Summary Judgment

“Weight” a Minute – Upon Further Review Those Claims Are Not Indefinite

Commission Opinion, Certain UV Curable Coatings For Optical Fibers, and Products Containing the Same, Inv. No. 337-TA-1031 (August 11, 2017) (ITC)

We previously posted – “Weight” a Minute- Those Claims Are Indefinite – about Administrative Law Judge (“ALJ”) MaryJoan McNamara’s Initial Determination (“ID”), finding claims of U.S. Patent No. 7,706,659 (“the ’659 patent”) indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA).  The United States International Trade Commission (“ITC”) recently reversed and vacated that ID.  The ’659 patent is entitled “Coated Optical Fiber” and claims primary coating compositions and primary coatings.

Complainants DSM Desotech, Inc. and DSM IP Assets B.V. petitioned the Commission to review the ID; Respondent Momentive UV Coatings (Shanghai) Co., Ltd. (“MUV”) and the Office of Unfair Import Investigations opposed the petition.  In its petition for review, DSM argued that the ALJ’s construction of the disputed claim term referred to an “average molecular weight” and that term was not indefinite. READ MORE

Sneaker Wars: Adidas Defeats Summary-Judgment Motion That Claimed Stan Smith Shoe Design Lacks Distinctiveness

Order Granting in Part and Denying in Part Motion for Summary Judgment,  Adidas America Inc. et al. v. Skechers USA Inc., D. Or. (August 3, 2017) (Judge Marco Hernández)

The ever-increasing popularity (and collectability) of athletic shoes seems to have brought along with it an increase in the amount of litigation involving trade dress protection for the look of some of the more popular shoe designs. Last year, the International Trade Commission found that Converse’s trademark rights in the design of the Chuck Taylor sneaker were invalid due to widespread use of similar designs by competitors.  That decision is now the subject of a closely watched appeal at the Federal Circuit.  More recently, in a dispute between adidas and Skechers, a court found that factual issues prevented entry of summary judgment regarding whether the look of adidas’ Stan Smith shoe design is generic and whether it has acquired secondary meaning. READ MORE

Fictional, but Protectable: Court Nixes “The Krusty Krab” Restaurant on Trademark Grounds

Summary Judgment Order, Viacom International Inc. v. IJR Capital Investments, LLC, S.D. Tex. (January 11, 2017) (Judge Gray Miller) 

The Emmy nominations have been announced, and the fall television season is just weeks away. Accordingly, we thought it would be fun to revisit an interesting trademark ruling from earlier this year that still seems timely given these events.

With the rise of social media, mobile phone applications and viral marketing, cross-overs between the real world and the fictional world of T.V. shows, movies and video games, are becoming increasingly commonplace. To promote the upcoming season of its popular T.V. show Better Call Saul, for example, AMC created actual Los Pollos Hermanos fast-food restaurants in cities across the U.S.  Similarly, in the summer of 2006, ABC and the creators of Lost created an alternative reality game called The Lost Experience that included such disparate activities as advertisements of fictional companies on a variety of ABC programs and advertising sponsor websites, the publication under a pseudonym of a best-selling mystery novel called “Bad Twin,” a live disruption at San Diego’s Comic-Con by a fictional protagonist named Rachel Blake trying to unravel some of Lost’s mysteries, and the world-wide sale at special locations of fictional “Apollo” candy bars that had been featured in the show.  As these examples reflect, the names and likeliness of fictional locations, objects, and characters can represent significant and valuable components of a company’s intellectual property rights. READ MORE

“Weight” a Minute – Those Claims Are Indefinite!

Initial Determination Granting MUV’s Motion for Summary Determination That Claims 16-18, 21, and 30 of U.S. Patent No. 7,076,659 are Invalid under 35 U.S.C. § 112, Certain UV Curable Coatings For Optical Fibers, and Products Containing the Same, ITC Inv. No. 337-TA-1031 (July 6, 2017) (ALJ MaryJoan McNamara)

In a rare move for the ITC, Administrative Law Judge (“ALJ”) MaryJoan McNamara granted a motion for summary determination by Respondent Momentive UV Coatings (Shanghai) Co., Ltd. (“MUV”) finding that several claims of U.S. Patent No. 7,706,659 (“the ’659 patent”) are indefinite under 35 U.S.C. § 112, ¶ 2 (pre-AIA). The ’659 patent is entitled “Coated Optical Fiber” and claims primary coating compositions and primary coatings.

This decision is significant because it is relatively unusual for ALJs to grant motions for summary determination on technical issues. Section 337 investigations move very quickly and motions for summary determination are often filed less than three months before the start of the hearing, so there is often little efficiency to be gained from granting such motions. READ MORE

Inadequate Disclosures Preclude Monetary Damages Recovery in Trademark Infringement Suit

Order Granting in Part and Denying in Part Defendant’s Motion for Summary Judgment, Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc., Case No. 3:15-cv-04618-WHO (Judge William H. Orrick)

As any practitioner who has sought to establish trademark infringement already knows, likelihood of confusion is difficult to prove at trial. Nonetheless, a recent Order in Sazerac Co., Inc., et al. v. Fetzer Vineyards, Inc. demonstrates that plaintiffs still retain certain inherent advantages at the summary judgment stage in proving that there exists a likelihood of confusion, given the high hurdle for defendants to convince a court that no genuine issues of fact exist and that summary judgment is warranted.  But as this case also demonstrates, that does not mean that plaintiffs can “sleep at the wheel,” so to speak, when disclosing infringement or damages theories during discovery. READ MORE

A Day Late And A Dollar Short – Court Grants Summary Judgment On Laches Defense

Order Granting Summary Judgment On Dropbox Laches Claims, Dropbox, Inc. v. Thru Inc., Case No. 15-cv-01741-EMC (Judge Edward M. Chen)

The proverb “[e]quity aids the vigilant, not the sleeping ones” aptly describes the rationale behind the defense of laches-i.e., the legal doctrine which states that a plaintiff who unjustifiably delays pursuing a claim may forfeit it. Intended to encourage the timely resolution of disputes and to avoid prejudice to defendants, laches can have dire consequences for plaintiffs who unreasonably delay bringing their claims. READ MORE

Prior Art Take 2: Finjan and Sophos Gear up for a Second Battle on Whether Prior Art Was Publicly Available

Order Denying Finjan, Inc.’s Motion for Summary Judgment, Finjan, Inc. v. Sophos, Inc., Case No. 14-cv-1197 (Judge William Orrick)

In a battle that likely felt like déjà vu for the parties, Finjan for the second time argued its patents were valid over Sophos’s prior art because Sophos failed to produce sufficient evidence of public availability. The first time was in a 2010 Delaware action, when Finjan unsuccessfully made this same argument with respect to similar patents and similar prior art. Those patents were ultimately held invalid based on the prior art. In the present case, Sophos’s invalidity case survived yet again. But Sophos could have had a more resounding victory had it adequately disclosed all of its prior art earlier in the case. READ MORE

Separated at the District Court, Possibly Reunited on Appeal

Defendants Are Reunited Notwithstanding Plaintiff’s Attempts To Keep Them Apart:  Order Denying Plaintiff’s Motion to Stay and Granting Defendant’s Motion for Summary Judgment, Emmanuel Gonzalez v. Tagged, Inc., Case No. 16-cv-00574 (Judge Yvonne Gonzalez Rogers)

“We came into the world like brother and brother,
And now let’s go hand in hand, not one before another.”

William Shakespeare, The Comedy of Errors

In Shakespeare’s The Comedy of Errors, twin brothers are separated at birth and reunited under amusing and confused circumstances many years later. READ MORE

Bench Trial Findings Come Back to Bite Finjan

Collateral Estoppel Results In Summary Judgment On Priority Date, Finjan, Inc. v. Proofpoint, Inc., et al., Case No. 13-cv-05808 (Judge Haywood Stirling Gilliam, Jr.)

How does an accused infringer use a patentee’s prior $40 million infringement win against the patentee? Defendant Proofpoint bolstered its invalidity position by successfully moving to limit patentee Finjan to a later priority date for one of its patents, based on the findings from a related bench trial that otherwise produced a favorable ruling for Finjan. READ MORE

Written Description: A License to Hunt or a Wild Goose Chase?

Order Denying Gilead’s Motion for Summary Judgment and Granting Merck’s Motion for Summary Judgment, Gilead Sciences, Inc. v. Merck & Co., Inc. et al., Case No. 5:13-cv-04057 (Judge Beth Freeman)

Gilead sued Merck on August 30, 2013, seeking a declaratory judgment that Gilead’s drugs Sovaldi and Harvoni, do not infringe Merck’s U.S. Patent Nos. 7,105,499 (“the ‘499 Patent”) and 8,481,712 (“the ‘712 Patent”).  Sovaldi and Harvoni are the brand names of sofosbuvir, an RNA polymerase inhibitor used to treat Hepatitis C therapeutically.  The patents-in-suit claim a Hepatitis C treatment using sofosbuvir, and the question raised by Gilead’s motion for summary judgment was whether the patents-in-suit provided adequate written description to practice the claimed methods as of the 2002 filing date of the patents. READ MORE