Weekly IP Takeaways

In IP Blog

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In a decision from the Western District of Wisconsin in a utility patent case from the furniture industry, a patent owner accused Ashley Furniture of infringement based on a bed having a multi-part leg that can be assembled in different ways to vary the height of the bed. Initially, the patent owner accused only one product of infringement (its effort to subsequently add two additional products into its infringement contentions was rejected as late). The patent owner ultimately decided that the one accused product did not infringe the asserted patent, it gave Ashley a covenant not to sue as to that product, and it wanted to dismiss the case. Ashley, however, continued to press its invalidity arguments in a summary judgment motion. The Court decided that it continued to have jurisdiction over the invalidity claims because, while a covenant not to sue was in place, it did not cover all products potentially accused under the asserted patent. As such, the Court considered Ashley’s motion that the patent was invalid because the “substantially horizontal bottom surface” claim limitation (referring to the leg assembly) indefinite or lacked adequate written description under 35 U.S.C. 112. Interestingly, the claim language attacked by Ashley was suggested by the Examiner in the U.S. Patent and Trademark Office. Even so, the Court found that the phrase lacked adequate support in the specification of the asserted patent and invalidated the asserted claims of the patent.

2. In a very interesting opinion from the Sixth Circuit Court of Appeals, the Court reversed a decision of the Southern District of Ohio granting summary judgment against “The” Ohio State University on its trademark and right of publicity claims against Australian online marketplace, Redbubble. The district court, which was in Columbus, Ohio (the home of Ohio State), ruled that Redbubble was akin to a passive facilitator (similar to Amazon and eBay with their third party seller marketplaces), and did not “use” the Ohio State trademarks in a manner that fell within the scope of the Lanham Act. The Sixth Circuit reversed, finding that Redbubble was more than a passive facilitator of the manufacture, sale, and shipment of the goods bearing the infringing marks because it instituted the process of manufacturing of the products ordered (the products typically do not exist before ordering – it is only the third party “artwork” that is available for potential purchasers to see online), it controls the sale and shipment process, and it referred to and labeled the products that were made bearing the infringing marks as Redbubble products. The Sixth Circuit ultimately said that, “it appears that Redbubble brings trademark-offending products into being by working with third-party sellers to create new Redbubble products, not to sell the artists’ products. So, it’s more than just a passive facilitator.” The takeaway (or observation) here is that the Court tended to read the Lanham Act more broadly in terms of what constitutes “use” of an infringing mark.

3. In a modified opinion from the Third Circuit Court of Appeals regarding a trade dress infringement case that we previously wrote about (Takeaway No. 3), the Third Circuit stood firm on its conclusion that the alleged trade dress, which constituted partially chocolate-covered “sticks” or elongated rods, was functional and not protectable as product configuration trade dress. The Court held that the product design was functional because the portion of the rod that was not covered in chocolate made the snack easier to hold. The design of the product also made it easier to eat without having to open one’s mouth very wide. In response to petitions filed after it issued its original opinion, the Third Circuit vacated its original opinion and issued a modified opinion upholding its determination. The Court, however, responded to the appellant’s argument that mere functionality was insufficient to defeat trade dress protection. Rather, the product configuration claimed to constitute the trade dress had to be essential to the function of the product, not merely useful. The Third Circuit rejected this argument. The takeaway here is that establishing product configuration trade dress is difficult, at least in the Third Circuit, and even small elements of functionality may preclude protection.