Weekly IP Takeaways

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

1. The Cleveland Guardians roller derby team has filed a lawsuit against the Cleveland Indians baseball team (which is about to change its name from “Indians” to “Guardians.” The Guardians are a non-profit roller derby team that has apparently been using the CLEVELAND GUARDIANS name for roller derby in Cleveland for several years. News reports suggest that there were communications between the two entities prior to the lawsuit, including the possibility of the roller derby team selling its domain name and other IP rights to the Cleveland baseball franchise, but those discussions broke down. In a vacuum, one could argue there is no likelihood of confusion. But, once the discussions between the entities took place, that will be a heavier lift. The takeaway here is simple – clear your marks before you start using them via searching on Google and more formally through counsel.

2. In a recent decision (not on a motion to transfer) from Judge Alan Albright of the Western District of Texas, the Court denied the defendants motion for judgment on the pleadings that the asserted patent expired before the statutory damages period began (and before the asserted patent issued as a patent), and thus, the patent could not sustain the lawsuit. In a very interesting decision, the defendants argued that a terminally-disclaimed child patent expired based on the invalidity of earlier patents in the family, where invalidity was equated with expiration by the defendants. Judge Albright recognized that the defendants were essentially conflating invalidity of a patent with its expiration, and he went through statutory language, the terminal disclaimer language, and case law to show that invalidity and expiration are distinct concepts. The result was that the motion was denied because the terminal disclaimer in a later patent does not result in expiration of that patent even though earlier patents in the family expired (before the later patent issued as a patent). The takeaway here is first, read this opinion – it is important for prosecutors and litigators in terms of terminal disclaimer language and law. Second, it is important to remember that every patent comes with its own presumption of validity, and invalidity of one patent in a family does not automatically result in the invalidity of another patent in the family. Third, invalidity is not expiration.

3. In a recent report and recommendation from Magistrate Judge Payne of the Eastern District of Texas in a patent case, the Court recommended that Netflix’s motion to dismiss for improper venue, or in the alternative transfer, be denied. The plaintiff argued that Netflix retained sufficient control over servers in the District, or that local ISPs were agents of Netflix, such that Netflix had a regular and established place of business in the District. Netflix, relying on In re Google, argued that its servers were not sufficiently under its control and did not support a finding of a regular and established place of business. Magistrate Judge Payne found otherwise and recommended a denial of Netflix’s motion. Judge Gilstrap subsequently overruled Netflix’s objections to the Magistrate Judge Payne’s recommendation and adopted the denial of the motion to dismiss. The takeaway here is that there are still a number of patent cases filed in the Eastern District of Texas, and often a concerted effort to have cases transferred out of the District. If one can establish a regular and established place of business in the District through servers over which a defendant retains control (directly or through an agent or both), this decision may help plaintiffs keep cases in the District.