Intellectual Property Law

Both Sides Claim Victory in ITC Ruling re Converse's "Chuck Taylors"

Why it matters: On November 17, 2015, an International Trade Commission judge issued an initial ruling in In the Matter of Certain Footwear Products, the case brought by Converse in November 2014 against 31 companies for importing "look alike" footwear that infringed on Converse's iconic "Chuck Taylor" design in violation of Section 337(a) of the Tariff Act. Both sides claimed victory in the judge's ruling, which will now go before the full International Trade Commission for review. Read on for the details.

Detailed discussion: On November 17, 2015, Chief Administrative Law Judge (ALJ) Charles E. Bullock issued a 149-page initial determination ruling in In the Matter of Certain Footwear Products, the case Converse, Inc. (Converse) filed with the International Trade Commission (ITC) in October 2014 against 31 companies for importing "look alike" footwear that infringed on Converse's iconic "Chuck Taylor" design in violation of Section 337(a) of the Tariff Act of 1930 (Tariff Act). Specifically, Converse was asserting trademark rights in the midsole and outsole of Converse's Chuck Taylor All-Star Shoes (i.e., a front "bumper," a toe cap and side stripes), which it claimed the named companies were infringing through the importation into the United States of their copycat shoes. Most of the companies named in the suit had either settled with Converse or defaulted by the time the ITC evidentiary hearing commenced in August 2015, leaving only four respondents, Skechers, New Balance, Walmart and Highline d.b.a. Ash Footwear (collectively, "respondents") in the suit, each with "accused products" consisting of shoes sold under multiple product lines (e.g., New Balance's "PF Flyer" lines and Skechers' "BOBS," "Twinkle Toes," "Daddy'$ Money" and "HyDee HyTop" lines, to name just a few).

ALJ Bullock began his analysis by reviewing the applicable law, which we briefly summarize in relevant part here. Section 337(a) of the Tariff Act bans "[t]he importation into the United States, the sale for importation, or the sale within the United States after importation … of articles that infringe a valid and enforceable United States trademark registered under the Trademark Act of 1946." The respondents in this case stipulated with respect to the importation element of Section 337(a), so that what remained to be proven was the validity of Converse's asserted marks. In order for a trademark to be "valid" for purposes of Section 337(a), it must be "non-functional and distinctive" such that it has acquired "secondary meaning," which is the developed association in the public's mind between the mark or trade dress of a product and the specific manufacturer originating it. Secondary meaning is analyzed through the application of seven factors (e.g., exclusivity and length of use, etc.). Infringement is analyzed under a "two prong" test of (1) whether the marks merit protection and, if so (2) whether the use by the alleged infringer of the mark is "likely to cause confusion" (to which a four-part test is applied, e.g., degree of similarity, intent, etc.).

After a review of the substantial evidence and surveys presented by the parties, ALJ Bullock found Converse's registered trademarks to be valid and enforceable—a win for Converse—although he emphasized that it was a "close call" with respect to the secondary meaning element because only 21% of the consumers surveyed associated the marks with Converse. In finding validity, ALJ Bullock rejected claims that Converse's marks were too functional or generic to warrant trademark protection or that Converse was subject to laches because it had waited so long to sue that third-party use of the designs was widespread.

With the validity of Converse's marks so established, ALJ Bullock turned next to the question of whether they had been infringed. In another win for Converse, he found that they had. However, in a win for the respondents, ALJ Bullock found no infringement and knocked out half of their "accused products"—for example, both of Skechers' "BOBS" and "Twinkle Toes" product lines—from the suit because they failed the "likelihood of confusion" test for infringement. Skechers' president Michael Greenberg claimed victory, stating that "[o]ur investment in our distinctive designs and brand identity has helped build Twinkle Toes into the number one shoe line for young girls and both Twinkle Toes and BOBS into household names synonymous with Skechers—not with Converse or any other brand. The Judge's ruling recognizes this."

ALJ Bullock's decision will now be reviewed by the full ITC in the coming months and, if affirmed, either party can appeal the decision to the Federal Circuit. We will be watching the turn of events with great interest and report back.

See here to read the ITC's 11/17/15 Initial Determination ruling in In the Matter of Certain Footwear.

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Getting That Preclusive Feeling: Supreme Court Rules That TTAB Findings Can Have a Preclusive Effect on Federal Court Proceedings

Why it matters: On March 24, 2015, the U.S. Supreme Court in B&B Hardware, Inc. v. Hargis Industries, Inc. reversed and remanded (back to the Eighth Circuit) a case that raised the question of whether Trademark Trial Appeal Board (TTAB) findings can have a preclusive effect in parallel federal court proceedings. The Court held that TTAB findings can be preclusive if the standard issue preclusion requirements are met and the issues litigated in the two actions are "materially the same."

Detailed discussion: On March 24, 2015, the U.S. Supreme Court in B&B Hardware, Inc. v. Hargis Industries, Inc. considered the question of whether Trademark Trial Appeal Board (TTAB) findings can have a preclusive effect in parallel federal court proceedings, and ruled that they can if certain circumstances are met.

In the majority opinion written by Justice Samuel Alito, the Court began by reviewing the facts of the case, noting that the matter before it was just the latest in the nearly two-decade long trademark litigation between Hargis Industries, Inc. (Hargis) and B&B Hardware, Inc. (B&B), both manufacturers of metal fasteners (Hargis for the construction business and B&B for the aerospace industry). In setting the scene, the Court stated that "[t]he twists and turns in the SEALTIGHT versus SEALTITE controversy are labyrinthine" and that the full story wrapped around a "seemingly commonplace set of facts" could "fill a long, unhappy book." For purposes of the opinion it was being asked to render, the Court "picks up the story" in 2002: When Hargis attempted to register a trademark for SEALTITE with the U.S. Patent and Trademark Office (PTO) under the Lanham Act, B&B opposed the registration, claiming that SEALTITE was too similar to B&B's own SEALTIGHT trademark. The TTAB agreed and ruled that Hargis could not register SEALTITE because of the likelihood of confusion. Hargis did not seek judicial review of the TTAB's decision. In parallel district court trademark infringement proceedings between the same parties over the same mark, B&B argued that Hargis was precluded from contesting the likelihood of confusion because of the TTAB's ruling. The district court disagreed, finding that Hargis was not so precluded because, among other things, the TTAB was not an Article III court under the Constitution, and allowed Hargis to contest the likelihood of confusion before the jury. The jury then returned a verdict for Hargis, finding no likelihood of confusion. The Eighth Circuit affirmed, holding that issue preclusion was unwarranted because (1) the TTAB and the district court used different factors to evaluate likelihood of confusion, (2) the TTAB placed too much emphasis on the appearance and sound of the two marks, and (3) Hargis bore the burden of persuasion before the TTAB while B&B bore it before the district court.

In its opinion reversing the Eighth Circuit's ruling, the Court looked first to the underlying question of "whether an agency decision can ever ground issue preclusion." The Court held that it could, stating that "issue preclusion is not limited to those situations in which the same issue is before two courts. Rather, where a single issue is before a court and an administrative agency, preclusion also often applies." Having established that a TTAB ruling can be preclusive, the Court next looked to the question of whether the TTAB used a different standard for determining likelihood of confusion than that applied by the Eighth Circuit, which was the primary reason the Eighth Circuit found that issue preclusion was absent in this case. Here, the Court found the likelihood of confusion factors used by the TTAB and the Eighth Circuit to be "essentially the same," even though they arose from separate statutory schemes and the former were used by the TTAB for questions of trademark registration while the latter were applied by the Eighth Circuit for trademark infringement analysis. After then finding that the Eighth Circuit erred with respect to its other rulings, the Court remanded the case and instructed the Eighth Circuit to "apply the following rule: So long as the other ordinary elements of issue preclusion are met, when the usages adjudicated by the TTAB are materially the same as those before the district court, issue preclusion should apply." On August 24, 2015, on remand, the Eighth Circuit vacated the district court's judgment in favor of Hargis (which it had previously upheld), finding in light of the Supreme Court's decision that the "ordinary elements of issue preclusion" had been met and that the usages and marks litigated before the TTAB were "materially the same" as those before the district court.

See here to read the Supreme Court's 3/24/15 opinion in B&B Hardware, Inc. v. Hargis Industries, Inc.

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Federal Circuit: Disparaging Trademarks Are Free Speech

Why it matters: On December 22, 2015, the Federal Circuit sitting en banc held in In re Simon Shiao Tam that Section 2(a) of the Lanham Act, which bars the U.S. Patent and Trademark Office (PTO) from registering "scandalous, immoral, or disparaging remarks," is an unconstitutional restriction on free speech. It remains to be seen whether the Federal Circuit's decision will help the Washington Redskins in the football team's long-standing lawsuit involving six Redskins marks, which were cancelled under Section 2(a) in July 2015 by a Virginia federal court (affirming a TTAB ruling), that is now before the Fourth Circuit on appeal.

Detailed discussion: On December 22, 2015, in the case of In re Simon Shiao Tam, an en banc panel of the Federal Circuit held that Section 2(a) of the Lanham Act, which bars the PTO from registering "scandalous, immoral, or disparaging remarks," is an unconstitutional restriction on free speech.

The Federal Circuit case involved an individual by the name of Simon Shiao Tam (Tam), the "front man" for a dance-rock band, attempting to register the trademark The Slants (the band's proposed name) with the PTO in 2011. Tam's stated reason in the trademark application for wanting to name his band The Slants was "to 'reclaim' and 'take ownership' of Asian stereotypes." Citing Section 2(a) of the Lanham Act, the examiner refused to register the mark because he found it "disparaging to people of Asian descent" and felt that "a substantial composite" of Asians would find the mark offensive. The TTAB affirmed, disqualifying the mark for registration under Section 2(a) because, among other things, " '[t]he dictionary definitions, reference works and all other evidence unanimously categorize the word 'slant,' when meaning a person of Asian descent, as disparaging,' and because there was record evidence of individuals and groups in the Asian community objecting to Mr. Tam's use of the word." Tam then appealed the TTAB's ruling to the Federal Circuit.

In the first go-round before the Federal Circuit, the Court found the mark The Slants to be disparaging and affirmed the TTAB's disqualification of the mark from registration. The Court also held that Federal Circuit precedent foreclosed Tam from raising a First Amendment challenge to Section 2(a) because, even though the PTO would not register the mark The Slants, nothing was stopping Tam from using the name or the mark for his band, and thus the First Amendment was not implicated. The Federal Circuit then sua sponte ordered rehearing en banc and asked the parties to brief the following issue: "Does the bar on registration of disparaging marks in 15 U.S.C. § 1052(a) violate the First Amendment?" In addition to the parties' briefs, ten amicus briefs were filed, and the en banc panel (Panel) heard oral argument on October 2, 2015.

The Panel began its opinion by agreeing up front that it finds the mark The Slants to be disparaging and likely to cause offense. After considerable analysis, however, the Panel held that "[t]he government cannot refuse to register disparaging marks because it disapproves of the expressive messages conveyed by the marks. It cannot refuse to register marks because it concludes that such marks will be disparaging to others. The government regulation at issue amounts to viewpoint discrimination, and under the strict scrutiny review appropriate for government regulation of message or viewpoint, we conclude that the disparagement proscription of § 2(a) is unconstitutional." The Panel thus vacated the TTAB's ruling and remanded the case back to the TTAB for further proceedings.

It remains to be seen whether the Panel's opinion will have an impact on the long-running litigation involving the six Redskins marks, the latest iteration of which was appealed to the Fourth Circuit in October 2015. In July 2015, an Eastern District of Virginia judge in the case of Pro-Football, Inc. v. Blackhorse upheld the TTAB's ruling cancelling the registrations of six Redskins trademarks on the grounds that they disparage Native Americans in contravention of Section 2(a) of the Lanham Act. The judge rejected the football team's arguments that Section 2(a) violates the First Amendment, basing his decision on two lines of reasoning that were later disavowed by the Federal Circuit Panel in Tam, namely that (i) the First Amendment is not implicated by the operation of Section 2(a) and (ii) federal trademark registration constitutes government speech and is thus exempt from First Amendment scrutiny. In support of his "government speech" finding, the judge cited to the 2015 U.S. Supreme Court case of Walker v. Texas Division, Sons of Confederate Veterans, involving the rejection by the Texas DMV of a specialty license plate featuring a confederate flag design (in rejecting the specialty plate, the DMV relied on language in its state-run program that the DMV could reject any proposed specialty plate it found to be "offensive to any member of the public"). In that case, the Supreme Court reversed a Fifth Circuit decision and held that license plates are a form of government speech that is exempted from the First Amendment and thus can be subjected to content restrictions by the government (interesting to note here that the Federal Circuit Panel in Tam differentiated Walker, finding that federal trademark registration is not the same as a state-run specialty license plate program and is therefore not government speech).

We will be watching to see how the Fourth Circuit rules in the Blackhorse case. Depending on the outcome, it is quite possible that a circuit split will result and the matter will be before the Supreme Court to decide.

See here to read the 12/22/15 opinion of the Federal Circuit sitting en banc in In re Simon Shiao Tam.

See here to read the 7/8/15 Eastern District of Virginia opinion in Pro-Football, Inc. v. Amanda Blackhorse et al.

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It's a Bird… It's a Plane… It's…Superdad? California District Court Rules That DC Comics Can Pursue Its Trademark Infringement Lawsuit Against T-Shirt Maker

Why it matters: There is a fine line between parody and trademark infringement. Just ask DC Comics, which on December 16, 2015, successfully defeated a T-shirt maker's parody defense brought in a motion to dismiss DC Comics' infringement lawsuit involving its distinctive trademarked five-sided Superman shield design. The case is DC Comics v. Mad Engine, Inc.—read on for the details.

Detailed discussion: On December 16, 2015, a Central District of California judge in DC Comics v. Mad Engine, Inc. denied the motion to dismiss filed by apparel maker Mad Engine, Inc. (Mad Engine) in a trademark infringement lawsuit brought by DC Comics (DC). DC sued Mad Engine in connection with Mad Engine's "Superdad" T-shirts that used DC's "iconic" red and yellow five-sided Superman shield design. The facts alleged in DC's complaint state that DC sent a cease and desist letter to Mad Engine on June 1, 2015, but that Mad Engine did not respond until June 19, 2015, so as to maximize the Father's Day sales period. When Mad Engine continued to sell the Superdad T-shirts after DC sent a second cease and desist letter, DC filed suit in the Central District of California alleging trademark infringement under the Lanham (Trademark) Act. Mad Engine filed a motion to dismiss, claiming that its "Superdad" shield design was a parody of DC's trademark—not likely to cause consumer confusion or dilution as required under trademark law—and thus DC failed to state a claim.

Judge Dean D. Pregerson denied Mad Engine's motion to dismiss, allowing DC's lawsuit to proceed. Judge Pregerson began his analysis by examining federal case law on the parameters of what constitutes permissible parody in trademark lawsuits. The judge looked first to the Ninth Circuit's 1997 case of Dr. Seuss Enters., L.P. v. Penguin Books USA, Inc., which held that parody claims are not so much separate defenses to trademark infringement suits but, rather, go to the fundamental question of consumer confusion: "In a traditional trademark infringement suit founded on the likelihood of confusion rationale, the claim of parody is not really a separate 'defense' as such, but merely a way of phrasing the traditional response that customers are not likely to be confused as to the source, sponsorship or approval. 'Some parodies will constitute an infringement, some will not. But the cry of "parody!" does not magically fend off otherwise legitimate claims of trademark infringement or dilution. There are confusing parodies and non-confusing parodies. All they have in common is an attempt at humor through the use of someone else's trademark. A non-infringing parody is merely amusing, not confusing.' " (internal citations omitted).

Judge Pregerson then cited Fourth and Tenth Circuit case law that established that a successful parody "pokes fun at a senior mark," such as "Chewy Vuiton" dog toys or "Lardashe" jeans. By contrast, the judge cited to a Second Circuit case where a motorcycle repair shop used a logo substantially similar to Harley-Davidson's trademark and the Second Circuit ruled that this was not a parody because it made "no comment on Harley's mark; it simply use[d] it somewhat humorously to promote [its] own product and services, which is not a permitted trademark parody use." In the case before him, Judge Pregerson stated that the complaint and pleadings were "unclear" as to whether Mad Engine's "Superdad" logo fell into the "true parody" category (like "Chewy Vuiton" or "Lardashe" jeans) or if it was instead a "somewhat humorous use that confuses consumers as to the source of the product" as in the Harley-Davidson logo case, and that this is what his analysis would focus on.

Mad Engine argued that the 1981 Ninth Circuit case of Toho Co. v. Sears, Roebuck and Co. should be controlling. In that case, the Ninth Circuit found in a similar motion to dismiss context that the department store's uses on garbage bags of the terms "Bagzilla" and "Monstrously Strong Bags" together with an image of a "comic, helpful personified reptilian creature" were a "humorous caricature" of Toho's famous Godzilla mark and thus "not confusing to consumers as a matter of law." The Ninth Circuit came to this conclusion after applying the eight factors for determining consumer confusion established in the Ninth Circuit's 1979 decision in AMF, Inc. v. Sleekcraft Boats, finding, among other things, that the marketing channels as well as the actual goods themselves were unrelated as a matter of law and that the department store was intending to "only make a pun" and not confuse consumers. Judge Pregerson distinguished Toho from the case at hand because the T-shirts contained no "prominent indication that the shirt comes from the defendant rather than the plaintiff" (the bags in Toho prominently displayed the department store's name). In addition, the shield on Mad Engine's T-shirts was almost identical to DC's mark, differing only in the word "DAD" (versus "S") on the shield. Last, and most importantly to Judge Pregerson, DC itself markets many types of T-shirts and other apparel with its Superman logo—including its own version of a "Superdad" T-shirt—and thus the marketing channels and goods being sold were related so as to sufficiently confuse the consumer as to the source of the product.

Mad Engine next cited to the 2007 Central District of California case of Burnett v. Twentieth Century Fox Film Corp., where the Court granted the defendant's motion to dismiss because the plaintiff failed to state a claim for trademark infringement in a case involving Carol Burnett's "Charwoman" character being lampooned by the animated TV show "Family Guy." There, the Court held that, given the TV show's penchant for depicting public figures in "awkward, ridiculous and absurd" situations and the "distasteful and bizarre, even outrageous and offensive" manner in which Burnett's character was depicted, no reasonable consumer was likely to be confused as to whether that was a parody or not. Judge Pregerson was easily able to distinguish the Burnett case from the case before him because (as previously noted) the infringing T-shirt made the same "Superdad" joke as a T-shirt marketed by DC itself, and there is "no lampooning of Superman by making a play on 'Superman' with 'Superdad.'"

The judge thus concluded that, because Mad Engine's T-shirt was "saying something like, 'My dad is like Superman—he's Superdad,' " the T-shirt was not a parody of DC's mark and instead fell into the Second Circuit's Harley-Davidson logo category of being "more like a humorous use to promote the t-shirt's sales rather than a parody of Superman." Judge Pregerson ended his analysis by applying the eight Sleekcraft factors for determining consumer confusion to the facts of the case before him and held that they "do not weigh in favor of dismissing the complaint at this stage."

Click here to read Central District of California Judge Pregerson's 12/16/15 Order Denying Motion to Dismiss in DC Comics v. Mad Engine, Inc.

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On the Watch List—Supreme Court Agrees to Hear Challenge to the PTAB's Claims Construction Standard and IPR Institution Decisions

Why it matters: On January 15, 2016, the U.S. Supreme Court granted certiorari in Cuozzo Speed Technologies v. Lee, where it will review a 2015 Federal Circuit decision that raised questions as to the proper claims construction standard that should be applied by the Patent Trial and Appeal Board in inter partes review (IPR) proceedings as well as the circumstances (if any) under which the Patent Trial and Appeal Board's decision to institute an IPR proceeding can be subject to judicial review. We will be awaiting the Supreme Court's decision in this case with avid interest, as the ruling could fundamentally alter the way that the Patent Trial and Appeal Board conducts IPRs going forward.

Detailed discussion: On January 15, 2016, the U.S. Supreme Court granted certiorari in Cuozzo Speed Technologies v. Lee, agreeing to review a 2015 Federal Circuit decision that raised important questions about how the Patent Trial and Appeal Board (PTAB) conducts post-grant IPR proceedings. The Supreme Court will be considering the following two questions presented: "(1) Whether the court of appeals erred in holding that, in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board's decision whether to institute an IPR proceeding is judicially unreviewable."

A brief review of the facts that brought us to this point: In 2011, Congress passed the Leahy-Smith America Invents Act (AIA) that created the PTAB and three types of post-patent grant review proceedings, including the increasingly popular IPR. The new post-patent grant review system was meant to overhaul and streamline the existing processes for reconsidering the validity of patents and provide a quick and cost-effective alternative to litigation. On September 16, 2012—the first day that the new review system became operational—Garmin International, Inc., and Garmin USA, Inc. (collectively, "Garmin") filed an IPR petition with the PTAB that challenged three claims of a navigational patent held by Cuozzo Speed Technologies, LLC (Cuozzo). After hearings on Garmin's petition, the PTAB instituted the IPR—Cuozzo later claimed that this institution decision was outside the scope of the PTAB's authority because it improperly considered extraneous facts and evidence not raised in Garmin's IPR petition. In November 2013, after the conclusion of the IPR, the PTAB issued its final written decision invalidating the three claims of Cuozzo's patent as "obvious based on prior art." Integral to this ruling was the PTAB's use of a "broadest reasonable interpretation" standard for claim construction with respect to the phrase "integrally attached." Cuozzo appealed to the Federal Circuit, and although Cuozzo and Garmin settled their dispute, the U.S. Patent and Trademark Office (PTO) intervened to defend the PTAB's decision. In February 2015, the Federal Circuit (with one judge dissenting) affirmed the PTAB's decision, holding that (1) the PTAB had properly adopted the "broadest reasonable interpretation" standard for claim construction even though the federal courts and the International Trade Commission use a "plain and ordinary meaning" standard in construing claims challenging patent validity and (2) the PTAB's decision to institute the IPR was judicially unreviewable under the AIA, even though there were factual questions as to whether the PTAB exceeded its authority in doing so. In July 2015, a deeply divided panel of the Federal Circuit denied en banc review by a 6-5 vote, which led to Cuozzo filing its Petition for a Writ of Certiorari with the Supreme Court in October 2015. Of the nine amicus curiae briefs filed in support of the Court granting review, only two addressed the IPR institution decision judicial review bar with the remaining seven questioning the PTAB's use of the "broadest reasonable interpretation" claim construction standard.

The two legal issues the Supreme Court will be deciding could fundamentally change the way the PTAB conducts IPR proceedings. As Cuozzo argued in its writ petition, the PTAB's use of a claim construction standard—"broadest reasonable interpretation"—that differs from the "plain and ordinary meaning" standard used by the federal courts and the International Trade Commission (ITC) creates "tremendous uncertainty" due to "potentially conflicting invalidity decisions" across the board. It has also been cited as one of the reasons that the PTAB has been invalidating patent claims at such a "robust rate" since the new post-grant review system was put in place. Moreover, even though Section 314(d) of the AIA provides that "[t]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable," Cuozzo argued that this should not be an absolute and that there are circumstances (recognized by the Federal Circuit in other post-grant review contexts) where the PTAB's IPR institution decisions should be subject to judicial review—such as in this case where the PTAB allegedly exceeded its authority by instituting the IPR based on extraneous arguments and evidence not raised in Garmin's IPR petition.

As of the date of this writing, oral argument before the Court had yet to be set. We will be watching the developments in this case with great interest and report back.

See here to read the Petition for Writ of Certiorari filed on 10/6/15 by Cuozzo in the case of Cuozzo Speed Technologies, LLC (Petitioner) v. Lee (Respondent).

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In Brief—Updates and Interesting Items of Note

Updates to Prior Stories:

January 14, 2016—Cooper v. Lee: In light of the Federal Circuit's rejection of constitutional challenges to IPRs in December 2015 in the MCM case, the Federal Circuit granted plaintiff Cooper's procedural motion for affirmance of the district court's ruling, effectively ending his case. Update to our December 2015 newsletter article entitled "On the Watch List: Federal Circuit Rejects Constitutional Challenge to IPRs in MCM Portfolio LLC v. Hewlett-Packard Co."

December 28, 2015—Commil USA, LLC v. Cisco Systems, Inc.: On remand from the Supreme Court (which had held on 5/26/15 that a defendant's good faith belief regarding patent invalidity is not a defense to an induced infringement claim), the Federal Circuit held that Cisco never directly infringed on Commil's patents in the first place, thus precluding Cisco's liability under either of Commil's direct or induced infringement claims. Update to our December 2015 newsletter entitled "Eye on the Courts: IP Roundup—What do Wireless Equipment, Fingerprint Scanners, Textbooks, Skin Care Products, Military-Style Watches and Tiffany Ring Settings have in common?"

Items of Note:

December 21, 2015—Apple and Ericson settled their long-running patent infringement litigation: The parties entered into a seven-year license agreement that covers patents owned by both companies (reported to be similar to the agreement Ericson entered into with Samsung in 2014) pursuant to which Apple will make an initial payment to Ericson followed by royalties.

December 7, 2015—The PTO granted the Napa Valley Vintners (NVV) nonprofit trade association a "first of its kind" certification mark: The Certification Mark, reported to be the "first of its kind in the U.S.," will assist the NVV in protecting consumers from deceptive wine labeling practices. Certification Marks function to "certify" the nature or origin of goods and services, including the geographic location where they originated.

November 6, 2015 (dismissed January 15, 2016)—In-N-Out v. DoorDash: On 11/6/15, In-N-Out filed a complaint in the Central District of California against DoorDash for trademark infringement and false designation of origin under the Lanham Act, seeking to stop DoorDash from using In-N-Out's trademarked logos on its food delivery site and from delivering food acquired at In-N-Out restaurants to consumers. Without further action or answer filed by DoorDash, In-N-Out filed a motion for voluntary dismissal that was granted with prejudice on January 15, 2016.

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