Weekly IP Takeaways

In IP Blog

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

1. A district judge sitting by designation in the District of Delaware held that being registered to do business and designating an agent for service of process in Delaware, but not being incorporated in Delaware nor having a regular and established place of business in Delaware, is insufficient to support a finding of proper venue in a patent case. The opinion is here. The Court was unpersuaded by a 1939 U.S. Supreme Court case (Neirbo v. Bethlehem Shipbuilding) regarding a waiver of venue under similar circumstances, saying that Neirbo only applied under the general venue statute, not the patent-specific venue statute. The Court’s ruling seems to track quite well the venue test for patent cases in TC Heartland (i.e., incorporation in the forum state and/or a regular and established place of business there).

2. The Ninth Circuit, in an unpublished order, affirmed the district court’s denial of a substantial fee award (and profits) to a company affiliated with Dan Aykroyd in connection with trade dress claims for a bottle design. The Supreme Court’s 2014 Octane Fitness decision set forth the grounds for the “exceptional” case determination under the Patent Act, which is necessary for an award of attorneys’ fees in a patent case. Under the Lanham Act, a finding that a case is “exceptional” is also required for a fee award, and Octane Fitness has been extended to the Lanham Act as well. Here, the district court determined that Aykroyd’s company’s case was not exceptional, and the Ninth Circuit affirmed in a single paragraph. The noteworthy facts here are that a jury found willful trade dress infringement, but the Court determined that finding was not enough to show that the case was “exceptional.” Underneath these basic facts are other facts that seemingly justify the outcome – namely, that an initial jury trial went in the defendants’ favor, a motion for new trial was denied, then the Ninth Circuit reversed and ordered a new trial, and it was in the second trial that the jury came back in favor of the plaintiff with a willful infringement finding. Given the history, as well as the standard on appeal of an abuse of discretion needed for reversal, it is not difficult to see that the defendants’ litigation positions were not unreasonable, out of the ordinary, or the like, as would be needed to show that the case was “exceptional.”

3. A jury in the Southern District of New York awarded Omega, the watchmaker, $1.1 million damages for counterfeiting against a landlord of the entity that was actually selling the counterfeit products. While this may appear promising for rights owners that are victims of counterfeiting against potentially “fly-by-night” counterfeiters, unique “facts” in this case include that the landlord was not oblivious to previous counterfeiting issues on the property, and that the landlord apparently failed to monitor for counterfeiting activity on the property as it may have been required to do under a previous consent injunction.