Citigroup Inc. v. Capital City Bank Group, Inc., No. 2010-1369 (Fed. Cir. Mar. 28, 2011) (Judges Rader, Gajarsa, and Prost)

In the first trademark opinion that the Federal Circuit has handed down this year, the court affirmed the Trademark Trial and Appeal Board’s (TTAB) denial of Citigroup’s opposition to Capital City Bank’s (CCB) registration of several standard character applications using the phrase “Capital City Bank.”  The court agreed with the Southern District of New York’s analysis in Citigroup Inc. v. City Holding Co., 171 F. Supp. 2d 333 (S.D.N.Y. 2003) that Citigroup’s use of the “I” misspelling is key to Citigroup’s trademark ownership and protection.  The court noted further that CCB’s inclusion of “Capital” in its marks distinguished those marks from Citigroup’s.  The court concluded that the TTAB’s factual findings were supported by substantial evidence and held that there was no likelihood of confusion between the marks.  The court, in dicta, also instructed the TTAB to abandon the “reasonable manner” doctrine, which limits the TTAB’s consideration of standard character depictions to “reasonable” variations:  “The TTAB should not first determine whether certain depictions are ‘reasonable’ and then apply the DuPont analysis to only a subset of variations of a standard character mark.  The TTAB should simply use the DuPont factors to determine the likelihood of confusion between depictions of standard character marks that vary in font style, size, and color and the other mark.”  Slip Op. at 13.  It will be interesting to see if the TTAB follows this instruction in future cases.

Read the original opinion here.


In re Jung, No. 2010-1019 (Fed. Cir. Mar. 28, 2010) (Judges Gajarsa, Linn, and Dyk)

Making creative and somewhat unusual assertions in this appeal from the Board of Patent Appeals and Interferences (“the Board”), the patent applicant asked the Federal Circuit to reconsider the requirements for an examiner to establish a prima facie case of invalidity and proposed that the Board had acted as a “super-examiner” in reaching certain factual findings.  The applicant proposed that, to show prima facie invalidity, an examiner must provide a reasonable claim construction and “evidence bridging the facial differences between that reasonable claim construction and the purported anticipatory reference.”  Slip op. at 9-10.  The court disagreed, remarking that “[s]uch a process is both manifestly inefficient and entirely unnecessary,” slip op. at 11, and held that an examiner need only provide notice as required by 35 U.S.C. § 132.  The court held further that the Board’s statements of facts in responding to an argument the applicant made only at the Board level should be characterized as “thoroughness,” not an improper role as a super-examiner.  Slip op. at 15.

Read the original opinion here.


In re Violation of Rule 28(D), No. 2011-m976 (Fed. Cir. Mar. 29, 2011) (Judges Dyk, Prost, and Moore)

This interesting precedential order imposes sanctions for Sun’s “extensive use” of improper confidentiality markings on its briefs.  Slip op. at 1.  The underlying appeal involves a dispute over the entry of a consent injunction and the terms of related settlement and license agreements.  In their briefs, both parties designated discussions concerning aspects of the license and settlement agreements as confidential.  Sun, however, also marked the vast majority of its legal argument as confidential, including case citations and direct quotations from published opinions and publicly available references such as Black’s Law Dictionary.  In fact, the court described the non-confidential version of the brief as “virtually incomprehensible,” noting that 19 of the 34 pages of Sun’s brief were blacked out in their entirety. Slip op. at 15.

At oral argument, the court questioned whether Sun’s confidentiality designations, with respect to legal arguments, were proper under Rule 28(d), which requires that confidentiality designations be subject to a protective order.  After oral argument, the court ordered Sun to show cause why the court should not impose sanctions for violation of Rule 28(d).  Sun claimed that it believed citations to case law would have revealed key terms and facts contained in the license agreements.   The court did not accept Sun’s rationalization.  After a thorough discussion of the requirements of public access to information and the proper scope of Federal Rule of Civil Procedure 26(c), which governs, the entry of protective orders, the court ordered monetary sanctions of $1000.00 for Sun’s violation.

Read the original order here.


Radar Industries, Inc. v. Cleveland Die & Manufacturing Co., No. 2010-1335 (Fed. Cir. Mar. 30, 2011) (Judges Lourie, Linn, and Dyk) (nonprecedential opinion)

Although this case involves an action for patent infringement, the core issue considered by the Federal Circuit concerns the existence of a license agreement for the production of clevis links covered by patents that Radar owns.  The court concluded that, although no written agreement existed, both parties performed as though a license agreement was in place, and accordingly, Radar could not claim damages because it had failed to give notice as required by 35 U.S.C. § 287(a) with respect the allegedly infringing products produced for or under a “have made” license agreement.  Rejecting Radar’s “unusually convoluted” attempts to establish a genuine issue of material fact regarding the existence of an agreement, slip op. at 6, the court affirmed the district court’s grant of summary judgment.

Read the original opinion here.


Seat Sack, Inc. v. Childcraft Education Corp., No. 2010-1455 (Fed. Cir. Mar. 30, 2011) (Judges Lourie, Plager, and Dyk) (nonprecedential opinion)

In this case involving a variety of patent, trademark, and contract claims, the Federal Circuit affirmed the district court’s grant of summary judgment to Childcraft, noting that it had “nothing to add to the district court’s thorough analysis” with respect to most of the claims.  Slip op. at 3-4.  The court did, however, provide an alternate analysis of Seat Sack’s false advertising claim under 15 U.S.C. § 1125(a)(1)(A), which affords protection to unregistered trademarks.  The court clarified that a false advertising claim under this prong of the Lanham Act does not require a showing of protectable trademark rights, and thus the district court’s finding that the mark was neither inherently distinctive nor had acquired secondary meaning is not dispositive of a false advertising claim.  The court concluded, however, that because Seat Sack had failed to prove intentional deception or show evidence of actual customer confusion, Seat Sack had no claim for damages.  Accordingly, the district court’s grant of summary judgment of no false advertising was affirmed.

Read the original opinion here.


Crown Packaging Technology, Inc. v. Ball Metal Beverage Container Corp., No. 2010-1020 (Fed. Cir. Apr. 1, 2011) (Judges Newman, Dyk, and District Judge Ronald M. Whyte of the Northern District of California, sitting by designation)

This opinion addresses the proper interpretation of the court’s fairly recent opinion in Revolution Eyewear, Inc. v. Aspex Eyewear, Inc., 563 F.3d 1358 (Fed. Cir. 2009), but the panel’s vision is not 20/20.  Here, the district court granted Ball’s motion for summary judgment that Crown’s patents directed towards saving metal during the process of seaming can bodies and can ends violate the written description requirement and are invalid.  The Federal Circuit reversed, and entered a judgment on the written description issue in favor of Crown.  The court emphasized that Revolution Eyewear does not require the specification to “independently present separate solutions to independent problems.”  Slip op. at 14.  Additionally, the court rejected Ball’s contention that Revolution Eyewear is distinguishable from this case because here, the prior art problems that that patented invention addresses are related and therefore must be solved together.  The court concluded that the specification specifically ties improvements in metal usage to independent aspects of the invention, rather than stating that both solutions are necessary components to solve the metal usage problem.

In dissent, Judge Dyk asserted that Revolution Eyewear allows a claim to address only one of the purposes stated in the specification only if there is “explicit disclosure of the embodiments in the claims.”  Dissenting op. at 3.  Judge Dyk stated that the specification does not teach the combination of the independent solutions presented in the claims and that this combination is a “new and distinct invention” that must be described.  Id.  Judge Dyk would have affirmed the district court’s summary judgment of invalidity.

Given the interesting breakdown of this panel – District Judge Whyte authored the opinion, in which Judge Newman joined, while Judge Dyk concurred-in-part and dissented-in-part – Revolution Eyewear may be up for further interpretation by future panels.

Read the original opinion here.