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April 2015
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June 2015

The Radiance Foundation, Inc. v. NAACP

The Radiance Foundation published an article online entitled “NAACP: National Association for the Abortion of Colored People” that criticized the NAACP’s stance on abortion. In response to a cease-and-desist letter from the NAACP, Radiance sought a declaratory judgment that it had not infringed any NAACP trademarks. The NAACP then filed counterclaims alleging trademark infringement and dilution.

The Lanham Act protects against consumer confusion about the source or sponsorship of goods or services. Persons may not misappropriate trademarks to the detriment of consumers or of the marks themselves. However, the Act’s reach is not unlimited. To find Lanham Act violations under these facts risks a different form of infringement -- that of Radiance’s expressive right to comment on social issues under the First Amendment. Courts have taken care to avoid Lanham Act interpretations that gratuitously court grave constitutional concerns, and we shall do so here. We hold that Radiance is not liable for trademark infringement or dilution of defendant’s marks by tarnishment. We vacate the injunction against Radiance entered by the district court and remand with instructions that defendant’s counterclaims likewise be dismissed.

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Princeton Vanguard, LLC v. Frito-Lay

Princeton Vanguard, LLC (“Princeton Vanguard”) appeals from the final decision of the Trademark Trial and Appeal Board (“the Board”) cancelling its registration of the mark PRETZEL CRISPS for pretzel crackers on the Supplemental Register and denying its application to register PRETZEL CRISPS on the Principal Register. Frito-Lay N. Am., Inc. v. Princeton Vanguard, LLC, 109 U.S.P.Q.2d 1949 (T.T.A.B. Feb. 28, 2014) (“Board Decision”). Because the Board applied the incorrect legal standard in evaluating whether the mark is generic, we vacate and remand for further proceedings.

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Apple, Inc. v. Samsung

Samsung Electronics Co., Ltd., Samsung Electronics America, Inc., Samsung Telecommunications America, LLC (collectively, “Samsung”) appeal from a final judgment of the U.S. District Court for the Northern District of California in favor of Apple Inc. (“Apple”).

A jury found that Samsung infringed Apple’s design and utility patents and diluted Apple’s trade dresses. For the reasons that follow, we affirm the jury’s verdict on the design patent infringements, the validity of two utility patent claims, and the damages awarded for the design and utility patent infringements appealed by Samsung. However, we reverse the jury’s findings that the asserted trade dresses are protectable. We therefore vacate the jury’s damages awards against the Samsung products that were found liable for trade dress dilution and remand for further proceedings consistent with this opinion.

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US Supreme Court Decision: COMMIL USA, LLC v. CISCO SYSTEMS, INC.

Held: A defendant’s belief regarding patent validity is not a defense to an induced infringement claim. Pp. 5–14.

(a) While this case centers on inducement liability, 35 U. S. C. §271(b), which attaches only if the defendant knew of the patent and that “the induced acts constitute patent infringement,” Global-Tech Appliances, Inc. v. SEB S. A., 563 U. S. ___, ___, the discussion here also refers to direct infringement, §271(a), a strict-liability offense in which a defendant’s mental state is irrelevant, and contributory infringement, §271(c), which, like inducement liability, requires knowledge of the patent in suit and knowledge of patent infringement, Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U. S. 476, 488 (Aro II). Pp. 5–6.

(b) In Global-Tech, this Court held that “induced infringement . . . requires knowledge that the induced acts constitute patent infringement,” 563 U. S., at ___, relying on the reasoning of Aro II, a contributory infringement case, because the mental state imposed in each instance is similar. Contrary to the claim of Commil and the Government as amicus, it was not only knowledge of the existence of respondent’s patent that led the Court to affirm the liability finding in Global-Tech, but also the fact that petitioner’s actions demonstrated that it knew it would be causing customers to infringe respondent’s patent. 563 U. S., at ___. Qualifying or limiting that holding could make a person, or entity, liable for induced or contributory infringement even though he did not know the acts were infringing. GlobalTech requires more, namely proof the defendant knew the acts were infringing. And that opinion was clear in rejecting any lesser mental state as the standard. Id., at ___. Pp. 6–9.

(c) Because induced infringement and validity are separate issues and have separate defenses under the Act, belief regarding validity cannot negate §271(b)’s scienter requirement of “actively induce[d] infringement,” i.e., the intent to “bring about the desired result” of infringement, 563 U. S., at ___. When infringement is the issue, the patent’s validity is not the question to be confronted. See Cardinal Chemical Co. v. Morton Int’l, Inc., 508 U. S. 83. Otherwise, the long held presumption that a patent is valid, §282(a), would be undermined, permitting circumvention of the high bar—the clear and convincing standard—that defendants must surmount to rebut the presumption. See Microsoft Corp. v. i4i Ltd. Partnership, 564 U. S. ___, ___–___. To be sure, if a patent is shown to be invalid, there is no patent to be infringed. But the orderly administration of the patent system requires courts to interpret and implement the statutory framework to determine the procedures and sequences that the parties must follow to prove the act of wrongful inducement and any related issues of patent validity.

There are practical reasons not to create a defense of belief in invalidity for induced infringement. Accused inducers who believe a patent is invalid have other, proper ways to obtain a ruling to that effect, including, e.g., seeking ex parte reexamination of the patent by the Patent and Trademark Office, something Cisco did here. Creating such a defense could also have negative consequences, including, e.g., rendering litigation more burdensome for all involved. Pp. 9–13.

(d) District courts have the authority and responsibility to ensure that frivolous cases—brought by companies using patents as a sword to go after defendants for money—are dissuaded, though no issue of frivolity has been raised here. Safeguards—including, e.g., sanctioning attorneys for bringing such suits, see Fed. Rule Civ. Proc. 11— combined with the avenues that accused inducers have to obtain rulings on the validity of patents, militate in favor of maintaining the separation between infringement and validity expressed in the Patent Act. Pp. 13–14. 720 F. 3d 1361, vacated and remanded.

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Burford v. Accounting Practice Sales, Inc

On the likelihood‐of‐confusion issue, the district court could similarly find at least a good‐faith basis for APS to ar‐ gue that consumers would be confused. APS would have provided evidence about how the two businesses’ markets overlap, the similarity of the two names and business mod‐ els, and Burford’s attempts to pass off his services as those of APS. See Forum Corp. of N.A. v. Forum, Ltd., 903 F.2d 434, 439 (7th Cir. 1990).

Without deciding the ultimate merits of APS’s Lanham Act claim, we find no abuse of discretion by the district court in finding that it was not objectively unreasonable for APS to have brought the claim in the first place. That is, a rational litigant might bring this claim at least in substantial part to protect its trademark. Thus, we cannot presume that the on‐ ly reason APS pursued this claim was to impose costs on Burford. Nor is there direct evidence that APS brought suit solely to obtain an economic benefit for itself unrelated to winning the suit. Cf. Nightingale, 626 F.3d at 965–66 (finding that plaintiff had made Lanham Act claim solely to coerce a price reduction out of defendant). Accordingly, we REVERSE the grant of summary judgment to defendants on the contract claim and REMAND for further proceedings consistent with this opinion.

We AFFIRM the district court’s denial of Burford’s request for attorney fees on the Lanham Act counterclaim.

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U.S. Polo Ass'n v. PRL USA Holdings

This appeal is the latest chapter in a now over-30-year dispute involving trademarks relating to the sport of polo used on consumer goods. United States Polo Association, Inc. and USPA Properties, Inc. (together, “USPA”) and USPA’s licensee, JRA Trademark Co., appeal from Judge Sweet’s order of contempt finding USPA in violation of a permanent injunction. The court held that appellants’ logo on eyewear products was confusingly similar to the logo used by appellees PRL USA Holdings, Inc. and L’Oreal USA, Inc. (together, “PRL”) on PRL’s eyewear products. USPA argues that the underlying injunction did not enjoin all uses of the mark. We agree and vacate the contempt order and remand for further proceedings.

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Classen Immunotherapies, Inc. v. Elan Pharma., Inc.

Classen Immunotherapies, Inc. (“Classen”) appeals from the decision of the United States District Court for the District of Maryland granting summary judgment that Elan Pharmaceuticals, Inc. (“Elan”) did not infringe U.S. Patent 6,584,472 (“the ’472 patent”) based on the safe harbor provision of 35 U.S.C. § 271(e)(1). See Classen Immunotherapies, Inc. v. King Pharm., Inc., 466 F. Supp. 2d 621 (D. Md. 2006) (granting summary judgment); Classen Immunotherapies, Inc. v. King Pharm., Inc., 981 F. Supp. 2d 415 (D. Md. 2013) (denying reconsideration). We conclude that the district court correctly decided that § 271(e)(1) exempts Elan’s activities reasonably relating to developing clinical data on its approved drug Skelaxin® (“Skelaxin”) and submitting that information to the Food and Drug Administration (“FDA”) in a citizen petition and a supplemental new drug application (“sNDA”).

Classen also asserts that certain activities that occurred after the FDA submissions infringed the ’472 patent and that those activities are not exempt under the safe harbor of § 271(e)(1). Because the district court did not determine whether those activities constituted infringement or whether they were exempt from liability under the safe harbor, we vacate the judgment of noninfringement and remand.

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Akamai Techs., Inc. v. Limelight Networks, Inc.

This appeal returns to us following remand from the United States Supreme Court. See Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (2014). Because our prior decisions in BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007), and Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), directly apply to the facts of this case and because the statutory framework of 35 U.S.C. § 271 does not admit to the sweeping notions of common-law tort liability argued in this case, we again conclude that because Limelight Networks, Inc. (“Limelight”) did not perform all of the steps of the asserted method claims of U.S. Patent No. 6,108,703 (the “’703 patent”) and because the record contains no basis on which to impose liability on Limelight for the actions of its customers who carried out the other steps, Limelight has not directly infringed the ’703 patent under § 271(a). Accordingly, we affirm the district court’s finding of noninfringement and do not reach Limelight’s cross-appeal regarding damages. We also confirm our previously reinstated affirmance of the district court’s judgment of noninfringement of U.S. Patents No. 6,553,413 (the “’413 patent”) and No. 7,103,645 (the “’645 patent”). See Akamai, 629 F.3d 1311 (Fed. Cir. 2010), which was vacated, 419 F. App’x 989 (Fed. Cir. 2011) (en banc), and then partially reinstated. Order No. 2009-1372 (Fed. Cir. Sept. 27, 2012) (en banc).

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Arcelormittal France v. AK Steel

ArcelorMittal appeals from the decisions of the United States District Court for the District of Delaware granting summary judgment that U.S. Patent No. RE44,153E (the RE153 patent) is invalid because certain claims were broadened after two years of issuance in violation of 35 U.S.C. § 251.1 Because the district court was bound by our construction of the original claims and the reissue claims broadened that construction, we affirm the district court’s finding that claims 1 through 23 of the RE153 patent are invalid under § 251. However, because newly added claims 24 and 25 were not broadened during reissue, we reverse-in-part and remand for further proceedings.

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LELO Inc. v. Int'l Trade Com

Appellants appeal the finding of the U.S. International Trade Commission that the domestic industry requirements of § 337 were satisfied upon a showing of a “significant investment in plant or equipment” and a “significant employment of labor or capital.”1 See 19 U.S.C. § 1337(a)(3). Because the ITC’s domestic industry analysis and determination was based on qualitative factors, we reverse.

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