Technology and IP Casewatch

TTAB Decisions Have No Preclusive Effect In Federal Courts

B&B Hardware, Inc. v. Hargis Indus. Inc., No. 10-3137, 3013 U.S. App. Lexis 8296 (8th Cir. E. D. Ark. May 1, 2013).

This Eighth Circuit decision involved a longstanding legal battle between Hargis and B&B Hardware over a trademark for the word “Sealtight” that each party utilizes in providing differing goods and services. B&B Hardware was the first to register the mark, however, and in 2007 when Hargis attempted to also register “Sealtight,” the Trademark Trial and Appeal Board (“TTAB”) denied the application due to the likelihood of confusion created by the already existing B&B Hardware mark. In the subsequent civil case, B&B Hardware argued that the TTAB’s decision as to “likelihood of confusion” should be given preclusive effect by the trial court. B&B Hardware sought to have the TTAB’s decision admitted to the jury as evidence that the marks were confusingly similar. The district court rejected both claims. The district court held that because the TTAB was not an Article III court, its decisions were not entitled to any preclusive effect. The district court further found that admitting evidence of the TTAB’s decision to the jury would be confusing and misleading because the TTAB utilized different factors in reaching its conclusion than the jury in the civil case would. On appeal, the Eighth Circuit affirmed the district court’s decision holding that decisions from the TTAB have no preclusive effect in federal courts and that it was within the discretion of the trial court to exclude evidence of the TTAB’s decision from the jury.

‘288 Patent Infringement

Prism Techs., LLC v. McAfee, Inc., No. 8:10CV220, 2012 U.S. Dist. LEXIS 174451 (D. Neb. December 10, 2012).

The United States District Court for the District of Nebraska granted summary judgment to Defendant McAfee, holding that no reasonable jury could find that McAfee’s CD and DVD products infringed upon Plaintiff Prism’s ‘288 Patent entitled “Method and System for Controlling Access, by an Authentication Server, to Protected Computer Resources Provided via an Internet Protocol Network.” The basis of the court’s decision was two-fold. First, the court found that McAfee’s products could not constitute either a “Hardware Key” or “Access Key” in the context of the ‘288 Patent and, thus, definitionally could not infringe upon the ‘288 Patent. Second, the court held Prism was estopped from asserting the doctrine of equivalents, which states that a patent infringer cannot evade liability simply by making insubstantial changes to a product. Prism was estopped from making this argument because the features of the ‘288 Patent Prism claimed were infringed were previously amended out of the original patent application and Prism could not rebut the presumption that this amendment narrowed the scope of the ‘288 Patent.

Preliminary Injunction For Trademark Likelihood of Confusion

Ryder Sys. Inc. v. Storage & Moving Servs. Inc., Case No. 13-61466-CIV-Middlebrooks (S.D. Fla. July 25, 2013).

In a trademark infringement case involving the use of the mark “Ryder,” the United States District Court for the District of Southern Florida was asked to grant an emergency preliminary injunction in favor of Plaintiff Ryder Sys., who registered the mark for use in its moving and storage business. Defendant Storage has been using the term “Ryder” in its own moving business, placing the word on its company vehicles and in its advertising. After a hearing, the court granted Ryder Sys. its emergency preliminary injunction. The court based its decision on the fact that Ryder Sys. would ultimately prevail in its trademark infringement case because of the strong likelihood of the confusion caused by Storage’s use of the term “Ryder” in its moving business. Further, the court found the use of the term “Ryder” by Storage would likely irreparably damage Ryder Sys. because of negative testimony from individual consumers regarding the quality of Storage’s services as well as the aforementioned likelihood of confusion.

Read the Full Newsletter: Technology & Intellectual Property Law Update August 15, 2013