Posts Tagged: "summary judgment"

in Ottah v. Fiat Chrysler, Chikezie Ottah appealed the lower court’s grant of summary judgment of non-infringement and dismissal of the complaint with prejudice. Ottah’s patent concerns a removable book holder assembly for use by a person in a protective or mobile structure. Disputed claim 1 includes the phrase, “a book holder for removable attachment.” Ottah alleged that several auto manufacturers infringed the patent by using and making a camera holder for use in their vehicles.

Berkheimer is also equally important, if not more important, because it stands for the proposition that questions of fact can and do underline patent eligibility determinations. This is important not only because it will make summary judgment more difficult for infringers, but because if there are questions of fact underneath the patent eligibility determination it should be exceptionally difficult (if not virtually impossible) for district courts to dismiss patent infringement complaints using FRCP 12(b)(6). This is true because under FRCP 12(b)(6) all facts asserted in the complaint by the plaintiff (i.e., the patent owner) are taken as true and dismissal appropriate only where there can be no victory by the plaintiff even based on the facts plead in the complaint.

One of the interesting theories posed by the case is Character for Hire’s claimed right to use Disney characters, which derive from Norse mythology or centuries-old fairy tales. In its response to Disney’s motion for summary judgment, Characters for Hire argues that many of the Plaintiffs’ copyrights are based on prior works that have been in the public domain for hundreds of years such as Cinderella, Snow White, Rapunzel, Sleeping Beauty, Aladdin, Princess Aurora, Beauty and the Beast, the Little Mermaid, Thor and Loki. “It will be interesting to see how the Court delineates between established fairy tale characters and the original expression added to them by Disney,” Furey said.

Branded apparel companies face many challenges in protecting their IP assets, including the unavailability of copyright protection for fashion designs, the length of time necessary to secure a design patent, the challenge of securing secondary meaning required for a trade dress claim before the market is flooded with knock-offs, and the geographic and practical impediments to pursuing counterfeiters, who are often foreign-based and/or judgment proof.  Perhaps mindful of the limited statutory protections for IP assets and the significant damages being incurred at the hands of infringers, various courts, particularly in the Second and Ninth Circuits, have in recent years taken steps to enhance the alternatives available to apparel companies confronted by the scourge of knockoffs.  Specifically, such court decisions have (1) expanded the scope of potential contributorily liable actors, and (2) broadened the means of freezing and attaching assets of foreign counterfeiters.

My intuition is that the judge came to the correct conclusion, but that the Supreme Court test ultimately did little to guide her thinking.  As I mentioned in my previous IPWatchdog article, determining the contours of the useful article is a metaphysical exercise that likely will require other “tests” to resolve.  Why, for instance, does the useful article not consist of the lighting elements, sockets, wires and covers, which the judge admits also serve important utilitarian functions?  What factors caused her to draw the line so that the covers were not included within her concept of the useful article?  My guess is that it came down to the fact that in her view, “The primary purpose of the cover is artistic; once the covers are removed, the remainder is a functioning but unadorned light string.” 

The total number of intellectual property claims included in all commercial cases is higher than the figure of 11,643 commercial cases including at least one IP claim. “It turns out to be incredibly hard to build a Venn diagram that reflects the types of IP claims included in these commercial cases,” said Brian Howard, Lex Machina data scientist and the author of the commercial litigation report. “It turns out to be its own mini-Venn diagram within a Venn diagram, some of the cases are patent and trademark and commercial, so there’s overlap within that IP circle.” Of the different types of intellectual property claims which are included in commercial litigation, trademark claims are by far the most common, occurring in a total of 8,277 commercial cases; that’s 15 percent of all commercial cases filed since 2009. Copyright claims were brought in a total of 3,260 commercial cases filed since 2009, a total representing about 6 percent of all commercial cases. Patent claims were brought in 2,219 commercial cases, or only about 4 percent of the total.

The Ninth Circuit clarified the requirements for pleading and establishing a trademark infringement claim under a reverse confusion theory in Marketquest Group v. BIC, Case No. 15-55755 (9th Cir. July 7, 2017). The court relieved plaintiffs from having to specifically plead reverse confusion if it is compatible with the theory of infringement alleged in the complaint, and supported a more malleable standard for proving intent in reverse confusion cases. The court also held that good faith is an element—not just a factor—of a fair use defense, and that the fair use defense may only be raised after a likelihood of confusion is established. Marketquest further reinforces courts’ reluctance to decide trademark cases on summary judgment, and makes it more difficult for defendants to dispose of reverse confusion claims through pretrial motions. 

This marks the third return to the Federal Circuit of a dispute (the 050 case) between the ArcelorMittal Appellants and the AK Steel Appellees… Overall, the Federal Circuit affirmed the judgment invalidating ArcelorMittal’s reissue patent, finding that the district court: (1) possessed subject matter jurisdiction when it granted summary judgment, (2) properly followed the Court’s most recent mandate on remand, and (3) properly exercised its discretion to deny a Rule 56(d) request for new discovery on commercial success… When appropriate given all of the circumstances, a district court may have jurisdiction to consider claims of a reissue patent on remand, although the claims were not asserted at trial, e.g. if the reissue claims are sufficiently connected to the original case and the remand for such consideration is requested. A case or controversy is not moot, and jurisdiction is not avoided, by tendering an unexecuted and conditional covenant not to sue.

A Federal Circuit Rule 36 judgment can be a valid and final judgment for purposes of preclusive effects. Additionally, district court findings affirmed by a Rule 36 judgment can have preclusive effect as long as each is “necessary” to the final appellate judgment. The Federal Circuit did not address the Circuit split regarding the preclusive effect of independent, alternative holdings.

The Second Circuit Court of Appeals affirmed the decision of the Southern District Court of New York in Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., a trademark infringement case in which summary judgment was granted to defendant My Other Bag (MOB) on the basis that their product – a cheap canvas bag that features a cartoonish depiction of plaintiff Louis Vuitton’s (LV) marks – satisfies the elements of a parody defense and is therefore unlikely to cause confusion despite surface-level similarities…. The outcome of the case in favor of the defendant represents a big win for defendants making use of the parody defense to target a famous trademark-holder.

A copyright infringement battle of intergalactic proportions between Plaintiffs CBS and Paramount Pictures, and the company (along with its principal Alec Peters) looking to produce the crowdfunded Star Trek fan film Axanar (“Defendants”) is heating up. The parties have filed numerous motions in the past month, and the Court’s recent ruling on the parties’ motions for summary judgment means the case is inching closer and closer to its January 31 trial date… The Court then concluded that the “Axanar Works have objective substantial similarity to the Star Trek Copyrighted Works,” and therefore it “leaves the question of subjective substantial similarity to the jury.”

It is inappropriate for a trial court to discount material expert testimony so as to weigh the evidence in favor of a party seeking summary judgment. The presence of a genuine dispute precludes summary judgment in such cases. … Failure to disclose arguments concerning claims of a different scope in a different patent application was not inequitable conduct when differences were apparent to the Examiner.

In vacating the district court’s summary judgment order, the Federal Circuit noted first that statements made by Micron’s expert regarding what the anticipatory reference disclosed were not actually supported by the anticipatory reference itself… These kinds of procedural safeguards are commonly applied by other regional circuits, but have seemed to be missing from Federal Circuit case law of late, with the Federal Circuit seeming to be rather eager to address the substance of a given dispute. Perhaps with the overwhelming caseload now at the Federal Circuit, and its need to resort to both Rule 36 and non-precedential opinions, the court seems to finally be coming to terms with the fact that it is an appeals court and not a court of first instance that should always decide cases de novo.

The Hearing Order concluded that the parties raised sufficient issues of material fact to warrant the ready-to-go Hearing to determine when respondent’s alleged misconduct was actually “made known” to an officer or employee of the USPTO pursuant to §32. Thus, the Hearing would be able to afford the fact-finder the opportunity to assess the credibility of the witnesses and draw inferences from the facts. Further, as the parties were already prepared for the Hearing on the merits of the case, the Judge believed that he would entertain testimony on both the SOL issue and the disciplinary sanction sought by the OED Director. Thus, the Hearing Order determined that the Judge found issues of material fact existed as to when the misconduct forming the basis for the disciplinary proceeding was “made known” to an officer or employee of the Office.

The Federal Circuit disagreed, holding that “record evidence establishe[d] a genuine dispute over whether a person of ordinary skill would have been motivated to add a vent to Hoang’s disinfecting cap.” The Court also held that “the tradeoff between the desire to retain cleaning agent and the patents’ disclosure regarding drying is a factual matter left to the factfinder.”