Weekly IP Takeaways

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

1. In a recent opinion from the Federal Circuit Court of Appeals, the Federal Circuit dismissed portions an appeal from a Trademark Trial and Appeal Board (“TTAB”) decision in a trademark where the opposer lacked standing to proceed with an appeal to a federal court. Specifically, the opposer challenged registration of a mark in connection with goods that it did not make or sell. The Court rejected the notion that the opposer may at some point in the future expand into the same goods. Thus, the Federal Circuit held that the opposer did not meet the injury-in-fact standing requirement for coming into a federal court. The takeaway here is that a party should be cognizant of standing requirements before appealing a TTAB decision to a federal court. This could be particularly applicable where a party challenges a trademark in connection with goods or services in which it does not deal.

2. A recent decision from Judge Alan Albright of the Western District of Texas suggests that the Federal Circuit’s numerous, recent grants of mandamus on transfer issues is starting to wear out Judge Albright. In September of 2021, Judge Albright denied a motion to transfer a case from his court to the Central District of California, where related litigation was pending. After a series of Federal Circuit mandamus decisions more or less excoriating Judge Albright for errors in portions of his venue analyses, and the defendant in the present case filing a petition for writ of mandamus Judge Albright reconsidered his prior denial of transfer and reversed himself in light of “new and additional guidance” from the Federal Circuit. In his updated decision, Judge Albright recognized that related litigation in the Central District, which was scheduled to go to trial before the case in his court, could lead to inconsistent rulings. He also noted that the Central District of California moves patent cases along more quickly than his court. Thus, he reconsidered his earlier denial of transfer and reversed himself, sending the case to the Central District of California. There are two related takeaways here: (1) the Western District of Texas is likely to lose some of its popularity as a venue given the Federal Circuit’s recent crackdown on Judge Albright’s venue analyses, and (2) the Central District of California is a very good place to litigate patent cases given the judges experienced with patent cases and the relative speed with which cases proceed.

3. In a recent decision out of the District of New Jersey concerning a fee award, the District Judge sustained portions of the defendant’s objections to a Magistrate Judge’s determination of the fee award. The gist of the objection was that plaintiff’s counsel’s rates were not based on the local rates in the forum, but on prevailing rates in Washington, D.C., where plaintiff’s counsel’s office was located. The Court cited Third Circuit precedent for the proposition that use of a non-forum rate was improper, unless the out of town counsel possessed special expertise unavailable locally or out of town counsel was unable to secure sufficient needed expertise from local firms. Thus, the District Judge sustained the defendant’s objection to the rate applied to portions of the fee award. The District Judge, however, did not sustain an objection that all of local counsel’s fees should be excluded as duplicative. The takeaways here are that, in connection with a fee award, one should look carefully to applicable law in terms of the rate to be used by out of town counsel (whether local or actual rates), and also that local counsel’s billings are not presumptively excludable from a fee calculation.