Stone Creek, Inc. v. Omnia Italian Design, Inc.

The panel affirmed in part and reversed in part the district court’s judgment, after a bench trial, in favor of the defendant in a trademark infringement action under the Lanham Act.

Defendant Omnia Italian Design, Inc., copied and began selling the same goods branded with the mark of its (now ex) business partner, retail furniture company Stone Creek, Inc. Reversing in part, the panel held that Omnia’s use of Stone Creek’s mark was likely to cause confusion. The panel rejected Omnia’s invocation of the common law defense, known as the Tea Rose-Rectanus doctrine, that protects the use of a mark in a remote geographic area when the use is in good faith. Agreeing with the Seventh and Eighth Circuits, the panel held that Omnia’s knowledge of Stone Creek’s prior use defeated any claim of good faith. Accordingly, Omnia was liable for infringement of the Stone Creek mark.

Agreeing with the Federal Circuit, the panel confirmed that a 1999 amendment to the trademark statutes did not sweep away precedent requiring that a plaintiff prove willfulness to justify an award of the defendant’s profits. The panel remanded for a determination of whether Stone Creek had the requisite intent.

The panel affirmed in part and reversed in part the district court’s imposition of sanctions under 28 U.S.C. § 1927.

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Genband US LLC v. Metaswitch Networks Corp.

Appellant Genband US LLC sued Metaswitch Networks Corp. and Metaswitch Networks Ltd. (together, Metaswitch) for patent infringement. After a jury found that Metaswitch infringed various claims of several of Genband’s patents, and that the claims at issue had not been proven invalid, Genband sought a permanent injunction. The district court denied the request, concluding that Genband had not established irreparable harm from the infringing activities. That conclusion, however, may have relied on too stringent an interpretation of the requirement, for an injunction, that the allegedly irreparable harm is being caused by the infringement. Based on the district court’s opinion and the briefing in this court, moreover, we cannot be confident of the answer to the causation question under the standard properly governing the inquiry or whether there is any independent ground for finding no irreparable harm or otherwise denying an injunction. Accordingly, we vacate the denial of the injunction and remand for reconsideration.

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Marketquest Group, Inc. v. BIC Corp.

The panel reversed the district court’s summary judgment in favor of the defendants in a trademark infringement suit.

The panel held that the plaintiff adequately pleaded a cause of action for trademark infringement under a “reverse confusion” theory of likely confusion. The panel held that reverse confusion is not a separate claim that must be specifically pleaded, but instead is a theory of likely confusion that may be alleged by itself or in addition to forward confusion. Thus, when reverse confusion is compatible with the theory of infringement alleged in the complaint, a plaintiff need not specifically plead it.

The panel held that consideration of the intent factor in the likelihood of confusion analysis varies with the type of confusion being considered, and no one type of evidence is required to establish intent in trademark infringement cases under either a forward or reverse theory of confusion.

The panel held that genuine issues of material fact existed regarding whether defendants’ uses of plaintiff’s trademark “All-in-One” was protected by the fair use defense. To establish the defense, a defendant must show that its use is (1) other than as a trademark, (2) descriptive of the defendant’s goods, and (3) in good faith. The degree of customer confusion is also a factor in evaluating fair use.

As to plaintiff’s trademark “The Write Choice,” the panel held that the district court erred by applying the fair use analysis after determining that the plaintiff presented no evidence of likely confusion. The panel remanded the case for further proceedings.

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IPCom GmbH & Co. v. HTC Corp.

IPCom GmbH & Co. (IPCom) is the owner of U.S. Patent No. 6,879,830 (’830 patent), which describes and claims a method and system for handing over a mobile phone call from one base station to another base station. After IPCom sued HTC Corporation (HTC) for infringing the ’830 patent, HTC requested that the U.S. Patent and Trademark Office (PTO) conduct inter partes reexamination of claims 1, 5–26, and 28–37 of the ’830 patent, which the PTO granted. The reexamination went through two rounds of review by the Examiner and the Patent Trial and Appeal Board (Board). In the first round, the Examiner concluded that the claims were patentable, but HTC appealed to the Board, which issued a new ground of rejection for claims 1 and 5–30. In the second round, IPCom amended claims 1, 5–26, and 28–37,1 but the Board found that these amended claims were obvious under 35 U.S.C. § 103 in view of various combinations of McDonald,2 Anderson,3 GSM,4 and PACS.5

In its appeal, IPCom alleges that, even though it had amended the scope of claims 31–37 during its second round before the Examiner, the Board lacked jurisdiction to review the Examiner’s patentability determination of these amended claims in the Board decision now on appeal. IPCom also argues that the Board’s obviousness rejections were based on a flawed claim construction, because the Board never identified the structure in the patent specification that corresponds to the “arrangement for reactivating the link” means-plus-function claim limitation. IPCom also appeals the Board’s factual findings for several other claim limitations and the motivation to combine the prior art references in the manner claimed by the ’830 patent.

We conclude that, under the circumstances of this case, the Board properly had the authority to consider the patentability of claims 31–37 and thus reject IPCom’s procedural challenge to the Board’s rejection of these claims. But we agree with IPCom that the Board failed to conduct a proper claim construction of the “arrangement for reactivating the link” claim limitation, and we vacate and remand the obviousness rejections based on that limitation. We affirm the Board’s findings in all other respects.

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AdjustaCam, LLC v. Newegg, Inc.

AdjustaCam sued Newegg and dozens of other defendants for patent infringement. Although AdjustaCam voluntarily dismissed most defendants early in the litigation, it continued to litigate against Newegg, including through a Markman order and extended expert discovery. Just before summary judgment briefing, AdjustaCam voluntarily dismissed its infringement claims against Newegg with prejudice. Newegg then filed a motion for attorneys’ fees. The district court denied Newegg’s motion, and Newegg appealed to this court. We remanded to the district court in light of intervening Supreme Court precedent. On remand, the district court again denied Newegg’s motion for fees. Newegg then filed this appeal. Because the district court erred in denying Newegg’s motion, we reverse.

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