Implied Contract "Idea Theft" Cases in the Ninth Circuit

In the Ninth Circuit's 2004 ruling in Grosso v. Miramax Film Corp., 383 F.3d 965 (2004), the court held that a complaint alleging the theft of the idea for the movie "Rounders" did not state a copyright claim, but did state a California state law claim for breach of implied contract. According to an article by Amanda Bronstad in today's San Francisco Recorder (click here (subscription required)), the Grosso decision has spurred renewed interest by plaintiffs in "idea theft" cases.

In the Grosso decision, the Ninth Circuit held that the implied contract claim was not preempted by copyright law because it included the "extra element" of a bilateral expectation that the receiving party would compensate the other party for the reasonable value of the idea.

As discussed in the Bronstad article, idea theft cases can be expensive and difficult to defend because they involve conflicting factual accounts of what was said and expected. According to the article, studios now seek to avoid these problems by requiring people who pitch ideas to sign releases before the pitch so that there is a clear understanding of whether compensation for the idea is required.

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Patent Judgment Entered After Settlement Cannot Be Reopened

Case: Louisville Bedding Co. v. Pillowtex Corp., No. 05-1595 (Fed Cir. 7/25/06)

The One Sentence Summary: A Rule 60(b)(6) motion to reopen a judgment entered upon settlement of patent litigation was properly denied - the business failure of the former defendant was a contingency that should have been considered in structuring the original settlement and judgment.


What They Were Fighting About: Plaintiff Louisville had a patent for fitted mattress covers that it asserted in earlier litigation against Pillowtex. After claim construction decisions adverse to Louisville, Louisville settled with Pillowtex. The settlement included entry of a judgment by the court that a mattress pad sold by Pillowtex, the 4059 mattress pad, did not infringe certain claims of the Louisville patent.

Pillowtex later went out of business, and the company that provided the mattress pads to Pillowtex, Xymid, began selling the 4059 mattress pad to others. Louisville then sought to reopen the earlier litigation and amend the judgment so that it could pursue Xymid. The district court refused Louisville's motion.

Federal Circuit Holdings:

• The district court acted within its discretion in denying the Rule 60(b)(6) motion to reopen a case and partially vacate the judgment. Typically, a district court may grant relief under Rule 60(b)(6) only for "exceptional or extraordinary circumstances." Louisville could have anticipated that Pillowtex could go out of business at some point, and could have structured its settlement to cover that contingency. Reopening the judgment would undermine the important goal of finality of litigation.
  
  

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Use of Trademarked Perforated Border on Postage Stamp Cards Was Descriptive and a Fair Use

Case: International Stamp Art v. US Postal Service (11th Cir. 7/18/06 - No. 05-13492)

The One Sentence Summary: The panel affirmed summary judgment of trademark fair use in favor of the defendant US Postal Service when its display of trademarked perforated borders on stamp art was not intended to misappropriate plaintiff's goodwill.


What They Were Fighting About: Plaintiff had a registered, incontestable trademark for the display of perforated borders in connection with greeting cards that resembled postal stamps. The US Postal Service began to sell cards with reproductions of stamps, and in some cases showed the perforations on the stamps. The district court granted summary judgment for the Postal Service, finding fair use of the trademark.

Eleventh Circuit Holdings:

• Trademark fair use requires a defendant to prove that its use is "(1) other than as a mark, (2) in a descriptive sense, and (3) in good faith." Fair use prevents a trademark registrant from appropriating a descriptive term for its exclusive use, and preventing others from using it. Plaintiff did not challenge the district court's findings that the USPS used the perforated border other than as a mark, and that it used the border descriptively.
• The panel agreed with other circuit courts that a determination of trademark fair use required an inquiry into the subjective purpose in using the trademark, and whether defendant intended to capitalize on plaintiff's good will.
• The evidence supported a finding that the USPS did not intend to mislead or confuse customers. The USPS included its trademark eagle on its products, ensuring that customers understood the source. The fact that USPS could have chosen not to market its stamps as art was not an alternative that demonstrated bad faith. USPS was not required to consult with counsel before selling its cards, and mere knowledge of plaintiff's mark did not demonstrate the absence of good faith.
  
  

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Amazon.com's Display of Cover Photograph from Book Was Not Commercial Use of Plaintiff's Image for Right of Publicity Claim

Case: Almeida v. Amazon.com, Inc. (11th Cir. 07/18/06 - No. 04-15341)

The One Sentence Summary: The panel affirmed a summary judgment ruling dismissing right of publicity and civil theft claims against Amazon.com for the display of plaintiff's photograph from the cover of a book.


What They Were Fighting About: Plaintiff's photograph was published on the cover of a book called "Anjos Proibidos" or "Forbidden Angels." Amazon was showing the picture on its product detail page in connection with the sale of the book. After plaintiff complained that the use of her photograph was unauthorized, Amazon removed the listing from its web site. Plaintiff sued for right of publicity, civil theft and invasion of privacy. The district court granted summary judgment against plaintiff, dismissing the claim and awarding attorneys' fees to Amazon on the civil theft claim.

Eleventh Circuit Holdings:

• It was unnecessary to address whether the immunity granted to interactive service providers under section 230 of the Communications Decency Act ("CDA") applied to bar the right of publicity claims in this action because there could be no successful right of publicity claim under the facts of this case.
• Plaintiff's statutory right of publicity claim under Florida law failed because Amazon's incidental display of photographs from the cover or inside of a book was not for a "commercial purpose" as required by the statute. Amazon's display of the photographs was akin to allowing a bookstore patron to browse through the book, and did not create a right of publicity claim.
• The civil theft claim was properly dismissed because there was no evidence of Amazon's intent to misappropriate plaintiff's image.
  

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Federal Circuit reverses grant of preliminary injunction where "substantial question" as to obviousness of invention is raised

Case: Abbott Laboratories v. Andrx and Teva Pharmaceuticals USA, Inc., No. 05-1433 (Fed. Cir. 6/22/06)

The One Sentence Summary: Over a dissent, the Federal Circuit reversed the granting of a preliminary injunction to Abbott, after Teva raised "substantial questions" regarding the obviousness of Abbott's patented invention of extended release clarithromycin.


What They Were Fighting About: Abbott developed and patented an extended release formulation of clarithromycin, a broad spectrum antibiotic. When Teva filed an Abbreviated New Drug Application for its own extended release formulation of clarithromycin, Abbott sought a preliminary injunction against Teva, claiming that Teva infringed claims 2, 4, and 6 of U.S. Patent No. 6,010,718 (“’718 patent”) and claim 2 of U.S. Patent No. 6,551,616 (“’616 patent”). Rejecting Teva’s argument that Abbott’s asserted patent claims were invalid for obviousness, the District Court granted the preliminary injunction. Teva appealed.

Federal Circuit Holdings:

• The Federal Circuit reversed, finding that Abbott was not likely to succeed on the merits, because Teva had raised substantial questions as to the obviousness of Abbott’s asserted claims.
• With regard to claims 2 and 4 of the ‘718 patent, which claimed (1) the use of an erythromycin derivative, (2) with an HPMC polymer, (3) that met certain pharmacokinetic parameters, the Court found that the prior art included the use of erythromycin with an alginate polymer that met the pharmacokinetic parameters specified. Taken together with prior art using an HPMC polymer to create an extended release formulation of azithromycin (another type of antibiotic), the Court found that all elements of the asserted claims in ‘718 existed in the prior art.
• Turning to the motivation to combine the elements contained in the ‘718 patent, the Court relied on one of Abbott’s earlier patent applications to demonstrate that the motivation existed prior to the ‘718 patent. Abbott argued that prior art combining azithromycin with an HPMC polymer was insufficient to reasonably motivate a person of skill in the art to combine clarithromycin with an HPMC polymer, because the two antibiotics were too dissimilar. However, in a previous patent claim, Abbott had claimed the use of azithromycin or clarithromycin with an alginate polymer to form an extended release antibiotic. Because the application explicitly disclosed only the clarithromycin formulation, but also claimed the azithromycin formulation, Abbott had represented that azithromycin and clarithromycin were interchangeable without undue experimentation. Thus, Abbott could not later claim that azithromycin and clarithromycin were so different as to prevent substitution of one with the other. In addition, because the difference between azithromycin and clarithromycin was that clarithromycin had a preferable half-life and metabolism, the difference actually made it more likely that clarithromycin could successfully be used in an extended release formulation, not less likely.
• With regard to claim 6 of the ‘718 patent and claim 2 of the ‘616 patent, claiming the reduction of gastrointestinal and “taste perversion” side effects through the use of an extended release formulation, the Court found that it was well known in the medical literature that reducing the blood concentration of a drug through use of an extended release formulation would reduce these types of side effects.
• Having found that Abbott was unlikely to succeed on the merits, given the substantial questions regarding the obviousness of its claims, the Court found that the parties had tied with regard to whether there would be irreparable harm. Having failed to demonstrate a likelihood of success on the merits, Abbott was no longer entitled to a presumption of irreparable harm. Moreover, Abbott had failed to demonstrate that damages would not compensate it. However, Teva had likewise failed to demonstrate that damages would suffice to compensate Abbott. Thus, the analysis favored neither party.
• The Court affirmed the District Court’s uncontested holding that the balance of hardships favored Abbott.
• With regard to the public interest factor, the Court found that, given that Abbott had failed to demonstrate a likelihood of success on the merits, the public interest was best served by denying the preliminary injunction.
• The dissent emphasized the wisdom of deferring to trial courts regarding preliminary injunctions meant to preserve the status quo between parties, pending litigation. Denying an injunction where a “substantial question” had been raised regarding validity of the asserted patent claims did not accord the proper level of deference to a trial court that had determined that a litigant was not likely to prove invalidity of a (presumptively valid) patent by clear and convincing evidence. Moreover, the majority failed to accord proper weight to its own determination that the balance of hardships favored Abbott. Overall, the dissent accused the majority of ignoring the District Court’s carefully reasoned opinion, engaging instead in an incorrect “de novo” review.
  
  

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Disputed Questions of Fact Concerning On-Sale Bar Cause Summary Judgment Reversal For Christmas Tree Ornament Manufacturer

Case: Gemmy Industries Corporation v. Chrisha Creations Limited and Quay Richerson, Case No. 05-1110 (Fed. Cir. 6/22/06)

The One Sentence Summary: The District Court improperly granted summary judgment of patent invalidity pursuant to the on-sale bar of 11 U.S.C. Section 102(b) where disputed fact questions existed concerning whether the prototypes shown at a trade fair more than one year before the patent application was filed were ready for patenting.



What They Were Fighting About: Gemmy and Chrisha are competitors in the business of holiday decorations. On January 9, 2002, Gemmy filed an application for a patent on an inflatable fabric Christmas-tree ornament. Gemmy's patent subsequently issued, and its broadest claim called for a fan attached to the ornament to discharge air into the hollow body of the ornament.

Gemmy filed suit in the United States District Court for the District of Kansas against Chrisha for various commercial torts, and later amended the complaint to add a count for patent infringement. In connection with its amendment, Gemmy filed an affidavit from its president in which he averred that "Gemmy has been selling its Airblow inflatable product line since at least October 2000. . ."

Chrisha, in turn, sued Gemmy in the United States District Court for the Southern District of New York for various commercial torts, and a declaration of non-infringement. The Kansas court transferred the Kansas case to the Southern District of New York where the two actions were consolidated, and in December 2003 Chrisha moved for summary judgment of invalidity based on the on-sale bar. In connection with its opposition to the motion for summary judgment, Gemmy filed a new declaration of its president in which he modified his prior affidavit statement to say that the Hong Kong prototypes on sale in October 2000 underwent several structural changes before a commercial product was available for sale, and were inflated using an external hair dryer rather than the attached box-fan used in the commercialized version of the ornament.

The District Court ruled on summary judgment that the patent was invalid for violation of the on-sale bar, finding that Gemmy "developed, displayed to customers, marketed and quoted to customers for sale in October 2000."

Chrisha then moved to amend its complaint against Gemmy to add counts for false marking and advertising based on the sale of products marked with Gemmy's patent number following the district court's invalidity ruling, and sought a preliminary injunction on its false marking and false advertising claims and demanding a recall of all marked products. The district court entered the preliminary injunction. On appeal, the Federal Circuit reversed.

Federal Circuit Holdings:

• Although a party cannot simply contradict an earlier sworn statement in order to create a triable issue of fact in an attempt to avoid summary judgment, where there is credible evidence supporting the contradiction, a district court cannot disregard the later testimony because of an earlier account that was ambiguous, confusing, or simply incomplete.
• For the on-sale bar to arise, there must be both a commercial offer of sale and the product must be ready for patenting. The patented invention must be fully disclosed in the product that was on sale, and the product offered for sale must be the product that is claimed in the patent.
  
• The district court's finding of invalidity necessarily held on summary judgment that the prototype was ready for patenting, and yet the district court also found that the October 2000 display did not have a base containing a fan unit, as required by all the claims of the patent. These determinations are irreconcilable. The undisputed evidence that the product displayed was not the patented invention removes the October 2000 events from meeting the requirements of the on-sale bar.
• The district court should not have granted Chrisha summary judgment on its invalidity declaratory judgment motion, and in light of that holding, vacated the injunction against marking.
  

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Sublicenses for Trademark and Right of Publicity Require Licensor's Express Permission

Case: Miller v. Glenn Miller Productions, Inc., No. 04-55874, 04-55994 (9th Cir. 7/19/06)

The One Sentence Summary: Although defendant improperly entered into unauthorized trademark and right of publicity sublicenses using the "Glenn Miller" name without permission of the licensor, licensor's claim was dismissed for laches in light of licensor's constructive knowledge of defendant's actions, unreasonable delay in bringing the lawsuit, and prejudice to defendant.


What They Were Fighting About: In 1956, defendant Glenn Miller Productions, Inc. ("GMP") received a license from Glenn Miller's widow, Helen Miller, for the use of Glenn Miller's name, likeness and library of music. Steven and Jonnie Miller, Helen Miller's children, sued GMP on breach of contract, trademark infringement and right of publicity claims arising from GMP's sublicensing of GMP's GLENN MILLER ORCHESTRA mark to other orchestras. The district court found that GMP could not sublicense without permission of the licensor, but that laches barred the action.

Ninth Circuit Holdings:

• The Ninth Circuit panel affirmed and incorporated the district court's summary judgment decisions that laches barred plaintiff's claims of unauthorized trademark and right of publicity sublicensing.
• The 1956 agreement was intepreted by the court on summary judgment to be a trademark and right of publicity license even though those terms were not used.
• The fact that "Glenn Miller" was not a registered trademark at the time of the 1956 agreement did not mean that the agreement was not a trademark license. Trademark rights had arisen through use of the "Glenn Miller" name, and there was no need for a registration in order to license those rights. Moreover, the lack of an express quality control provision in the agreement did not mean it was not a trademark license - the right of the licensor to control the quality of the licensee's use arises from trademark law and need not be explicitly set out in a license.
• GMP, the trademark licensee, could not sublicense without express permission of the licensor. This rule applies in the patent and copyright areas, and the Ninth Circuit panel affirmed the district court's application of the rule in the trademark area. Because a licensor needs to control the quality of use of its mark, it needs the ability to approve sublicenses.
• The express permission of the licensor was also required for the licensee to grant sublicenses to the right of publicity. Here, the trademark and right of publicity licenses worked together, and it would not make sense to allow the sub-license of one without the other.
• Plaintiffs' claims were barred by laches because plaintiffs had constructive knowledge and should have known that defendant GMP was sublicensing other Glenn Miller Orchestras, yet unreasonably delayed in bringing this action. GMP was prejudiced by plaintiffs' delay because GMP entered into many contracts to expand its business during the period of delay.
  
  

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Six and a Half Months from Conception to Commercialization Did Not Allow Instruction on Suppression or Concealment

Case: Flex-Rest, LLC v. Steelcase, Inc., No. 05-1354, 05-1367 (Fed. Cir. 7/13/06)

The One Sentence Summary: Although withholding photographs of another device was not inequitable conduct, patent infringement claims failed after a jury found anticipation in light of defendant's device that was not suppressed or concealed.


What They Were Fighting About: In this patent infringement case, the '489 and '231 patents concerned ergonomic keyboard rests. A jury found that the '489 patent was invalid as anticipated or obvious in light of an earlier device made by defendant in the United States and not suppressed or concealed (35 U.S.C. 102(g)). The district court granted summary judgment of non-infringement on the '231 patent, and found no inequitable conduct on the '489 patent due to withholding photographs of another device.

Federal Circuit Holdings:

• The district court correctly refused to give a jury instruction on intentional suppression and concealment because there was no evidence of intentional suppression. Defendant disclosed its device six and one half months after inventing it, and in the intervening time, it prepared a patent application and prepared to present it at a trade show. Thus, the device was properly considered as prior art under 35 U.S.C. § 102(g), and allowed the jury's finding of anticipation or obviousness.
• The district court did not err in deciding that an expert in ergonomics was not qualified as one of ordinary skill in the art of keyboard system design.
• As to the '231 patent, the district court properly construed the claim as a requiring a "sidewall" extending up and forming part of the keyboard surface support. A summary judgment of non-infringement based on this construction was proper.
• The panel affirmed the district court's finding of no inequitable conduct. The district court found no intent to deceive by withholding undated photographs of a competitor's device when the applicant believed that the photographs were unreliable and cumulative of a patent that the applicant disclosed in an IDS.
  
  

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Implied License Defense Rejected Where Express Disclaimer Limited Use

Case: LG Elecs., Inc. v. Bizcom Elecs., Inc. , No. 05-1261 (Fed Cir. July 07, 2006)

The One Sentence Summary: Summary judgment for defendants affirmed in part, reversed in part, and vacated in part in a patent infringement case alleging that defendants' combination of components with other computer components infringed LGE's patents consisting of those combinations.

What They Were Fighting About: Plaintiff patent owner LGE had an agreement with Intel that Intel would not combine Plaintiff's computer components with non-Intel products, and that it would notify its customers that they were not authorized to combine the components with non-Intel products. LGE did not claim patent ownership over the components but over the combination of the components with non-Intel products. LGE sued defendants for infringement of multiple patents after they combined the components with non-Intel products.

Federal Circuit Holdings:

• Defendants failed to show that there was an implied license to use the components in combination. "In a suit for patent infringement, the burden of proving the establishment of an implied license falls upon the defendant. To prevail, defendants were required to establish that the products have no noninfringing uses and that the circumstances of the sale . . . plainly indicate that the grant of a license should be inferred." Id. at 4-5 (citations omitted). In light of Intel's express disclaimer to the defendants that they were not authorized to use the components in combination, the court held no license could be implied.
• The court reversed the trial court's holdings that the claims were exhausted because "[the] exhaustion doctrine . . . does not apply to an expressly conditional sale or license. In such a transaction, it is more reasonable to infer that the parties negotiated a price that reflects only the value of the use rights conferred by the patentee." Id. at 5-6.
• The court remanded LGE's infringement claims as to a defendant who may have been a licensee of Microsoft, as LGE had contractually agreed not to sue Microsoft, its suppliers, their subsidiaries, or their licensees.
• In determining the meaning of "requesting agent" in LGE's '645 patent, the court explained, "the proper claim construction is the ordinary and customary meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention . . . . When prior art that sheds light on the meaning of a term is cited by the patentee, it can have particular value as a guide to the proper construction of the term, because it may indicate not only the meaning of the term to persons skilled in the art, but also that the patentee intended to adopt that meaning." Id. at 16. The court found that the trial court failed to give proper weight to the incorporated industry standard, and adopted LGE's proffered meaning. Id. at 17.
• The court further found there was a question of fact as to whether defendants infringed LGE's '379 patent under the doctrine of equivalents. The court explained that the doctrine of equivalents, "by its very nature, extends beyond the patent's literal claim scope, because otherwise a finding of no literal infringement would be a foreordained conclusion of no infringement at all. At the same time, however, if our case law on the doctrine of equivalents makes anything clear, it is that all claim limitations are not entitled to an equal scope of equivalents." Id. at 27-28 (quotations and citations omitted).
  
  

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Sixth Circuit Remands Question of Whether Part of Knockoff Bearing GM Mark Visible and If Such Visibility Enough to Create Likelihood of Confusion

Case: General Motors Corp. v. Keystone Auto. Indus., Inc., Case No. 02-74587 (6th Cir. 6/30/2006)

The One Sentence Summary: While the Court's application of the eight-factor test for determining likelihood of confusion favored a finding that the aftermarket replacement grilles manufactured by Defendant Tong Yang Industry Company, Limited ("Tong Yang") bearing trademarks owned by Plaintiff General Motors Corporation ("GM") created a likelihood of confusion among the general public about the origin of the grilles and potential harm to GM's reputation, the existence of a genuine dispute of material fact regarding the visibility of the allegedly infringing portion of Tong Yang's counterfeit grilles rendered summary judgment in favor of defendants inappropriate.

What They Were Fighting About: GM owns registered trademarks in the Chevrolet "bow tie" design and "GMC" design. GM manufactures and sells aftermarket replacement parts for its vehicles bearing its marks. Tong Yang also produces and sells aftermarket replacement parts, including replacement grilles for GM cars. GM sued defendants Tong Yang and Keystone Automotive Industries, Inc. ("Keystone"), a distributor of Tong Yang's automobile grilles, for trademark infringement and unfair competition for Tong Yang's manufacturing and Keystone's distribution of replacement grilles with "placeholders" bearing GM's "bow tie" and "GMC" designs. The sole issue on appeal was whether the district court erred in granting summary judgment to defendants on the issue of likelihood of confusion.

Sixth Circuit Holdings:

• Upon de novo review, the 6th Circuit agreed with the district court that there was no likelihood of confusion at the "point of sale", but disagreed with the district court and reversed on the issue of likelihood of "downstream" consumer confusion because there was a genuine dispute of material fact regarding the visibility of the allegedly infringing part of the grilles (the "placeholder" of the grilles in the shape of GM's marks wherein an emblem, a separate part always purchased from GM, is secured). See Appendix at pg. 9 of opinion for pictures of the grilles manufactured by GM and Tong Yang.
• The issue of likelihood of confusion was at the heart of GM's trademark infringement and unfair competition claims. The panel explained that likelihood of confusion at the "point of sale" involves a purchaser's confusion as to a product's origin or sponsorship occurring at the time of purchase. An eight-factor test is applied for determining likelihood of confusion: (1) strength of the plaintiff's mark; (2) relatedness of the goods; (3) similarity of the marks; (4) evidence of actual confusion; (5) marketing channels used; (6) likely degree of purchaser care; (7) defendant's intent in selecting the mark; and (8) likelihood of expansion of the product lines. The Court noted that there was no need to exhaustively apply the eight-factor test to evaluate the likelihood of confusion at the point of sale given that it was obvious there was no confusion among buyers of Tong Yang's grilles (collision repair shops and individuals placing internet orders that sought out the parts as a cheaper alternative to purchasing original GM parts) because they were aware that they were purchasing GM knockoff replacement parts. Moreover, point of sale purchasers were expressly informed in marketing and packaging materials that they were not purchasing original GM replacement parts.
• The Court explained that in addition to "point of sale" confusion, the 6th Circuit recognizes likelihood of "downstream" confusion as actionable. Having determined that there was no likelihood of confusion at the point of sale, the Court next applied the same eight-factor test to determine whether Tong Yang's replacement parts caused a likelihood of "downstream" confusion. Downstream confusion occurs "post sale" -- the focus of this inquiry is whether the introduction of knockoffs into the stream of commerce leads to a likelihood of confusion among the general public (e.g. subsequent purchasers) and the potential harm to the reputation of the original manufacturer.
• The Court found that the strength of GM's marks, the relatedness of the goods, the similarity of the marks, and Tong Yang's intent in selecting GM's mark for use in its aftermarket grilles favored a finding of likelihood of downstream confusion among the general public. The Court observed that the harm of injecting knockoffs into the stream of commerce further supported its finding of likelihood of confusion because knockoffs harm the public and the original manufacturer in various ways, including: (1) the general public, as well as subsequent purchasers, may be deceived if expertise is required to distinguish the original from the knockoff; (2) the purchaser of an original may be harmed if knockoffs decrease the original's value in the marketplace; (3) consumers may be harmed if the original manufacturer decreases its investment in quality in order to compete with less expensive fakes; and (4) the original manufacturer's reputation for quality may be put into question if consumers mistake an inferior counterfeit for the original. Because unsuspecting downstream purchasers could mistake a Tong Yang grille for an original GM part, such confusion could thus damage GM's reputation for manufacturing quality parts.
• The question then was whether the underlying placeholder of the grilles manufactured by Tong Yang was visible once the original emblem was affixed to the grille given that a "wholly hidden placeholder cannot cause downstream confusion as to origin or sponsorship." (As noted above, the emblem was a separate part always purchased from GM and affixed on the placeholder of both knockoff and original grilles.) The parties naturally disputed whether the placeholder was visible after the GM emblem was secured. Because there was a genuine dispute of material fact on the visibility issue, the Court held that summary judgment was inappropriate and reversed the grant of summary judgment in favor of defendants. The case was remanded to the district court for further proceedings.

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Hooters' Appeal Precluded By Its Failure To File A Postverdict Motion

Case: HI Ltd. P'ship v. Hooters of America, Inc. Case No. 05-10074 (Fed. Cir. 6/15/06)

The One Sentence Summary: A motion for judgment as a matter of law alone does not preserve an issue for appeal.


What They Were Fighting About: Jury awarded defendant Ker $1.2 million on its counterclaim for breach by Hooters of the parties' settlement agreement. District court granted defendants judgment as a matter of law on Hooters' trade dress infringement, dilution and unjust enrichment claims.

Federal Circuit Holdings:

• A party that has failed to file a postverdict motion cannot raise such a claim on appeal, even if that party filed a motion for judgment as a matter of law prior to submission of the case to the jury.
• Upon de novo review, affirms district court's grant of judgment as a matter of law to defendants on Hooters' trade dress infringement, dilution and unjust enrichment claims "for the reasons articulated by the district court."
  
  

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Broad Language of Honeywell Patent was Limited by Written Disclosure

Case: Honeywell Int'l, Inc. et al. v. ITT Ind. et al., Case No. 05-1407 (Fed. Cir. 6/22/06)

The One Sentence Summary: Affirms summary judgment of noninfringement based on claim limitations found in the written description.


What They Were Fighting About: Plaintiffs' claimed that defendants' quick connects (nut-like structures that join the various components of a fuel injection system together) infringed its patent on a fuel injection system component specially designed for use with electronic fuel injection systems.

Federal Circuit Holdings:

• The claim term "fuel injection system component" was limited to a fuel filter because, on at least four occasions, the written description refers to the fuel filter as being the invention. Thus, the patent did not cover other components of a fuel injection system. Where the written description clearly identifies what the invention is, evidence that the patentee may have said otherwise during prosecution, is entitled to little weight.
• Because the patent was limited to fuel filters, the allegedly infringing product, quick connects, could not infringe. No reasonable trier of fact could find that quick connects and fuel filters are equivalent devices because, as conceded by plaintiffs, quick connects do not perform the functions of a fuel filter.
• Because the written description demeaned the properties of carbon fibers for the invention, the patentee disavowed carbon fibers from the scope of the patent. Thus, there was no infringement because the accused product used carbon fibers. Where the specification makes clear that the invention does not include a particular feature, that feature is deemed outside the patent, even though the language of the claims might otherwise be more broad.
  
  

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