Your Commercial Appeals Roundup, featuring a blurb for each of those rulings, appears below.

Be well.

* * * *

Party that brought IPR waived Appointments Clause complaint objection to panel of Patent Trial and Appeal Board. cafc.uscourts.gov/sites/default/

Mistake in view of prior art required new look at obviousness of patent asserted against Uber. cafc.uscourts.gov/sites/default/

New GM didn’t judicially admit it had to pay death claim against old GM. ca2.uscourts.gov/decisions/isys

Only “party affected” by force majeure event had duty to try to overcome it. media.ca7.uscourts.gov/cgi-bin/rssExe

Ruling on unconstitutionality of appointments to Patent Trial and Appeals Board panels didn’t apply to final decisions that post-dated ruling. cafc.uscourts.gov/sites/default/

Calling cooking oil that contains GMOs “100% Natural” could mislead consumers. media.ca1.uscourts.gov/pdf.opinions/1

Patents on cancer drug spoke of ethanol but didn’t include it in claims, ceding right to assert drug that used ethanol infringed patents. cafc.uscourts.gov/sites/default/

Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, energy, and intellectual property–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Appeals Roundup.

Check out my profile on the Susman Godfrey website.

Here are the Commercial Appeals Roundups for the weeks of April 20-24, 2020 and April 27-May 1, 2020. The Roundups describe a key aspect of precedential appellate rulings by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas and provide links directly to the relevant court’s opinion.

Week of April 20

Extension of drug patent term didn’t apply to inactive variation of active ingredient. cafc.uscourts.gov/sites/default/

Beating patent claim on mootness grounds made defendant prevailing party that could get fee award. cafc.uscourts.gov/sites/default/

Tsunami case against GE belonged in Japan. media.ca1.uscourts.gov/pdf.opinions/1

Averaging could doom class cert in pay-for-delay antitrust case. www2.ca3.uscourts.gov/opinarch/19165

You can’t sue a dead person. cdn.ca9.uscourts.gov/datastore/opin

Company founded by assignor of three patents couldn’t contest validity of two in suit by assignee but could defeat third patent via IPR that resulted in invalidation. cafc.uscourts.gov/sites/default/

Drug seller lacked standing to appeal loss in IPR attack on patentability of drug it didn’t yet and might never make. cafc.uscourts.gov/sites/default/

Patent on method for fishing claimed abstract idea. cafc.uscourts.gov/sites/default/

Week of April 27

Privilege didn’t protect names of tax law firm’s clients. ca5.uscourts.gov/opinions/pub/1

Instruction in jury charge mooted question that required antitrust plaintiff to prove competitors’ pact allocated both customers and territories. ecf.ca8.uscourts.gov/opndir/20/04/1

Deep-sixing of database accused of copyright infringement supported verdict against new company set up by founder of copyright owner. ecf.ca8.uscourts.gov/opndir/20/04/1

Fraud verdict adequately compensated lender for reliance on faulty appraisal of Las Vegas Lakes project. txcourts.gov/media/1446454/

Disclaimer of reliance didn’t bar Texas jury’s fraudulent inducement finding under New York law. txcourts.gov/media/1446454/

Sanctions against lawyer require proof of bad faith. txcourts.gov/media/1446455/

Award of profits for trademark infringement doesn‘t depend on finding of willfulness. txcourts.gov/media/1446455/

Conflict of laws rules overrode choice of law in contract. ca5.uscourts.gov/opinions/pub/1

Law firms’ advance split of contingent fee didn’t track actual work, had to give way. ecf.ca8.uscourts.gov/opndir/20/04/1

Objective test governs sham-lawsuit exception to immunity under first amendment protection for petitioning activity. ca10.uscourts.gov/opinions/19/19

“Breezy” class cert ruling in ERISA case didn’t have enough “rigor”. ca5.uscourts.gov/opinions/pub/1

Daubert barred class expert in case over design defect. ca5.uscourts.gov/opinions/pub/1

Hope of someday selling goods in U.S. didn’t provide basis for jurisdiction to contest U.S. trademark rights. ca2.uscourts.gov/decisions/isys

“Lawful possessor” of trade secrets may sue for their misappropriation. www2.ca3.uscourts.gov/opinarch/19172

Communication system patent covered more than an unpatentable abstract idea. cafc.uscourts.gov/sites/default/

Too-narrow claim construction in IPR required second look at obviousness on remand. cafc.uscourts.gov/sites/default/

Arbitrators could change ”Partial Final Award”. nycourts.gov/ctapps/Decisio

Payment of unlawful import fee by ocean freight carriers didn’t confer standing to sue on shippers. media.ca1.uscourts.gov/pdf.opinions/1

Federal court may have diversity jurisdiction over petition to enforce arbitrators’ subpoena against non-parties to arbitration even if it wouldn’t have diversity jurisdiction over case between parties. ca2.uscourts.gov/decisions/isys

FAA allows courts to enforce arbitrators’ subpoenas that call for production at “a hearing” before arbitrators. ca2.uscourts.gov/decisions/isys

Court may defer rulings on objections to subpoena for documents to arbitrators. ca2.uscourts.gov/decisions/isys

Bud Light ads can say Molson Coors makes Coors Light with corn syrup. media.ca7.uscourts.gov/cgi-bin/rssExe

Copyright law doesn’t protect state legal code. supremecourt.gov/opinions/19pdf

Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, energy, and intellectual property–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Appeals Roundup.

Check out my profile on the Susman Godfrey website.

Here’s the Commercial Roundup: Appeals for the week of April 13-17, 2020. As you’ll see, it went heavy on intellectual property and procedure, the latter including rulings on arbitration awards and class (de)certification.

Have a great week. We’ll see you again next Monday.

Be well.

Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, oil and gas, and patents–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Roundup: Appeals

Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, oil and gas, and patents–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Roundup: Appeals

The Contingency is slow off the mark this Monday, but it’s not because federal and state appellate courts reduced their output due to COVID-19 last week. That may change as social distancing measures postpone live hearings, but so far so good.

Be well.

Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, oil and gas, and patents–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Appeals Roundup.

COVID-19 didn’t slow the appellate courts last week, as you can see from the 16 entries below.

Be well.

The co-managing partners of my firm issued the message below for Susman Godfrey’s friends and clients, including you.

Expect updates on COVID-19 developments here and @contingencyblog.

Be well.

Barry Barnett

To Susman Godfrey clients and friends:
In this time of concern and disruption because of COVID-19, we at Susman Godfrey have taken steps to safeguard our firm family and to protect our clients’ interest. We hope that you, your colleagues, and your families are healthy and safe. This public health crisis and its related economic impacts pose great challenges for everyone. We are here to help you navigate these challenges. Below we provide basic information about what we are doing, what you can expect from us going forward, and what you might do to preserve your legal rights.
We encourage you to contact the SG lawyers you are working with if you have specific questions or concerns. We are eager to keep the lines of communication open and strong.
What SG is Doing
We are open. Our offices-in Houston, Los Angeles, New York, and Seattle-are physically closed but very much “open for business.” Through our heavy investments in technology over the last few years, and our superb IT staff, we have easily and efficiently migrated to working remotely. We are actively working on clients’ cases through phone and video conferences, on-line platforms, and e-filings. Most courts are physically closed, but we are participating in hearings and depositions by phone and video. Legal research and brief writing proceed apace.   In many of our cases, key documents are hosted on secure on-line platforms. Our lawyers continue to meet “virtually” and conduct business of the firm.
We are accustomed to working remotely (and securely). As a firm with only 4 physical offices but a national practice that has us litigating in almost all states, we are uniquely accustomed to, and adept at, remote work. Our Information Technology department remains online and is actively monitoring our secure remote systems including our virtual private network and secure document-sharing platforms. Our clients’ confidential data and documents are just as secure as they were before this crisis hit.
We are taking precautions. Though none of our personnel have tested positive for the novel coronavirus, we have ended most travel, and almost all of our personnel are working from home. We will continue to monitor this situation closely and obviously will comply fully with advisories and orders from all government authorities.
We are continuing to deliver wins for our clients. Even in the time that we have been working remotely, we have resolved major matters for clients, including settling a large IP claim for a plaintiff client on the eve of trial and obtaining a large judgment on a counter-claim for a defendant client in a matter that we tried prior to the crisis. We continue to pursue our clients’ claims and defenses with diligence and vigor.
What You Can Expect From Us
We are pressing ahead. We will continue moving cases forward, and conducting evaluations of potential cases, as much as possible. Our lawyers and staff have access to robust platforms that enable them to work outside the office and conduct business remotely, including factual and legal research, document review and management, and filing and service of pleadings, motions, notices, and briefs.
Our trial-team calls will continue. Each of our cases has a trial team, typically headed by an SG partner and including one or more client representatives. In ordinary times, each trial team convenes weekly, generally by teleconference, to review case status and discuss items on the evergreen task assignment memo for the case. These trial-team conferences will continue to the extent needed to make progress towards favorable resolution of disputes. With courts having slowed or postponed the scheduling of trials and hearings, trial-team tele-conferences may become less frequent, depending on the circumstances of the particular case.
We are staying on top of court deadlines. Courts and arbitral bodies across the country have cancelled or postponed trials and hearings and, in some instances, courts have authorized suspension of case deadlines and/or statute of limitations periods. Many courts have authorized the conduct of certain evidentiary proceedings and depositions by phone or video conference. We will be actively assessing the impact of these and future decisions on our clients’ cases, as the legal landscape continues to evolve in response to Covid-19.
We will give you periodic updates. Depending on the response we get to this email, we may also set up a site that provides general answers to common questions and points to potentially helpful resources our clients may wish to consult.
Expect a call from us. We have encouraged the SG lawyers who are working with you to check in with you to see whether you have specific questions, concerns, or needs.
Some Things You Can Do
Contact us. Our lawyers remain available to consult with clients as needed. Do not hesitate to call them when you have a question or concern. Our office lines are ringing to our cell phones; we are monitoring email continuously; and our lawyers are available for video conference with you by Zoom or other platforms.
Stay on top of deadlines. Although schedules, deadlines, and even statutes of limitation may in some instances be extended by a court or court system, there are some contractual deadlines that you need to be aware of, e.g., times for invoking force majeure or material adverse event clauses. Whether these clauses have been triggered may require a lawyer’s advice about the governing law, but you should be able to determine the existence of contractual deadlines by reading your contracts. It is not safe to assume that any schedule, deadline, or limitations period has been suspended or lengthened. If you have any questions regarding timeliness of taking any action, raise them promptly with any of the SG lawyers you are working with.
Reach out about new disputes. We have been handling complex commercial disputes, including contract disputes, for both plaintiffs and defendants for 40 years. The COVID-19 public health crisis will produce an unusual number of conflicts regarding compliance with or breach of commercial obligations. There will be many disputes about contractual duties whose performance may have been prevented, hindered, or delayed by the effects of COVID-19. “Force majeure” provisions and related doctrines will be implicated by many of these situations. Some businesses may be tempted to take advantage of the disruption to engage in anticompetitive practices, such as price-fixing or customer allocation-a concern about which the U.S. Department of Justice recently has warned.
Be safe. There is nothing more important than the health and safety of our firm family and you and your family. We urge you to follow directives and guidance on best practices for avoiding and mitigating the spread of COVID-19.
Stephen D. Susman
Neal Manne
Co-Managing Partners
Susman Godfrey L.L.P.

COVID-19 isn’t stopping The Contingency or @contingencyblog, but we are following authoritative directives and best practices and hope you and your families are and remain healthy and safe too.

Barry Barnett

Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, oil and gas, and patents–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Appeals Roundup.

In this time of concern and disruption over Covid-19, I and my colleagues at Susman Godfrey (SG) are busy taking steps to safeguard our firm family while continuing to be proactive in protecting the interests of our clients and moving matters forward as necessary and appropriate. I hope that you, your colleagues, and your families are well, and I want you to know that we understand that this public health crisis and its related economic effects are challenging for everyone. We are here to help our clients to navigate these challenges. Below I provide basic information about what my colleagues and I are doing now, what you can expect from me going forward, and what clients might do avoid unnecessary loss.

I encourage you to contact me (or any of the other SG lawyers you are working with) if you have specific questions or concerns. It is important that you and we keep the lines of communication open and strong.

What SG is doing

We are open. Our offices—in Houston, Los Angeles, New York, and Seattle—remain open. Lawyers and staff are not required to come into the offices but may do so if needed. In-person meetings can be arranged if necessary. Phone and video conferences are preferred for real-time interactions to minimize the risk of transmitting the novel coronavirus that causes Covid-19. The health and safety of our personnel and clients are paramount.

We are accustomed to working remotely (and securely). We have cases all over the U.S. and clients around the world, and as a result our lawyers and staff are pros at getting things done remotely. In addition, our Information Technology department remains online and actively monitoring our secure remote systems, including our virtual private network and secure document-sharing platforms. Our clients’ confidential data and documents are just as secure as they were before this crisis hit.

We are taking precautions. As a precaution, we have instructed lawyers and staff not to come to the office or interact in person with any other firm personnel if they have symptoms of Covid-19 or have been exposed to anyone who has had symptoms. Non-essential travel is discouraged. We will continue to monitor this situation closely.

What you can expect from us

We are pressing ahead. We will continue evaluating potential cases, moving existing cases forward, and filing new ones. Our lawyers and staff have access to robust platforms that enable us to work outside the office and conduct business remotely. These include facilities for communications (email, videoconferencing, text messages, and online collaboration) as well as for factual and legal research, document review and management, and filing and service of new litigation and arbitration matters as well as of pleadings, motions, notices, and briefs in existing ones.

Trial-team calls aren’t canceled. We expect periodic trial-team conferences will generally continue. Each of my cases has a trial team, typically headed by me or another SG partner and including one or more client representatives, and each trial team convenes weekly, generally by teleconference, to review case status and discuss items on the task assignment memo for the case. These trial-team conferences will continue as appropriate to make progress towards favorable resolution of disputes. With the scheduling of trials and hearings in question in the near term, weekly conferences may become less frequent, depending on the circumstances of the particular case.

Some deadlines are being generally extended. Courts and arbitral bodies across the U.S. have cancelled or postponed trials and hearings, and (in some instances) courts have authorized suspension of case deadlines and even statute of limitations periods. Many have also called for or authorized the conduct of proceedings that require multiple participants in real time by videoconference or other means, and these may notably include evidentiary hearings and depositions. We will be actively assessing the impact of and adjusting to these and future decisions, as the legal landscape continues to evolve in response to Covid-19.

I’ll update you periodically. I expect to provide updates periodically as well, including here and via Twitter if you are a subscriber (@contingencyblog). Stay tuned.

Expect a call from me. If you are a client or co-counsel, I am likely to call you in the coming days, if you and I haven’t already spoken recently, for a general check-in and to see whether you have specific questions, concerns, or needs.

Some things you can do

Feel free to contact me. My SG colleagues and I remain available to consult with clients as needed. Do not hesitate to call us when you have a question or concern we can help with.

Stay on top of deadlines. Although schedules, deadlines, and even statute of limitations periods may in some instances have been extended by a particular court or court system, it is imperative that you have accurate information to act on. It is not safe to assume that any schedule, deadline, or limitations period has been suspended or lengthened. If you have any questions regarding timeliness of taking any action, raise them promptly with me or any of the other SG lawyers you are working with.

Be alert for developing situations that could lead to loss. Force majeure provisions and related doctrines will be implicated by many circumstances that will arise from Covid-19-related disruption. Human nature being what it is, there will also be instances of opportunistic conduct. Because loss mitigation is the order of the day, be alert for (and ready to act on) situations that need attention in order to minimize negative outcomes.

Be safe and well. Our health and safety are the most important things, now and always. You don’t need me to remind you to wash your hands for a full 20 seconds, use plenty of soap, and sneeze into your elbow—so I will refrain from mentioning them!

But I do want to say that, during this challenging time, I am particularly mindful of your friendship—and especially grateful for it.

Call, text, or email me any time if I can get or do anything for you.

Truly yours,

Barry