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Eric Caligiuri advises domestic and international clients through complex intellectual property disputes. Mr. Caligiuri’s practice at Weintraub Tobin focuses on patent and trade secret litigation in federal district courts, California state courts, and before the International Trade Commission (ITC).

On March 16, 2021, U.S. Circuit Judge Evan J. Wallach for the Federal Circuit Court of Appeals announced he plans to take senior status on May 31, 2021.  This semi-retirement is set to create the first vacancy at the Federal Circuit in almost six years.  The Federal Circuit handles all appeals of patent cases from Districts Courts in the U.S., and appeals from various government agencies.  Thus, the Federal Circuit is the only one of the thirteen federal courts of appeal whose jurisdiction is determined entirely on the subject of the lawsuit it hears, rather than on the geographical location from which the appeal originated.  This means the Federal Circuit can hear appeals from every District Court in the United States as long as it has subject matter jurisdiction. The only court in the United States with more authority over patent related issues in the United States Supreme Court.

The Federal Circuit was the only federal court of appeals that did not have any vacancies during President Donald Trump’s administration.  In fact, President Trump nominated and succeeded in putting a judge in every other appellate court during his four years in office, including fifty-four judges on the federal appeals bench.  However, the Federal Circuit remained untouched, and in fact currently has eight Democratic-President appointed judges, and four Republican-President appointed Judges.
Continue Reading Federal Circuit Set to Have First Vacancy in Six Years

In The Sherwin-Williams Company v. PPG Industries, Inc., 2-17-cv-01023 (WDPA 2021-01-21, Order), the court had to decide whether Plaintiff The Sherwin-Williams Co. (“Sherwin”) should be bound by its prior admission to the United States Patent and Trademark Office (“USPTO”) during vacated reexamination proceedings.  

During one of the reexamination proceedings, Sherwin admitted that certain prior art (“Perez”) disclosed a BPA-free coating, although it contended that its patents were valid for other reasons.  Subsequently, the entire reexamination proceeding was terminated without any action on the merits.  
Continue Reading District Court Finds Patentee’s Prior Statement Regarding Prior Art A Binding Admission

In 10x Genomics, Inc. v. Celsee, Inc., 1-19-cv-00862 (DDE 2020-12-04, Order) (Colm F. Connolly), the District Court ordered the defendant to produce documents and give testimony about communications between defendant and its new corporate owner concerning the litigation and the provisions in the acquisition agreement that concern the litigation.

Specifically, during the pendency of the litigation, nonparty Bio-Rad Laboratories had acquired 100 percent of Defendant Celsee, Inc.’s stock pursuant to an acquisition agreement. The acquisition agreement had disclosures and provisions related to the litigation. At two depositions, Celsee refused to let witnesses answer questions about documents Celsee disclosed to BioRad and communications it had with Bio-Rad during the negotiations that resulted in the acquisition agreement. The disclosures and communications occurred after Celsee and Bio-Rad had signed a non-binding letter of intent to engage in the acquisition negotiations. Celsee cited the common interest privilege and the attorney work product doctrine as the bases for its refusal to allow the witnesses to answer the questions posed to them.
Continue Reading District Court Finds Communications and Documents Concerning Defendant’s Post-Filing Acquisition Are Not Protected by the Common Interest Privilege

In Impact Engine, Inc. v. Google LLC, 3-19-cv-01301 (SDCA 2020-10-20, Order) (Cathy Ann Bencivengo), the District Court for the Southern District of California recently considered whether litigation funding documents could be withheld from production by plaintiff Impact Engine because the documents were work product protected.  In the case, defendant Google had propounded a request on Impact Engine for the production of “[all] Documents Regarding any contracts or agreements between Plaintiff and any Third Party concerning (1) This Litigation and/or (2) any Asserted Patent or Related Patent.”  Impact Engine indicated it would produce non-privileged responsive documents except for potential agreements related to litigation funding because Impact Engine asserted work product protection over the documents.
Continue Reading District Court Finds Documents Related to Litigation Funding Protected by Work Product Doctrine

In Kirk Kara Corp. v. Western Stone & Metal Corp. et al, 2-20-cv-01931 (CDCA 2020-08-14, Order) (Dolly M. Gee), the Central District of California denied Defendant’s motion to dismiss Plaintiff’s claims for copyright infringement, finding sufficient substantial similarity between the copyrighted works and the accused works had been alleged. However, the Court granted Defendant’s motion to dismiss Plaintiff’s DMCA § 1202 claim because plaintiff failed to allege Defendant’s works were exact copies of Plaintiff’s, thus reasoning substantial similarity was not sufficient under the DMCA because DMCA violations exist only where the works are identical.

In the case, Plaintiff Kirk Kara Corp. asserts it is the owner of three registered copyrights for jewelry designs (“Subject Designs”), and alleges they were widely disseminated in the jewelry industry. Plaintiff further alleges that Defendant Western Stone and Metal Corp., doing business as Shane Co., distributed and/or sold four engagement rings (“Subject Products”) that are substantially similar to Plaintiff’s copyrighted jewelry designs. Plaintiff alleged copyright infringement, vicarious copyright infringement, contributory copyright infringement, and a violation of the Digital Millennium Copyright Act (“DMCA”), 17 U.S.C. § 1202 against Defendant. Defendant moved to dismiss all claims.
Continue Reading District Court Applies Different Requirement for Similarity of Accused and Asserted Works Under DMCA Versus the Copyright Act