Weekly IP Takeaways

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

1. A decision in the Signify v. Reggiani Lighting case out of the Southern District of New York on a motion to strike and dismiss inequitable conduct and patent misuse defenses and counterclaims, respectively, applied the heightened pleading standard for fraud under Fed.R.Civ.P. 9(b) to find that the inequitable conduct defense/counterclaim was not adequately pled. More specifically, the Court granted the motions and determined that the allegations did not identify a specific person that knew of the materiality of allegedly withheld prior art and intended to deceive the USPTO by not disclosing the prior art. Regarding patent misuse, the Court also granted the motions because there were no allegations of an impermissible broadening of the temporal or physical scope of the patent rights. Furthermore, and of note, the Court held that bad faith patent enforcement, in and of itself, does not support a patent misuse claim.

2. A recent decision by Judge Otis D. Wright II of the Central District of California went in favor of Sushi Nozawa LLC, a company that owns several high profile sushi restaurants, including Sugarfish, Nozawa Bar, and KazuNori. Sushi Nozawa sued The Hand Roll Bar Experience, LLC (HRB), which was planning on starting one or more sushi restaurants having the name Hand Roll Bar Experience, for trademark infringement among other things based on Sushi Nozawa’s registered trademarks for THE ORIGINAL HAND ROLL BAR, among others. HRB filed a motion to dismiss for failure to state a claim attacking the infringement claim, and asserting that Sushi Nozawa’s marks were generic and invalid or descriptive and subject to a fair use defense. The Court found that the infringement claim was adequately pled, followed Ninth Circuit law that genericness of a mark cannot be adjudicated on a motion to dismiss, and also followed Ninth Circuit law that an adequately pled infringement claim prevents a fair use challenge at the motion to dismiss stage. As of now, one might say that HRB was “rolled” by Sushi Nozawa based on the Court’s denial of the motion to dismiss.

3. A patent infringement lawsuit against the PGA Tour was recently filed in the Western District of Texas before Judge Alan Albright. An article about the case is here. A long-time volunteer “spotter” (one who locates the golf balls for the players) invented a system for collecting information and data from the various shots at a professional golf tournament, such that the data can be used for reporting, analysis, and interactive media with fans. According to the complaint, the spotter first presented the idea to the PGA Tour in 2012, and presented a business proposal to the PGA in early 2019 after his first patent issued. According to the allegations of the complaint, the PGA Tour declined to do business with the plaintiff, and indicated that it was entitled to use whatever materials, ideas, etc. that he presented to the PGA Tour. According to the complaint, the PGA Tour’s ShotLink technology infringes two patents owned by the spotter. It will be interesting to see if a deal is ultimately cut, or if the PGA Tour seeks to: (1) invalidate the patents, (2) argue non-infringement or re-design its ShotLink software to avoid the alleged infringement, and/or (3) cut a deal with the inventor.