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US Court of Appeals

Focus on Funk: 40-Year-Old Copyright Claim Is Time-Barred

by Karen Gover | Dec 12, 2024 | Copyrights

In a summary order, the US Court of Appeals for the Second Circuit affirmed the district court’s orders in a case involving an ownership dispute over the copyrights to certain compositions by Parliament-Funkadelic bandleader George Clinton, finding that the claim was time-barred based on an admission that the claim was first discovered 40 years ago. Bridgeport Music Inc., et al. v. TufAmerica Inc., et al., Case No. 23-7386-cv (2d Cir. Dec. 2, 2024) (Carney, Bianco, Nardini, JJ.) (nonprecedential).

LeBaron Taylor was a Detroit-based music producer, disc jockey, and record company executive. Clinton recorded music for Taylor’s record label, Revilot Records, before it went bankrupt in the late 1960s. After Revilot’s bankruptcy, Clinton began recording music for Westbound Records, including re-recording some of the compositions that he had previously recorded with Revilot. TufAmerica Inc. (d/b/a Tuff City Records) and Kay Lovelace Taylor, LeBaron Taylor’s widow, are Clinton’s successors-in-interest.

In December 2017, TufAmerica sent a letter to Bridgeport Music and Westbound Records stating that TufAmerica was the rightful owner of the copyrights to certain Clinton compositions and that Bridgeport had infringed on those copyrights. In January 2018, Bridgeport filed a complaint seeking a declaratory judgment that it was the rightful owner of the compositions and thus had not committed copyright infringement. After the case was transferred from the Eastern District of Michigan to the Southern District of New York, TufAmerica filed an amended answer and asserted counterclaims seeking a declaratory judgment that it was the rightful owner of the compositions and alleging that Bridgeport had infringed the copyrights in those compositions.

Bridgeport moved for summary judgment on its affirmative claims and TufAmerica’s counterclaims. The district court found that genuine disputes of material fact existed regarding ownership of the compositions, but it granted partial summary judgment in favor of Bridgeport as to TufAmerica’s infringement counterclaims. Bridgeport had submitted a series of agreements in which Clinton assigned ownership in the disputed compositions to Bridgeport Music and exclusive recording rights to Westbound Records, but in his deposition testimony Clinton said that he did not sign the agreements or does not remember signing them.

In its summary judgment response and counterstatement of material facts, TufAmerica admitted that Taylor worked as a disc jockey in the 1970s and played Bridgeport’s recordings of the Clinton compositions on the air. TufAmerica received no royalties. The district court found that TufAmerica’s claims accrued at the time Taylor was put on notice of the alleged exploitation of the work without receiving royalties and that the claims were therefore time-barred by the Copyright Act’s three-year statute of limitations period. Because the ownership counterclaim was time-barred, the district court granted summary judgment to Bridgeport on the related counterclaims for infringement and damages since the infringement claim could not be properly adjudicated unless ownership was first determined. TufAmerica moved for reconsideration, which the district court denied while also granting the parties’ request to conditionally dismiss Bridgeport’s affirmative claims in the absence of any live dispute between the parties. TufAmerica appealed.

TufAmerica argued that its [...]

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Chromatographic Clash: When Is a Lead Compound Analysis Even Necessary?

by Hannah Hurley | Dec 12, 2024 | Patents

The US Court of Appeals for the Federal Circuit affirmed the Patent Trial & Appeal Board’s determination that 79 challenged composition claims across three related patents were unpatentable but reversed the Board’s determination that four challenged process claims were not unpatentable. Cytiva Bioprocess R&D v. JSR Corp., et al., Case Nos. 23-2074; -2075; -2191; -2192; -2193; -2194; -2239; -2252; -2253; -2255 (Fed. Cir. Dec. 4, 2024) (Prost, Taranto, Hughes, JJ.)

The patents in question pertain to chromatography matrices used in affinity chromatography for isolating antibodies. Their primary focus was on the G29A mutation in SPA IgG binding domains, which enhances stability in alkaline environments. The Board upheld the patentability of the process claims while invalidating the composition claims. Cytiva appealed, arguing that the Board erred in its lead compound analysis. JSR cross-appealed on the Board’s finding that the challenged process claim were not unpatentable.

The Federal Circuit disagreed with Cytiva’s argument that a lead compound analysis was necessary. A lead compound analysis is an obviousness framework that involves a two-part inquiry: whether a skilled person in the art would have selected the compound as a starting point for research, and whether the prior art would have motivated the skilled person to modify the compound into the claimed invention. The Federal Circuit noted that lead compound analyses are not always required in chemical patent cases where the prior art references expressly suggest the proposed modification, which was the case here. The Court also explained that even though a lead compound analysis was used here, in this case the claimed compounds could all be lead compounds, and the prior art expressly suggested the G29A modification of the claimed compound.

The Federal Circuit also addressed whether a claim limitation that merely recites an inherent property of an otherwise obvious combination requires additional analysis to demonstrate that a person of ordinary skill in the art would have a reasonable expectation of success. The Court found that additional analysis was unnecessary because “the sole disputed limitation was an inherent property of the claimed composition already determined to be obvious.” The Court found that the Fab binding property of the chromatography matrices was inherent and thus did not require a separate reasonable expectation of success analysis.

As for the process claims that the Board found not unpatentable, the Federal Circuit determined that the composition and process claims were “nearly identical and contain[ed] no substantive distinction relevant to th[e] appeal.” Therefore, the Court held that the Board erred in separating the composition and process claims and found “no basis for treating the claims differently.” The Federal Circuit reversed the Board’s “not unpatentable” determination on those claims and held all challenged patent claims obvious and therefore unpatentable.

Plausible Alternative Understanding of Prior Art? So What?

by Connor M. Larson | Dec 12, 2024 | Patents

Affirming the Patent Trial & Appeal Board’s final determination that three claims were invalid for obviousness, the US Court of Appeals for the Federal Circuit ruled that a “plausible alternative understanding” of the prior art did not compel a reversal under the substantial evidence review standard. Koninklijke KPN N.V. v. Vidal, Case No. 19-2447 (Fed. Cir. Dec. 2, 2024) (Prost, Reyna, Chen, JJ.)

Three computer networking companies filed a petition for inter partes review (IPR) to challenge the patentability of claims of a patent for regulating access to a telecommunications network owned by Koninklijke. The challenged claims included limitations concerning devices, identified by a controller with a unique identifier, that requested access to a network. The controller allowed each device network access based on a “grant access time interval.” The petitioners argued that the challenged claims were unpatentable as obvious in view of three prior art references: Obhan, Shatzkamer, and Budka.

After considering the parties’ argument over what was disclosed by the references, the Board found that Obhan disclosed an admission control system for a wireless network that included assigning devices a “good till time.” The Board found that Shatzkamer disclosed managing a wireless network using a system to identify specific devices, add those devices to a “blacklist,” and deny network access to the blacklisted devices. The Board determined that the combination of Obhan, Shatzkamer, and Budka taught the limitations of the challenged claims. Koninklijke appealed.

Koninklijke argued that the Board erred in its determination that the prior art references taught certain claim limitations and provided motivation to combine the references.

Koninklijke first argued that substantial evidence did not support the Board’s finding that Obhan disclosed the access request limitations of the challenged claims. Koninklijke also argued that Obhan did not teach consulting a “good till time” to determine whether to allow a device to access the network. The Federal Circuit disagreed, finding that Koninklijke’s argument merely presented “a plausible alternative understanding of Obhan.” The Court explained that under the substantial evidence standard of review, this was not enough to conclude that the Board’s decision was unsupported by substantial evidence. The Court declined to reweigh the evidence or make factual findings of its own.

Second, Koninklijke argued that the Board’s determination was not supported by substantial evidence because the Board misread and misstated one of the challenged claims. An exemplary claim of the challenged patents recited “an access operation to deny access for the terminal if the access request is received within the time period,” whereas another recited “denying the terminal access to the telecommunications network responsive to the access request being received within the time period defined by the accessed identification of at least one associated deny access time interval.” In its decision, the Board stated that second claim “requires only that the access request be denied if it is received within the time period during which access is denied.” Koninklijke faulted the Board for using the term “if” instead of “responsive to.”

The Federal Circuit did not find [...]

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Case Closed: OpenAI Prevails on Secondary Meaning

by Hannah Hurley | Dec 5, 2024 | Trademarks

The US Court of Appeals for the Ninth Circuit affirmed a district court’s grant of a preliminary injunction (PI) in a trademark action under the Lanham Act, stating that the district court’s ruling was not clearly erroneous based on its finding that the plaintiff had likely acquired secondary meaning in the mark. OpenAI, Inc. v. Open Artificial Intelligence, Inc., Guy Ravine, Case No. 24-1963 (9th Cir. Nov. 13, 2024) (Thomas, Owens, Collins, JJ.) (per curiam) (Collins, J., dissenting) (nonprecedential).

OpenAI is the founder of ChatGPT and other artificial intelligence tools. OpenAI has used the OPENAI (no space) mark extensively in association with its goods, services, website, social media, and marketing. OpenAI first attempted to register the mark with the US Patent & Trademark Office (PTO) in 2016, but the PTO rejected the mark as being merely descriptive and potentially confusing with Guy Ravine’s prior-filed application for the mark OPEN AI (with a space). Ravine claimed to have used the mark as early as 2015, which would have predated OpenAI’s use of its mark. However, the PTO also rejected Ravine’s application for registration on the Principal Register under a similar rationale, and the OPEN AI mark was only accepted for registration on the Supplemental Register in 2017. Neither mark is registered on the Principal Register.

OpenAI filed a trademark action under the Lanham Act against Ravine’s company, Open Artificial Intelligence, and sought a PI, which the district court granted after finding that OpenAI had established that it had acquired distinctiveness in the mark. Ravine appealed the denial of Open Artificial Intelligence’s motion under Fed. R. Civ. P. 59(e) and 60(b) to amend or vacate that injunction.

A PI is granted when a plaintiff establishes that:

It is likely to succeed on the merits.
It is likely to suffer irreparable harm.
The balance of equities tips in its favor.
An injunction is in the public interest.

The Ninth Circuit applies a sliding scale approach, where a stronger showing of one factor could offset a weaker showing of another factor. To succeed on a trademark infringement claim, a plaintiff must show that it has a protectible ownership interest in the mark and that the defendant’s use of the mark is likely to cause consumer confusion.

To evaluate the claims, the district court looked at each of the parties’ history and use of the disputed marks. The district court noted that OpenAI had used its mark in connection with its most widely used product, ChatGPT, resulting in the mark becoming a household name. The district court recognized that OpenAI’s trademark was one of the most recognized in artificial intelligence (AI) history. The district court noted that OpenAI’s website was one of the most visited websites, with almost 100 million monthly active users. In contrast, the district court found that Ravine had not established that he had used the mark in commerce prior to OpenAI’s use and even took issue with Ravine’s representations regarding his use of the mark. The district court granted [...]

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Ghostly Misstep: No Confusion Means No Preliminary Injunction

by Sarah Mezini | Dec 5, 2024 | Trademarks

In a trademark case involving an incontestable registration, the US Court of Appeals for the First Circuit affirmed a district court ruling denying the registrant a preliminary injunction (PI) for failure to establish likelihood of confusion. US Ghost Adventures, LLC v. Miss Lizzie’s Coffee LLC, Case No. 23-2000 (1st Cir. Nov. 15, 2024) (Selya, Barron, Gelpí, JJ.)

In 1892, prosecutors alleged that Lizzie Borden hacked her parents to death in their family home. Borden was acquitted of all charges, leaving the murder unsolved. This mystery made Borden’s ancestral home a travel destination for all intrigued by the legend.

US Ghost Adventures owns a bed and breakfast located at the Lizzie Borden House in Fall River, Massachusetts. Ghost Adventures also owns an incontestable federal trademark on the LIZZIE BORDEN name as used in its services and on its hatchet logo displaying a notched blade.

Miss Lizzie’s Coffee opened a coffee shop next door to the Lizzie Borden House, displaying storefront signage with the words “Miss Lizzie’s Coffee” between a cup of coffee and a stylized hatchet spewing blood. The store also displayed a second sign claiming Miss Lizzie’s as “The Most Haunted Coffee Shop in the World,” with a similar hatchet containing a handle and dramatic blood splatters. Since the opening of Miss Lizzie’s, there has been confusion regarding its affiliation with the Lizzie Borden House.

Ghost Adventures brought a trademark infringement and unfair competition suit against Miss Lizzie’s Coffee in federal district court. Ghost Adventures also moved for a temporary restraining order and/or PI seeking to enjoin Miss Lizzie’s use of either the LIZZIE BORDEN trademark or the hatchet logo in the coffee shop’s trade names, trade dress, and marketing materials.

The district court applied the customary four-part test for PIs. The test typically emphasizes likelihood of success on the merits because if the movant cannot show a likelihood of success, the rest of the factors “become matters of idle curiosity.” The district court determined that Ghost Adventures failed to show a likelihood of success on the merits and denied the PI. Ghost Adventures appealed.

The First Circuit reviewed the district court’s finding for clear error and affirmed. The First Circuit agreed with the district court’s assertion that Miss Lizzie’s displays were neither “the trademarked hatchet nor a colorable imitation” of Ghost Adventures’ hatchet display. Further, the Court found that the Miss Lizzie’s mark was not associated with Ghost Adventures’ mark, but rather with the historical story of Lizzie Borden. The Court agreed that both businesses sold different goods to different customers. Similarly, the Court concluded that any consumer confusion was not due to the similarity of their marks but was due to non-trademarked similarities between the businesses: their proximity to one another, the use of Lizzie Borden lore, and customers’ perception of nearby cafés in association with the historical site itself. Ghost Adventures’ mark could not prevent other businesses from using the Lizzie Borden story or from conducting business near the Lizzie Borden House. Moreover, the First Circuit agreed [...]

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Time’s Up: Fifth Circuit Reinstates Original Judgment in Trademark Dispute

by Keval Amin | Dec 5, 2024 | Trademarks

The US Court of Appeals for the Fifth Circuit vacated a district court’s amended final judgment and reinstated its prior final judgment, finding that the district court overstepped its narrow mandate on remand, directly contradicting the Fifth Circuit’s earlier decision. In that earlier decision, the Fifth Circuit upheld the district court’s finding of trademark infringement but modified the scope of the injunction, approving it only in part. Rolex Watch USA, Incorporated v. BeckerTime, L.L.C., Case No. 24-10415 (5th Cir. Nov. 20, 2024) (Douglas, King, Willett, JJ.)

BeckerTime modified and sold Rolex-branded watches by adding diamonds, aftermarket bezels, and bands not authorized by Rolex. Rolex sued BeckerTime for trademark infringement, seeking an injunction and disgorgement of profits. While the district court found that BeckerTime infringed Rolex’s trademark, it declined to order disgorgement because of BeckerTime’s laches defense. In the first appeal, the Fifth Circuit upheld the infringement finding, noting that BeckerTime’s modifications of diamonds and aftermarket bezels went beyond mere repairs and restoration. However, the Fifth Circuit partially modified the district court’s injunction and issued a limited remand to clarify certain language in the injunction. On remand, Rolex and BeckerTime agreed on revised language for that portion of the injunction, which the district court approved. The district court, however, went further by amending other sections of the injunction. This appeal followed.

Both parties agreed that the district court had exceeded its mandate. The amendments permitted BeckerTime to advertise and sell Rolex watches with customized dials under certain conditions, requiring disclosures and inscriptions reading “CUSTOMIZED BY BECKERTIME.” Rolex contended – and the Fifth Circuit agreed – that this language conflicted with the prohibition (in the injunction) of all non-genuine dials, including those bearing original Rolex trademarks.

The Fifth Circuit vacated the district court’s amended judgment and reinstated its prior judgment with modifications, incorporating its earlier decision and the parties’ stipulation.

Chill Out: Request for Profit Disgorgement Isn’t Entitled to Jury Trial

by Dexter Hamilton | Dec 5, 2024 | Trademarks

The US Court of Appeals for the Eighth Circuit affirmed a district court ruling that a plaintiff was not entitled to a jury trial regarding its trade dress infringement claim and that the plaintiff failed to prove that its trade dress had acquired the required secondary meaning. National Presto Industries Inc. v. U.S. Merchants Financial Group Inc., Case No. 23-1493 (8th Cir. Nov. 12, 2024) (Loken, Erickson, Grasz, JJ.)

National Presto manufactures household appliances, including personal electric heaters sold under the brand name “HeatDish” since 1989. These heaters had “a parabolic design that looked like a satellite dish.” National Presto supplied HeatDish heaters to Costco for many years. However, amid slumping sales, Costco began exploring alternative options. In 2017, Costco requested a “parabolic electric heater that was UL approved, had high heat, and looked industrial and robust” from another supplier, U.S. Merchants Financial Group. U.S. Merchants began development of a heater named “The Heat Machine.” Costco requested modifications to the initial design, including “changes focused on a comparison with Presto’s HeatDish.” Costco began selling The Heat Machine in 2018.

In December 2018, National Presto filed suit against U.S. Merchants asserting trade dress infringement under the Lanham Act. National Presto requested both injunctive relief and that U.S. Merchants “be required, pursuant to 15 U.S.C. § 1117, to account to National Presto for any and all profits derived by them, either individually or jointly to be ordered to disgorge, and be ordered to pay all damages sustained by National Presto by reason of Defendant’s actions complained herein.”

National Presto sought a jury trial for its trade dress claim, but the district court ruled that National Presto was seeking equitable relief and thus was not entitled to a jury trial. The district court noted that under the Lanham Act, courts generally “find that a claim for disgorgement of an infringer’s profits is an equitable claim” and therefore the Seventh Amendment does not provide the right to a jury trial for such a claim. After a bench trial, the district court ruled that National Presto failed to prove infringement because its trade dress had not acquired secondary meaning. National Presto appealed.

The Eighth Circuit affirmed. Regarding the denial of a jury trial, which the Court reviewed de novo, National Presto argued that “disgorgement is considered a legal claim when the infringer’s profits serve as a ‘proxy’ for the plaintiff’s damages.” Although the district court did not reject that legal theory, it found that the facts National Presto presented were not sufficient to support a finding that the profits were in fact serving as a proxy. The Court rejected several of National Presto’s arguments, including that “Presto’s desired remedy was legal rather than equitable because its aim was compensation rather than disgorgement of unjust enrichment.”

Regarding the district court’s secondary meaning finding, which the Eighth Circuit reviewed for clear error, the Court noted that “the chief inquiry is whether in the consumer’s mind the mark has become associated with a particular source.” In rejecting National [...]

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A Lesson in Judicial Principles: No Dismissal After Decision

by Connor M. Larson | Dec 5, 2024 | Patents

The US Court of Appeals for the Federal Circuit denied a patent owner’s motion to voluntarily dismiss the appeal following the Federal Circuit’s decision to vacate and remand the case to the Patent Trial & Appeal Board but before the mandate issued. Cisco Sys., Inc. v. K.Mizra LLC, Case No. 22-2290 (Fed. Cir. Nov. 19, 2024) (Dyk, Reyna, Stoll, JJ.)

Computer networking companies Cisco, Forescout, and Hewlett Packard filed a petition for inter partes review (IPR) to challenge the patentability of several claims of a patent owned by K.Mizra. The Board found that the petitioners failed to show that the challenged claims were unpatentable. Cisco and Hewlett Packard appealed.

After full briefing and oral argument, the Federal Circuit issued an opinion vacating the Board’s decision and remanding with further instructions. Before the Court’s mandate issued, the parties reached a settlement and moved to voluntarily dismiss the appeal without submitting a request to vacate the Federal Circuit opinion. The motions were unopposed.

The Federal Circuit stayed the issuance of the mandate while it considered the motions and invited the US Patent & Trademark Office (PTO) to comment. The PTO requested that the Federal Circuit deny the motions because it had already entered its opinion and judgment and denied rehearing. The Court agreed, declining to depart from its principle that granting a motion to dismiss the appeal at such a late stage (days before the issuance of the mandate) would result in a modification or vacatur of its judgment that was neither required nor a proper use of the judicial system.

The Federal Circuit also emphasized that appeals from the Board require additional consideration in terms of the PTO Director’s unconditional right to intervene. The Court concluded with a reminder that the parties were free to seek dismissal from the Board on remand.

Let’s Not Get It On: Battle of the Greatest Hits

by Kavya Rallabhandi | Nov 14, 2024 | Copyrights

The US Court of Appeals for the Second Circuit affirmed a district court ruling that Ed Sheeran’s 2014 hit “Thinking Out Loud” does not infringe the copyright on Marvin Gaye’s 1973 classic “Let’s Get It On.” Structured Asset Sales, LLC v. Sheeran, Case No. 23-905 (2d Cir. Nov. 1, 2024) (Calabresi, Parker, Park, JJ.)

In 1973, Ed Townsend and Marvin Gaye wrote the Motown hit “Let’s Get It On.” Townsend subsequently registered a copyright for the song’s melody, harmony, rhythm, and lyrics by sending the deposit copy of sheet music to the US Copyright Office. Townsend, Gaye, and Motown Records each held a one-third share in the copyright. Structured Asset Sales (SAS) purchases royalty interests from musical copyright holders, securitizes them, and sells the securities to other investors. SAS owns a one-ninth interest in the royalties from “Let’s Get It On.” Townsend’s remaining two-ninths share in the copyright is split between Kathryn Griffin, Helen McDonald, and the estate of Cherrigale Townsend.

In 2014 Ed Sheeran and Amy Wadge wrote the global chart-topper and Grammy-award-winning song “Thinking Out Loud.” In 2018, SAS brought a copyright infringement suit against Sheeran, Wadge, and various entities that produced, licensed, and distributed “Thinking Out Loud” (collectively, Sheeran). SAS alleged similarities in harmonies, drums, bass lines, tempos, and chord progression combined with anticipation (harmonic rhythm). SAS’s lawsuit followed the Griffin/McDonald/estate of Cherrigale Townsend’s 2017 lawsuit against Sheeran (Griffin lawsuit) alleging materially similar claims.

The district court determined that SAS’s infringement claim was limited to the scope of Townsend’s registration as reflected in the deposit copy (i.e., the sheet music) and excluded the sound recording of “Let’s Get It On.” As evidence that the songs were similar, SAS’s expert witness testified that the “Let’s Get It On” deposit copy included an inferred bass line that matched the bass line in Gaye’s sound recording of “Let’s Get It On” and the bass line in “Thinking Out Loud.” The district court rejected this testimony, concluding that “copyright law protects only that which is literally expressed, not that which might be inferred or possibly derived from what is expressed.”

The district court then denied Sheeran’s two motions for summary judgment without prejudice, determining that whether chord progression and harmonic rhythm in “Let’s Get It On” demonstrated sufficient originality and creativity to warrant copyright protection was a factual question to be determined at trial. Sheeran filed a motion for reconsideration. After the jury in the Griffin lawsuit found that Sheeran did not infringe the “Let’s Get It On” copyright, the district court granted Sheeran’s motion for reconsideration and concluded that “[t]here is no genuine issue of material fact as to whether defendants infringed the protected elements of [‘Let’s Get It On’]. The answer is that they did not.” SAS appealed.

SAS argued that the district court erred in limiting the evidence SAS could present to support its infringement claim and in granting summary judgment in favor of Sheeran. The Second Circuit rejected both arguments.

The Second Circuit explained that excluding the audio recording of “Let’s Get It On” was not error because the 1909 Copyright Act protects [...]

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Moving to Recuse? Too Little, Too Late

by Lois D. Mermelstein | Nov 14, 2024 | Patents

The US Court of Appeals for the Federal Circuit ruled that waiting until well after an adverse summary judgment motion to move for a district court judge’s recusal is untimely and moot, especially where an appeal from the adverse decision is already filed and where the recusal motion is based on public information. Cellspin Soft, Inc. v. Fitbit LLC, et al., Case No. 22-1526 (Fed Cir. Nov. 1, 2024) (Taranto, Prost, Reyna, JJ.) (nonprecedential).

Cellspin filed a complaint for patent infringement against Fitbit and others in October 2017. In February 2021, Fitbit amended its corporate disclosure statement to reflect the completion of its acquisition by Google (an indirect subsidiary of Alphabet). Almost a year later, in January 2022, Fitbit and the other defendants moved for summary judgment of noninfringement in their respective cases, and in June 2022, the district court granted summary judgment.

Months later, in January 2023, after the grant of summary judgment and the filing of notices of appeal from that grant, Cellspin filed a motion to recuse the district court judge based on the judge’s mutual fund investments that were likely to invest in Google. The consulting firm for which the judge’s husband worked also sold Google services, but the judge’s spouse did not do work for Google. The district court denied the motion on the merits as untimely and because the district court lacked authority to vacate the summary judgment that was already on appeal.

Applying Ninth Circuit law and reviewing for abuse of discretion, the Federal Circuit found that Cellspin’s behavior in waiting until well after it had lost on summary judgment, and almost two years after Google’s acquisition of Fitbit became final, “raises obvious concerns of lack of equity and strategic misuse of recusal.” The sources Fitbit cited for the judge’s spouse and the activities of the spouse’s employer were also public well before the summary judgment motion was granted, as were the judge’s financial disclosures.

While there is no specific time limit for seeking recusal, the Federal Circuit (citing its 1989 decision in Polaroid v. Eastman Kodak) noted that “timeliness is a well-established consideration in application of the [recusal] statute. In deciding motions to vacate orders issued by an allegedly disqualified judge, the courts have used ‘untimely’ as a synonym for ‘unfair’ when the circumstances, like those present here, are such that a grant of the motion would produce a result inequitable, unjust, and unfair.”

The Federal Circuit also noted that the risk of injustice to the parties from denying vacatur would also be essentially nonexistent here because the Federal Circuit’s concurrent holding on the summary judgment appeal against other defendants had preclusive effect, resolving Cellspin’s infringement assertions against Fitbit as well.

Practice Note: Any motion for recusal should be promptly filed when grounds for the motion become apparent.