Cislo & Thomas LLP Recent Successes

Below are some of the cases that we have successfully litigated in court for our clients, involving all aspects of patent, trademark, copyright, trade dress, trade secret, and domain dispute litigation. These successful cases appeared in various legal journals, and are now available for you below:


Aero Advanced Paint Technologies, Inc. v. International Aero Products, LLC, Case No. 2:18-cv-00394 (S.D. Ohio 2018).

Aero Advanced filed suit in the Southern District of Ohio against International Aero, alleging infringement of Aero Advanced’s AERO and Design trademark.  We filed a motion to dismiss or transfer on the grounds that we had filed first in the Central District of California and for the Ohio District Court’s lack of personal jurisdiction over our client.  The Ohio District Court granted our motion, holding that, contrary to Aero Advanced’s arguments in its opposition, our decision to file a surprise complaint in the California District Court while at the same time attempting to negotiate a resolution with Aero Advanced, without more, is not evidence of bad faith conduct when deciding whether to apply the first-to-file rule.

Tile Tech, Inc. v. Appian Way Sales, Inc. et al., Case No. 2:17-cv-01660 JLR (W.D. Wa. 2018).

Filed suit in the Western District of Washington alleging patent infringement and defending client against counterclaims of patent infringement and unfair competition.  The parties successfully reached a settlement of all claims and counterclaims in the action, and the entire action was dismissed with prejudice.

International Aero Products, LLC v. Aero Advanced Paint Technologies, Inc., 325 F. Supp.3d 1078  (C.D. Cal. 2018).

Filed suit in the Central District of California against Aero Advanced, a company based in Ohio, for infringing International Aero’s AERO and Design trademark.  Aero Advanced filed a motion to dismiss or transfer for lack of personal jurisdiction.  The Court found we had made a prima facie showing of personal jurisdiction over Aero Advanced by alleging that it (1) willfully infringed on International Aero’s trademark in this judicial district and showing (2) that its website includes several news articles and promotional advertisements targeted at this district and (3) that it was aware that International Aero’s principal place of business is in this district.

Pinkette Clothing, Inc. v. Lawrence Mallard Corp., Trademark Opposition No. 91223575 (Judgment entered August 30, 2018 sustaining Pinkette’s opposition)

Lawrence Mallard filed an application with the United States Patent and Trademark Office for registration of its LASH and Design trademark.  We initiated a trademark opposition proceeding before the Trademark Trial and Appeal Board opposing the registration, arguing that Lawrence Mallard’s applied-for trademark creates a likelihood of confusion with client’s LUSH trademark.  After trial in which we submitted evidence of the strength of our client’s LUSH trademark, similarity of the trademarks, similarity of the goods, and similarity of the channels of trade, The Trademark Trial and Appeal Board agreed and entered judgment in our client’s favor.

Adam Weintraub v. Sotheby’s International Realty, Inc. and Marcus Beck

On behalf of Marcus Beck, Cislo & Thomas successfully brought a motion to dismiss Plaintiff’s claims for infringement of the alleged trade name “Malibu Estates.”  Plaintiff alleged that he had exclusive rights to the name “Malibu Estates” for the sale of real estate in Malibu, California.  Cislo & Thomas argued that “Malibu Estates” was invalid as a trade name because it was geographically descriptive and lacked secondary meaning.  The Court agreed and dismissed the complaint ruling that Plaintiff had failed to plead facts sufficient to show that he had a valid and protectable interest in the alleged trade name.

Fitness International, LLC v. Furqan Hameed, Case No. FA1808001800980 (FORUM Aug. 28, 2018).

On behalf of Fitness International, Inc., Cislo & Thomas successfully brought an action under the ICANN Uniform Domain-Name Dispute-Resolution Policy seeking transfer of the domain The Registrant appeared to be holding the domain for the purpose of selling it to Fitness International, the owner of the famous marks LA FITNESS. After considering the parties’ arguments, the Forum arbiter awarded transfer of the domain finding that Cislo & Thomas successfully established Fitness International’s trademark rights in the marks LA FITNESS, the Registrant had no legitimate rights in the domain name, and the domain was registered the domain in bad faith.

Diopsys, Inc. v. Konan Medical USA, Inc., Case No.: 2:15-cv-05882-WHW (D.NJ 2018).

In an action in which plaintiff alleged infringement of three patents, two software copyrights, and one trademark, as well as alleging unfair competition, product disparagement, and reformation of contract against my clients, the parties reached a settlement of all claims in the action. The entire action was dismissed with prejudice.

Pinkette Clothing, Inc. v. Cosmetic Warriors Ltd., ___ F.3d ___, Case No. 17-55325 (9th Cir. 2018).

Cosmetic Warriors (CW), which had used LUSH for cosmetics for nearly 20 years, challenged Pinkette’s use of LUSH as a trademark for clothing. We developed Pinkette’s defenses that CW’s rights in LUSH as a trademark do not extend to clothing and that CW’s delay in challenging Pinkette’s use of LUSH as a trademark for clothing (more than 12 years after Pinkette had begun using the mark and nearly five years after Pinkette had federally registered its LUSH trademark for clothing) was unreasonable delay, barring CW from asserting its trademark rights against Pinkette. The Ninth Circuit Court of Appeals affirmed the District Court’s judgment that CW’s delay was unreasonable and as a result CW’s LUSH trademark does not extend to clothing and CW is barred from enjoining Pinkette’s use of LUSH for clothing.

Guthy-Renker, LLC v. 0cean 0cean, FA1804001780592

On behalf of Guthy-Renker, LLC, Cislo & Thomas successfully brought an action under the ICANN Uniform Domain-Name Dispute-Resolution Policy before the Forum.  After considering the parties’ arguments, the Forum arbiter awarded transfer of the finding that Cislo & Thomas successfully established Guthy-Renker’s trademark rights in the name OCEAN X, the Registrant had no legitimate rights in the domain name, and the domain was registered the domain in bad faith.

Blindlight, LLC v. Horseless Cowboy, LLC. 2:17-cv-03497, U.S.D.C., Central District of California (January 2018). 

Blindlight, LLC (”Blindlight”) (represented by Cislo & Thomas LLP) sued Defendants Timothy Cubbison, Austin Snyder, and Horseless Cowboy, LLC for, inter alia,  trade secret misappropriation and violation of the Federal Computer Fraud and Abuse Act. After obtaining a preliminary injunction on the Defendants, Blindlight successfully settled the case, with the parties entering into a confidential settlement agreement and stipulating that the preliminary injunction becomes a permanent injunction and dismissing the case with prejudice.

Colt International Clothing, Inc. dba Colt LED v. Quasar Science, LLC et al.2:16-CD-03040 AB (C.D. Cal. 2017).

Initiated a patent infringement action against a competitor and its distributor for infringing our client’s patent on a lighting harness used in movie studios for positioning a bank of long LED light tubes.  Defendant filed a motion for summary judgement arguing that our client’s patent was invalid based on defendant’s proffered evidence: an invoice, an undated photograph, and a declaration of the photographer alleging that the undated photograph was taken at the time of the invoice, long before the patent’s priority date.  The Court denied Quasar’s motion, agreeing with our client’s legal showing that the photograph, invoice, and declaration were not sufficient to invalidate the patent as a matter of law.

Blackbird Tech LLC dba Blackbird Technologies v. TuffStuff Fitness International, Inc. and The Gym Source, Inc., Case No. 2:17-cv-03487-R-GJS, U.S.D.C., Central District of California, October 2017

TuffStuff Fitness International, Inc. (“TuffStuff”), a renowned manufacturer of exercise equipment, (represented by Cislo & Thomas LLP) successfully settled a patent infringement case against Blackbird Tech LLC dba Blackbird Technologies (“Blackbird”), a holder of many patents, including patents concerning exercise equipment.  The suit was first filed in New Jersey.  Cislo & Thomas LLP moved to transfer the case to a more favorable jurisdiction in California.  The judge granted TuffStuff’s Motion to Transfer the case from New Jersey to the Central District of California.  Thereafter, Cislo & Thomas LLP was able to negotiate a favorable settlement and the case was dismissed.

Advanced Steel Recovery, LLC v. X-Body Equipment, Inc. et al., Case No. 2:16-CV-00148-KJM-EFB, U.S.D.C., Eastern District of California, September 2017

Advanced Steel Recovery, LLC (“ASR”) (represented by Cislo & Thomas LLP) sued the defendants for patent infringement alleging that certain technology to load scrap or other materials into sea containers infringed ASR’s patent.  Defendants moved to dismiss ASR’s first amended complaint and/or moved for summary judgment, and for sanctions.  Defendants argued that the patent claims asserted in the case contained certain language that was not adequately supported by ASR’s predecessor patents such that that asserted patent claims were not entitled to an earlier effective filing date.  As a result, so Defendants argued, ASR’s asserted patent claims were invalid because the accused product pre-dated the effective filing date of the application for ASR’s asserted patent.  The Court ruled in ASR’s favor, finding that ASR has sufficiently pled a claim for patent infringement, that genuine disputes of material fact existed to preclude summary judgment, and that sanctions were unwarranted.

Automotive Racing Products, Inc. v. Mission Trading Company, Inc., Case No. 2:16-cv-09348-MWF-JEM, U.S.D.C., Central District of California, June 2017.

Automotive Racing Products, Inc. (“ARP”) (represented by Cislo & Thomas LLP) sued Mission Trading Company, Inc. (“MTC”) for trademark infringement and unfair competition alleging, among other things, that MTC admitted trademark infringement by filing a use-based federal trademark application for “ARP” in connection with various automotive products, goods for which ARP has been well-known for many years.  Cislo & Thomas LLP negotiated a favorable settlement on behalf of ARP that resulted in a permanent injunction barring MTC from having any further dealings in ARP-branded automotive products, and barring MTC from using ARP’s product designator, 250-4202, in connection with any automotive products.

Blindlight, LLC v. Timothy Cubbison, Austin Snyder and Horseless Cowboy, LLC., Case No. 2:17-cv-03497, U.S.D.C., Central District of California, May 2017.

In the matter of Blindlight, LLC v. Timothy Cubbison, Austin Snyder and Horseless Cowboy, LLC, Central District of California Case No. 17-03497, Cislo & Thomas successfully obtained a preliminary injunction on behalf of the Plaintiff enjoining the Plaintiff’s former employees from using trade secret data, the former employees had copied from their former employer and used to start a competing business.  In particular, the defendant employees were enjoined from: “using all files copied by Defendants from Blindlight’s computer systems, to solicit business from, or initiate any further contact with, any customer of Blindlight whom Defendants served while employed at Blindlight, and/or any prospective customers or any customers whose identities Defendants’ learned of as a result of their employment with Blindlight.”  The Plaintiff, Blindlight, represented by Cislo & Thomas, is a leading provider of voice-over production services to videogame manufacturers, worldwide.

United Const. Products, Inc. v. Tile Tech, Inc., 843 F. 3d 1363 (Fed. Cir. 2016)

Tile Tech (our client) received a default judgment under other counsel, and retained Cislo & Thomas LLP to appeal the judgement.  On appeal, we obtained a decision that greatly narrowed the judgment, reducing the district court’s injunction of “any substantially similar” product to an injunction of only any product that “actually infringes;” removing the district court’s requirement that Tile Tech hand over its molds; and replacing the district court’s prohibition on “using images of United’s products and drawings” to simply prohibiting any misrepresentation or false identification of United products as its own.

Lifetime Industries, Inc. v. Trim-Lok, Inc., Case No. 3:13-CV-819 RLM, U.S.D.C., Northern District of Indiana, December 2016.

Cislo & Thomas defeats a motion to stay proceedings seeking attorney’s fees for its client, Trim-Lok, Inc.  Lifetime Industries, Inc. filed a claim against Trim-Lok (represented by Cislo & Thomas) for patent infringement.  The patent infringement case was ultimately defeated because Lifetime Industries could not state a claim for which relief could be granted after three attempts.  As a result, Trim-Lok filed a motion for its attorney’s fees (“fee motion”).  In response, Lifetime Industries appealed the decision to the Court of Appeals for the Federal Circuit, and filed a motion to stay the fee motion until the appeal was resolved.  In response, Trim-Lok opposed the motion to stay the fee motion because Lifetime Industries had not shown enough to warrant a stay of the fee motion.  The District Court agreed with Trim-Lok and denied Lifetime Industries’ motion to stay.

Automotive Racing Products, Inc. v. Matt Kay aka Matthew Scott Kriegsfeld et al., Case No. 3:15-cv-01928-H-WVG, U.S.D.C., Southern District of California (2016)

Automotive Racing Products, Inc. (“ARP”) (represented by Cislo & Thomas LLP) sued Matt Kay aka Matthew Scott Kriegsfeld and SD Mailbox Holdings, LLC for counterfeiting, trademark infringement, and unfair competition in relation to what ARP believed to be the defendants’ sales of a counterfeit version of ARP’s Ford 6.0L Powerstroke Diesel Head Stud Kit. After taking extensive discovery from the defendants, and with defendants facing the potential for stiff penalties for counterfeiting, Cislo & Thomas LLP negotiated a favorable settlement on behalf of ARP that, among other things, vindicated the validity and enforceability of ARP’s trademark rights and resulted in a permanent injunction against defendants having any further dealings in ARP-branded products.

Lifetime Industries, Inc. v. Trim-Lok, Inc., Case No. 3:13-CV-819 RLM, U.S.D.C., Northern District of Indiana, 2016.

Lifetime Industries, Inc. (LTI) sued Trim-Lok for patent infringement. Trim-Lok (represented by Cislo & Thomas) moved to dismiss the case because LTI was unable to allege facts that Trim-Lok was a direct infringer or that Trim-Lok had any intent for its customers to infringe LTI’s patent.  LTI repeatedly attempted to correct its defect, but after three failed attempts, the court finally dismissed the case.  Trim-Lok has filed a motion for attorney’s fees because Trim-Lok was not a direct infringer, and Trim-Lok never encouraged or intended its customers to infringe LTI’s patent; and therefore, Trim-Lok believes LTI brought the lawsuit with ulterior, competitive motives.

SonoSim, Inc. v. Medaphor Limited, Case No. CV 16-2847-GW (MRWx), U.S.D.C., Central District of California, 2016

SonoSim is the exclusive licensee of the patent-in-suit.  SonoSim along with the patent owner, UC Regents brought suit against MedaPhor for patent infringement. MedaPhor attempted to dismiss SonoSim from the suit.  The court agreed with SonoSim that it had standing to sue, and that SonoSim could have  even brought the  suit in its  own name as it had originally done.  This case is significant because in most cases involving a licensor and an exclusive licensee, either the licensor sues by itself without standing to sue because it gave away all substantial rights to the exclusive licensee, or the exclusive licensee sues without standing because it did not receive all substantial rights from the licensor. In either of the previous situations, the licensor and exclusive licensee could sue together to avoid  the standing issue.  This case is unique because SonoSim attempted to avoid the standing issue by bringing the suit with the licensor.   MedaPhor unsuccessfully tried to classify SonoSim as a bare licensee with no standing to sue regardless of whether the licensor was joined.

8975 Licensing, LLC v. MasterCare Software, LLC, U.S.D.C., Eastern District of Texas, Case No. 4:15-cv-00823-ALM (2016).

MasterCare Software, LLC was sued by 8975 Licensing in the United States District Court Eastern District of Texas (Sherman Division) for patent infringement related to a software process.  MasterCare Software (represented by Cislo & Thomas in conjunction with Gary W. Nevers of Nevers, Palazzo, Packard, Wildermuth & Wynner, P.C.) aggressively notified counsel for 8975 Licensing of a number of defenses it would assert, as well as a motion to transfer the case from the Eastern District of Texas to the Central District of California that it intended to bring.  Shortly thereafter, a favorable settlement was negotiated, and 8975 Licensing dismissed its case with prejudice.

Standup Paddle Sports, LLC v. Focus Surfboards, Inc., U.S.D.C., Central District of California, Case No. CV 15-8467 JAK-JC.

Standup Paddle Sports, LLC (“SUP”), based in Santa Barbara, California, sued Focus Surfboards, Inc. (“Focus”) for various violations of the Lanham Act, unfair competition, fraud, and breach of contract.  The complaint alleged that Focus covered over, or allowed to be covered over, SUP’s trademarks and logos on the standup paddle board used by Mo Freitas in a standup paddle board racing competition in Idaho that he won.  This obscuring of SUP’s trademarks cost SUP valuable publicity.  SUP (represented by Cislo & Thomas and co-counsel David Tappeiner and Mark DePaco of Fell, Marking, Abkin, Montgomery, Granet & Raney LLP) forcefully stated SUP’s claims in the complaint, and aggressively pursued early discovery in the case, resulting in a favorable settlement on behalf of SUP before litigation costs began to dramatically escalate.

Fitness International, LLC v. Alistair Swodeck / Victor and Murray, FA1506001623644 

Cislo & Thomas was successful in obtaining transfer of the domain name for its client Fitness International, the owner of several LA FITNESS marks, under a Uniform Domain Name Proceeding before the Forum.  The domain name holder was hiding behind a confidential proxy and was using the domain for purported services that appeared to be offered by the legitimate owner of the marks.  Despite the improper domain name holder’s attempt to hide behind a proxy, Cislo & Thomas successfully argued that the domain name holder had no legitimate rights in the domain name and registered it in bad faith, and the Forum ordered transfer of the domain.

The Tire Hanger Corp. v. My Car Guy Concierge Services, Inc., et al., U.S.D.C., Central District of California, Case No.5:14-cv-00549-ODW (MANx).

Cislo & Thomas partner Peter Veregge represented the plaintiff in successfully lifting an interim stay order.  The case had been stayed pending the decision of the Patent Trial and Appeal Board (“PTAB”) as to whether to institute inter partes review (“IPR”) for the two asserted patents.  When the PTAB denied one of the IPRs, we argued that the stay was not justified because fewer than all of the patents were under review.  Relying on our arguments and case law, on June 16, 2015, the Court lifted the stay and allowed the case to proceed.

Long Beach City Employees Federal Credit Union v. Tech Domain Services Private Limited, FA1502001603023

Cislo & Thomas successfully obtained transfer of the domain name in a UDRP proceeding before the National Arbitration Forum on behalf of its client Long Beach City Employees Federal Credit Union.  The panel found that the domain name holder had no legitimate rights in the mark LBCEFCU, and the registered domain name was being used by Tech Domain in bad faith.  The ruling supports the client’s long standing common law rights in and to its trademark LBCEFCU and successfully halted a rogue third party from creating confusion in the marketplace and profiting from our client’s intellectual property.

Fitness International, LLC v. Holder of Domain Name, FA1411001592358

Cislo & Thomas successfully obtained transfer of the domain name in a UDRP proceeding before the National Arbitration Forum on behalf of its client Fitness International based upon its position that the domain name holder had no legitimate rights in the name LA FITNESS, and that it had registered and was holding the domain in bad faith.  The ruling supports the client’s long standing rights in and to its trademark LA FITNESS and successfully prevented a third party from trading off of the success of the name.

Table Bluff Brewing, Inc. v. Aviator Brewing Company, Inc.

Cislo & Thomas LLP (along with co-counsel Coats & Bennett of North Carolina) (representing Defendant Aviator Brewing Co.) successfully moved the Court to dismiss the case for lack of personal jurisdiction.  Aviator Brewing was sued for trademark infringement, among other things, in the Northern District of California. It was determined that Aviator, based in North Carolina, had insufficient contacts with California for the Court to exercise personal jurisdiction over it.  As a result, the Court dismissed the case against Aviator.

Lifetime Industries, Inc. v. Trim-Lok, Inc., Case No. 3:13-CV-819 RLM, U.S.D.C., Northern District of Indiana, 2014.

Cislo & Thomas won a motion to dismiss a complaint for failure to state a claim upon which relief could be granted because the complaint was so lacking in facts that it could not provide the defendant proper notice as to which of their products was infringing the asserted patent. This case has particular significance because the complaint purportedly followed the guidelines of Form 18, which the Federal Rules of Civil Procedure states is adequate. The court, however, found Form 18 antiquated in light of recent case law. This decision continues to raise the pleading standards for patent infringement cases.

Amini Innovation Corporation v. McFerran Home Furnishings, Inc. and Sharon Lin, U.S.D.C., Central District of California,  LEXIS 93477, July 9, 2014.

Amini Innovation Corporation (“AICO”) (represented by Cislo & Thomas LLP) is the owner of a substantial amount of intellectual property related to its furniture designs. Early in 2014, AICO learned that the Defendants were offering for sale and selling items in a bedroom collection that AICO believed were within the scope of its intellectual property rights. AICO subsequently filed suit alleging copyright infringement and design patent infringement. In its complaint, AICO alleged that the infringements were willful based, in part, because of the defendants’ past history of infringing AICO’s and others’ intellectual property rights related to furniture. The defendants filed a motion to strike the allegations, among other things, in the complaint regarding the defendants’ alleged past history of infringements, claiming that such matter was, in the language of Fed.R.Civ.P. 12(f) immaterial and impertinent, as well as prejudicial. AICO successfully opposed the defendants’ motion. The Court determined that the allegations in the complaint related to the defendants’ past litigation history and past infringements was potentially relevant to the issue of willfulness, and hence, damages. As such, Judge Lew denied the defendants’ motion to strike in that regard. The ruling is significant in that willfulness allegations are common in complaints for intellectual property infringement. The ruling makes it clear that a defendant that is allegedly a “repeat offender” can have its “repeat offender” status raised for purposes of demonstrating willful infringement.

Urban Home, Inc. v. Cordillera Investment Company, LLC, U.S.D.C., Central District of California, Case No. 13-8502 GAF(JEMx).

Plaintiff Urban Home, Inc. (represented by Cislo & Thomas LLP) filed an action for trademark infringement, unfair competition, and trademark dilution against Cordillera Investment Company, LLC in connection with Cordillera’s use of the name “Urban Home” online and in video advertisements in what Urban Home alleged was a confusingly similar manner. Both companies are furniture retailers. In response to the complaint, Cordillera filed a motion to dismiss under Fed.R.Civ.P. 12(b)(6) asserting that the case was not ripe for adjudication, and that it is a good faith remote junior user under the Tea Rose-Rectanus doctrine enunciated by the U.S. Supreme Court nearly 100 years ago. The Court ruled that Urban Home had adequately pled all the elements of its trademark infringement and unfair competition claims, that the case was ripe for adjudication, and that Urban Home had alleged sufficient facts to show that, if true, Cordillera may not be a good faith remote junior user, but that it may have “appropriated Plaintiff’s name” and conducted business in Southern California after Urban Home was an established business. Thus, the Court held that Urban Home had pled sufficient facts to overcome the Tea Rose-Rectanus doctrine at the pleading stage. Accordingly, Cordillera’s motion to dismiss Urban Home’s trademark infringement and unfair competition claims was denied. Interestingly, the Court questioned whether the Tea Rose-Rectanus doctrine would survive in the era of internet-based business, but did not make any definitive ruling on that point.

Imaginetix, Inc. v. Nikken, Inc., [and nine individual defendants], U.S.D.C., Central District of California, Case No. CV 11-3727 GHK (VBKx), June 18, 2014

Cislo & Thomas LLP represented all ten defendants-in-suit in which the plaintiff had alleged five of the corporate client’s product lines infringed its patent and had sought $31 million in patent infringement damages. A settlement was reached on terms very favorable for our clients in which the plaintiff agreed that our clients did absolutely nothing wrong, and our clients continue to sell all of the accused products without restriction.

Amini Innovation Corporation v. McFerran Home Furnishings and Sharon Lin, U.S.D.C., Central District of California, Case No. 13-6496 RSWL(SSx), May 19, 2014

This action primarily involved product configuration trade dress infringement. The defendants served a deposition subpoena on Jane Seymour, actress and celebrity endorser of plaintiff Amini Innovation Corporation’s Hollywood Swank bedroom collection. Ms. Seymour (represented by Cislo & Thomas LLP) filed a motion to quash the subpoena. In ruling for Ms. Seymour, the Court quashed the subpoena finding that the defendants did not adequately demonstrate that they had sought the discovery in question from the plaintiff, and that they could not obtain the discovery in question from the plaintiff, as opposed to Ms. Seymour. The Court rejected as unsupported the defendants’ claim that Ms. Seymour did not have a right to object to the subpoena as seeking duplicative discovery. The Court also found that the burden for Ms. Seymour to comply with the subpoena would be great. Accordingly, the subpoena was quashed.

VirnetX v. Apple, 767 F.3d 1308, 1322 (Fed. Cir. 2014).  The Court of Appeal for the Federal Circuit affirmed a jury’s verdict that that Apple’s FaceTime infringes several of plaintiff VirnetX’s patents, which cover VPN secure communications protocols over the internet of patent infringement.  Representing co-plaintiff and leading defense and national security company, Science Applications International Corp. (SAIC), we prepared a number of opinions of counsel that Apple’s FaceTime indeed infringes these patents as SAIC had retained an part interest in the patents after having sold them to VirnetX.  Also assisted with deposition questions and jury instructions regarding this patent infringement by Apple.  Four trials ensued.  A recent jury verdict on April 10, 2018 brought the total damages award to $0.942 billion, and a further trial begins on April 12, 2018 to determine if Apple’s infringement was willful, which could cause this amount to double.

EDCO Plastics, Inc. v. Allynce, Inc., Ralph Dudley, Cassandra Samano, and Dispensing Dynamics International, U.S.D.C., Central District of California, Case No. 12-1168 JVS(JPRx), July 15, 2013

After Dispensing Dynamics International (“DDI”) (represented by Cislo & Thomas LLP) succeeded in moving the Court to dismiss EDCO’s breach of contract against DDI with prejudice, and EDCO’s fraud claim against DDI without prejudice, DDI moved the Court for an award of attorneys’ fees and costs based on a contractual provision providing for prevailing party attorneys’ fees and costs in any litigation arising out of an Asset Purchase Agreement between EDCO and DDI.  In response to DDI’s motion, the Court ruled that DDI was the prevailing party on both of EDCO’s claims against it and awarded DDI the full amount of its attorneys’ fees and costs requested ($147,342.69).  In so ruling, the Court determined that the rates charged by Cislo & Thomas LLP’s attorneys handling the case were reasonable.

World Trading 23, Inc. v. EDO Trading, Inc. et al., U.S.D.C., Central District of California, Case No. 12-10886 ODW(PJWx),  April 24, 2013

Plaintiff World Trading 23, Inc. (represented by Cislo & Thomas) sued EDO Trading, Inc. et al. for infringing a copyright for the design of a remote control helicopter.  The parties, having been in previous litigation over unrelated matters, entered into a settlement agreement with a broad, general release for past and future claims arising out of, connected with, or incidental to the settled action.  In response to Plaintiff’s complaint, Defendants filed a motion for judgment on the pleadings asserting that the release in the prior settlement agreement barred the present claim for copyright infringement.  After converting the motion to a motion for summary judgment (because the settlement agreement was not in the pleadings), the Court determined that Plaintiff’s copyright claim did not have the requisite nexus to the prior action such that it could be said that the present action arose out of, was connected with, or was incidental to the prior, settled action.  Accordingly, the Court denied the Defendants’ motion for summary judgment and allowed Plaintiff’s claim to proceed.

EDCO Plastics, Inc. v. Allynce, Inc., Ralph Dudley, Cassandra Samano, and Dispensing Dynamics International, U.S.D.C., Central District of California, Case No. 12-1168 JVS(JPRx), March 18, 2013

In July of 2012, EDCO Plastics, Inc. (“EDCO”), owner of United States Patent 6,962,013, sued Allynce, Dudley, and Samano (“Allynce Defendants”) for infringing the ‘013 Patent based on activities that occurred in 2012.  In its answer to the complaint, the Allynce defendants asserted a generic invalidity defense.  Apparently, one of the Allynce defendants obtained copies of invoices (whether legally or not is unclear) that purported to show that there may have been an alleged premature public disclosure of the subject matter of the ‘013 Patent.

In 2009, EDCO purchased the ‘013 Patent, among numerous other items, in an Asset Purchase Agreement with a predecessor of Dispensing Dynamics International (“DDI”).  As a result of the alleged premature public disclosures, EDCO filed a first amended complaint in which it named DDI as a defendant, suing for fraud and breach of contract.  EDCO claimed that DDI’s predecessor had misrepresented the validity of the ‘013 Patent during the negotiation of the Asset Purchase Agreement in 2009.

DDI responded to the first amended complaint by filing a motion to dismiss/strike and for a more definite statement.  The Court granted the motion in part by dismissing with prejudice EDCO’s breach of contract claim against DDI based on the provisions of the Asset Purchase Agreement that specified the available remedies, none of which included a claim for breach of contract.  The Court also granted DDI’s motion for more definite statement relating to the plea for special damages.  EDCO thereafter filed a second amended complaint.

DDI responded to the second amended complaint by filing a motion to dismiss EDCO’s remaining fraud claim against it for lack of subject matter jurisdiction, asserting that subject matter jurisdiction was not available under “arising under” jurisdiction, nor under supplemental jurisdiction.  DDI also asserted that the fraud claim against it was not ripe because the ‘013 Patent was presumed valid and no determination of invalidity had been made by a court or the USPTO.  The Court granted DDI’s second motion to dismiss, determining that the Court lacked subject matter jurisdiction under “arising under” jurisdiction as well as supplemental jurisdiction.  The Court relied upon the recently decided U.S. Supreme Court case, Gunn v. Minton, and decided against exercising its supplemental jurisdiction based on the fact that the patent infringement claim against the Allynce Defendants and the fraud claim against DDI did not arise from a common nucleus of operative facts.  The Court further stated that even if supplemental jurisdiction existed, it would decline to exercise it because of the potential for jury confusion arising from EDCO’s contradictory positions with respect to the ‘013 Patent.


Urban Home v. Technology Online LLC/WhoisPrivacy Service Pty Ltd., Case No. D2012-2437, February 18, 2013

Cislo & Thomas successfully brought an action before the WIPO Arbitration and Mediation Center on behalf of its client Urban Home seeking transfer of the domain name under the Uniform Domain Name Dispute Resolution Policy (“Policy”).  Urban Home is the owner of a U.S. Trademark registration for its URBAN HOME mark for use in connection with home furnishings, namely furniture, and retail and online store services featuring  home furnishings and furniture.  Technology Online was using the disputed domain name in connection with an active website that contained content related to furnishing home interiors and a number of pay-per-click links to competitor home furnishing suppliers.  Technology Online vehemently disputed the evidence and contentions in its almost 300 page response and annexes.  Despite Technology Online’s position, the panel concluded that Urban Home’s evidence and contentions supported transfer of the domain name and ruled in favor of Urban Home.  In particular, the panel found that Technology Online was using the disputed domain name for commercial gain to attract Internet users to its website by creating confusion as to Urban Home acting as source, sponsor, affiliate or endorser of Technology Online’s website.


Prototype Productions, Inc. et al. v. Reset, Inc., U.S.D.C., Eastern District of Virginia, 2012 U.S. Dist. LEXIS 1306 (Jan. 5, 2012, Decided), 2011 U.S. Dist. LEXIS 150666 (Oct. 14, 2011, Decided)

Reset (represented by Cislo & Thomas LLP) is a California corporation that was sued for patent infringement in the Eastern District of Virginia over a powered rail that provides power to accessories such as laser sights that are mounted on military rifles. Reset had not sold any units of the product at the time of the suit, although prototypes of its product had been promoted to the military and at various trade shows around the United States. Reset moved to dismiss the case for lack of personal jurisdiction or improper venue, or, in the alternative, to transfer the case to the Central District of California. In his October 14, 2011 ruling, Magistrate Judge F. Bradford Stillman found that personal jurisdiction over Reset was lacking because it had no presence in Virginia, and it had not marketed nor sold its powered rail product in Virginia. In addition, Magistrate Judge Stillman’s report and recommendation found that jurisdiction under the “stream of commerce” theory was untenable. On January 5, 2012, District Judge Raymond A. Jackson adopted Magistrate Judge Stillman’s report and recommendations, and overruled the plaintiff’s objections thereto. Both judges also denied the plaintiff’s request for jurisdictional discovery for lack of specificity as to the discovery sought. Accordingly, the case was transferred to the Central District of California.


Alacer Corp. v. AMT Group dba Imbide The Drink Tank, Case No. SACV 11-736-JVS (RNBx)

Cislo & Thomas, LLP successfully concluded an action filed on behalf of client Alacer Corp., the owner of the popular vitamin and nutritional supplement products called EMERGEN-C. In the action, Alacer claimed trademark infringement, false designation of origin, common law trademark infringement, unfair competition, and dilution based upon AMT Group’s use of the mark RESURGEN-C for the same or similar products. The parties resolved their differences in a confidential settlement agreement wherein AMT Group agreed to cease using the offending mark.


Kim Seng Co. v. J&A Importers, Inc., U.S.D.C., Central District of California, Case No. 10-CV-00742-CAS, 810 F. Supp. 2d 1046, 2011

Cislo & Thomas successfully defended J&A Importers, Inc. against copyright and trade dress infringement claims involving rice noodle packaging. On summary judgment, we showed that the plaintiff did not have proper title to the copyright for the package photograph, which the plaintiff maintained was the basis for the infringement. In addition, we showed that the plaintiff did not have sufficient evidence of secondary meaning to prove its trade dress claims. We also defeated plaintiff’s post-judgment motion to alter or amend the judgment. The plaintiff also brought a motion to enforce a settlement, which we defeated because the settlement offer had expired prior to the plaintiff’s acceptance. In addition, we obtained an award of attorney fees exceeding $250,000 for our client, due in part to plaintiff’s failure to have a reasonable basis for its copyright claims.


Clearpractice, LLC v. Nimble, LLC et al., Case No. 4:11CV00725 JCH, U.S.D.C., Eastern District of Missouri, 2011

Cislo & Thomas won a motion to dismiss for lack of personal jurisdiction in a declaratory judgment action for non-infringement against its client’s trademark. Plaintiff, ClearPractice, asserted personal jurisdiction over Nimble based on Nimble’s website, an alleged contact in Missouri, and a cease-and-desist letter. A parallel trademark infringement case was filed in the Central District of California by Nimble. Cislo & Thomas argued that Nimble’s website lacked the level of interactivity required for personal jurisdiction, the allegations of a contact in Missouri lacked persuasive evidence, and a cease-and-desist letter without more was not enough. Cislo & Thomas further defeated plaintiff’s argument to apply the first-to-file rule to keep the lawsuit in Missouri. In granting Cislo & Thomas’ motion to dismiss, the court agreed that a website that did not sell any products was not sufficient for personal jurisdiction even though potential customers could submit their contact information. In addition, the court agreed with Cislo & Thomas that plaintiff failed to prove any contacts in Missouri to the extent that jurisdictional discovery was not even warranted. Finally, the court found plaintiff’s action of filing a declaratory judgment in response to a cease-and-desist letter was sufficient to abrogate the first-to-file rule as plaintiff could not prove that the cease-and-desist letter affected its business practices.


Reshare v. Nikken, Case No. 10-CV-01936 JNE (D. Minn.) 2011
Cislo & Thomas successfully negotiated a settlement of this patent infringement suit involving a computer assisted selling system.


Imagenetix, Inc. v. Nikken, Inc., [and nine individual defendants], U.S.D.C., Central District of California, Case No. CV 11-3727 GHK (VBKx), 2011
Representing all ten defendants in a $31 million patent infringement suit, Cislo & Thomas LLP brought the plaintiff’s entire suit to a halt. It did so by persuading the U.S. Patent Office to order reexamination of the plaintiff’s asserted patent based on Cislo & Thomas LLP’s showing that the patent should be invalidated. The asserted patent claims a method of treating osteoarthritis using a particular active ingredient. Cislo & Thomas LLP presented numerous examples of related methods to show that the patented method was merely obvious and thus invalid. Cislo & Thomas then secured from the district court a dismissal of nine of the ten defendants, a stay of the lawsuit pending the reexamination, and the right of the lone remaining defendant to pursue its own breach of contract counterclaim against the plaintiff in a separate arbitration proceeding while the plaintiff’s patent infringement suit remains stayed.


Thuan Phong Company v. SF Supermarket at Garden Grove et al., U.S.D.C., Central District of California,  Case No. CV10-01450 CBM (RNBx), 2011
In a trademark infringement case involving rice paper and allegations of counterfeiting, Cislo & Thomas successfully negotiated a settlement agreement on behalf of the defendants during a settlement conference for a case, which the magistrate judge did not believe was ripe for settlement. By bringing the settlement before the magistrate judge, defendants exposed the weakness in plaintiff’s counterfeiting claims, contributing to the settlement of the case for a small fraction of what plaintiffs originally requested.


Silverlit Toys Manufactory Ltd. et al. v. Ecoman Corporation et al., U.S.D.C., Central District of California,  Case No. CV09-05803 CAS (JCx), 2010
Cislo & Thomas successfully negotiated a settlement agreement on behalf of the defendants to resolve a patent and copyright infringement case involving radio controlled toy helicopters. After opening briefs were submitted for the claim construction hearing, plaintiffs agreed to settle the case in which the defendants received an undisclosed amount for their false marking counterclaims and were permitted to continue to sell certain toy helicopters. We were successfully able to assert false marking by the plaintiffs in the millions of dollars.


MH Systems Inc. v. Peter McNulty et al., U.S.D.C., Central District of California, 2010
Cislo & Thomas successfully defended a client against patent infringement claims. Our client, NEI Treatment Systems, LLC, sold a ballast water treatment system that was accused of infringing a patent owned by MH Systems. The patent owner’s claims were all dismissed, and the Court issued a judgment whereby the patent owner took nothing.


My Health, Inc. v. Top Tier Consulting, Inc., National Arbitration Forum Claim No. FA1006001332064
ICANN domain name arbitration proceeding, decided August 26, 2010, where Cislo & Thomas LLP successfully defended Top Tier Consulting, Inc. The panel declining relief, expressly found that Top Tier Consulting registered and used the domain name in good faith when registration occurred more than fourteen (14) months prior to the Complainant’s first use of its registered trademark My Health. The Panel also found that in spite of not making an active use of the domain name, Top Tier Consulting demonstrated it had rights or legitimate interests in the domain name by reason of its preparations to use the disputed domain name, which included efforts to seek funding for its medical website/healthcare portal. This effort deemed to be in connection with a bona fide offering of goods and services under ICANN Policy.


Sunbeam Products, Inc. dba Jarden Consumer Solutions v. Hamilton Beach Brands, Inc., Homeland Housewares, LLC, Alchemy Worldwide, LLC, Alchemy Worldwide, Inc., and Back to Basics Products, LLC, U.S.D.C., Eastern District of Virginia, 2010 U.S. Dist. LEXIS 74001; July 22, 2010, Decided
In a patent infringement case involving blender patents, Plaintiff Sunbeam accused Homeland Housewares, LLC (represented by Cislo & Thomas LLP), among others, of patent infringement. During discovery in the case, Cislo & Thomas LLP learned that one of its former attorneys who while at Cislo & Thomas performed a substantial amount of patent prosecution and litigation on behalf of Homeland Housewares on the same product that was accused of infringement by Sunbeam, now worked at Steptoe & Johnson. Homeland Housewares moved to disqualify Steptoe & Johnson for a conflict of interest based on Virginia Rules of Professional Conduct 1.9(a) and 1.10(a). The main issue was whether the successive representations were substantially related. After a substantial amount of briefing and a hearing, the District Court granted Homeland Housewares’ motion and disqualified Steptoe & Johnson from continuing to represent Plaintiff Sunbeam Products in the case.


International Seaway Trading Co. v. Walgreens Co., 589 F. 3d. 1233 (Fed. Cir. 2009)
The Federal Circuit Court of Appeals adopted our argument that the legal standard the Federal Circuit had used for over twenty-five years in determining whether a design patent is invalid must be overturned. As a result of this decision, design patents will in general be measurably easier for an alleged infringer to invalidate, and this new legal standard, as we argued, comports with U.S. Supreme Court precedent as well as more accurately mirrors the existing legal standard for determining whether a design patent is infringed by an accused design.


Kirby Morgan Dive Systems, Inc. v. Submarine Systems, Ltd., U.S.D.C., Central District of California, Case No. CV 08-7722 SVW (PJWx)
Kirby Morgan sought judgment against Submarine Systems for trademark and trade dress infringement of its registered helmet designs, breach of a prior settlement agreement between the parties, false advertising concerning commercial deep sea dive equipment, tortious interference with economic relations, and unfair competition. Submarine Systems defaulted and the court entered an order of default judgment in Kirby Morgan’s favor with respect to all of the claims. The court also awarded Kirby Morgan $300,000 in damages in connection with its causes of action for trademark and trade dress infringement. Finding that such infringement was willful, the Courts also awarded attorneys’ fees and costs in the amount of $41,422.67.


Collezione Europa USA, Inc. v. Amini Innovation Corp., U.S.D.C., District of New Jersey, 2009 U.S. Dist. LEXIS 76411; August 26, 2009, Decided
In a long-running case between two companies in the furniture industry, Amini Innovation Corporation (represented by Cislo & Thomas LLP) alleged that Collezione Europa infringed a number of its copyrights and design patents. The Court granted Amini Innovation Corporation’s motion for leave to file a second amended counterclaim to the extent the motion sought to add the two individual owners of Collezione Europa into the case as counterclaim-defendants. This case was commenced in 2006 largely as a declaratory relief action by Collezione Europa. Amini Innovation Corporation counterclaimed for, among other things, copyright and design patent infringement. In 2008, Collezione Europa filed for bankruptcy protection, and the case was automatically stayed pursuant to the bankruptcy laws. Amini Innovation Corporation obtained relief from the automatic stay and ultimately moved the district court for leave to file a second amended counterclaim to add the owners of Collezione as defendants in their individual capacities with a view towards holding them personally liable for Collezione’s allegedly infringing activities. The Court granted this aspect of Amini Innovation Corporation’s motion by rejecting Collezione’s undue delay and futility arguments under Fed.R.Civ.P. 15(a), and noting that individuals who possess the right and ability to supervise the infringing conduct and who have an obvious and direct financial interest in the exploitation of copyrighted material can be held indirectly liable for copyright infringement. This ruling confirms that those with decision-making power in companies that infringe the intellectual property rights of others may be subject to liability for the companies’ infringing acts.


Amini Innovation Corp. v. Cosmos Furniture Ltd., U.S.D.C., Central District of California, 91 U.S.P.Q 2d 1150, 2009 U.S. Dist. LEXIS 29812; March 16, 2009, Decided
On March 16, 2009, a federal judge in the Central District of California denied a Canadian defendant’s motion to dismiss for lack of personal jurisdiction where the complaint alleged willful copyright and design patent infringement. The record demonstrated that the defendant knew the plaintiff resided in Southern California and the alleged infringements would harm the Southern California company. This ruling is significant in several respects. First, in cases of intellectual property infringement where an out-of-state defendant brings a motion to dismiss for lack of personal jurisdiction under Fed.R.Civ.P. 12(b)(2), if the complaint alleges willful infringement and the plaintiff provides uncontroverted evidence tending to show that the defendant knew the plaintiff was a resident of the forum, then jurisdiction may attach under the Calder effects test. Second, this ruling extends the holding of Amini Innovation Corp. v. JS Imports, Inc., 497 F. Supp. 2d 1093 (C.D. Cal. 2007) to not only out-of-state defendants, but foreign (non-U.S.) defendants, which is particularly significant in today’s global economy. This ruling provides plaintiffs suing out-of-state, or even non-U.S., defendants with a powerful tool to maintain intellectual property lawsuits in the plaintiff’s home forum.


220 Laboratories, Inc. v. David Dadaii, et al., U.S.D.C, Central District of California, Case No. CV 08-6125 PSG (SSx)
In a case removed from the California Superior Court on grounds that the action involved federal claims preempted by the Copyright Act, 220 Laboratories successfully persuaded the Federal District Court that the case should be remanded back to state court. The Court determined on December 8, 2008, that claims arising out of the defendants’ improper use of plaintiff’s trade secrets did not involve “works” fixed in a tangible medium of expression as required by 17 U.S.C. § 102(a) and that the state law claims of having an “extra element” was not equivalent to the rights contained in the Copyright Act, thus remanding the case to state court. The decision confirms a plaintiff’s right to be the “master of the claim” by bringing non-equivalent/non-copyright causes of action in state court, free from removal to Federal Court.


International Seaway Trading Corp. v. Walgreen Co. and Touchsport Footwear USA Inc., 599 F.Supp.2d 1307 (S.D. Fla. 2009)

In a design patent infringement case, we successfully moved for summary judgment on invalidity of three design patents on behalf of Walgreens and Touchsport having to do with shoes. The Court agreed with our position that the patentee’s designs were a “knock-off” of existing Crocs shoes and designed to look similar to the original so that they could be mistaken for the Crocs design. The Court invalidated the patents as anticipated by the Crocs’ prior art and rendered judgment in favor of the defendants. The Court’s opinion is noteworthy as it is the first case to apply the Federal Circuit’s most recent design patent infringement opinion, Egyptian Goddess v. Swisa, 543 F.3d 665 (Fed. Cir. 2008) (en banc), to an invalidity analysis.


MH Systems v. McNulty, U.S.D.C., Central District of California,  LEXIS 106916, Dec. 31, 2008
On behalf of the defendants, Cislo & Thomas successfully defended against a Rule 60(b) motion to vacate dismissal of the laintiff’s patent infringement case. After filing the complaint, Plaintiff filed a patent reissue application and requested a stay of the court case during its examination. After two years of complete inactivity on the reissue application, the Court demanded an explanation, but the plaintiff failed to provide one. Thus, the Court dismissed Plaintiff’s complaint. The plaintiff then made a motion to vacate the dismissal. The Court denied Plaintiff’s motion due to Plaintiff’s unexplained delays in prosecuting the reissue application, as well as Plaintiff’s failure to comply with the Court’s orders. The final outcome was that the Court dismissed the plaintiff’s case against our client.


Kirby Morgan Dive Systems v. Hydrospace Ltd. and Smith, U.S.D.C., Central District of California, Case No. CV 08-06531 PSG (FFMx)
Kirby Morgan successfully defeated a Petition to Quash a Claim in Arbitration filed by David Smith seeking to avoid the arbitration proceeding Kirby Morgan initiated against him and Hydrospace, Ltd. Smith filed the petition in the Central District of California claiming that Kirby Morgan lacked jurisdiction over him to bring him into the pending arbitration proceeding. The parties briefed complex issues of subject matter jurisdiction and personal jurisdiction with respect to an international party, Smith, and the ability to file a demand for arbitration against him. On January 2, 2009, the Court sided with Kirby Morgan and dismissed Smith’s petition for lack of subject matter jurisdiction because it did not have the proper authority to hear Smith’s petition.


Girafa.Com, Inc. v. Snap Technologies, Inc., Amazon, Inc., Amazon Web Services, LLC, Alexa Internet, Inc., IAC Search & Media, Inc., Yahoo! Inc., Exalead, S.A., Exalead, Inc. U.S.D.C., District of Delaware, 2008 U.S. Dist. LEXIS 99196; December 9, 2008, Decided
Overview: Plaintiff sought a motion for preliminary injunction against Snap Technologies (represented by Cislo & Thomas LLP) among others to enjoin Snap from providing internet users with the ability to visually preview web pages referenced by hyperlinks on a web page, claiming that such actions infringed a utility patent for computer hardware and software that adds thumbnail images to web pages with hyperlinks. The opposition to Plaintiff’s motion persuaded the court that Plaintiff’s claim constructions in support of its motion were unsupported, that there was no irreparable harm to Plaintiff, and that the balance of hardships did not favor Plaintiff. As a result, the court denied Plaintiff’s motion finding that substantial questions as to infringement and validity existed.


Amini Innovation Corp. v. JS Imports and Designer Furniture Warehouse, U.S.D.C., Central District of California, 497 F. Supp. 2d 1093, 2007 U.S. Dist. LEXIS 43758; May 21, 2007, Decided
Overview: New York and Maryland-based defendants were accused of willfully infringing copyrights and design patents owned by plaintiff and covering the ornamental features of the furniture plaintiff sells. Defendants moved to dismiss for lack of personal jurisdiction and/or improper venue or, in the alternative, to transfer the case to the Southern District of New York. The Court denied defendants’ motion to dismiss under the Calder “effects test” finding that the evidence tended to show that defendants must have known that their alleged willful copyright infringements would cause harm plaintiff, a California corporation. The court denied defendants’ motion to transfer because, among other things, they failed to set forth the identity and anticipated testimony of non-party witnesses who might be inconvenienced by the case going forward in California.


Alan Lee Distributors, Inc. dba Adi Pet, Inc. and Christopher Weinberg v. Van Brown, United States Court of Appeals for the Federal Circuit, 2007 U.S. App. LEXIS 12460; May 18, 2007, Decided
Overview: The Federal Circuit affirmed the district court’s grant of summary judgment finding that the asserted claims of the patent-in-suit covering meat-filled rawhide chew toys for dogs were invalid for obviousness pursuant to 35 U.S.C. § 103.


Time ‘N Temperature Co. (TNT), v. Sensitech, Inc., United States Court of Appeals for the Federal Circuit, 2007 U.S. App. LEXIS 2273; January 30, 2007, Decided
Overview: The Federal Circuit held that a patent directed to an electronic monitoring device capable of sensing and recording external parameters was invalid as anticipated by the prior art. The district court’s order enjoining the sale of TNT’s devices was reversed. A subsequent petition for rehearing was denied by the Federal Circuit.


Amini Innovation CorpORATION v. Anthony California, Inc., United States Court of Appeals for the Federal Circuit, 2007 U.S. App. LEXIS 420; January 8, 2007, Decided
Overview: The Federal Circuit reversed the district court’s order granting summary judgment of non-infringement of a design patent for a dresser since it was improper to focus on specific elements of the dressers rather than analyzing the designs as wholes from the perspective of an ordinary observer. The design patent and a photograph of the competitor’s dresser created a factual issue as to whether an ordinary observer was likely to purchase one dresser thinking it was the other.


Amini Innovation CorpORATION v. Anthony California, Inc.; United States Court of Appeals for the Federal Circuit, 439 F.3d 1365; 2006 U.S. App. Lexis 5383; 78 U.S.P.Q.2d (BNA) 1147; Copy. L. Rep. (CCH) P29,142, March 3, 2006, Decided
Overview: In a case involving an alleged infringer of copyrights and a furniture design patent, because the Trial Court mistakenly applied both the extrinsic and intrinsic tests for substantial similarity in copyright infringement and an element-by-element test for design patent infringement, the Court reversed Summary Judgment Grant of Non-Infringement.


Switchmusic.Com., Inc. v. U.S. Music Corp., U.S.D.C., Central District of California, 416 F. Supp. 2d 812; 2006 U.S. Dist. Lexis 25178, January 24, 2006, Decided
Overview: California guitar manufacturer was entitled to Summary Judgment in its action seeking a declaration of Non-Infringement of Trade Dress, 15 U.S.C.S. § 1125(A), as to body shape of Illinois guitar manufacturer’s “Parker” line of guitars. The body shape trade dress was functional, did not have secondary meaning, and there was no likelihood of confusion.


Wolf Designs, Inc. v. DHR & Co., Collectives, Inc., U.S.D.C., Northern District of Georgia, Atlanta Division, 231 F.R.D. 430; 2005 U.S. Dist. Lexis 29653; 63 Fed. R. Serv. 3d (Callaghan) 179, September 27, 2005, Decided
Overview: In the trade dress and patent infringement action, Court refused to undo discovery rulings made by California Court prior to transfer under 28 U.S.C.S. § 1404(A) where discovery deadlines had expired. The Court disallowed competitors’ leave to amend answer to add known affirmative defense where they failed to show good cause under Fed. R. Civ. P. 16.


Wolf Designs v. Donald McEvoy Ltd., Inc. U.S.D.C., Northern District of Texas, Dallas Division, 2005 U.S. Dist. Lexis 5853, April 6, 2005, Decided
Overview: A motion for reconsideration of the denial of a motion to transfer venue pursuant to 28 U.S.C.S. § 1404(A) was denied because Defendants failed to show that the cases could have been brought in the transferee forum and they possessed “new” evidence supporting minimum contacts with the transferee forum at the time they brought their original motion.


Lawrence Music, Inc. v. Samick Music Corp., U.S.D.C., Western District of Pennsylvania, 227 F.R.D. 262; 2005 U.S. Dist. Lexis 14741, March 23, 2005, Decided
Overview: Motion to intervene pursuant to Fed. R. Civ. P. 24(B) was denied because for the insurance exchange to interject itself into the proceedings at the extremely late date, disrupt the trial, and delay the proceedings was inexcusable given the time lapse and the fact that such problems could have easily been avoided if it had been diligent.


Wolf Designs, Inc. v. Donald McEvoy Ltd., Inc., U.S.D.C., Northern District of Texas, Dallas Division, 355 F. Supp. 2d 848; 2005 U.S. Dist. Lexis 3171, January 31, 2005, Decided
Overview: Where competitors who sought transfer of lawsuits alleging trade dress and patent infringement failed to prove that, absent their consent, they would have been subject to personal jurisdiction in Georgia when a patent holder filed instant suits in Texas. They also failed to establish that 28 U.S.C.S. § 1404 authorized transfer of suits to Georgia.


Amini Innovation Corporation v. Classic World Imports, Inc., U.S.D.C., Northern District of Texas, 2005 U.S. Dist. LEXIS 406; January 12, 2005, Decided
Overview: In an effort to prevent Plaintiff from enforcing its copyrights for furniture designs, Defendant requested that the court stay the action pending the resolution of certain allegedly related actions filed by Plaintiff in a California court claiming that a stay would promote judicial economy and avoid the possibility of inconsistent rulings between the Texas court and the court in California. The Texas court denied Defendant’s motion finding that a stay would only delay Plaintiff’s attempt to recover for the copyright infringements and not serve judicial economy where the cases in California were not shown to be related to the Texas action.


Amini Innovation Corporation v. Anthony California, Inc., U.S.D.C. Central District of California, 2004 U.S. Dist. Lexis 29980, November 29, 2004. Decided, December 3, 2004, Filed, Reversed by, Remanded by, Patent Interpreted by Amini Innovation Corp. v. Anthony California, Inc., 439 F.3d 1365, 2006 U.S. App. Lexis 5383 (Fed. Cir., 2006)


Lawrence Music, Inc. v. Samick Music Corp.,U.S.D.C., Western District of Pennsylvania, 2004 U.S. Dist. Lexis 28217, November 17, 2004, Decided, Motion Denied By Lawrence Music, Inc. v. Samick Music Corp., 227 F.R.D. 262, 2005 U.S. Dist. Lexis 14741 (W.D. Pa., 2005)
Overview: A guitar dealer registered and commercialized a domain name containing a manufacturer’s name; however, it was an authorized dealer for the manufacturer, thus, the manufacturer’s infringement, unfair competition, and false designation of origin counter claims under 15 U.S.C.S. §§ 1114, 1125(A), failed as to sales of the manufacturer’s goods.


Lawrence Music, Inc. v. Samick Music Corp., U.S.D.C., Western District of Pennsylvania, 2004 U.S. Dist. Lexis 28216, November 4, 2004, Decided, Summary Judgment Granted, In Part, Summary Judgment Denied in Part
Overview: In an action by a musical instrument seller against a musical instrument manufacturer, a portion of a transcript from a videotaped conversation was stricken from the evidence where, although there was a U.S. Const. Amend. v. self-incrimination issue raised by the videotape, the seller failed to disclose the transcript before the close of discovery.


Wolf Designs, Inc. v. Donald McEvoy Ltd., U.S.D.C., Northern District of Texas, Dallas Division, 341 F. Supp. 2d 639, 2004 U.S. Dist. Lexis 21894, October 15, 2004, Decided
Overview: Plaintiff’s patent infringement action in Texas was stayed pending resolution of a California action because the issues in the cases were substantially similar, the witnesses overlapped, and the California action was the first-filed action.


Wolf Designs, Inc. v. DHR & Co. U.S.D.C., Central District of California, 322 F. Supp. 2d 1065, 2004 U.S. Dist. Lexis 12124, May 19, 2004, Decided
Overview: Personal jurisdiction existed over a Georgia resident, the president of a corporation, where there was evidence that the president was directly involved in the corporation’s alleged passing off of inferior products as those of a seller.


Miracle Blade, LLC v. Ebrands Commerce Group, LLC, U.S.D.C., District of Nevada, 207 F. Supp. 2d 1136; 2002 U.S. Dist. Lexis 15120; 63 U.S.P.Q.2d (BNA) 1265; Copy. L. Rep. (CCH) P28,484, June 4, 2002, Decided
Overview: Knife retailer was denied preliminary injunction in its copyright infringement action as most of its infomercial was not based on original material or was scenes a faire, and there were significant differences in settings, moods, plots, and dialogue.


Guthy-Renker Corp. v. Bernstein, United States Court of Appeals for the Ninth Circuit, 39 Fed. Appx. 584; 2002 U.S. App. Lexis 8369; Copy. L. Rep. (CCH) P28,429, April 11, 2002, Argued and Submitted
Overview: Where a photograph was aired over 9,000 times before copyright holder alerted a corporation to its breach of the licensing agreement, it was not error to hold liquidated damages provision, requiring payment of $5,000 for each omission unenforceable.


Lohan Media LLC v. Thane Int’l, Inc., U.S.D.C., Central District of California, 2001 U.S. Dist. Lexis 23571; 62 U.S.P.Q.2d (BNA) 1042, November 16, 2001, Decided
Overview: Company’s evidence that the competitor infringed the company’s copyrighted infomercial failed where the two infomercials consisted of a series of non-original elements, which were not protectable.


Electropix, Inc. v. Liberty Livewire Corp., U.S.D.C. for the Central District of California, 178 F. Supp. 2d 1125; 2001 U.S. Dist. Lexis 15228; 60 U.S.P.Q.2d (BNA) 1346, August 20, 2001, Decided
Overview: Injunctive relief was granted enjoining a competitor and its subsidiary from using producer’s mark by itself or with generic or descriptive terms, but was denied as to use of mark in connection with competitor’s and subsidiary’s business.


Continental Lab. Prods. v. Medax Int’l, U.S.D.C., Southern District Of California, 114 F. Supp. 2d 992; 2000 U.S. Dist. Lexis 13762; 56 U.S.P.Q.2d (BNA) 1548, September 18, 2000, Decided
Overview: Trade dress infringement suit for disposable pipette tips trays failed as Plaintiff had no direct evidence of secondary meaning. Circumstantial evidence of advertising, promotional expenditures, and sales were insufficient to prove secondary meaning.


Guthy-Renker Corporation v. Bernstein, U.S.D.C., Central District of California, 1999 U.S. Dist. Lexis 23361; 27 Media L. Rep. 2084, March 5, 1999, Decided
Overview: A liquidated damage provision regarding a photographer’s missing screen credit from an infomercial was held to be an unenforceable penalty where the parties made no effort to estimate the actual damages that would flow from the omission of such credit and where the liquidated damages amount had no reasonable relationship to damages.


Slip Track Sys. v. Metal Lite, United States Court of Appeals for the Federal Circuit, 159 F.3d 1337, 1998 U.S. App. Lexis 22408; 48 U.S.P.Q.2d (BNA) 1055, September 14, 1998, Decided
Overview: A District Court improperly stayed Appellants’ interfering patents suit where a foreseeable consequence of the stay was that Appellants would have been unable to raise the issue of prior invention in any forum.


Guthy-Renker Fitness LLC v. Icon Health & Fitness, U.S.D.C., Central District of California, 1998 U.S. Dist. Lexis 16553, 48 U.S.P.Q.2d (BNA) 1058, July 15, 1998, Decided
Overview: In a patent infringement claim, a motion to stay proceedings was warranted pending the reexamination of a patent and a security requirement during the stay was not required.


Jin Ching Indus. v. Wong’s Int’l Trading Import & Export
U.S.D.C., Central District of California, 1998 U.S. Dist. Lexis 14759; 47 U.S.P.Q.2d (BNA) 1509, May 26, 1998, Decided
Overview: A summary judgment in favor of corporations was proper on their Copyright infringement claim as the mere fact that a similar, even identical, work, by competitors, predated the corporations’ sculptures did not invalidate their Copyright. Successfully took over case and settled with insurance company paying all damages and no further obligation to clients.


Guthy-Renker Fitness LLC v. Icon Health & Fitness; U.S.D.C., Central District Of California, 179 F.R.D. 264, 1998 U.S. Dist. Lexis 7172; 46 U.S.P.Q.2d (BNA) 1344, March 16, 1998, Decided
Overview: A patent holder’s letter to a manufacturer did not provide a sufficiently specific indication of the patent holder’s intent to file suit that would justify departing from the first-to-file rule in the parties’ competing suits.


Citicasters Co. v. Country Club Communs, U.S.D.C., Central District of California, 1997 U.S. Dist. Lexis 17238, 44 U.S.P.Q.2d (BNA) 1223, July 21, 1997, Decided
Overview: The Court had discretion under the “Primary Jurisdiction” Doctrine or through its power to monitor its own docket to grant corporation stay pending the Trademark Trial and Appeal Board’s Decision in the cancellation proceeding involving broadcaster.


Suntiger, Inc. v. Telebrands Adver. Corp., U.S.D.C., Eastern District of Virginia, Alexandria Division, 1997 U.S. Dist. Lexis 24123, May 30, 1997, Decided
Overview: In a claim for infringement of four patents, Defendants’ motions for summary judgment were denied as to one; action was stayed pending decision of Patent and Trademark Office on Plaintiffs’ petition to revive application. As to one, Court could not find that original specification did not disclose invention and manner of making and using invention.


No Touch N. Am. v. Blue Coral, U.S.D.C., Central District of California, 1997 U.S. Dist. Lexis 16153, 43 U.S.P.Q.2d (BNA) 1862, May 29, 1997, Decided
Overview: Court had limited jurisdiction over Defendant where Defendant accepted assignment of trademark that was subject of lawsuit in district and Defendant did not show proceeding in district would result in clear inconvenience.


National Customer Eng’g v. Lockheed Martin, U.S.D.C., Central District of California, 1997 U.S. Dist. Lexis 10757, 43 U.S.P.Q.2d (BNA) 1036, February 14, 1997, Decided
Overview: Plaintiff’s motion for preliminary injunction in trademark infringement action was granted because plaintiff showed probability of success on merits through likelihood of confusion, and showed possibility of irreparable harm.


Stulberg v. Intermedics Orthopedics, U.S.D.C., Northern District of Illinois, Eastern Division, 1995 U.S. Dist. Lexis 18408, November 29, 1995
Overview: Plaintiffs were not entitled to an Order to Stay pending arbitration of Defendant’s Motion for Summary Judgment because Plaintiffs waived that right by engaging in considerable discovery prior to the motion.


Ellison Educ. Equip. v. Tekservices, Inc., U.S.D.C., District of Nebraska, 903 F. Supp. 1350, 1995 U.S. Dist. Lexis 19725, 37 U.S.P.Q.2d (BNA) 1563, April 12, 1995, Dated
Overview: Corporation granted preliminary injunction against alleged copyright infringer because demonstration of likelihood of success on merits and irreparable harm made; Court found no false advertising or trade dress infringement.


Magnesystems v. Nikken, U.S.D.C., Central District of California, 1994 U.S. Dist. Lexis 20182; 34 U.S.P.Q.2d (BNA) 1112, June 13, 1994, Decided
Overview: Plaintiff was granted summary judgment in patent infringement case where Plaintiff proved that the undisputed facts established literal infringement, and Defendants were unable to establish that Plaintiff’s patent was invalid. Successfully settled case in favor of client.


Bmmg, Inc. v. American-Telecast Corp., U.S.D.C., Central District of California, 1993 U.S. Dist. Lexis 21072, May 6, 1993, Decided
Overview: Infomercial producers were entitled to summary judgment because golf instruction video maker failed to show causation between alleged falsities and loss in sales when he assumed causation was proved by comparative sales instead of sales lost thereby.


Cablestrand Corp. v. Wallshein, United States Court of Appeals for the Federal Circuit, 989 F.2d 472, 1993 U.S. App. Lexis 4250, 26 U.S.P.Q.2d (BNA) 1079, March 8, 1993, Decided
Overview: Because the Court had no basis on which to review the Appealed Judgment in the patent infringement action without findings of fact and conclusions of law, remand was appropriate for the Trial Court to make the findings of fact and conclusions of law.


Westward Co. v. Gem Products, Inc., U.S.D.C., Eastern District of Michigan, Southern Division, 570 F. Supp. 943, 1983 U.S. Dist. Lexis 15379; 219 U.S.P.Q. (BNA) 784, July 18, 1983
Overview: Plaintiff was enjoined since there was a likelihood of confusion, secondary meaning was shown with product designators, and trade dress was similar; damages were denied because defendant did not establish actual damages.


Model Rectifier Corp. v. Takachiho Int’l., Inc., United States Court of Appeals for the Ninth Circuit, 709 F.2d 1517, 1983 U.S. App. Lexis 27579, 221 U.S.P.Q. (BNA) 502, May 18, 1983
Overview: Appellee was entitled to preliminary injunction in trademark infringement action against appellant importers and retailers by demonstrating probable success on the merits of its claim and irreparable harm.


Feltman-Langer, Inc. v. Coast Orient Trading Corp., U.S.D.C., Central District of California, 1983 U.S. Dist. Lexis 17711, 223 U.S.P.Q. (BNA) 366, April 14, 1983, Decided
Overview: Manufacturer was entitled to preliminary injunction under Lanham Act enjoining distributor from selling a product that was substantially identical to manufacturer’s product in its configuration, trade dress, and packaging.


Model Rectifier Corp. v. Takachiho International, Inc., U.S.D.C., Central District California, 1982 U.S. Dist. Lexis 17601, 220 U.S.P.Q. (BNA) 508, August 4, 1982
Overview: A trademark holder for plastic model kits won a preliminary injunction against importers because it was likely that the trademark holder would prevail in its suit against the importers for alleged trademark infringement and unfair competition.


Phoceene Sous-Marine, S. A. v. U. S. Phosmarine, Inc., United States Court of Appeals for the Ninth Circuit, 682 F.2d 802, 1982 U.S. App. Lexis 17091, 34 Fed. R. Serv. 2d (Callaghan) 951, April 8, 1982, Argued and Submitted
Overview: Default judgment was not a proper sanction for a party’s deception where that deception related only to the need for a continuance not the merits of the case.


M-C Industries, Inc. v. Precision Dynamics Corp., United States Court of Appeals, Ninth Circuit, 634 F.2d 1211, 1980 U.S. App. Lexis 11074, 211 U.S.P.Q. (BNA) 22, December 29, 1980, Decided
Overview: After determining the scope and content of the prior art, the differences between the prior art and the claim at issue, and the level of ordinary skill in the art, patents were held invalid because they were not obvious.


Ajax Hardware Corp. v. Packaging Techniques, Inc.; U.S.D.C., Central Division of California, 1974 U.S. Dist. Lexis 9082; 182 U.S.P.Q. (BNA) 559, Apr. 8, 1974 and Apr. 23, 1974
Overview: Under Lanham Act of 1946, where party who registered a trademark did not have exclusive use of the mark for period preceding the registration, registration was invalid and subject to cancellation.