Gibbons Law Alert
A group of brand owners has filed another complaint against eleven Alibaba and Taobao entities for claims including direct and contributory trademark counterfeiting and violations of the RICO statute. At issue is when and to what extent a service provider can be held liable for alleged trademark counterfeiting taking place on an online platform.
A recent district court decision has held that patent eligibility arguments not raised in invalidity contentions served pursuant to local patent rules are waived. In Good Technology Corporation v. MobileIron, Inc., No. 5:12-cv-5826, the United States District Court for the Northern District of California denied Defendant MobileIron, Inc.’s motion for judgment on the pleadings based on patent eligibility arguments that were not disclosed in either original or amended invalidity contentions.
In Sanrio, Inc. v. Ronnie Home Textile Inc., the U.S. District Court for the Central District of California recently refused to stay a civil case pending completion of a parallel criminal counterfeiting investigation. In Sanrio, the plaintiffs sued a corporation and two alleged principals for trademark infringement and other claims. The case was filed after law enforcement seized allegedly counterfeit goods offered for sale by the defendants and related evidence. The defendants argued that the civil case should be stayed because the seizure left them without means to substantively defend themselves. They further argued that allowing the civil case to go forward would implicate the individual defendants’ Fifth Amendment rights, though criminal charges had not been brought against them.
In Peters v. St. Joseph Servs. Corp., the United States District Court for the Southern District of Texas recently dismissed a class action complaint seeking damages arising out of a data incursion. The Court dismissed the complaint under Federal Rule of Civil Procedure 12(b)(1) for lack of standing without leave to amend, while granting the plaintiff 30 days to raise her state and common law claims in state court.
In Mylan Pharm., Inc. v. FDA, generic drug manufacturer Mylan Pharmaceuticals, Inc. (“Mylan”) challenged an FDA letter decision describing the agency’s treatment of original and reissue patents as “a single bundle of patent rights” when determining eligibility for 180-day exclusivity under the Hatch Waxman Act (pre-MMA). The United States District Court for the Northern District of West Virginia deferred to the FDA’s interpretation of the statute under step 2 of Chevron U.S.A. Inc. v. Natural Res. Def. Council, Inc..
A recent decision from the United States District Court of the District of Hawaii reveals an effective strategy for responding to non-practicing entity (NPE) suits and obtaining leverage early on in the litigation. This strategy takes into account the business model of some NPEs to name many (unconnected) industry players in one lawsuit and plead only bare allegations of patent infringement.
On September 17, 2014, the Second Circuit issued its long awaited decision in Gucci America, Inc. et. al. v. Li et. al., 2014 WL 4629049 (Appeal Nos. 11-3934 & 12-4557). In its decision, the Court vacated and remanded an August 2011 order compelling nonparty Bank of China (BOC) to comply with a document subpoena and asset freeze provision in an injunction and a May 2012 order denying the bank’s motion to reconsider. The court also reversed a November 2012 decision holding the bank in contempt for non-compliance with the court’s August 2011 order and imposing civil penalties.
Judge Koeltl of the United States District Court for the Southern District of New York recently adopted a recommended statutory damages award of $6.6 million dollars in a case involving trademark counterfeiting. Richemont Int’l S.A. et. al. v. Montesol Ou, et. al., 2014 WL 3732919, at *1 (S.D.N.Y. July 28, 2014). The plaintiff sellers of luxury goods had initially sought $78 million or $2 million per counterfeit mark per type of good counterfeited in connection with 88 domain names operated by the defendants. Richemont Int’l S.A. et. al. v. Montesol Ou, et. al., 2014 WL 3732887, at *4 (S.D.N.Y. May 13, 2014). But Magistrate Judge Pitman recommended instead an award of $6.6 million, including $6.3 million under the Trademark Act and $300,000 under the Anticybersquatting Consumer Protection Act.
The United States Court of Federal Claims recently deferred decision on whether to stay a litigation brought in 2011 by a patent owner against the United States. In the case, captioned Return Mail, Inc. v. United States, patent owner Return Mail seeks compensation under 28 U.S.C. § 1498(a) for what it alleges to be use and manufacture by or for the U.S. Postal Service (USPS) of its patent related to methods and systems for providing address change services. The government’s stay motion in the Return Mail litigation was filed on the same day that it filed a petition with the Patent Trial and Appeal Board (PTAB) for post-grant review (PGR) of the patent-in-suit, which it claims is a covered business method (CBM) patent under the America Invents Act. The government’s petition and related stay motion come more than three years into the litigation.
Some courts, whether by local patent rule or by individual order, are restricting the number of patent claim terms they are willing to construe. For example, the Northern District of California’s Local Patent Rule 4-1(b) directs parties to “jointly identify the 10 terms likely to be most significant to resolving the parties’ dispute, including those terms for which construction may be case or claim dispositive.” Other courts, such as the District of Massachusetts, have memorialized a suggestion that “no more than ten (10) terms per patent be identified as requiring construction.” See Appendix to D. Mass. Local Rule 16.6, section (B)(4)(d).