Decisions in Brief

Recent Developments in IP Law

John C. Gatz

©2013. Published in Landslide, Vol. 5, No. 4, March/April 2013, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

COPYRIGHTS

Associations Lack Standing under Copyright Act

Authors Guild, Inc. v. HathiTrust, 104 U.S.P.Q.2d 1659 (S.D.N.Y. 2012). The Authors Guild and other organizations that represent copyright owners (collectively Authors Guild) sued HathiTrust, a group of university libraries that allowed Google to create digital copies of the works within the libraries and provided the libraries with searchable digital copies of the works, for copyright infringement. HathiTrust moved for judgment on the pleadings that the organizations lacked standing, while the plaintiffs moved for summary judgment that certain defenses, including fair use, were not available to HathiTrust. The district court granted HathiTrust’s motion that the organization lacked standing, and granted HathiTrust’s motion for summary judgment of fair use.

The district court began by evaluating the Authors Guild’s constitutional standing based on the factors for an association to have standing as a representative for its members. The court found that the Authors Guild could meet the constitutional standing requirements, including that the: (1) members would have standing to sue, (2) interest the organization seeks to protect in court is related to its purpose, and (3) claim asserted does not require participation of the individual members. The court then turned to standing requirements of the Copyright Act. Based on the language of 17 U.S.C. § 501(b), the court found that only a copyright owner or an exclusive licensee has standing under the Copyright Act. The court noted that while the Second Circuit had not specifically decided this issue, the language in several cases suggested that only copyright owners and exclusive license holders may bring actions under the Copyright Act. Therefore, the court ruled that Authors Guild lacked standing. The court found that foreign organizations may have standing based upon the national treatment principle of the Berne Convention, assuming that the law of the nation where the organization is located provides for a copyright action by the organization.

The district court next evaluated whether the use of the works by HathiTrust constituted fair use. The court found that the factors favored HathiTrust’s claim of fair use since the digital library was for nonprofit educational purposes and transformative in nature. The court further found that balancing the remaining fair use factors weighed in HathiTrust’s favor, and that HathiTrust was entitled to summary judgment that the digital library was entitled to a defense of fair use.

Vehicle Escort Business Asleep at the Wheel

Evergreen Safety Council v. RSA Network, 697 F.3d 1221, 104 U.S.P.Q.2d 1380 (9th Cir. 2012). RSA Network, a pilot escort business that provides vehicles to escort an oversized vehicle, was sued for declaratory judgment of noninfringement by Evergreen, which provides training on such pilot escort vehicles. In 1991, RSA worked with a Utah steering committee to develop a certification program, which included drafting a manual. In 1999, the state of Washington developed a certification program based on Utah’s, and after a conversation with RSA, Washington’s agent Evergreen sent RSA a letter enclosing a copy of the draft manual for Washington’s program, and asked for RSA’s observations, suggestions, or comments. According to RSA, the letter was never opened, and they did not become aware of its contents until 2010. RSA asserted a counterclaim for copyright infringement in response to the suit.

The district court granted summary judgment to Evergreen on the basis of laches. On appeal, the Ninth Circuit upheld the district court. The laches period began to run on the day when RSA received the draft manual and letter in 1999, as that is when they should have known of the infringement. RSA had simply slept on its rights. The 10-year delay caused both evidentiary prejudice and expectations-based prejudice. Moreover, the willfulness exception to laches did not apply because of Evergreen’s good faith belief in the possible existence of an express license, or at the very least an implied license.

PATENTS

Burden of Proof

Medtronic Inc. v. Boston Scientific Corp., 695 F.3d 1266, 104 U.S.P.Q.2d 1323 (Fed. Cir. 2012). The Federal Circuit vacated and remanded the district court’s finding of noninfringement. The issue was whether a patentee in a declaratory action suit in which, due to a license agreement, the patentee could not bring an infringement suit bears the burden of proving infringement. The Federal Circuit found the accused infringer is unquestionably the party now requesting relief from the court. It already has a license, it cannot be sued for infringement, it is paying money into escrow, and it wants to stop. In contrast, regarding the patents here, the patentee seeks nothing more than to be discharged from the suit and be permitted to continue the quiet enjoyment of its contract. Therefore, under these circumstances, the Federal Circuit found the burden to be on the accused infringer, not the patentee.

Claim Construction

In re Abbott Diabetes Care Inc., 696 F.3d 1142, 104 U.S.P.Q.2d 1337 (Fed. Cir. 2012). The Federal Circuit reversed the claim constructions reached by the Board during reexamination. Abbott’s patent is directed to methods and devices for monitoring blood glucose levels utilizing an electrochemical sensor. The patent’s specification acknowledged a number of prior art devices for monitoring blood glucose levels, but criticized those systems that used undesirable wires and cables. Despite this criticism and there being no wires or cables mentioned in the claims, the Board construed the claims as not to exclude wires or cables and, thus, upheld the rejection of these claims based on references disclosing wires and cables. The Federal Circuit vacated this claim construction. While the claims must be given their broadest reasonable construction during examination, the Federal Circuit stated their construction must be made in light of the specification as interpreted by one of ordinary skill in the art. Thus, the Federal Circuit concluded that the proper interpretation excluded cables or wires.

Claim Construction/ Interrogatory Supplementation

Woods v. DeAngelo Marine Exhaust Inc., 692 F.3d 1272, 104 U.S.P.Q.2d 1169 (Fed. Cir. 2012). The Federal Circuit affirmed the denial of DeAngelo’s: (1) motion for JMOL as to invalidity and infringement, and (2) motion to sanction Woods/Marine Exhaust Systems for failing to conduct an adequate pre-filing investigation. The Federal Circuit found that the district court did not abuse its discretion in precluding DeAngelo from relying on the drawings DeAngelo was trying to introduce as prior art since after identifying the drawings a day before discovery closed in a letter, DeAngelo failed to properly supplement an interrogatory within the discovery period on the same information. The Federal Circuit also affirmed the district court’s claim constructions on appeal, and recognized that an applicant is not presumed to have conceded the presence in the prior art of every claim limitation he had no reason to assert during prosecution.

Claim Construction/ Personal Jurisdiction

Grober v. Mako Prods. Inc., 686 F.3d 1335, 104 U.S.P.Q.2d 1186 (Fed. Cir. 2012). The Federal Circuit vacated the district court’s claim construction and the grant of summary judgment for noninfringement, and remanded for further proceedings. The Federal Circuit affirmed the district court’s personal jurisdiction determination. After incorrectly construing the claims, the district court sua sponte granted summary judgment, but failed to conduct the proper two-step infringement analysis. Specifically, the adopted claim construction did not entirely dispose of the case because several claims did not include the construed term. The district court also did not place the accused device alongside each asserted claim for a complete comparison. The Federal Circuit also found that the appellants did not show that the deponents had performed any relevant activities to establish general or personal jurisdiction, and therefore concluded that the district court properly declined to exercise personal jurisdiction.

Damages

LaserDynamics Inc. v. Quanta Computer Inc., 694 F.3d 51, 104 U.S.P.Q.2d 1573 (Fed. Cir. 2012). The Federal Circuit affirmed in part, reversed in part, and remanded the district court’s findings. The Federal Circuit reaffirmed that in any case involving multi-component products, patentees may not calculate damages based on sales of the entire product, as opposed to the smallest salable patent-practicing unit, without showing that the demand for the entire product is attributable to the patented feature. Furthermore, proof that a consumer would not want a product without the patented feature is not proof that the patented feature drives demand for the entire product. Regarding the hypothetical negotiation, the Federal Circuit held the date to be the date the alleged infringer first began importing the allegedly infringing device into the United States, not the date of the lawsuit.

Damages/Injunction

ActiveVideo Networks Inc. v. Verizon Commc’ns Inc., 694 F.3d 1312, 104 U.S.P.Q.2d 1241 (Fed. Cir. 2012). The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded the district court’s decision. The Federal Circuit upheld a number of the district court’s claim constructions. Regarding damages, the Federal Circuit upheld the district court’s decision to exclude certain evidence (a license agreement) since the agreement was negotiated after the date of the hypothetical negotiation. With respect to a similar agreement, the district court did not exclude the evidence because the accused infringer did not object. The Federal Circuit also upheld this decision. The Federal Circuit also found it an abuse of discretion by the district court to grant a permanent injunction to the patentee.

Declaratory Judgment Jurisdiction

Matthews Int’l Corp. v. Biosafe Eng’g LLC, 695 F.3d 1322, 104 U.S.P.Q.2d 1393 (Fed. Cir. 2012). The Federal Circuit affirmed the district court’s dismissal of the plaintiff’s claims for declaratory and injunctive relief because the claims lacked sufficient immediacy and reality for jurisdiction. The fundamental inquiry is whether the facts alleged show that there is a substantial controversy between the parties. Here, there was no evidence as to when, if ever, the plaintiff’s equipment would be used in a manner that could infringe the asserted method claims that required the equipment be operated at certain temperature, pressure, and pH-level settings.

Double Patenting

Eli Lilly and Co. v. Teva Parenteral Med. Inc., 689 F.3d 1368, 104 U.S.P.Q.2d 1134 (Fed. Cir. 2012). The Federal Circuit affirmed the district court’s judgment that the patent is not invalid for obviousness-type double patenting. Defendant Teva conceded infringement, but defended on the grounds that the asserted claims were invalid for obviousness-type double patenting over two of the plaintiff’s earlier-issued claims. In rejecting the defense, the Federal Circuit emphasized that the obviousness-type double patenting analysis entails determining whether the differences in subject matter between the claims render the claims patentably distinct. But those differences cannot be considered in isolation—the claims must be considered as a whole.

Exceptional Case

Highmark Inc. v. Allcare Health Mgmt. Sys. Inc., 687 F.3d 1300, 104 U.S.P.Q.2d 1046 (Fed. Cir. 2012). The Federal Circuit reviewed the finding of an exceptional case and Rule 11 sanctions granted by the district court on various grounds. The majority affirmed the exceptional case findings for infringement allegations on one claim, but reversed on infringement allegations for another claim and litigation misconduct. In one infringement claim, the patent owner knew or should have known that its infringement allegations were unreasonable, but for another claim the patent owner’s position was not objectively unreasonable.

Inducement

Mirror Worlds LLC v. Apple Inc., 692 F.3d 1351, 104 U.S.P.Q.2d 1489 (Fed. Cir. 2012). The Federal Circuit affirmed the district court’s JMOL that Apple did not induce infringement of any of the asserted patents because plaintiff Mirror Worlds did not offer any evidence of actual performance of the patented method by third parties. The patent is directed to a “document streaming” operating system that generated time-ordered search results of files on a computer and claimed a related method, which was asserted against Apple’s Mac OS X operating system. The Federal Circuit supported the district court’s determination because Mirror Worlds did not present any evidence that Apple’s customers, or anyone else, performed the patented steps.

Inequitable Conduct

1st Media LLC v. Elec. Arts Inc., 694 F.3d 1367, 104 U.S.P.Q.2d 1315 (Fed. Cir. 2012). The Federal Circuit reversed the district court’s findings of inequitable conduct. The Federal Circuit found that absent affirmative egregious misconduct, a defendant must prove by clear and convincing evidence both of the separate requirements that: (1) the patentee acted with the specific intent to deceive the USPTO, and (2) the nondisclosed reference was but-for material. Knowledge of the reference and knowledge of materiality alone are insufficient. An applicant’s knowledge of a reference’s materiality, however, cannot by itself prove, let alone clearly and convincingly prove, that any subsequent nondisclosure was based on a deliberate decision. Therefore, the district court’s findings were reversed.

Inequitable Conduct/Obviousness

Santarus Inc. v. Par Pharm. Inc., 694 F.3d 1344, 104 U.S.P.Q.2d 1641 (Fed. Cir. 2012). The Federal Circuit affirmed in part, reversed in part, and remanded the district court’s rulings as to inequitable conduct, obviousness, and invalidity. The Federal Circuit found that the intent to deceive prong of the inequitable conduct analysis was not shown by clear and convincing evidence, and affirmed the finding of no inequitable conduct. With respect to invalidity, the Federal Circuit found that the claim limitation containing no sucralfate was adequately supported by the specification expressly listing the disadvantages of using sucralfate. Thus, the Federal Circuit reversed the district court’s holding that the ’772 patent claims were invalid on written description grounds, and as a result the ’772 patent claims were entitled to claim priority to an earlier patent. With respect to obviousness, the Federal Circuit affirmed the court’s determination that selected claims were obvious, and reversed the ruling that the asserted claims of the ’772 patent and two claims of the ’882 patent would have been obvious.

Infringement

Meyer Intellectual Prop. Ltd. v. Bodum Inc., 690 F.3d 1354, 104 U.S.P.Q.2d 1105 (Fed. Cir. 2012). The Federal Circuit reversed and/or vacated each of the district court’s determinations, including summary judgment of infringement. The Federal Circuit corrected several decisions of the district court. For example, the record did not reflect any evidence of direct infringement of a method claim. The district court assumed, given the simple nature of the patented coffee press, that a user would be able to perform each of the method steps. The Federal Circuit stated it is “troubling that the district court based its direct infringement analysis on what it assumed happened, rather than on actual evidence of record.”

Infringement/Damages/Post-Trial Relief

WhitServe LLC v. Computer Packages Inc., 694 F.3d 10, 104 U.S.P.Q.2d 1024 (Fed. Cir. 2012). In a case involving a direct appeal and two cross-appeals, the Federal Circuit affirmed the defendant’s direct appeal of the jury’s finding of infringement, affirmed in part the jury’s finding of no anticipation, and vacated the jury’s damages award and remanded the case for a new trial on damages. In the first cross-appeal, the Federal Circuit remanded and instructed the district court to address the propriety of prospective relief for the patentee, such as a permanent injunction or an ongoing royalty, and vacated and remanded the district court’s denial of prejudgment interest, enhanced damages, attorney’s fees, and a post-trial accounting for the patentee. In the second cross-appeal, the Federal Circuit affirmed the denial of fees and sanctions against the defendant.

The asserted patents are directed to various technologies for automating the delivery of professional services (i.e., helping clients to pay their patent maintenance fees on time) and technology for backing up client data. The Federal Circuit found that substantial evidence supported the jury’s verdicts with respect to infringement and no anticipation, with the exception of a single claim, which was found to be anticipated. However, the Federal Circuit found that the jury’s $8.4 million damages verdict was both unsupported by the record and against the clear weight of the evidence. The Federal Circuit found that multiple errors in the patentee’s expert’s royalty rate calculation caused his reasonable royalty rate to be speculative.

Laches/Equitable Estoppel

Hor v. Chu, 699 F.3d 1331, 104 U.S.P.Q.2d 1685 (Fed. Cir. 2012). The Federal Circuit affirmed in part, reversed in part, vacated in part, and remanded for further proceedings from the district court’s grant of summary judgment finding that Hor’s and Meng’s claims were barred by laches or, alternatively, by equitable estoppel. The Federal Circuit recognized that a 35 U.S.C. § 256 cause of action does not arise until the patent issues, as opposed to when the patent application was pending when the omitted inventor knew or should have known. The Federal Circuit thus reversed the district court’s judgment in favor of Chu based on the affirmative defense of laches. In addition to determining that Hor’s and Meng’s claims were barred by laches, the district court, in the alternative, sua sponte found that Hor’s and Meng’s inventorship claims were barred by equitable estoppel. Chu did not assert equitable estoppel as an affirmative defense in his answer, nor did he present this theory to the district court in his motion for summary judgment. The Federal Circuit concluded this finding to be in error, and vacated the district court’s judgment with respect to equitable estoppel.

Nonobviousness

Kinetic Concepts Inc. v. Smith & Nephew Inc., 688 F.3d 1342, 104 U.S.P.Q.2d 1001 (Fed. Cir. 2012). The Federal Circuit reversed and remanded the district court’s grant of JMOL of invalidity for obviousness. In granting Smith & Nephew’s JMOL after trial, the district court overturned the jury’s determination that Smith & Nephew had failed to prove that the asserted claims were obvious. The Federal Circuit disagreed and found that, on the basis of the jury’s explicit factual findings underlying its ultimate conclusion of nonobviousness, Smith & Nephew failed to establish by clear and convincing evidence that the claims were obvious.

Obviousness

In re Droge, 695 F.3d 1334, 104 U.S.P.Q.2d 1377 (Fed. Cir. 2012). The Federal Circuit affirmed the Board’s decision that rejected several claims as being obvious. The Board reasoned that two references together disclose every claim limitation and, based on these references, a person of ordinary skill in the art would have a reasonable expectation of success of combining those references. The Federal Circuit noted that obviousness requires a reasonable expectation of success, but not absolute predictability.

Personal Jurisdiction

AFTG-TG LLC v. Nuvoton Tech. Corp., 689 F.3d 1358, 104 U.S.P.Q.2d 1217 (Fed. Cir. 2012). The Federal Circuit affirmed the district court’s dismissal of defendants for lack of personal jurisdiction. AFTG failed to offer any evidence indicating that Wyoming was part of any defendant’s continuous, established distribution channels. AFTG’s complaint represented nothing more than a bare formulaic accusation that the defendants maintain sufficient contacts with Wyoming.

Preliminary Injunction

Apple Inc. v. Samsung Elecs. Co., 695 F.3d 1370, 104 U.S.P.Q.2d 1401 (Fed. Cir. 2012). The Federal Circuit reversed and remanded the district court’s preliminary injunction decision enjoining Samsung from selling its Galaxy Nexus smartphone. The reversal was based on the irreparable harm factor. The panel noted that “where the accused product includes many features of which only one (or a small minority) infringe—a finding that the patentee will be at risk of irreparable harm does not alone justify injunctive relief. Rather, the patentee must also establish that the harm is sufficiently related to the infringement.” Here, the patentee did not show that the alleged infringing features drive consumer demand.

Prior Art

Voter Verified Inc. v. Premier Election Solutions Inc., 698 F.3d 1374, 104 U.S.P.Q.2d 1553 (Fed. Cir. 2012). The Federal Circuit affirmed the district court’s findings of invalidity of some claims, validity of some claims, and noninfringement of some claims. The patentee argued that a reference was not prior art because it was not indexed online. The Federal Circuit stated indexing is not “a necessary condition for a reference to be publicly accessible.” It is but one among many factors that may bear on public accessibility. This reference was available on the Internet as an article on a website known in the appropriate community. The Federal Circuit upheld the finding of noninfringement of certain claims based on the fact that the accused products did not include a key feature and that feature was performed by humans instead. A human being cannot constitute “means” within the scope of § 112, ¶ 6.

Procedure

In re Baxter Int’l Inc., 698 F.3d 1349, 104 U.S.P.Q.2d 1530 (Fed. Cir. 2012). The Federal Circuit denied a request for rehearing en banc on its prior decision. Previously, the panel affirmed the Board’s decision upholding an obviousness rejection in a reexamination proceeding. This did not improperly disregard a court decision finding that the same patent challenger had failed to prove obviousness of the claim in civil litigation.

Reexamination

Belkin Int’l Inc. v. Kappos, 696 F.3d 1379, 104 U.S.P.Q.2d 1348 (Fed. Cir. 2012). The Federal Circuit affirmed the Board’s decision on an inter partes reexamination that the Board lacked jurisdiction to consider arguments based on three references that the director had previously determined did not raise a substantial new question of patentability. Belkin filed the reexamination based on four prior art references, but the director determined the first three did not raise a substantial new question of patentability. The reexamination proceeded on that basis with the examiner addressing only the fourth reference. Subsequently, Belkin appealed to the Board, challenging the examiner’s failure to raise a substantial new question of patentability with respect to the other three references. The Board concluded, and the Federal Circuit agreed, it did not have jurisdiction to decide whether a substantial new question of patentability existed regarding the three references. Belkin could have petitioned the director to review the determination that the arguments relying on the three references did not raise a substantial new question of patentability pursuant to 37 C.F.R. § 1.927.

Validity/Willfulness

K-Tec Inc. v. Vita-Mix Corp., 696 F.3d 1364, 104 U.S.P.Q.2d 1408 (Fed. Cir. 2012). The Federal Circuit affirmed summary judgment and the district court’s findings on infringement, validity, and willfulness. One of the validity rulings involved non-analogous art arguments. The Federal Circuit affirmed the district court’s non-analogous art decision even though the USPTO held that the references were analogous art after the district court’s contrary decision. The Federal Circuit affirmed willful infringement and noted that the infringer started its design process with a direct copy of the patent owner’s patented product and made only a trivial change.

TRADE SECRETS

Attorney’s Fees for “Bad Faith” Trade Secret Litigation

SASCO v. Rosendin Elec., Inc., 207 Cal. App. 4th 837 (2012). The Fourth Appellate District Court of Appeal of California affirmed the trial court’s award of attorney’s fees to the defendants, holding that a finding of “bad faith” under the Uniform Trade Secrets Act does not require the defendants to conclusively prove a negative (i.e., that they did not steal SASCO’s trade secrets). It is sufficient to point to the absence of evidence of trade secret misappropriation in the record.

Extraordinary Trade Secrets Judgment/ Permanent Injunction

E.I. DuPont De Nemours and Co. v. Kolon Indus., Inc., 2012 U.S. Dist. LEXIS 123890 (E.D. Va. 2012). The district court granted DuPont’s application for a permanent injunction following a jury trial and findings that Kolon willfully and maliciously misappropriated and used 149 DuPont trade secrets for the manufacture of DuPont’s para-aramid fiber (Kevlar), and affirmed a jury verdict against Kolon in the amount of $919.9 million in compensatory damages and $350,000 in punitive damages. The permanent injunction enjoins Kolon from the production of any para-aramid fiber for 20 years, as well as a permanent injunction against the use and/or disclosure of the purloined trade secrets.

Injunctive Relief

Allergan, Inc. v. Merz Pharms., LLC, 2012 U.S. Dist. LEXIS 31981 (C.D. Cal. 2012). Allergan, makers of the anti-wrinkle medication Botox, successfully obtained an injunction against the release of its competitor Merz’s rival product, Xeomin, immediately ahead of its planned nationwide launch. Allergan claimed that at least seven former employees had misappropriated Allergan trade secrets. Discovery revealed that most of the individual defendants had e-mailed to their personal e-mail accounts numerous documents and electronic files containing Allergan confidential information before resigning, including extensive spreadsheets relating to Allergan’s physician customer base and detailed sales information. In addition, many of the individual defendants had copied and downloaded hundreds of Allergan files to portable electronic data storage devices. Based on this record, the court entered a permanent injunction enjoining the defendants from retaining, disclosing, or using Allergan’s trade secrets and from providing or selling Xeomin or soliciting purchases of Xeomin or dermal filler products for a period of 10 months from the date of the order, with certain limited exceptions.

ITC

TianRui Group Co. Ltd. v. International Trade Comm’n, 661 F. 3d 1322 (Fed. Cir. 2011). Section 337 of the Tariff Act of 1930 authorizes the ITC to investigate and apply domestic trade secrets law (albeit under “a single federal standard,” rather than state law) to conduct that occurs in whole or in part in a foreign country where the complaint alleges that the products developed as a result of the misappropriation are being imported into the United States and threaten a domestic industry.

TRADEMARKS

Geographically Misdescriptive Marks

In re Miracle Tuesday LLC, 695 F.3d 1339, 104 U.S.P.Q.2d 1330 (Fed. Cir. 2012). The Federal Circuit affirmed the decision of the TTAB finding that Miracle Tuesday’s application for the mark JPK PARIS 75 was properly refused registration as there was sufficient evidence that the mark was primarily geographically misdescriptive. Miracle Tuesday filed its application for JPK PARIS 75 in connection with sunglasses, wallets, handbags and purses, travel bags, suitcases, belts, and shoes. The letters “JPK” were the initials of Jean-Pierre Klifa, the designer of the goods at issue who had lived in Paris over 20 years before the filing of the application. The Federal Circuit agreed with the TTAB that because the relevant purchasers would likely think Paris is a known source for fashion accessories, there was sufficient evidence of a goods/place association between Paris and the goods listed in the application.

There was no evidence that the goods or any component of the goods came from Paris. The Federal Circuit agreed with the TTAB that due to the geographic misrepresentation of the JPK PARIS 75 mark, refusal to register the mark was proper. The Federal Circuit rejected Miracle Tuesday’s argument that the designer had a significant connection to Paris and stated that the relevant inquiry was whether there was a connection between the goods and Paris—not whether there was a connection between the designer and Paris.

Infringement/False Advertising

Suntree Techs. Inc. v. Ecosense Int’l Inc., 693 F.3d 1338, 104 U.S.P.Q.2d 1307 (11th Cir. 2012). Suntree appealed the denial of its motion for summary judgment and the grant of summary judgment for Ecosense and its president and majority shareholder. The Eleventh Circuit affirmed the district court’s conclusion that Suntree failed to establish that Ecosense directly or contributorily infringed its trademark because it failed to present evidence of actual confusion or a likelihood of confusion.

In submitting a bid for the City of West Melbourne Stormwater Quality Retrofit Project, Derrico Construction Co. listed Suntree as the supplier for baffle boxes. After approving the bid, the county approved the use of Ecosense baffle boxes as a substitute for Suntree’s product. After the project was completed, the county requested that Ecosense prepare a presentation. The presentation included photographs of both Ecosense and Suntree baffle boxes. Suntree alleged that the use of Suntree’s trademark in Derrico’s bid submission was likely to cause confusion as to the origin of the products being installed, was false and misleading, and was likely to deceive customers. Suntree also alleged that the conduct in obtaining the contract constituted unfair competition, misleading and deceptive representations, and unfair practices under Florida state law. The Eleventh Circuit found that Suntree failed to produce any evidence that Derrico intended to confuse the city as to whose baffle boxes would be installed. Suntree also failed to produce evidence of the city’s actual confusion. With respect to Ecosense’s training presentation, the Eleventh Circuit found that Suntree also failed to present evidence that Ecosense had any intention to portray Suntree’s product as its own, and the record showed that there was no confusion. Furthermore, the presentation was created at the request of an existing client for training customers who already purchased the product, not to promote or advertise Ecosense’s products. Thus, the Eleventh Circuit found that the district court did not err in granting summary judgment in favor of Ecosense and its president or in denying Suntree’s motion for summary judgment.

John C. Gatz

John C. Gatz is a member of the firm Nixon Peabody LLP in Chicago.

Column contributors include the following writers. Copyrights: Zachary J. Smolinski, Panduit Corporation; Michael N. Spink, Brinks, Hofer, Gilson & Lione; Mark R. Anderson, Ulmer & Berne LLP. Trade Secrets: R. Mark Halligan, Nixon Peabody LLP. Trademarks: Janet M. Garetto and Elizabeth W. Baio, Nixon Peabody LLP; Amy L. Sierocki. Patents: Cynthia K. Barnett, Johnson & Johnson; Timothy M. Kowalski, Google Inc.; R. Trevor Carter and Daniel M. Lechleiter, Faegre Baker Daniels LLP; Robert W. (Bill) Mason, Kinetic Concepts, Inc.