Previous month:
January 2008
Next month:
March 2008

Jada Toys, Inc. v. Mattel, Inc.

Defendant-Appellant Mattel, Inc. (“Mattel”) appeals the grant of summary judgment in favor of Jada Toys, Inc. (“Jada”) on Mattel’s federal and state trademark infringement counterclaims. Mattel also challenges the district court’s entry of summary judgment in favor of Jada as to its dilution and copyright claims.

We hold that because the district court erred in its application of the relevant infringement test, the district court’s entry of summary judgment in Jada’s favor as to those claims is reversed. We also hold that genuine issues of material fact exist as to Mattel’s copyright and dilution claims and, therefore, the district court’s entry of summary judgment as to those claims in favor of Jada is also reversed.

Download the decision.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Segal v. Geisha NYC, LLC

This case concerns the national expansion of Japonais, a popular Chicago restaurant located in the River North restaurant district. Japonais founder, Jonathan Segal, appeals from an order dismissing his complaint against Geisha NYC LLC (“Geisha NYC”),and others. Segal’s sole federal claim—a derivative claim he asserts on behalf of Geisha LLC (“Geisha Chicago”) and OSSS Hospitality LLC (“Hospitality Chicago”)—alleges that the defendants misappropriated the Japonais name and design in violation of the Lanham Act, see 15 U.S.C. § 1125(a). The district court dismissed this federal count, and then dismissed the remainder of the complaint under 28 U.S.C. § 1367(c)(3). Because Geisha NYC’s trademark use was authorized, we affirm these dismissals.

Download the decision.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Ty Inc. v. Softbelly's, Inc.

Ty Inc., the manufacturer of “Beanie Babies,” years ago brought this suit for trademark infringement under the Lanham Act against Softbelly’s, Inc., and some other defendants that need not be discussed separately. Softbelly’s manufactures a product that looks and feels very much like “Beanie Babies,” which it calls “Screenie Beanies.” They differ from Ty’s product mainly in having chamois bellies and being sold to the public through computer stores for wiping computer screens: hence the chamois.

. . .

To summarize, the grant of the injunction against Softbelly’s is affirmed, but the case is remanded for the entry of a damages judgment of $713,000 against Softbelly’s minus the attorney’s fees incurred by Softbelly’s in the sanction litigation. Whether the damages judgment should be augmented by prejudgment interest we leave to the district judge to decide in the first instance.

Download the decision.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Riviera Distribs., Inc. v. Jones

Riviera came to the wrong forum. Agreements such as the one between Riviera and Midwest are designed to reduce the price tag of decision-making. By filing another suit, Riviera forced Midwest to bear the very expenses that the parties had agreed to avoid. The party responsible for creating excessive legal costs must bear them itself in the end.

This conclusion makes it unnecessary to discuss the parties’ other disputes, such as whether by filing a second suit Riviera entitled Midwest to an award under 28 U.S.C. §1927.

The judgment is reversed, and the case is remanded for an award of reasonable attorneys’ fees to Midwest under 17 U.S.C. §505. The award should include the legal fees that Midwest has incurred to vindicate its rights on appeal.

Download the decision.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Atlanta Attachment Co. v. Leggett & Platt, Inc.

Leggett & Platt, Inc. appeals the judgment of the United States District Court for the Northern District of Georgia granting Atlanta Attachment Co. summary judgment that Leggett & Platt infringed claim 32 of U.S. Patent No. 6,834,603, and that the patent was neither invalid because of the on-sale bar of 35 U.S.C. § 102(b), obviousness, or a violation of the best mode and written description requirements, nor unenforceable due to inequitable conduct. Atlanta Attachment Co. v. Leggett & Platt, Inc., No. 1:05-CV-1071 (N.D. Ga. Feb. 23, 2007). Because embodiments of claim 32 of the ’603 patent were on sale before the critical date, we reverse and remand.

Download the decision.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Chamberlain Group, Inc. v. Lear Corp

The Chamberlain Group, Inc. (Chamberlain) owns U.S. Patent No. 6,154,544 (’544 patent), an invention that improves security in garage door openers. Chamberlain and Johnson Controls Interiors LLC (JCI), Chamberlain’s exclusive licensee with respect to development of radio frequency transmitters for sale to automotive original equipment manufacturers, sued Lear Corp. (Lear), charging Lear’s Car2U transmitter with infringement of claim 4 of the ’544 patent. After a Markman hearing, a claim construction order, Chamberlain Group, Inc. v. Lear Corp., No. 1:05-CV-03449 (N.D. Ill. Sept. 11, 2006) (Initial Markman Order), and a modified claim construction order, Chamberlain Group, Inc. v. Lear Corp., No. 1:05-CV-03449 (N.D. Ill. Feb. 20, 2007) (Modified Markman Order), the United States District Court for the Northern District of Illinois issued a preliminary injunction, Chamberlain Group, Inc. v. Lear Corp., No. 1:05-CV-03449 (N.D. Ill. Mar. 30, 2007) (Preliminary Injunction Order). The trial court, however, stayed that injunction for Lear’s contracts with General Motors Corp. Chamberlain Group, Inc. v. Lear Corp., No. 1:05-CV-03449 (N.D. Ill. Apr. 25, 2007) (Partial Stay Order). Because the district court erred in construing the claim term “binary code,” this court reverses the district court’s claim construction, vacates the preliminary injunction, and remands.

Download the decision.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Sakar Int'l, Inc. v. US

Sakar International, Inc. (“Sakar”) brought suit against the United States (“the government”) in the United States Court of International Trade to challenge an administrative decision of the Bureau of Customs and Border Protection, United States Department of Homeland Security (“Customs”), assessing Sakar a civil fine of $67,775 for the importation by Sakar of merchandise that Customs determined was counterfeit. After concluding that it had jurisdiction over Sakar’s suit pursuant to 28 U.S.C. § 1581(i)(4) as it relates to 28 U.S.C. § 1581(i)(3), the Court of International Trade ruled that Customs’ assessment of the civil fine did not constitute final agency action for purposes of the Administrative Procedure Act (“APA”), 5 U.S.C. § 704 (2000). The court therefore held that Sakar had failed to state a claim upon which relief could be granted and granted the government’s motion to dismiss Sakar’s complaint pursuant to USCIT Rule 12(b)(5). Sakar Int’l, Inc. v. United States, 466 F. Supp. 2d 1333, 1351 (Ct. Int’l Trade 2006).

Because we conclude that section 1581(i)(4) as it relates to section 1581(i)(3) did not provide the Court of International Trade with jurisdiction over Sakar’s suit, and because we conclude that none of the other statutory provisions cited by Sakar supported jurisdiction, we vacate the decision of the Court of International Trade and remand the case to the court with the instruction that it dismiss Sakar’s complaint for lack of jurisdiction.

Download the decision.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

DDB Techs., L.L.C. v. MLB Advanced Media

Appellant DDB Technologies, L.L.C. (“DDB”) appeals from a decision of the United States District Court for the Western District of Texas. The district court dismissed DDB’s patent infringement suit against MLB Advanced Media, L.P. (“MLBAM”) for lack of subject matter jurisdiction. We hold that the district court correctly held that DDB’s asserted statute of limitations and equitable defenses were not available and that no jury trial was required on the issue of standing. However, we hold that the district court erred in denying DDB’s request for jurisdictional discovery. Therefore we affirm in part and vacate in part the judgment of the district court, and we remand for limited jurisdictional discovery and for further consideration of the district court’s jurisdiction based on that discovery.

Download the decision.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Int'l Rectifier Corp. v. Ixys Corp.

This patent case comes to us on appeal for a second time. Following our vacatur-in-part and reversal-in-part of a summary judgment of infringement, the district court held a jury trial. IXYS Corporation (“IXYS”) now appeals from the resulting final judgment of infringement. International Rectifier Corporation (“IR”) conditionally cross-appeals, asserting that the district court erred in its jury instructions. Because the judgment of infringement as to each asserted claim is foreclosed either by the combination of our mandate in the prior appeal and the jury verdict or by prosecution history estoppel, we reverse. We dismiss the cross-appeal as moot because the purported error in jury instructions does not affect the final judgment of non-infringement that our decision today requires.

Download the decision.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.

Miken Composites, L.L.C. v. Wilson Sporting Goods Co.

Litigation stemming from the enforcement of U.S. Patent No. 5,415,398 (“the ’398 patent”) returns to this court for the third time, having visited us on two prior occasions in appeals from two different suits against two other accused infringers. See Wilson Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322 (Fed. Cir. 2006); DeMarini Sports, Inc. v. Worth, Inc., 239 F.3d 1314 (Fed. Cir. 2001). In this case, Wilson Sporting Goods Company (“Wilson”) appeals from the decision of the United States District Court for the District of Minnesota granting the motion of Miken Composites, L.L.C. (“Miken”) for summary judgment of non-infringement of claims 1 and 18 of the ’398 patent. Miken Composites, L.L.C. v. Wilson Sporting Goods Co., No. 02-CV-769 (D. Minn. Aug. 10, 2006) (“Summary Judgment Opinion”). Because the district court’s claim construction was not erroneous, and because the district court correctly concluded that no reasonable jury could find that Miken’s bats infringed the ’398 patent, either literally or under the doctrine of equivalents, we affirm.

Download the decision.

Need help protecting your intellectual property? Visit Gehrke & Associates, SC to learn more about how we can help enhance and defend your intellectual property.  Thank you.