Summary Judgment

February 13, 2020

Federal Circuit finds in favor of Seirus Innovative over Columbia Sportswear

The United States Court of Appeals for the Federal Circuit issued an opinion as to Summary Judgment in the case of Columbia Sportswear North America, Inc. (“Columbia”), an Oregon Corporation, versus Seirus Innovative Accessories, Inc. (“Seirus”), a Utah Corporation. This appeal by Columbia came after a jury trial in the U.S. District Court for the Southern District of California found that claims 2 and 23 of U.S. Patent 8,453,270 (the “’270 Patent”) are invalid as anticipated and obvious. Seirus cross-appealed from the U.S. District Court for the District of Oregon’s grant of summary judgment that it infringes U.S. Patent D657,093 (the “’093 Patent”) and from the entry of the jury’s damages award. The Court of Appeals found claims 2 and 23 of the ‘270 Patent are invalid and that the Court for the District of Oregon erred in granting summary judgment for infringement of the ‘093 Patent.

Columbia originally filed suit in the District of Oregon on January 12, 2015 claiming that Seirus infringed both the ‘270 and ‘093 Patents. Seirus moved to transfer the case to the Southern District of California, but that motion was denied. The district court then “granted summary judgment that Seirus’s HeatWave products infringe the ‘093 patent” stating that “the difference in wave pattern, orientation, and the presence of Seirus’s logo” were characterized as “minor differences.” Seirus moved to transfer the case to the Southern District of California for a second time, two years after its first motion, in light of the decision in TC Heartland LLC v. Kraft Foods Grp. Brans LLC, 137 S. Ct. 1514 (2017). Due to the intervening case law, the District of Oregon transferred the remainder of the claims to the Southern District of California.

A jury trial was held in the Southern District of California and claims 2 and 3 of the ‘270 Patent were found to be invalid as anticipated and obvious. The jury also awarded Columbia $3,018,174 in damages for non-willful infringement of the ‘093 Patent. Both Parties “filed post-trial motions for judgment as a matter of law and for a new trial, but the court summarily denied them in a two-page opinion.” Subsequently, the Parties each filed notices of appeal.

The court’s denial of the motions for judgment as a matter of law is reviewed by the substantial evidence standard. “A jury’s verdict must be upheld if supported by substantial evidence.” OTR Wheel Eng’g, Inc. v. W. Worldwide Servs. Inc., 897 F.3d 1008, 1015 (9th Cir. 2018) (citing Unicolors, Inc. v. Urban Outfitters, Inc., 853 F.3d 980, 984 (9th Cir. 2017). The court’s denial of a motion for a new trial is reviewed for an abuse of discretion. Molski v. M.J. Cable, Inc., 481 F.3d 724, 728 (9th Cir. 2007). The granting of a new trial may only be done “if the verdict is contrary to the clear weight of the evidence, is based upon false or perjurious evidence, or to prevent a miscarriage of justice.” Passantino v. Johnson & Johnson Consumer Prods., Inc., 212 F.3d 493, 510 n.15 (9th Cir. 2000). Continue reading

February 15, 2017

Seventh Circuit Trade Dress Law: District Court Finds Functionality as a Matter of Law; Seventh Circuit Affirms

By Overhauser Law Offices, LLC

Chicago, Illinois – Arlington Specialties, Inc. of Elk Grove Village, Illinois appealed the summary judgment granted by the U.S. District Court of Northern Illinois, Eastern Division in favor of Urban Aid, Inc. of Los Angeles, California.

The plaintiff’s and defendant’s bags are shown on the last page:

The Seventh Circuit does not issue trade dress opinions very often, but it issued one January 27, 2017. It is especially helpful because it sums up the state of trade dress law in the Circuit.

January 29, 2013

Southern District of Indiana Denies All Summary Judgment Motions Regarding Family of Corn Oil Extraction Patents

By Overhauser Law Offices, LLC

Indianapolis, IN – The Southern District of Indiana has denied all summary judgment motions of both plaintiff CleanTech and all defendants in this multi-district litigation involving patents issued by the US Patent Office.

GreenShift Corp. and its subsidiary GS CleanTech Corp. (“CleanTech”) have brought a series of suits alleging infringement of their family of patented methods of extracting corn oil from byproducts of ethanol manufacturing. This multi-district litigation, In re Method of Processing Ethanol Byproducts and Related Subsystems (‘858) Patent Litigation, consolidates 11 separate actions in multiple states involving several similar patents in the Southern District of Indiana.

The defendants are: Big River Resources Galva, LLC; Big River Resources West Burlington, LLC; Cardinal Ethanol, LLC; ICM, Inc.; LincolnLand Agri-Energy, LLC; David J. Vander Griend; Iroquois Bio-Energy Co., LLC; Al-Corn Clean Fuel; Blue Flint Ethanol, LLC; ACE Ethanol, LLC; Lincolnway Energy, LLC; United Wisconsin Grain Producers, LLC; Bushmills Ethanol, Inc.; Chippewa Valley Ethanol Co.; Heartland Corn Products and Adkins Energy, LLC.

The initial litigation alleged infringement of one patent, U.S. Patent No. 7,601,858 (the “‘858 patent”), which was issued on October 13, 2009. CleanTech sued GEA Westfalia Separator, Inc. (not a party in this matter) and others alleging infringement of that patent shortly after its issuance.

Allegations of infringement of three additional patents, U.S. Patent Nos., 8,008,516 (the “‘516 patent”), 8,008,517 (the “‘517 patent”) and 8,283,484 (the “‘484 patent”; collectively known, together with the ‘858 patent, as the “‘858 patent family”) were later added. The patents in the ‘858 family share an identical specification and have substantially similar claim terms. As such, the court concluded that the construction of the ‘858 patent applied to all of the asserted claims in the other patents in the ‘858 family.

CleanTech’s patented methods recover corn oil by evaporating, concentrating and mechanically separating thin stillage (“stillage”), a byproduct of ethanol produced from corn, into two components: corn oil and a post-recovery syrup (“syrup”) with most of its corn oil removed. In the patents, the term “substantially oil free” (and the essentially identical term “substantially free of oil”) had been used to describe the syrup after the patented process had removed the corn oil.

The defendants argued that this language required that, to infringe upon the patented processing, a removal process must remove almost all of the corn oil from the syrup. The defendants moved for a finding on summary judgment that they had not infringed, arguing that the patented process did not include one which did not render the processed syrup “substantially oil free.” The court disagreed that this was the proper construction of the term.

Defendants also asked the court to construe “substantially oil free” to require that at least 95% of the oil from the unprocessed stillage be removed by the patented oil-removal process, thus rendering any less efficient process non-infringing. While the court agreed that a comparison between the oil levels in the input stillage and the output syrup was appropriate when considering the term, it declined to limit the protection afforded by the patent to this, or any, specific percentage and held that the term “substantially oil free” was to be interpreted according to its ordinary meaning.

In addressing the issue, the court discussed the language of the various patents and noted that, across the entire ‘858 patent family, the term “substantially oil free” had been found in only two substantially similar claims. Further, the one reference found in the specification had been parenthetical — “[r]ecombining the syrup (which is substantially free of oil) from the centrifuge…” — and, according to the court, “almost an afterthought.”

In sum, on this issue, the court found that none of the claims in the ‘858 patent family required that the post-oil-recovery syrup be substantially free of oil and concluded, instead, that the ‘858 patent family merely disclosed that the post-oil-recovery syrup was “substantially free of oil.” The court held that the primary focus of the invention was not the amount of oil that remained in the syrup but, instead, on the recovery of oil.

Additionally, the defendants (except Adkins) asked the court to revisit an earlier construction of the term “substantially oil,” as applied to the corn oil captured, asking that it be held to mean that the oil must be nearly pure. Defendant Cardinal further argued that the “substantially oil” term should be construed to mean nearly 100% pure, with only trace amounts of contaminants. The court declined to readdress the construction of this term.

The court also denied CleanTech’s motions for summary judgment against various defendants.

Finally, the court acknowledged that, since receiving the parties’ summary judgment motions, it had allowed CleanTech to amend its complaints against each defendant such that nearly all patents in the ‘858 family were asserted against each defendant. Consequently, all summary judgment motions were denied without prejudice and with leave to re-file them to address the amended complaint.

Practice Tip #1: Multi-district litigation affords consistency and judicial economy, as well as allowing plaintiffs and defendants to concentrate their efforts in one forum. However, lawsuits that are not settled before trial must later be remanded to the transferring court and to a judge who has had little opportunity to become familiar with the issues.

Practice Tip #2: In this case, CleanTech filed suit almost immediately after the issuance of the first of the patents in the ‘858 family. Thus, damages are limited to a reasonable royalty upon a showing that an infringer had actual notice of the published patent application and that the patent was subsequently issued on essentially the same claims. As such, if a patent is filed in anticipation of litigation, it is wise to provide such notice immediately upon publication of the patent application.

March 20, 2012

Southern District Grants Summary Judgment for Coach in Trademark Infringement Case Over Knock-Offs

By Overhauser Law Offices, LLC

Indianapolis; IN – The Southern District of Indiana has issued a partial summary judgment in favor of Coach, Inc. and finding that Teresa Barnes, the owner of a Muncie store, had committed trademark infringement and counterfeiting for the sale of knock-off Coach goods.

In April 2011, trademark attorneys for Coach, Inc. and Coach Services, Inc. of New York, New York, had filed a trademark infringement lawsuit in the Southern District of Indiana alleging that Chaos of Muncie, Chaos on Campus, LLC and Teresa Barnes of Muncie, Indiana have been offering for sale and advertising Coach knock-off products. The complaint alleged that in February 2011, the store was offering for sale fifty-five Coach knock-off items including flip-flops, handbags, wallets, and sunglasses. The complaint made claims of trademark counterfeiting, trademark infringement, trade dress infringement, false designation of origin, false advertising, trademark dilution, copyright infringement, common law trademark infringement, common law unfair competition, forgery, and counterfeiting. We blogged about the case here.

In the court’s decision granting summary judgment, it noted that Coach had requested summary judgment and Ms. Barnes had failed to reply. The court then reviewed the elements of trademark infringement and counterfeiting, found there was no factual dispute and found that the Coach should be granted summary judgment on the issue of liability. The court has ordered Coach to submit evidence on its damages.

Practice Tip: As the court noted, “A corporate officer, director or shareholder is, as a general matter, personally liable for all torts which she authorizes or directs or in which she participates, even if she acted as an agent of the corporation and not on her own behalf.” The court also noted that “an officer of a corporation can be personally liable for trademark infringement if the officer is a moving, active conscious force behind the defendant corporation’s infringement.” Citing Bambu Sales, Inc. v. Sultana Crackers, Inc., 683 F.Supp. 899, 913-14 (E.D.N.Y.1988). In this case, the court held that Ms. Barnes is personally liable because she was the sole owner of Chaos and managed all of the store’s business decisions.