Justia Intellectual Property Opinion Summaries

Defendant Citizens Equity First Credit Union (CEFCU) petitioned the Trademark Trial and Appeal Board (TTAB) to cancel a trademark registration belonging to plaintiff San Diego County Credit Union (SDCCU). SDCCU procured a stay to the TTAB proceedings by filing an action seeking declaratory relief to establish that it was not infringing either of CEFCU’s registered and common-law marks and to establish that those marks were invalid. The district court granted SDCCU’s motion for summary judgment on noninfringement. After a bench trial, the district court also held that CEFCU’s common-law mark was invalid and awarded SDCCU attorneys’ fees.   The Ninth Circuit affirmed in part and vacated in part the district court’s judgment and award of attorneys’ fees in favor of Plaintiff and remanded. The panel held that SDCCU had no personal stake in seeking to invalidate CEFCU’s common-law mark because the district court had already granted summary judgment in favor of SDCCU, which established that SDCCU was not infringing that mark. Hence, there was no longer any reasonable basis for SDCCU to apprehend a trademark infringement suit from CEFCU. After it granted summary judgment in favor of SDCCU, the district court was not resolving an actual “case” or “controversy” regarding the validity of CEFCU’s common-law mark; thus, it lacked Article III jurisdiction to proceed to trial on that issue. The panel therefore vacated the district court’s judgment and its award of attorneys’ fees, which was based, in part, on the merits of the invalidity claim over which the district court lacked Article III jurisdiction. View "SAN DIEGO COUNTY CREDIT UNION V. CEFCU" on Justia Law

Ahern Rentals, Inc. (Ahern), alleges that two competitors— EquipmentShare.com, Inc. (EquipmentShare) and EZ Equipment Zone, LLC (EZ)— misappropriated its trade secrets to gain an unfair advantage in the construction equipment rental industry. The district court first dismissed EZ from the lawsuit, ruling that Ahern failed to state a plausible claim for relief against it. Later, the district court dismissed the case altogether, ruling that Ahern’s remaining claims against EquipmentShare were duplicative of claims against EquipmentShare in several other ongoing lawsuits brought by Ahern. Ahern appealed both rulings, arguing that the district court erred in dismissing its claims.   The Eighth Circuit reversed. The court reasoned that, according to Ahern, EquipmentShare developed programs by exploiting Ahern’s trade secrets. Ahern also alleged that the market information used by EZ to develop profitable utilization and rental rates is based on Ahern’s trade secrets illegally obtained by EquipmentShare. Taking all factual allegations as true, Ahern pled enough facts to make it entirely plausible that EZ is at least using systems developed by EquipmentShare through the exploitation of Ahern’s trade secrets. Further, the court found that Ahern has pled sufficient facts to state a claim against EZ for unjust enrichment. It is not disputed that Ahern’s trade secrets are a benefit with real economic value. And, as alleged in the complaint, EquipmentShare and EZ have used the benefit to their advantage. Finally, Ahern plausibly alleges malfeasance in the acquisition of these confidential trade secrets. Thus, the district court erred in dismissing Ahern’s claims against EZ for civil conspiracy and unjust enrichment. View "Ahern Rentals, Inc. v. EquipmentShare.com, Inc." on Justia Law

Under the terms of a consulting agreement between GSE Consulting, Inc. (“GSE”) and Harris Corporation (“Harris”), GSE is entitled to a payment of up to four million dollars in the event that certain intellectual property owned by Harris is “sold, merged or transferred” but did not form “the primary basis of the sale.” GSE contends that the relevant intellectual property, held by a subsidiary of one of Harris’s subsidiaries, necessarily “merged” when Harris used a different subsidiary to effectuate a comprehensive reverse triangular merger with an outside company and thus triggered Harris’s payment obligation under the parties’ agreement. L3Harris, however, maintained that Harris’s participation in the reverse triangular merger did not cause the relevant intellectual property to “merge” and has accordingly refused to make the demanded payment. The district court agreed with L3Harris and dismissed GSE’s breach of contract claim on summary judgment.   The Eleventh Circuit affirmed. The court reasoned that the reverse triangular merger at issue did not “merge,” i.e., combine, the relevant intellectual property in any ordinary way. The Plan contains assurances regarding the validity, right to continued use, and maintenance of each party’s intellectual property. And, given its broad definitions of “Company Intellectual Property” and “Intellectual Property,” the Plan certainly reaches the intellectual property held by Eagle as subsidiary of one of Harris’s subsidiaries. The Plan neither blends, pools, nor otherwise combines the intellectual property held by Eagle with any other intellectual property. Therefore, the intellectual property discussed in the Consulting Agreement was not “merged” as a result of the reverse triangular merger. View "GSE Consulting, Inc. v. L3Harris Technologies, Inc." on Justia Law

Google filed two petitions for inter partes review (IPR) challenging CyWee’s patents. On December 11, 2018, the Patent Trial and Appeal Board instituted IPR on all challenged claims. Each IPR was joined by other parties, so the Board extended its one-year deadline for the final written decisions by one month, to January 10, 2020. On January 9, 2020, the Board issued its final decisions, finding all challenged claims unpatentable for obviousness. CyWee challenged the merits of the unpatentability determinations and the appointment of Board administrative patent judges (APJs) as unconstitutional under the Appointments Clause, In March 2021 the Federal Circuit affirmed, rejecting the Appointment Clause challenge as foreclosed by then-governing precedent, including its “Arthrex” decision.The Supreme Court subsequently held, in Arthrex, that APJs’ power to render final patentability decisions unreviewable by an accountable principal officer was an Appointments Clause violation. The Court remedied the violation by vitiating anything in 35 U.S.C. 6(c) that prevented the Director from reviewing final Board IPR decisions and “remand[ing] to the Acting Director” for a decision on whether to rehear the case. The Federal Circuit then remanded to allow CyWee to request a rehearing. The Commissioner denied rehearing. CyWee filed amended notices of appeal challenging the rehearing denials and the Commissioner’s authority to perform the review Arthrex contemplates. The Federal Circuit affirmed, rejecting arguments that the one-month extension rendered the decisions untimely. The Supreme Court’s Arthrex decision compelled rejection of its other arguments. View "CyWee Group Ltd. v. Google LLC" on Justia Law

Plaintiff is a physically challenged athlete and motivational speaker who started the Scott Rigsby Foundation and registered the domain name “scottrigsbyfoundation.org” with GoDaddy.com. When Plaintiff and the Foundation failed to pay the annual renewal fee in 2018, a third party registered the then-available domain name. Scottrigsbyfoundation.org became a gambling information site. Plaintiff sued GoDaddy.com, LLC and its corporate relatives (collectively, “GoDaddy”), for violations of the Lanham Act and various state laws and sought declaratory and injunctive relief, including the return of the domain name. The Northern District of Georgia transferred the case to the District of Arizona, which dismissed all claims.   The Ninth Circuit affirmed the district court’s dismissal and dismissed Plaintiff’s and the Foundation’s appeal of an order transferring venue. The panel held that it lacked jurisdiction to review the District Court for the Northern District of Georgia’s order transferring the case to the District of Arizona because transfer orders are reviewable only in the circuit of the transferor district court. The panel held that Plaintiff could not satisfy the “use in commerce” requirement of the Lanham Act vis-à-vis GoDaddy because the “use” in question was being carried out by a third-party gambling site, not GoDaddy. As to the Lanham Act claim, the panel further held that Plaintiff could not overcome GoDaddy’s immunity under the Anti-cybersquatting Consumer Protection Act.  The panel held that Section 230 of the Communications Decency Act shielded GoDaddy from liability for Plaintiff’s state-law claims for invasion of privacy, publicity, trade libel, libel, and violations of Arizona’s Consumer Fraud Act. View "SCOTT RIGSBY, ET AL V. GODADDY INC., ET AL" on Justia Law

Jawbone sued Google for patent infringement in the Western District of Texas after being assigned ownership of the nine asserted patents and seven months after being incorporated in Texas. Jawbone rents space in Waco to store documents relating to the patents, from which it conducts some distribution and sales activities. No Jawbone personnel work at any location in the Western District. Google moved under 28 U.S.C. 1404(a) to transfer the action to the Northern District of California, arguing that: the relevant technical aspects of the accused earbuds, smartphones, speakers, displays, and software products were researched, designed, and developed at Google’s headquarters within Northern California; the technology underlying the asserted patents assigned to Jawbone was likewise developed and prosecuted in Northern California; witnesses and sources of proof (prototypes, Google’s key personnel, and four of the six named inventors) were primarily located in Northern California; no witnesses or sources of proof were located in Western Texas.The Federal Circuit ordered the district court to grant the motion. The center of gravity of this action, focusing on the “Volkswagen factors” and the overriding convenience inquiry, is clearly in the Northern District of California, not in the Western District of Texas. Four factors favor transfer and four factors are neutral. No factor weighs against transfer. View "In Re Google LLC" on Justia Law

Block, Inc. appealed from an order granting in part H&R Block, Inc. and HRB Innovations, Inc.’s (collectively, “H&R Block”) motion for a preliminary injunction. H&R Block claims that the use of “Block” and a green square logo in connection with tax services: (1) is likely to cause confusion because H&R Block and Block, Inc. both offer overlapping services, including tax preparation and filing, other related financial services, and charitable services; (2) has confused consumers, the media, and investors; and (3) will cause irreparable harm, as it will undermine H&R Block’s ability to control its public image and perception and lead consumers to incorrectly believe Block, Inc’s tax service is connected to H&R Block or one of the “building blocks” in the Block, Inc. family of brands.   The Eighth Circuit reversed and vacated the preliminary injunction. The court explained that H&R Block failed to satisfy its burden because the evidence in the record is inadequate to establish substantial consumer confusion by an appreciable number of ordinary consumers, nor irreparable harm that is concrete and imminent. The court wrote that if there is, in fact, trademark infringement, H&R Block will have a full opportunity to demonstrate that infringement at a trial on the merits. View "H&R Block, Inc. v. Block, Inc." on Justia Law

In 2015, PMC sued Apple, alleging that Apple FairPlay, a digital rights management technology that Apple uses on its computers, mobile phones, and other devices to prevent users from unauthorized uses of content—such as illegally copying songs on iTunes–alleging infringement of its 091 patent. A jury found that Apple infringed at least one of claims and awarded PMC over $308 million in reasonable-royalty damages.The district court held a bench trial on remaining issues and found the 091 patent unenforceable based on prosecution laches. The court determined that laches required a challenger to prove that the applicant’s delay was unreasonable and inexcusable under the totality of the circumstances and that there was prejudice attributable to the delay. The Federal Circuit affirmed, agreeing that PMC engaged in an unreasonable and unexplained delay amounting to an egregious abuse of the statutory patent system. There was no clear error in the district court’s determination that PMC engaged in conduct causing delays at least through 2011. Apple began developing FairPlay in the early 2000s and launched it in 2003, so Apple necessarily invested in or worked on FairPlay before 2003, which is undisputedly during the period of delay. View "Personalized Media Communications, LLC v. Apple, Inc." on Justia Law

Five months after being sued in Oregon for trademark infringement, Jacob Rieger & Co., LLC provided notice to its liability insurer, Cincinnati Insurance Company. Due to Rieger’s delay, Cincinnati refused to reimburse Rieger’s legal fees for the five months that Cincinnati was unaware of the lawsuit. The Oregon case was ultimately dismissed for lack of jurisdiction. Instead of waiting to be sued in a court that did have jurisdiction, Rieger’s parent company, GSP Licensing LLC, filed a new suit in Missouri as the plaintiff. GSP was not named under Rieger’s insurance policy, so Cincinnati denied coverage for the Missouri case. Cincinnati then filed this lawsuit, seeking a declaration of coverage. The district court granted summary judgment to Cincinnati.   The Eighth Circuit reversed in part the district court’s grant of summary judgment to Cincinnati. The court affirmed the dismissal of Rieger’s tort claims and the imposition of sanctions. The court explained that under Missouri law, a tort claim is independent of a contract claim if the tort claim can succeed without regard to the outcome of the contract claim. In other words, the tort claim could succeed regardless of the outcome of the contract claim. Here, Rieger admits that its tort claims would fail if its contract claim succeeded. By Rieger’s own admission, the court found that the district court properly dismissed Rieger’s tort claims. View "Cincinnati Insurance Company v. Jacob Rieger & Co., LLC" on Justia Law

FIC was founded and started using FOREMOST branded marks to market and sell its insurance products. After FIC operated independently for several decades, Farmers Insurance Group acquired FIC in 2000. Now a subsidiary of Farmers, FIC continues to sell insurance in the United States and Florida under its FOREMOST-branded marks. At issue is whether parties’ FOREMOST trademarks at issue could confuse consumers into thinking that a relationship exists between the parties. The district court found at summary judgment that there was no likelihood of confusion (and thus no trademark infringement) between the FOREMOST marks of Foremost Insurance Company (“FIC”), a multi-billion dollar insurance company, and Foremost Title and Escrow (“FT&E”), a shell company set up to sell title insurance for a law firm.   The Eleventh Circuit reversed the grant of summary judgment on FIC’s trademark infringement claim. The court explained that while the district court implicitly decided this case under the Nunez framework, it never actually decided whether all the material facts had been “incontrovertibly proved.” A district court may not ignore the traditional summary judgment standard merely by invoking the specter of Nunez. The court wrote, in this case, the parties should have eschewed moving for summary judgment, informed the court that discovery was complete and that the case was ready for trial, and then held a bench trial. Thus because the court held a reasonable factfinder could determine that a likelihood of confusion exists, the court reversed  grant of summary judgment as to Count I of FIC’s complaint and remanded the case for trial on the merits. View "FCOA LLC v. Foremost Title & Escrow Services LLC" on Justia Law