Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.
1. In a patent case in the Eastern District of Virginia, the granted a motion to dismiss the plaintiff’s allegations as to pre-suit willfulness. The Court considered whether the plaintiff sufficiently pled that the defendant, Cisco, knew of the asserted patent, and was subjectively aware of the risk that its conduct infringed the asserted patent. The main allegations were essentially that an investor in the company that owned the asserted patent and related technology prior to Cisco’s acquisition of the company and technology had informed unidentified persons at the company that the technology might infringe the asserted patent, and that Cisco subsequently incorporated the allegedly infringing technology into its own product. While the Court said that it was a “close call,” it also noted that “[t]oo much speculation is required to support plaintiff’s argument that [the company’s] knowledge on these topics is attributable to defendant.” It further noted that there was insufficient detail as to who at the company knew the facts needed to sufficiently allege willfulness, who was also sufficiently connected to the defendant’s accused actions, and who perceived the subjective risks that the defendant’s conduct infringed the asserted patent. As such, the Court dismissed the pre-suit willfulness allegations in the First Amended Complaint, but without prejudice to amending to cure the deficiencies. Take home lesson is that it appears willfulness allegations (at least in the EDVA) need to be pled with a decent amount of specificity in order for the willfulness allegations to be plausible under Rule 12(b)(6).
2. In a recent opinion in a trademark case, the Federal Circuit held that the definition in the Lanham Act of “use in commerce” for purposes of what types of usage are sufficient to support the registration of a trademark is not applicable to the types of uses of a trademark that might support an infringement claim. The district court essentially conflated the two and granted summary judgment of non-infringement based on no trademark usage occurred to support an infringement claim. The Federal Circuit, however, citing a host of precedents, reversed as this was legal error, and remanded the case so that the likelihood of confusion factors could be considered. Crafty argument by the defense, but ultimately, it was rejected.
3. In a trademark infringement dispute between Williams-Sonoma and Amazon, the Northern District of California denied Amazon’s motion to dismiss the trademark claims. In a nutshell, Williams-Sonoma alleges that Amazon uses Williams-Sonoma trademarks to promote non-Williams-Sonoma products. Amazon asserts, among other things, that persons can re-sell genuine Williams-Sonoma products on Amazon. Williams-Sonoma alleges Amazon is going much further than that in using Williams-Sonoma trademarks, including promoting counterfeit products on Amazon, and other products over which Williams-Sonoma has no quality control, to suggest that an affiliation between Amazon and Williams-Sonoma exists, which it does not. The Court denied Amazon’s motion to dismiss, and the case will proceed.