Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. In a recent opinion from the Federal Circuit Court of Appeals, the Court affirmed a district court’s updating its claim construction and grant of summary judgment of non-infringement. Judge Schroder of the Eastern District of Texas, in a patent case involving mattress technology, updated his earlier claim construction, and then granted summary judgment of non-infringement. The Federal Circuit upheld his analysis, which included adding a detail to an earlier claim construction that became the point of dispute. The Federal Circuit found that the detail added to the earlier claim construction was supported by a clear disclaimer in the specification of the patent-in-suit. The takeaway here is that claim construction can be a rolling process, and it is important to understand the scope of the claim language supported by the patent, as much as it is important to understand how far a construction can be stretched to support a particular argument one may desire to make.
2. In a recent decision from Judge Birotte in the Central District of California, the Court granted a motion to dismiss a series of claims, including trademark, unfair competition, and false advertising claims. The dispute arose out of the moving of the 2021 Rose Bowl football game from Pasadena to Arlington, Texas. In connection with several agreements between the City of Pasadena and the Pasadena Tournament of Roses Associations, the association owns the trademarks (e.g., for “Rose Bowl”) and puts on the annual Rose Bowl game. Under these circumstances, the dispute arose because the City of Pasadena referenced the “Rose Bowl” on its Instagram page, and showed the cover page of a program from a previous Rose Bowl. The Mayor of Pasadena also made certain comments in a New York Times piece. The Association sued for trademark infringement and related claims. The Court found that the City’s references to the “Rose Bowl” was a nominative fair use and not unlawful because, in part, it was not attempting to trade on the goodwill of the mark. In addition, the Court found that there were no misrepresentations of fact to support a false advertising claim. As such, the Association’s first amended complaint was dismissed. The takeaway here is to make sure one vets the elements of its claims before filing, and also considers likely defenses from the other side. While a plaintiff may be upset about something, that does not mean it was unlawful.
3. In what some are looking at as a potentially important case to define the boundaries of functionality of trade dress, the owner of the “Pocky” chocolate covered pastry sticks has petitioned the U.S. Supreme Court for certiorari in response to the Third Circuit’s affirmed a district court finding of functionality, and thus, no trade dress protection against an alleged infringer. We previously discussed the modified opinion from the Third Circuit Court of Appeals regarding its trade dress functionality ruling, here (Takeaway No. 3) and here (Takeaway No. 3). It will be interesting to see if the Supreme Court takes the case, as it could have significant implications.