Weekly IP Takeaways

In IP Blog

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

1. In a recent trademark case out of the 11th Circuit Court of Appeals, the Court held that a Seventh Amendment right to a jury trial does not exist when the plaintiff seeks to recover the defendant’s profits from the alleged infringement. The opinion is here. The Court reasoned that accounting and disgorgement remedies are equitable, rather than legal, in nature, and that jury trials are traditionally only a right with respect to legal, not equitable, remedies. This holding could impact how plaintiffs that desire a jury trial frame their prayer for relief in the complaint.

2. In a recent opinion from an appellate court in the Illinois state system, two essentially affiliated corporations with interlocking ownership, business, and trademarks settled a corporate divorce, but did not clearly delineate in the settlement agreement the disposition and rights related to the trademarks. The opinion, which is unpublished, is here. After the corporate divorce action was settled and dismissed with prejudice, one of the companies filed a lawsuit seeking to enjoin the other from using the trademarks that were previously shared by the companies. The trial court dismissed the action based on res judicata and the general release in the settlement agreement. The appellate court affirmed.

3. In a precedential opinion on venue in patent cases, the Federal Circuit held that the “regular and established place of business” prong of the venue analysis in 28 U.S.C. 1400(b) is a question of law that cannot be conclusorily pled and still pass muster to satisfy the venue statute. The opinion is here. Under Federal Circuit precedents, a plaintiff carries the burden of persuasion on venue, and this includes when asserting venue under the “regular and established place of business” prong of the statute. The Federal Circuit stated the following: “Westech failed to plead any facts showing 3M had a regular and established place of business physically located in the Western District of Washington”; “[s]imply stating that 3M has a regular and established place of business within the judicial district, without more, amounts to a mere legal conclusion that the court is not bound to accept as true”; and, “[a] presumption that facts pleaded in the complaint are true does not supplant a plaintiff’s burden to plead specific facts showing that the defendant has a regular and established place of business physically located in the judicial district.” The takeaway is that venue in patent cases needs to be pled with more specificity than may be thought be some.