chevron-down Created with Sketch Beta.

Landslide®

December 2024/January 2025: IP Portfolio Management

December/January 2025 Decisions in Brief

John C Gatz

Summary

  • The U.S. Supreme Court ruled that a copyright owner is entitled to monetary relief for any timely infringement claim, no matter when the infringement occurred.
  • The Federal Circuit overruled the Rosen-Durling test and determined that courts should address (non)obviousness for design patent claims by applying the Graham factors.
  • The U.S. Supreme Court held that the Lanham Act’s names clause does not violate the First Amendment.
December/January 2025 Decisions in Brief
Nora Carol Photography via Getty Images

Jump to:

Copyrights

Copyright Owner Entitled to Damages for Timely Infringement Claim Regardless of When Infringement Occurred

Warner Chappell Music, Inc. v. Nealy, 144 S. Ct. 1135, 2024 U.S.P.Q.2d 864 (2024). The U.S. Supreme Court ruled that a copyright owner is entitled to monetary relief for any timely infringement claim, no matter when the infringement occurred. The case was initiated by music producer Sherman Nealy, who brought a copyright infringement claim against Warner Chappell Music for alleged unauthorized uses of certain musical works. Nealy relied on the “discovery rule” applied by the Eleventh Circuit, which considers a copyright claim as timely filed if brought within three years of when the plaintiff discovered the infringement. Warner Chappell did not dispute Nealy’s reliance on the discovery rule and argued that Nealy was prevented from recovering monetary damages for infringing acts that occurred more than three years prior to the filing of the lawsuit. The district court agreed with Warner Chappell and found that monetary relief is limited to the three years prior to filing the action. The Eleventh Circuit reversed, finding that a plaintiff with a timely filed claim may recover damages for infringement occurring more than three years before bringing the action.

The Supreme Court affirmed the Eleventh Circuit’s decision. The Supreme Court did not address whether Nealy’s claim was timely filed and declined to answer the question of whether the discovery rule should govern with respect to when a copyright claim accrues. Instead, the Supreme Court limited its review to whether a plaintiff is entitled to monetary damages incurred more than three years prior to the lawsuit. The Supreme Court confirmed that a plaintiff is entitled to such damages and held that a copyright plaintiff may obtain monetary relief for any timely infringement claim, regardless of when the infringement occurred.

Former Lead Vocalist Entitled to Featured Artist Royalties

Ithier v. Aponte-Cruz, 105 F.4th 1, 2024 U.S.P.Q.2d 1122 (1st Cir. 2024). On appeal, the First Circuit ruled that the lead vocalist of the Puerto Rican band El Gran Combo, Carlos Aponte-Cruz, is a recording artist featured on the band’s recordings, as identified by the Digital Performance Rights in Sound Recording Act of 1995, and is entitled to 45% of the statutory royalties from the digital transmissions of over 200 songs.

The issue on appeal was the meaning of “recording artist or artists featured on a sound recording” and whether that meant the band El Gran Combo as a distinct and cohesive entity, or if “recording artist” means the individuals who make up the 14-member band. The district court held that El Gran Combo is the group most prominently featured on the sound recordings, and because Rafael Ithier is the sole owner of the company EGC Corp., which was created to direct Ithier’s ownership of the band, Ithier was granted the exclusive right to collect the “recording artist” royalties.

The First Circuit reversed the holding, finding that the plain language of 17 U.S.C. § 114(g), which refers to a “featured recording artist who performs on a sound recording,” means the natural persons who perform on a sound recording, not an artificial entity like a corporation or even an unincorporated band, even when the individuals perform collectively. The First Circuit noted that this remains true even if the artist or artists are not specifically named on the album cover or named in the release of the recording.

In addition to the plain language of the statute, the First Circuit found support for its interpretation in the implementation of the law for over two decades, industry norms, and legislative history and amendments of the Digital Performance Rights in Sound Recording Act, which sought to protect and fairly compensate the creators of musical recordings “whether they compose the score, write the lyrics, sing the songs, or produce the recordings.”

Patents

Appellate Jurisdiction

Copan Italia Spa v. Puritan Medical Products Co., 101 F.4th 847, 2024 U.S.P.Q.2d 886 (Fed. Cir. 2024). The Federal Circuit dismissed the appeal for lack of subject matter jurisdiction. Puritan filed an appeal after the district court denied its partial motion to dismiss patent infringement claims brought by Copan. Puritan filed the partial motion to dismiss, arguing that it was immune from Copan’s patent infringement claims under the Pandemic Readiness and Emergency Preparedness (PREP) Act. The district court denied the motion to dismiss because the limited record did not show that the PREP Act affirmative defense had been proven. Thus, the Federal Circuit determined that the district court’s denial of Puritan’s motion to dismiss did not conclusively determine any issue and, thus, did not fall within the collateral order doctrine necessary for appellate jurisdiction.

Attorney Fees

Dragon Intellectual Property LLC v. DISH Network L.L.C., 101 F.4th 1366, 2024 U.S.P.Q.2d 916 (Fed. Cir. 2024). The Federal Circuit affirmed the district court’s partial award of attorney fees against patentee Dragon. Defendant DISH appealed the district court’s decision denying attorney fees incurred during parallel inter partes review (IPR) proceedings. The Federal Circuit determined that 35 U.S.C. § 285 does not entitle a defendant-accused infringer to recover fees incurred in parallel IPR proceedings because such proceedings were voluntarily initiated by that party.

Domestic Industry

Zircon Corp. v. International Trade Commission, 101 F.4th 817, 2024 U.S.P.Q.2d 858 (Fed. Cir. 2024). The Federal Circuit affirmed the ITC’s finding of no violation under 19 U.S.C. § 1337. To meet the economic prong of the statute, the patentee attempted to aggregate investment data of 53 of its products without providing a breakdown on a patent-by-patent basis. The Federal Circuit found that in cases where not all the products practice different patents, the patentee needs to establish separate industries for each of the products. Because the patentee did not do that here, domestic industry was not proven.

Eligible Subject Matter

Beteiro, LLC v. DraftKings Inc., 104 F.4th 1350, 2024 U.S.P.Q.2d 1117 (Fed. Cir. 2024). The Federal Circuit affirmed the district court’s dismissal of multiple related patent infringement cases for failure to state a claim based on the subject matter ineligibility of the patent claims. Under the two-part Alice test, the Federal Circuit first determined that the challenged claims were directed to an abstract idea and did not contain an inventive step. In step two, the Federal Circuit found that Beteiro’s claims amounted to nothing more than the practice of an abstract idea using conventional computer equipment, therefore making the claims ineligible.

Miller Mendel, Inc. v. City of Anna, 107 F.4th 1345, 2024 U.S.P.Q.2d 1295 (Fed. Cir. 2024). The district court correctly granted a motion for judgment on the pleadings, concluding that the asserted claims did not claim patent-eligible subject matter. The asserted claims were directed to the abstract idea of performing a background check under Alice step one and did not possess an inventive concept under Alice step two. The district court also did not abuse its discretion in denying a motion for attorney fees as the case was not exceptional.

Induced Infringement

Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc., 104 F.4th 1370, 2024 U.S.P.Q.2d 1155 (Fed. Cir. 2024). The Federal Circuit reversed the district court’s dismissal of Amarin’s complaint for failure to state a claim because Amarin’s allegations plausibly stated a claim for induced infringement. The district court reviewed the allegations of inducement piecemeal, whereas the Federal Circuit said that the totality of the allegations must be considered. When taken as true, the totality of the allegations plausibly pleaded that Hikma induced infringement.

Inter Parties Review

Koss Corp. v. Bose Corp., 107 F.4th 1363, 2024 U.S.P.Q.2d 1311 (Fed. Cir. 2024). The Federal Circuit dismissed Koss’s appeals of two IPR decisions as moot because the challenged claims were previously invalidated in prior district court litigation. The Federal Circuit held that the district court’s decision finding that the claims were invalid was final because that order merged with the final judgment dismissing the case with prejudice.

SoftView LLC v. Apple Inc., 108 F.4th 1366, 2024 U.S.P.Q.2d 1353 (Fed. Cir. 2024). On appeal of a decision by the PTAB finding the challenged claims in an IPR invalid under the estoppel provision in 37 C.F.R. § 42.73(d)(3)(i), the Federal Circuit upheld the validity of the regulation and estoppel standard articulated in the regulation. The Federal Circuit, however, disagreed with the PTAB’s view of the scope of the regulation and held that it applies to new or amended claims but not to previously issued claims.

ZyXEL Communications Corp. v. UNM Rainforest Innovations, 107 F.4th 1368, 2024 U.S.P.Q.2d 1312 (Fed. Cir. 2024). The Federal Circuit affirmed the Patent Trial and Appeal Board’s (PTAB’s) unpatentability findings for certain challenged claims in an IPR, but reversed the PTAB’s finding that one dependent claim was not unpatentable because the claim was determined to be obvious. The Federal Circuit affirmed the PTAB’s decision to grant the motion to amend the claims, but remanded for the PTAB to consider whether to exercise its discretion to determine if the substitute claims are unpatentable under a new ground.

Interference

Speck v. Bates, 102 F.4th 1304, 2024 U.S.P.Q.2d 960 (Fed. Cir. 2024). The Federal Circuit reversed, vacated, and remanded a PTAB’s final judgment in an interference proceeding awarding priority to Bates, the senior party, because the Federal Circuit concluded that it was time-barred under 35 U.S.C. § 135(b)(1). The case turned on whether broadening amendments made to an application Bates filed after the critical date were substantially the same as claims Bates filed before the critical date. The PTAB applied a one-way test to see if the post-critical date claims were narrower than the pre-critical date claims. However, the Federal Circuit determined that a two-way test must be applied, which also assesses whether the post-critical date claims are broader than the pre-critical date claims. There was no reasonable dispute that the post-critical date claims were broadened and, thus, not substantially the same as the pre-critical date claims. Thus, the Federal Circuit reversed, vacated, and remanded.

Invalidity

Packet Intelligence LLC v. NetScout Systems, Inc., 100 F.4th 1378, 2024 U.S.P.Q.2d 825 (Fed. Cir. 2024). The Federal Circuit vacated the district court’s judgment of enhanced damages as moot based on the PTAB’s finding all the claims at issue invalid. The Federal Circuit found that the infringement finding was not final before the PTAB’s unpatentability findings were affirmed. Therefore, the invalidity of the patents rendered any judgment award moot.

Obviousness; Design Patents

LKQ Corp. v. GM Global Technology Operations LLC, 102 F.4th 1280, 2024 U.S.P.Q.2d 926 (Fed. Cir. 2024) (en banc). The Federal Circuit, sitting en banc, overruled the Rosen-Durling test to assess the (non)obviousness of design patent claims. The Rosen-Durling test required a primary reference that was “basically the same” as the claimed design and secondary references that were “so related” to the primary references that “the appearance of certain ornamental features in one would suggest the application of those features to the other.” The Federal Circuit, however, determined that the Rosen-Durling test was improperly rigid in view of Supreme Court precedent, all of which required a more expansive and flexible approach to evaluating (non)obviousness. Having overruled the Rosen-Durling test, the Federal Circuit determined that courts should address (non)obviousness for design patent claims by applying the Graham factors, as they do with obviousness inquiries involving utility patents. Consequently, because the PTAB below had analyzed the obviousness inquiry under the wrong legal standard, the Federal Circuit vacated and remanded the PTAB’s determination to address the petitioner’s obviousness claims in light of the new Graham-based legal standard and analysis.

Patent Damages; Expert Opinions

EcoFactor, Inc. v. Google LLC, 104 F.4th 243, 2024 U.S.P.Q.2d 993 (Fed. Cir. 2024). Google appealed the district court’s denial of its motion for a new trial on damages. Specifically, Google argued that EcoFactor’s damages expert, Mr. Kennedy, should be excluded because he utilized a speculative and conclusory damages model and failed to apportion or prove the comparability of licenses. The Federal Circuit affirmed the district court’s denial, noting that “Google loses sight of the issue on appeal and the applicable standard of review. Our focus is on the admissibility of Mr. Kennedy’s damages testimony, and we assess the district court’s determination of this issue under the highly deferential abuse of discretion standard.” Since Mr. Kennedy’s opinion was based on three license agreements involving the asserted patent and the testimony of EcoFactor’s CEO, and Mr. Kennedy adequately accounted for the comparability and apportionment in his analysis, the Federal Circuit found Mr. Kennedy’s opinion sufficiently reliable for purposes of admissibility. The Federal Circuit also reaffirmed that credibility determinations, the weighing of evidence, and drawing inferences from the facts are jury functions, not trial judge or appellate judge functions.

Personal Jurisdiction

SnapRays v. Lighting Defense Group, 100 F.4th 1371, 2024 U.S.P.Q.2d 808 (Fed. Cir. 2024). The Federal Circuit reversed and remanded the district court’s dismissal of the complaint for lack of personal jurisdiction. The Federal Circuit found that the defendant purposefully directed enforcement activities in Utah and, therefore, those activities satisfied the first prong of the due process test. The Federal Circuit also found that the claim arose out of such activities, thus meeting the second prong of the test. Finally, the Federal Circuit found that personal jurisdiction in this case would not be unjust or unreasonable.

Preliminary Injunction

Insulet Corp. v. EOFlow, Co., 104 F.4th 873, 2024 U.S.P.Q.2d 1113 (Fed. Cir. 2024). The Federal Circuit lifted the stay and reversed the district court’s order granting a preliminary injunction sought by Insulet and remanded. The Federal Circuit found that the district court did not assess the statute of limitations in the context of evaluating Insulet’s likelihood of success on the merits, which constituted an abuse of discretion. The district court further abused its discretion in considering what constitutes a trade secret. The Federal Circuit found that the district court used an incorrect definition of the term “trade secret” and instead used an overly broad definition.

Natera, Inc. v. NeoGenomics Laboratories, Inc., 106 F.4th 1369, 2024 U.S.P.Q.2d 1251 (Fed. Cir. 2024). The Federal Circuit affirmed the district court’s grant of a preliminary injunction barring NeoGenomics from making, using, selling, advertising, or distributing the assay. The Federal Circuit found no error in the district court’s handling of claim construction or in the claim scope applied in its likelihood of infringement analysis. Nor did the Federal Circuit find error in the district court’s findings on motivation to combine or reasonable expectation of success. Likewise, the Federal Circuit saw no error in the district court’s consideration of harm in the tumor-informed market or in its casual nexus analysis, and no clear error in its factual findings. And finally, the Federal Circuit found no clear error in the district court’s findings on public interest.

Printed Matter

IOENGINE, LLC v. Ingenico Inc., 100 F.4th 1395, 2024 U.S.P.Q.2d 827 (Fed. Cir. 2024). The Federal Circuit affirmed in part and reversed in part the PTAB’s findings of invalidity of the claims at issue. Specifically, the Federal Circuit found with respect to six of the claims that the PTAB erred in applying the printed matter doctrine. The Federal Circuit disagreed with the PTAB’s assertion that the encrypted code (or program code) was printed matter, finding that the encrypted (or program) code was not claimed for any content it was communicating.

Prior Art

Sanho Corp. v. Kaijet Technology International Ltd., Inc., 108 F.4th 1376, 2024 U.S.P.Q.2d 1370 (Fed. Cir. 2024). The Federal Circuit affirmed a PTAB’s decision rejecting the patent owner’s argument that a reference was not prior art under 35 U.S.C. § 102(b)(2)(B) because the inventor previously “publicly disclosed” the subject matter. The Federal Circuit focused on the different usage of “disclosed” and “publicly disclosed” in the statute and held that the sale alleged by Sanho failed to show that the subject matter of the invention itself was publicly disclosed during a private, but nonconfidential, sale of a product.

Standing

Intellectual Tech LLC v. Zebra Technologies Corp., 101 F.4th 807, 2024 U.S.P.Q.2d 802 (Fed. Cir. 2024). The Federal Circuit reversed and remanded the district court’s dismissal of all the claims due to lack of standing. The issue related to whether there was an injury in fact. The Federal Circuit found that the plaintiff only had to have an exclusionary right to show standing. Here, the right to grant licenses was found to be exclusionary. The Federal Circuit then stated that injury-in-fact standing should not be conflated with the 35 U.S.C. § 281 inquiry (or statutory standing). The district court had not decided on that issue, so the case was remanded.

Trademarks

Cancellation; Zone of Interest

Luca McDermott Catena Gift Trust v. Fructuoso-Hobbs SL, 102 F.4th 1314, 2024 U.S.P.Q.2d 941 (Fed. Cir. 2024). Luca McDermott Catena Gift Trust (the appellant) appealed from a decision of the Trademark Trial and Appeal Board (TTAB) that dismissed its petitions to cancel registrations for ALVAREDOS-HOBBS and HILLICK AND HOBBS. Fructuoso-Hobbs SL, a Spanish winery, is the owner of the registration for ALVAREDOS-HOBBS for wines. Hillick & Hobbs Estate LLC, a New York winery, is the owner of the registration for HILLICK AND HOBBS for wines. The appellant filed petitions to cancel based on a likelihood of confusion with the mark PAUL HOBBS for the same goods.

The appellant and two related family trusts owned 21% of the partnership of the Paul Hobbs Winery, L.P., which owns the registered trademark PAUL HOBBS. Fructuoso-Hobbs and Hillick & Hobbs Estate (the appellees) moved to dismiss the petitions to cancel their respective marks on the basis that the appellant was not entitled to cancellation because the appellant was not the owner of the PAUL HOBBS trademark. The TTAB agreed, concluding that because the appellant was a minority owner of the Paul Hobbs Winery and did not use or have rights in the PAUL HOBBS mark, the appellant lacked the statutory entitlement to bring the cancellation actions.

The Federal Circuit found that the appellant had met its burden to establish its Article III standing and could proceed on the merits. However, the Federal Circuit next had to determine whether the appellant “falls within the class of plaintiffs who Congress has authorized to seek cancellation of Appellees’ trademark registrations under 15 U.S.C. § 1064.” To answer this question, the appellant first had to show that its interests fell within the “zone of interests” that Congress intended to protect. The appellant then had to show that its injuries were proximately caused by the appellees’ alleged unlawful conduct.

The Federal Circuit found that the appellant’s minority ownership interest in the Paul Hobbs Winery, the owner of the allegedly infringing PAUL HOBBS trademark, was not within the zone of interests entitled to seek cancellation. In other words, the appellant lacked “direct commercial interest in the registration at issue.” Additionally, the Federal Circuit noted that any injury to the appellant was derivative of any injury suffered by the Paul Hobbs Winery and was too remote to provide the appellant with a cause of action under § 1064. Accordingly, the dismissal of the appellant’s cancellation petition was affirmed.

Collective Membership Marks

In re Leathernecks Motorcycle Club International, Inc., Serial No. 90498154, 2024 U.S.P.Q.2d 1023 (T.T.A.B. June 6, 2024). The applicant sought registration of the collective membership mark LEATHERNECKS and design for indicating membership in a motorcycle club. The examining attorney refused registration under section 2(a) of the Trademark Act, which prohibits registration of matter that falsely suggests a connection with persons, institutions, beliefs, or national symbols. The U.S. Marine Corps (USMC) is considered a juristic person within the meaning of this statute. The TTAB confirmed that section 2(a) applies to collective membership marks.

To establish false suggestion of a connection with the USMC under section 2(a), four elements must be proven: (1) the term “Leathernecks” in the applicant’s mark is similar to the USMC’s name or identity; (2) the term “Leathernecks” uniquely and unmistakably points to the USMC; (3) the USMC is not connected or otherwise affiliated with the applicant; and (4) the USMC is of sufficient fame or reputation that when the term “Leathernecks” is used to indicate membership in a motorcycle club, a connection with the USMC would be presumed. Dictionary evidence confirmed, and the applicant conceded, that “Leatherneck” is a nickname for a member of the USMC. As such, the first element was met. Regarding the second element, a plethora of websites, articles, and the applicant’s own use of the mark confirmed that the term “Leathernecks” unmistakably points the relevant public to the USMC, especially when the relevant public comprises current and prospective members of the applicant. Of note, all members of the applicant are active duty or honorably discharged U.S. Marines or Navy corpsmen. The applicant did not argue or provide evidence that it is connected or affiliated with the USMC, so the third element was also met. Finally, the applicant’s use of the term “Leathernecks” and other USMC indicia was found to cause a presumption of a connection between the applicant’s use of the term “Leathernecks” and the USMC. Therefore, the refusal to register the applicant’s collective membership mark was affirmed.

Consent by a Living Individual

Vidal v. Elster, 602 U.S. 286, 2024 U.S.P.Q.2d 1083 (2024). Steve Elster sought to federally register the trademark TRUMP TOO SMALL in connection with shirts and hats based on an exchange between Donald Trump and Marco Rubio. The examining attorney refused registration of the mark based on the names clause of the Lanham Act, which prohibits registration of marks that consist of or comprise a name identifying a particular living individual, except by their written consent. The TTAB affirmed the refusal, but the Federal Circuit reversed. The Supreme Court reversed the Federal Circuit, holding that the Lanham Act’s names clause does not violate the First Amendment.

When enforcing the First Amendment, the Court distinguished between content-based and content-neutral regulations of speech. The Court held that the names clause is content-based because it applies due to the topic discussed but also found that the names clause is viewpoint-neutral because it does not facially discriminate against any viewpoint. Because trademark law is inherently content-based but has nonetheless coexisted with the First Amendment, the Court held that the names clause, which is a solely content-based restriction of trademark registration, need not be evaluated under heightened scrutiny. Finally, the Court recognized that the names clause reflects the common law tradition of prohibiting persons from piggybacking off the goodwill another entity has built in its name. Thus, the Court held that history and tradition establish that the names clause does not violate the First Amendment.

Motion to Dismiss; Sovereign Immunity

Mountain Gateway Order, Inc. v. Virginia Community College System, Opposition Nos. 91283412, 91283416, 2024 U.S.P.Q.2d 1025 (T.T.A.B. June 6, 2024). Mountain Gateway Order filed a notice of opposition to registration of a trademark application owned by Virginia Community College (the applicant) for the mark MOUNTAIN GATEWAY COMMUNITY COLLEGE. Mountain Gateway pleaded common law rights and ownership of applications for MOUNTAIN GATEWAY and MOUNTAIN GATEWAY ACADEMY. The applicant filed a motion to dismiss the opposition based on lack of subject matter jurisdiction and for failing to state a claim upon which relief may be granted.

The applicant asserted that because it is an agency of the Commonwealth of Virginia, the TTAB lacked subject matter jurisdiction due to sovereign immunity. The TTAB stated that the Trademark Act makes clear that states may apply for trademark registrations and that states are subject to the same registration provisions of the Trademark Act as other applicants, including opposition proceedings. Moreover, if states were not subject to opposition proceedings, the U.S. Patent and Trademark Office would be precluded from ensuring that states comply with the Trademark Act and other federal rules governing trademark registrability. Thus, the motion to dismiss based on sovereign immunity was denied.

On the applicant’s motion to dismiss for failure to state a claim, the TTAB considered Mountain Gateway’s claims of likelihood of confusion, dilution by blurring, and lack of bona fide intent to use. On the likelihood of confusion claim, the TTAB determined that the claim was adequately pleaded where Mountain Gateway alleged priority of use and that its marks so resembled the applicant’s mark as to be likely to cause confusion. As for dilution, Mountain Gateway’s claim was also adequately pleaded by alleging that MOUNTAIN GATEWAY was famous prior to the filing date of the applicant’s application and that use of the applicant’s mark was likely to dilute the distinctive quality of MOUNTAIN GATEWAY. Finally, Mountain Gateway had sufficiently pleaded a lack of bona fide intent to use by alleging that the applicant lacked the required bona fide intention to use its mark in commerce at the time the applicant filed the trademark application. Accordingly, the motion to dismiss for failure to state a claim was denied.

Trade Secrets

Existence of Trade Secrets

Metron Nutraceuticals, LLC v. Cook, No. 23-3596, 2024 WL 3877388, 2024 U.S. App. LEXIS 21200 (6th Cir. Aug. 20, 2024). Although novelty in the patent law sense is not required, information must be unique and competitively advantageous to constitute a trade secret. Information generally known in the industry is not secret and cannot qualify as a trade secret. The Sixth Circuit affirmed the grant of summary judgment for the defendants.

Expired Confidentiality Obligations

Analog Technologies, Inc. v. Analog Devices, Inc., 105 F.4th 13, 2024 U.S.P.Q.2d 1119 (1st Cir. 2024). The district court granted Analog Devices’ motion to dismiss the trade secret misappropriation claim because under the clear terms of a 2000 agreement, the confidentiality provisions in the 2000 agreement expired in 2011.

Joint and Several Liability

Compulife Software, Inc. v. Newman, 111 F.4th 1147, 2024 U.S.P.Q.2d 1395 (11th Cir. 2024). Florida is a comparative fault regime with an exception for intentional torts. In Florida, trade secret misappropriation is an intentional tort. Joint and several liability is applied when the defendants act in concert and their separate independent tortious acts combine to produce a single injury. The upshot is that defendants in trade secret misappropriation cases are jointly and severally liable under Florida law when their conduct produces a single injury. The Eleventh Circuit affirmed in part, reversed in part, and remanded for further proceedings.

Unauthorized Use

Professional Investigating & Consulting Agency, Inc. v. SOS Security, LLC, No. 23-3344, 2024 U.S. App. LEXIS 11528, 2024 U.S.P.Q.2d 881 (6th Cir. May 10, 2024). Proof that a defendant knew of the trade secret together with substantial similarities between the parties’ products or processes may support an inference that the defendant used the trade secret. But broad similarities are not enough. To support the inference of misappropriation, the defendant’s product or process must bear substantial similarities to the plaintiff’s secret, not the plaintiff’s product or process more generally. Because the plaintiff did not introduce sufficient evidence to show that SOS improperly used its trade secrets, the claim failed as a matter of law.

Column contributors include the following writers: Copyrights: Jennette Psihoules and Kaleigh Morrison, Nixon Peabody LLP. Patents: Cynthia K. Barnett, Johnson & Johnson; R. Trevor Carter and Andrew M. McCoy, Faegre Drinker Biddle & Reath LLP; Robert W. (Bill) Mason, Southwest Research Institute; and Angelo Christopher, Nixon Peabody LLP. Trademarks: Elizabeth W. Baio, Nixon Peabody LLP; and Amy L. Sierocki, Blumenfield & Shereff LLP. Trade Secrets: R. Mark Halligan, FisherBroyles LLP.

©2024. Published in Landslide, Vol. 17, No. 2, December 2024/January 2025, 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.

    Author