Justia Intellectual Property Opinion Summaries
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
Dr. Seuss Enterprises, LP v. ComicMix LLC
The Ninth Circuit reversed the district court's summary judgment in favor of defendants on a copyright infringement claim and affirmed the district court's dismissal and grant of summary judgment in favor of defendants on a trademark claim concerning the book "Oh, the Places You'll Boldly Go!," (the mash-up) a Dr. Seuss and Star Trek mash-up.The panel held that the mash-up does not make fair use of "Oh, the Places You'll Go!" (the original work). The panel explained that the purpose and character of the mash-up; the nature of the original work; the amount and substantiality of the original work; and the potential market for or value of Seuss, all weigh against fair use. The panel concluded that the bottom line is that ComicMix created, without seeking permission or a license, a non-transformative commercial work that targets and usurps the original work's potential market, and ComicMix cannot sustain a fair use defense. The panel also held that Seuss does not have a cognizable trademark infringement claim against ComicMix because the Lanham Act did not apply under the Rogers test. In this case, the allegedly valid trademarks in the title, the typeface, and the style of the original work were relevant to achieving the mash-up's artistic purpose, and the use of the claimed original work trademarks was not explicitly misleading. View "Dr. Seuss Enterprises, LP v. ComicMix LLC" on Justia Law
Attia v. Google, LLC
Attia developed architecture technology called “Engineered Architecture” (EA). Google and Attia worked together on “Project Genie” to implement EA. Attia disclosed his EA trade secrets with the understanding that he would be compensated if the program were successful. After Attia executed patent assignments Google filed patent applications relating to the EA trade secrets and showed a prototype of the EA technology to investors. The patents were published in 2012. Google then allegedly excluded Attia from the project and used Attia’s EA technology to create a new venture. Attia sued Google for state law trade secret and contract claims. After Congress enacted the Defend Trade Secrets Act of 2016 (DTSA), 130 Stat. 376, making criminal misappropriation of a trade secret a predicate act under the Racketeer Influenced and Corrupt Organizations Act (RICO), Attia added RICO claims, 18 U.S.C. 1962(c). The Ninth Circuit affirmed the dismissal of the RICO and DTSA claims. The misappropriation of a trade secret before the enactment of the DTSA does not preclude a claim arising from post-enactment misappropriation or continued use of the same trade secret but Attia lacked standing to assert a DTSA claim. Google’s 2012 patent applications placed the information in the public domain and extinguished its trade secret status. The court rejected an argument that Google was equitably estopped from using the publication of its patent applications to defend against the DTSA claim. View "Attia v. Google, LLC" on Justia Law
Federal Trade Commission v. AbbVie Inc
AndroGel, a testosterone replacement therapy, generated billions of dollars in sales, The Federal Trade Commission sued the owners of an AndroGel patent under Section 13(b) of the Federal Trade Commission Act, 21 U.S.C. 301, alleging that they filed sham patent infringement suits against Teva and Perrigo and entered into an anticompetitive reverse-payment agreement with Teva. The FTC accused the defendants of trying to monopolize and restrain trade over AndroGel. The District Court dismissed the FTC’s claims to the extent they relied on a reverse-payment theory but found the defendants liable for monopolization on the sham-litigation theory. The court ordered the defendants to disgorge $448 million in profits but denied the FTC’s request for an injunction.The Third Circuit reversed in part. The district court erred by rejecting the reverse-payment theory and in concluding that the defendants’ litigation against Teva was a sham. The court did not err in concluding the Perrigo litigation was a sham and that the defendants had monopoly power in the relevant market. The FTC has not shown that monopolization entitles it to any remedy. The court did not abuse its discretion in denying injunctive relief. The court erred by ordering disgorgement because that remedy is unavailable under Section 13(b). View "Federal Trade Commission v. AbbVie Inc" on Justia Law