Justia Intellectual Property Opinion Summaries
Acrylicon USA, LLC v. Silikal GMBH
This appeal involves AC-USA's and Silikal's dispute over a shared trade secret consisting of the formula for 1061 SW, a flooring resin Silikal manufactured and sold (along with other flooring resins). AC-USA filed suit alleging that Silikal breached the agreement by selling 1061 SW without its written permission. A jury awarded AC-USA damages on each of its claims for common law breach of contract and for violation of the Georgia Trade Secrets Act of 1990 (GTSA) for misappropriation of the shared trade secret. The district court also awarded punitive damages on the misappropriation claim. The district court then denied Silikal's post-verdict motion for judgment as a matter of law on the misappropriation and contract claims, entering a final judgment for AC-USA for $5,861,415.The Eleventh Circuit rejected Silikal's argument that the district court lacked jurisdiction over its person, and thus affirmed the district court's denial of Silikal's motion to dismiss. However, the court concluded that AC-USA failed to prove its misappropriation claim because the evidence that Silikal misappropriated the trade secret is insufficient as a matter of law. Furthermore, AC-USA failed to prove that it sustained cognizable damages on its contract claim. Therefore, the court reversed the district court's judgment on the misappropriation claim and vacated the damages awarded on the contract claim. Finally, the court held that AC-USA is entitled to nominal damages and attorney's fees on its contract claim in a sum to be determined by the district court on remand. View "Acrylicon USA, LLC v. Silikal GMBH" on Justia Law
Fleet Feet, Inc. v. Nike, Inc.
Fleet Feet filed suit against NIKE, alleging that NIKE's advertising campaign with the tagline "Sport Changes Everything" infringed on Fleet Feet's trademarks "Change Everything" and "Running Changes Everything." Fleet Feet also sought a preliminary injunction, which the district court granted, enjoining NIKE's use of the tagline and any designation "confusingly similar" to Fleet Feet's marks.While NIKE's appeal was pending, NIKE ended its advertising campaign and disavowed any intent to continue using the tagline. Therefore, the Fourth Circuit dismissed the appeal as moot because NIKE no longer has a legally cognizable interest in the validity of the preliminary injunction. The court explained that, at best, NIKE's argument that the "confusingly similar" language in the preliminary injunction order presents only a potential controversy, which cannot sustain this appeal. In regard to NIKE's contention that the injunction bond is a live issue, the court agreed that the bond keeps the case as a whole from being moot but it does not do the same for the appeal. In this case, if the district court ultimately finds that NIKE's "Sport Changes Everything" campaign infringed on Fleet Feet's marks, the preliminary injunction will have been, at worst, harmless error. If it does not, NIKE may recover on the bond. Either way, the court explained that the district court must be the first to resolve NIKE's challenge on the merits. The court found no good reason to vacate the district court's order and opinion granting a preliminary opinion, remanding for further proceedings as necessary. View "Fleet Feet, Inc. v. Nike, Inc." on Justia Law
RXD Media, LLC v. IP Application Development LLC
This appeal arose out of trademark litigation initiated by RXD against Apple over rights to use the "ipad" mark. After the district court awarded summary judgment in favor of Apple on all claims advanced by RXD and on all counterclaims asserted by Apple, the district court permanently enjoined RXD from any commercial use of the terms "ipad" or "ipod." RXD challenges the district court's infringement rulings.The Fourth Circuit affirmed the district court's judgment, holding that the district court properly granted summary judgment in favor of Apple on both its claims and counterclaims, and that the district court did not abuse its discretion in its award of injunctive relief to Apple. The court concluded that Apple had an established, protected mark capable of being infringed by RXD's use of the mark in 2016. The court explained that RXD's use of "ipad" on its ipadtoday.com website was not subject to "first user" protection. The court also concluded that a jury could not have reasonably concluded that RXD’s use of the "ipad" mark was unlikely to cause consumer confusion. Therefore, the district court did not err in awarding summary judgment to Apple on its claim of trademark infringement. Given the clear evidence of RXD's infringement of Apple's use of the "ipad" mark, the court held that the district court did not abuse its discretion in issuing the injunctive relief in favor of Apple.The court rejected RXD's contention that the district court erred in holding that Apple met its burden of establishing a bona fide intent to use the "ipad" mark for cloud storage services. Rather, contrary to RXD's assertion, Apple did not apply to use the "ipad" mark for cloud storage. The court explained that Apple was not required to prove a bona fide intent to use a trademark for services not identified in its application. Accordingly, the district court did not err in concluding that Apple had a bona fide intent to use the mark for the services listed in its application. View "RXD Media, LLC v. IP Application Development LLC" on Justia Law
QuikTrip West, Inc. v. Weigel Stores, Inc.
QuikTrip and Weigel operate gasoline-convenience stores. QuikTrip has sold food and beverages in its stores under the registered mark QT KITCHENS since 2011. In 2014, Weigel began using the stylized mark W KITCHENS. QuikTrip requested that Weigel stop using the mark on the basis that it was confusingly similar to QuikTrip’s QT KITCHENS mark. Weigel modified its mark by changing the plural “KITCHENS” to the singular “KITCHEN,” altering the font, and adding the words “WEIGEL’S” and “NOW OPEN.” QuikTrip objected to Weigel’s continued use of the word “KITCHEN” in its mark. In 2017, Weigel applied to register the mark, W WEIGEL’S KITCHEN NOW OPEN.QuikTrip filed an opposition, 15 U.S.C. 1052(d). The Patent and Trademark Office Board evaluated the likelihood of confusion between the marks, referencing the “DuPont” factors, and found that the parties’ identical-in-part goods and related services, overlapping trade channels, overlapping classes of customers, and similar conditions of purchase pointed to a likelihood of confusion but that the dissimilarity of the marks weighed against a likelihood of confusion. It determined that customers would not focus on the word “KITCHEN” for source indication and that Weigel did not act in bad faith in adopting the mark. The Federal Circuit affirmed the dismissal of QuikTrip’s opposition. The finding that the marks, in their entireties, differ in appearance, sound, connotation, and commercial impression is supported by substantial evidence. View "QuikTrip West, Inc. v. Weigel Stores, Inc." on Justia Law
ABS Global, Inc. v. Cytonome/ST, LLC.
In separate district court proceedings, several plaintiffs sued ABS and others for infringement of claims of six patents, including Cytonome’s 161 patent. Four months later, ABS sought inter partes review (IPR) of the 161 patent. The Patent Board invalidated certain claims of that patent while finding that ABS had failed to demonstrate that the remaining claims were unpatentable. Two weeks after the Board’s final IPR decision, the district court granted ABS partial summary judgment, concluding that ABS’s accused products did not infringe any of the 161 claims. Two months after that summary judgment decision, ABS appealed the IPR decision. The district court held a trial covering the patents remaining in the infringement case in September 2019. ABS filed its opening brief challenging the IPR decision in the Federal Circuit in November 2019. Cytonome “elected not to pursue an appeal of the district court’s finding of non-infringement,” then argued that, because it disavowed its ability to challenge that judgment, ABS lacked the requisite injury-in-fact required for Article III standing to appeal the IPR decision. Four months later, the district court entered a final judgment of noninfringement as to the patent claims. The district court has not yet ruled on ABS’s post-trial motions. The Federal Circuit then dismissed ABS’s appeal of the IPR decision as moot. Cytonome cannot reasonably be expected to assert the patent against ABS in the future. View "ABS Global, Inc. v. Cytonome/ST, LLC." on Justia Law
Omega SA v. 375 Canal, LLC
Canal appealed from the district court's judgment awarding $1.1 million in statutory damages to Omega for Canal's contributory infringement of Omega's trademarks. The infringement arose from sales of counterfeit Omega watches at Canal's property in Manhattan.The Second Circuit dismissed Canal's appeal of the denial of summary judgment, holding that the interlocutory appeal is not appealable. The court explained that once the case proceeds to a full trial on the merits, the trial record supersedes the record existing at the time of the summary judgment motion, and there is no basis for this court to review issues raised in a denied motion overtaken by trial.The court nonetheless affirmed the judgment on the merits via appeal of the jury instructions, holding that Canal's position is inconsistent with Tiffany (NJ) Inc. v. eBay Inc., 600 F.3d 93 (2d Cir. 2010), which held that a defendant may be liable for contributory trademark infringement if it was willfully blind as to the identity of potential infringers—that is, under circumstances in which the defendant did not know the identity of specific infringers. The court reasoned that this holding precludes Canal's argument that Omega needed to identify a specific infringer to whom Canal continued to lease property. At trial, Omega pursued a theory of willful blindness, and the district court's jury instructions accurately captured Tiffany's requirements. Finally, the court found no reversible error in regard to the district court's evidentiary and damages ruling. View "Omega SA v. 375 Canal, LLC" on Justia Law
SIMO Holdings Inc. v. Hong Kong uCloudlink Network Technology, Ltd.
SIMO’s patent deals with roaming charges on cellular networks and describes apparatuses and methods that allow individuals to reduce roaming charges on cellular networks when traveling outside their home territory. SIMO sued uCloudlink)for infringement, alleging that four uCloudlink products came within claim 8 of the patent. The district court granted SIMO summary judgment, concluding that claim 8 does not require a “non-local calls database.” and entered a final judgment of $8,230,654 for SIMO.The Federal Circuit reversed, rejecting the district court’s claim construction and holding that claim 8 requires two or more nonlocal calls databases. A “plurality of memory, processors, programs, communication circuitry, authentication data stored on a subscribed identify module (SIM) card and/or in memory and non-local calls database” requires “a plurality of” each component in the list, including “non-local calls database.” In responding to uCloudlink’s summary-judgment motion, SIMO did not identify a triable issue on the factual question of whether, as uCloudlink asserted, the accused products lack a nonlocal calls database; uCloudlink is entitled to summary judgment of noninfringement. View "SIMO Holdings Inc. v. Hong Kong uCloudlink Network Technology, Ltd." on Justia Law
Simio, LLC v. FlexSim Software Products, Inc.
Simio’s patent, entitled “System and Method for Creating Intelligent Simulation Objects Using Graphical Process Descriptions,” describes different types of simulations, including those that are event-oriented, process-oriented, and object-oriented. In Simio’s infringement suit, the district court held that certain claims were ineligible for patenting under 35 U.S.C. 101. The Federal Circuit affirmed, applying the two-step “Alice” analysis. The claims are closely aligned to the decades-old computer programming practice of substituting text-based coding with graphical processing; the focus of the claimed advance remains the abstract idea. Considering the claim elements both individually and as an ordered combination, FlexSim “met its burden of showing no inventive concept or alteration of computer functionality sufficient to transform the system into a patent-eligible application.” View "Simio, LLC v. FlexSim Software Products, Inc." on Justia Law
General Electric Co. v. Raytheon Technologies Corp.
Raytheon and GE compete in the market to supply propulsion engines to the commercial aviation industry. Raytheon’s patent, entitled “Gas Turbine Engine with Low Stage Count Low-Pressure Turbine,” claims a two-stage high-pressure turbine engine for commercial airplanes. The patent issued in 2014. In 2016, GE petitioned the Patent Trial and Appeal Board for inter partes review, asserting that certain claims were unpatentable as obvious based on the combination of two prior art references. The Board found five claims nonobvious. GE filed an unsuccessful request for rehearing challenging the Board’s application of the legal standard for both teaching away and motivation to combine. Raytheon moved to dismiss GE’s appeal for lack of standing.The Federal Circuit vacated. Having alleged sufficient facts to establish that it is engaging in an activity that creates a substantial risk of future infringement, GE has standing to bring its appeal. The Board lacked substantial evidence for its conclusions that prior art teaches away from using a two-stage high-pressure turbine and that GE did not establish a motivation to combine prior art. View "General Electric Co. v. Raytheon Technologies Corp." on Justia Law
Savannah College of Art and Design, Inc. v. Sportswear, Inc.
SCAD filed suit against Sportswear for trademark infringement, unfair competition, false designation of origin, and counterfeiting under the Lanham Act, and for unfair competition and trademark infringement under Georgia common law. The dispute involves Sportswear's use of SCAD's word marks "SCAD" and "SAVANNAH COLLEGE OF ART AND DESIGN" as well as the college's design mark that includes its mascot, Art the Bee.The Eleventh Circuit affirmed the district court's judgment on remand, holding that the district court properly entered summary judgment on two Lanham Act claims and the corresponding permanent injunction enjoining Sportswear from selling products bearing the SCAD marks at issue. The court concluded that its trademark precedents of Boston Prof’l Hockey Ass’n, Inc. v. Dallas Cap & Emblem Mfg., Inc., 510 F.2d 1004 (5th Cir. 1975), Univ. of Ga. Ath. Ass'n v. Laite, 756 F.2d 1535 (11th Cir. 1985), and Savannah College of Art & Design, Inc. v. Sportswear, Inc., 872 F.3d 1256, 1264, 1265 (11th Cir. 2017), require affirmance of the district court's judgment. In this case, the district court correctly found a likelihood of confusion as to Sportswear's use of SCAD's word marks and Bee Design Mark. View "Savannah College of Art and Design, Inc. v. Sportswear, Inc." on Justia Law