On May 3, 2018, Nike filed a lawsuit against Puma in the U.S. District Court for the District of Massachusetts accusing Puma of infringing seven of its utility patents related to footwear. In an earlier post on this blog, we described some of the Nike shoe patents asserted. Puma challenged Nike’s complaint and moved to dismiss Nike’s claims of alleged infringement as to two of the patents, specifically as to U.S. Patent No. 8,266,749 and No. 9,078,488, arguing that these two patents, which are directed to Nike’s “Flyknit®” technology, do not cover patentable subject matter.
Patent eligibility challenges under 35 U.S.C. §101 have been effective tools for defendants to obtain early dismissal of a case without extensive fact finding since the Supreme Court ruling in Alice. Whether a claim recites patent eligible subject matter is a question of law.[1] Thus, defendants can challenge patent eligibility at the outset of the case, either through a motion to dismiss under 12(b)(6) or on a motion for summary judgment, with the goal of concluding the litigation without incurring the expense of discovery and trial.
Before Dyk, Reyna, and Hughes. Appeal from the United States District Court for the Eastern District of Tennessee.
Summary: In the context of a suit for a declaration of non-infringement and invalidity of a patent, the “minimum contacts” prong of personal jurisdiction is satisfied only if the patentee directed some patent enforcement activity to the forum state.
Before Newman, Mayer, and Stoll. Appeal from the Trademark Trial and Appeal Board.
Summary: Words that are primarily a surname can be registered as trademarks if they have acquired secondary meaning, even if the public also associates the surname with a famous individual.
In 2017, New Jersey based biotech startup Modern Meadow launched Zoa™, which is inspired by leather and is the company’s first brand of biofabricated materials. Zoa™, a name derived from the Greek term for life, zoi, will feature products created with Modern Meadow’s proprietary technology. According to the Zoa website, Modern Meadow’s first generation of materials have “the ability to be any density, hold to any mold, create any shape, take on any texture, combine with any other material and be any size.”
On October 30, 2018, the Federal Circuit weighed in on Converse’s Chuck Taylor trade dress infringement lawsuit. As reported in If the IP Fits, Wear It: IP Protection For Footwear – a U.S. Perspective, Converse filed over 30 lawsuits in the U.S. District Court for the Eastern District of New York in October of 2014, alleging trademark infringement of its famous Chuck Taylor designs by Fila, Tory Burch, Ralph Lauren, and Aldo, among others. Some of the district court cases settled in a few months, while others lasted over two years.
On October 19, 2018 plaintiffs CAR-FRESHNER Corporation (“CFC”) and Julius Sämann Ltd (“JSL”) filed suit against Balenciaga America, Inc. for alleged trademark infringement, false designation of origin, trademark dilution, and unfair competition, under the Lanham Act and corresponding New York state law. Plaintiffs claim exclusive trademark rights in the LITTLE TREES air fresheners design in connection with a variety of goods, including key rings.
Before Reyna, Wallach, and Taranto. Appeal from the Patent Trial and Appeal Board
Summary: A party must file a cross-appeal when their argument requires modification of a decision. Under the APA, the final claim construction need not be identical to the proposed claim construction, so long as it is similar enough that the parties had reasonable notice and an opportunity to be heard.
Before Newman, Hughes, and Stoll. Appeal from the United States District Court for the Northern District of California.
Summary: Reasonable royalty patent damages cannot include a royalty for sales of non-accused products.
Before Dyk, Wallach, and Taranto. Appeal from the United States District Court for the Western District of Washington
Summary: Claims directed to improving computer security by using BIOS memory to store a license can be a non-abstract computer-functionality improvement if done by a specific technique that departs from earlier approaches to solve a specific computer problem.
