Court Rejects Trade Dress Protecton for Point-of-Sale Display as Functional

In a May 26, 2015 ruling, Judge P. Kevin Castel rejected trade dress protection for the counterclaim plaintiff’s point-of-sale display of its goods, and granted summary judgment to the counterclaim defendant.  The counterclaim plaintiff argued that although at least some of the elements of the claimed trade dress are functional, the Court must consider the “overall impression” created by the trade dress.  Judge Castel rejected that argument, quoting a Ninth Circuit case for the proposition that “where the whole is nothing other than the assemblage of functional parts, and where even the arrangement and combination of the parts is designed to result in superior performance, it is semantic trickery to say that there is still some sort of separate ‘overall appearance’ which is non-functional.”  The Court further noted that “where the only similarities between the parties’ trade dresses consist of unprotectable elements, a trade dress infringement claim must fail.”  Judge Castel concluded that recognizing trade dress protection for the counterclaim plaintiff’s display would confer on the counterclaim plaintiff “a marketing advantage based not on brand recognition or advertising prowess, but simply on its right to display its goods more effectively than its competitors.”

Court Denies Priority to a Patent Claim, Thus Invalidating It Based on Prior Art

In a May 8, 2015 ruling, Judge P. Kevin Castel found a patent claim to be invalid over prior art despite the patentee’s claim of earlier priority for the claim at issue. Relying on Federal Circuit precedent, the Court noted where a defendant produces prior art with a date preceding the filing date of the patent at issue, the burden shifts to the patentee to provide evidence and argument at least creating an issue of fact that the claim is supported by the written description of the patent from which it claims priority. If the patentee does so, the burden shifts back to the defendant to show by clear and convincing evidence that the earlier written description does not support the claim. In invalidating the claim at issue, Judge Castel wrote:

Under the Videotek burden-shifting framework described earlier, the defendants met their initial burden of production by identifying prior art—the Flex Binders—which, the parties agree, would invalidate Claim 20 if it cannot claim the benefit of the ’640 Patent’s earlier filing date. It was then incumbent upon Chizmar to produce “evidence and argument” that creates a genuine issue of material fact with respect to whether the disclosures of the ’640 Patent satisfy the written description requirement. This Chizmar has failed to do. Accordingly, Claim 20 of the ’140 Patent is invalid as anticipated by the Flex Binders.

Court Declines to Dismiss Patent Infringement Claim on Grounds of Laches and Equitable Estoppel

In a June 18, 2014 ruling, Judge P. Kevin Castel denied defendant's motion to dismiss this patent infringement action on the grounds of laches and equitable estoppel.  With regard to laches, the defendant argued that some discussions between the parties before the patents-in-suit triggered the period for measuring laches, but Judge Castel ruled that the period ran from the issuance of the patents.  The Court also noted that "[f]acts concerning factors, such as the unreasonableness of the delay or the lack of excuse do not appear" in the amended complaint, precluding dismissal.  Judge Keenan likewise rejected the equitable estoppel defense, finding that "facts necessary to establish the affirmative defense of equitable estoppel do not appear on the face of the" amended complaint.

Court Declines to Dismiss Trademark Infringement Declaratory Judgment Action on Subject Matter Jurisdiction Grounds

In an April 15, 2014 ruling, Judge P. Kevin Castel denied defendant Eveready Battery’s motion to dismiss Gelmart Industries’ declaratory judgment action over the trademark “Skintimate” based on lack of subject matter jurisdiction. Judge Castel imported the Rule 12(b)(6) standard under which a complaint must state a claim that is plausible on its face. Noting that even though Gelmart was not yet in the market with its product, Eveready had sent two cease and desist letters, and opposed Gelmart’s application to register “Skintimate,” the Court wrote:

Here, the Complaint and its annexed exhibits allege the existence of adverse legal interest between the parties, with sufficient immediacy to allege a case of actual controversy under the Declaratory Judgment Act. First, Eveready’s own statements in its cease-and-desist letter and its public filing with the USPTO establish ‘adverse legal interests’ under the Declaratory Judgment Act. . . . While stopping short of using the words “infringement” and “dilution,” Eveready has, in sum and substance, asserted that the proposed Gelmart mark is infringing and dilutive. . . .

Judge Castel rejected Eveready’s contention that the action was not ripe because Gelmart was not yet in the market, finding it “sufficient that Gelmart has alleged that it solicited retailers, designed branding materials, is capable of commencing manufacture of products within weeks, and was ‘poised’ to commence a product launch before Eveready asserted infringement.

Court Dismisses Copyright Declaratory Judgment Action for Failing to Plead Plausible Claim

In a February 6, 2014 ruling, Judge P. Kevin Castel dismissed plaintiff Newlight Eyewear, LLC’s action seeking a declaration that it does not infringe defendant Art-Optic, Ltd.’s copyrights and asserting claims for Art-Optic’s interference with Newlight’s contractual relations with its customers. Both parties currently sell hand-painted eyeglass frames. Newlight had previously distributed Art-Optics’ frames. After the relationship ended, Art-Optics sued Newlight for copyright infringement, but discontinued the action after it was assured that Newlight’s sales were merely disposing of left over inventory from the distributorship relationship. In its complaint, Newlight alleges that Art-Optics is nevertheless still informing Newlight’s customers that Newlight’s products infringe its copyrights and that they should not do business with Newlight.

Judge Castel dismissed the claim to declare non-infringement of Art-Optics’ copyrights, writing that the “Complaint does not describe [Newlight’s] product line, or the differences and similarities between [Newlight’s] eyeglass frames and the” Art-Optics frames. The Court added that the Complaint “is silent as to the design of the [Newlight] product line and how the design and how the design elements compare with those of” Art-Optics, and that “Newlight has offered no examples of its products and does not allege that it has registered copyrights for any of its designs.” Judge Castel concluded that the Complaint “is so lacking in detail as to which of Newlight’s products are at issue and the design elements of those products as to fail to state a claim for relief.” The Court also dismissed Newlight’s claim to declare Art-Optics’ copyright registrations invalid, finding that Newlight did not make any “allegations that plausibly contend that defendant’s copyrights for the [Art-Optics] frames are somehow invalid and/or unenforceable.” And having dismissed the federal claims, Judge Castel declined to exercise supplemental jurisdiction over Newlight’s common law claims, and dismissed the entire action.

Court Denies Attorneys' Fees to Prevailing Defendants in Patent Infringement Action

In a December 17, 2013 ruling, Judge P. Kevin Castel denied attorneys' fees to defendants Facebook, Inc. and Google, Inc. after they successfully secured summary judgment dismissing plaintiff Wireless Ink Corporation's patent infringement action. Noting that a court may award attorneys' fees under 35 U.S.C. § 285 in an exceptional case, Judge Castel wrote that as "a threshold matter, a court must first determine whether the party seeking attorney fees has proved by clear and convincing evidence that the case is exceptional."

 Google and Facebook argued that the case is exceptional, and became objectively baseless and pursued in bad faith after the Court's claim construction ruling rendered it impossible for Wireless Ink to prevail on its infringement claims. Wireless Ink contended that it opposed summary judgment based on its expert's opinion of infringement that was rendered after the Court's claim construction. In rejecting the defendants' argument, Judge Castel first noted that a "loss on summary judgment does not . . . lead to a presumption that a claim was objectively baseless," and accepted Wireless Ink's contention that its reliance on its expert witness was reasonable. The Court concluded that because "Facebook and Google have not shown, by clear and convincing evidence, that [Wireless Ink's expert's] opinions were objectively baseless, a finding that Wireless Ink's positions on infringement were objectively baseless is not warranted.

Court Grants Summary Judgment of Patent Non-Infringement and Denies Invalidity Motion as Moot

In an August 29, 2013 ruling, Judge P. Kevin Castel granted the motion of Google, Inc. and Facebook, Inc. for summary judgment of non-infringement, and denied their motions for summary judgment of invalidity.  The patents-in-suit "disclose methods and systems which allow users without web programming skills to create mobile websites with personally-authored content for display on mobile devices."  The plaintiff, Wireless Ink Corporation, sued for patent infringement over the Google and Facebook websites, alleging literal infringement and infringement under the doctrine of equivalents. 

With regard to literal infringement, the Court noted that it "requires that every limitation recited in the asserted claim appear in the accused device or method. . . . Therefore, if even one limitation is not present in the accused product, there is no literal infringement."  Judge Castel then reviewed the evidence of infringement proffered by Wireless Ink in response to the summary judgment motions, and concluded that Wireless Ink had failed to come forward with evidence from which a reasonable fact-finder could find that all the claim limitations in the asserted claims in the patents-in-suit are present in the Google and Facebook websites.  In response to several of Wireless Ink's infringement arguments, the Court noted that Wireless Ink did not dispute the facts proffered by defendants but merely argued claim interpretation and ruled that where "'as here, the parties do not dispute any relevant facts regarding the accused product but disagree over which of two possible meanings of Claim 1 is the proper one, the question of literal infringement collapses to one of claim construction ans id thus amenable to summary judgment.'"  The Court adhered to its original claim construction ruling, and granted judgment in favor of Google and Facebook.  Judge Castel also dismissed Wireless Ink's claims under the doctrine of equivalents, writing that Wireless Ink conceded that it had "offered no evidence to support a theory of infringement under the doctrine of equivalents."

Court Refuses to Vacate Default Judgment in Copyright Infringement Action

In a June 14, 2013 ruling, Judge P. Kevin Castel denied a motion to set aside a default judgment of copyright infringement against Anthony Defries, Mainman Ltd. and MMRX (collectively referred to by the Court as Defries) in favor of Capitol Records, LLC and related plaintiffs. Capitol had alleged that Defries had irrevocably sold to it “certain musical compositions and sound recordings embodying the works of David Bowie, Mick Ronson, Iggy Pop and John Mellencamp. Capitol sued Defries in 2011, alleging copyright infringement because Defries had authorized online retailers to sell the works at issue. Capitol tried to serve Defries at what he claimed was an outdated address, although Defries admitted that he actually received electronic copies of the lawsuit and he returned executed waivers of service. Judge Castel entered a default judgment on Capitol’s motion, finding that “the default was willful because Defries evaded or challenged service for months and failed to comply with multiple scheduling orders.” After an inquest, the Court entered final judgment for $9,350,000 in statutory damages in Capitol’s favor, as well as attorneys’ fees. Defries did not appeal the judgment, but later moved to set the judgment aside under Fed. R. Civ. P. 54(c), 55(c) and 60(b).