Justia International Law Opinion Summaries

Halo, a Hong Kong company that designs and sells high-end modern furniture, owns two U.S. design patents, 13 U.S. copyrights, and one U.S. common law trademark, all relating to its furniture designs. Halo’s common law trademark, ODEON, is used in association with at least four of its designs. Halo sells its furniture in the U.S., including through its own retail stores. Comptoir, a Canadian corporation, also designs and markets high-end furniture that is manufactured in China, Vietnam, and India. Comptoir’s furniture is imported and sold to U.S. consumers directly at furniture shows and through distributors, including in Illinois. Halo sued, alleging infringement and violation of Illinois consumer fraud and deceptive business practices statutes. The district court dismissed on forum non conveniens grounds, finding that the balance of interests favored Canada and that Canada, where the defendants reside, was an adequate forum. The Federal Circuit reversed. The policies underlying U.S. copyright, patent, and trademark laws would be defeated if a domestic forum to adjudicate the rights they convey was denied without a sufficient showing of the adequacy of the alternative foreign jurisdiction; the Federal Court of Canada would not provide any “potential avenue for redress for the subject matter” of Halo’s dispute. View "Halo Creative & Design, Ltd. v. Comptoir des Indes Inc." on Justia Law

Nippon Steel filed suit, charging POSCO with patent infringement and unfair competition. The court entered a protective order prohibiting cross-use of confidential materials which “shall be used by the receiving Party solely for purposes of the prosecution or defense of this action.” POSCO later produced several million pages of documents containing confidential information. Nippon also sued POSCO (based in Korea) in Japan for alleged trade secret misappropriation. POSCO filed a declaratory judgment action in Korea. Discovery in U.S. federal courts is more generous than in Japan and Korea, so Nippon moved the court to modify its discovery protective order for the purposes of providing foreign counsel in the Japanese and Korean actions approximately 200 pages of proprietary documentation relating to POSCO’s manufacturing process. Based on the Federal Rules of Civil Procedure and the balancing framework for modifying discovery orders, a special master concluded that modification should be granted, subject to restrictions to keep the information confidential. Among the restrictions: “[b]efore the documents may be submitted to a foreign court, the court must identify the information and agree that it would be maintained as confidential and restricted from third party access.” The district court and Federal Circuit affirmed. View "In re: Posco" on Justia Law

Cubatabaco, a Cuban entity, and General, a Delaware company, manufacture and distribute cigars using the COHIBA mark. General owns trademark registrations issued in 1981 and 1995. Cubatabaco owns the mark in Cuba and uses it worldwide. Cuban Assets Control Regulations (CACR), prohibit Cubatabaco from selling cigars in the U.S.; 31 C.F.R. 515.201(b) prohibits “transfer of property rights . . . to a Cuban entity,” but a general or specific license allows Cuban entities to engage in otherwise prohibited transactions. General licenses are available for transactions “related to the registration and renewal” of U.S. trademark. Specific licenses issue from the Office of Foreign Assets Control. Cubatabaco used a general license to attempt to register the COHIBA mark in 1997, relying on 15 U.S.C. 1126(e), which allows reliance on a foreign registration if the applicant has a bona fide intent to use the mark in commerce. Cubatabaco also sought to cancel General’s registrations, which the PTO cited as a basis for likelihood of confusion. Cubatabaco obtained a special license to sue General. The district court held that General had abandoned its registration by non-use and enjoined General’s use of the COHIBA mark, finding that Cubatabaco had acquired ownership under the famous marks doctrine. The Second Circuit reversed, holding that injunctive relief would involve a prohibited transfer under CACR because Cubatabaco would acquire ownership of the mark and later affirmed denial of General’s motion concerning cancellation of its registrations. The Board then dismissed Cubatabaco’s petition, stating that it need not address preclusion because Cubatabaco lacked standing. The Federal Circuit vacated, finding that Cubatabaco has a statutory cause of action to petition to cancel the registrations and that issue and claim preclusion do not bar that petition View "Empresa Cubana del Tabaco v. General Cigar Co., Inc." on Justia Law

Solvay’s 817 patent claims an improvement to a method of making a hydrofluorocarbon (HFC-245fa), which does not deplete the ozone layer as legislatively mandated to replace ozone-depleting alternatives. HFC-245fa is especially useful in preparing polymeric materials used for insulation in refrigeration and heat systems. The patent has a 1995 priority date. In 1994, Honeywell and RSCAC entered into a contract, under which RSCAC engineers, in Russia, studied commercial production of HFC-245fa. RSCAC sent Honeywell a report documenting a continuous process capable of producing high yields of HFC-245fa. Honeywell used the report to run the same process in the U.S., before the 817 patent’s priority date. Solvay sued Honeywell, alleging infringement. Honeywell argued that the Russian inventors made the invention in this country by sending instructions to Honeywell personnel who reduced the invention to practice in the U.S. The district court held that the RSCAC engineers should be treated as inventors who made the invention in the U.S. under 35 U.S.C. 102(g)(2), that RSCAC disclosed claim1 in a 1994 Russian patent application such that they did not abandon, suppress, or conceal it. The Federal Circuit affirmed judgment for Honeywell. It is not required that the inventor be the one to reduce the invention to practice if reduction to practice was done on his behalf in the U.S., so Honeywell’s invention qualified as prior art.View "Solvay, S.A. v. Honeywell Int'l, Inc." on Justia Law

EnOcean owns a patent application that claims a self-powered switch, which can be used to turn on and off lights, appliances, and other devices without a battery or connection to an electrical outlet. The named inventors originally filed a patent application disclosing the switch in Germany in 2000; in 2001 they filed a Patent Cooperation Treaty (PCT) international application with a similar disclosure. The Board of Patent Appeals and Interferences declared an interference in 2010 between EnOcean and Face, the real party of interest in a U.S. Patent that also claims a self-powered switch. The Board found the Face claims were unpatentable under 35 U.S.C. 103 based on prior art. Face did not appeal. The Board then applied a presumption that EnOcean’s claims were unpatentable for the same reasons. EnOcean’s argument for rebutting the presumption required determination that EnOcean’s claims could benefit from the filing dates of its German and PCT applications, eliminating a reference from prior art. The Board accorded no benefit of priority to the claims and found all of EnOcean’s claims unpatentable under section 103. The Federal Circuit vacated in part, finding that the Board erred in treating certain EnOcean claims as means-plus-function claims and in finding that certain EnOcean claim limitations lack support in its priority German and PCT applications.View "EnOcean GmbH v. Face Int'l Corp." on Justia Law

Bell appealed the vacatur of a default judgment as void in connection with the manufacture and marketing by Iran of a helicopter that resembled Bell's Jet Ranger 206 in appearance. The court concluded that Bell's interpretation of Rule 60(b)(4) was contrary to the court's precedent, as well as that of almost every other circuit court of appeals, all of which rejected a time limit that would bar Rule 60(b)(4) motions; because Iran never appeared in the district court proceeding resulting in the default judgment, the district court properly applied the traditional definition of voidness in granting Iran's Rule 60(b)(4) motion; and because Bell's evidence regarding the effect in the United States of Iran's commercial activities abroad was either too remote and attenuated to satisfy the direct effect requirement of the Foreign Sovereign Immunities Act (FSIA), 28 U.S.C. 1605(a)(2), or too speculative to be considered an effect at all, the district court did not err in ruling the commercial activity exception in the FSIA did not apply. Accordingly, the court affirmed the judgment of the district court. View "Bell Helicopter Textron, Inc., et al. v. Islamic Republic of Iran, et al." on Justia Law

Plaintiffs filed suit under the Lanham Act, 15 U.S.C. 1051 et seq., against defendants, alleging trademark infringement based on a theory that defendants misappropriated and have unauthorized commercial use in the United States of certain United States-registered trademarks related to "Stolichnaya" - brand vodka (the "Marks"). At issue on appeal was whether plaintiffs have sufficient claim to the Marks to sue for infringement under the Act. The court concluded that FTE was neither (1) the Russian Federation's "assign" of the marks nor (2) its "legal representative." The court also concluded that Cristall could not sue, since its rights as a plaintiff were purely derivative of those held by FTE, and FTE could not grant rights greater than its own; the court rejected plaintiffs' joint argument that they were entitled to proceed because the Russian Federation had "ratified" their suit; and, therefore, neither plaintiff was entitled to sue for infringement under section 1114(1). Accordingly, the court affirmed the district court's dismissal of the Third Amended Complaint with prejudice. View "Fed. Treasury Enter. v. SPI Spirits Ltd." on Justia Law

In this interlocutory appeal, Motorola appealed from the district court's preliminary injunction to enjoin Motorola temporarily from enforcing a patent injunction that it obtained against Microsoft in Germany. The underlying case before the district court concerned how to interpret and enforce patent-holders' commitments to industry standard-setting organizations (SSOs), which established technical specifications to ensure that products from different manufacturers were compatible with each other. Specifically, the case involved the H.264 video coding standard set by International Telecommunications Union (ITU), and the 802.11 wireless local area network standard set by the Institute of Electrical and Electronics Engineers (IEEE). The court held that, under the unique circumstances of this case, the district court's narrowly tailored preliminary injunction was not an abuse of discretion. Accordingly, the court affirmed the judgment. View "Microsoft Corp. v. Motorola, Inc., et al" on Justia Law

This appeal arose out of a successful forfeiture action brought by the United States government pursuant to 19 U.S.C. 1595a, which denied appellant's subsequent motion for attorney's fees. The forfeiture action sought to recover the Pissaro work of art entitled "Le Marche" that was reported stolen from the Musee Faure in Aix-les-Bains, France in 1981. At issue was whether the district court erred by refusing to apply the protections afforded by 18 U.S.C. 983 to the government's section 1595a claim and by denying her motion for attorney's fees after two of the government's three forfeiture claims were dismissed at summary judgment. The court held that a forfeiture action brought pursuant to section 1595a was not governed by section 982 and therefore, appellant was not entitled to raise the innocent-owner defense provided by section 983(d) or to take advantage of the heightened proof requirement of section 983(c). Therefore, the court affirmed the district court's judgment of forfeiture and since appellant was not a prevailing party within the meaning of 28 U.S.C. 2465(b)(1), she was not entitled to attorney's fees under the statute. View "United States v. Davis" on Justia Law

The company filed a claim under the Tariff Act of 1930, 19 U.S.C. 1337, asserting infringement of its patents on microchip encapsulation innovations. The ITC found no violation. The Federal Circuit affirmed. Substantial evidence supported the finding of no infringement of one patent by 17 of 18 defendants. The court also affirmed the ITC's determination that the patent was not anticipated and its finding of patent exhaustion with respect to the eighteenth defendant. The claims with respect to other patents, which have expired, are moot.