Cardinal Motors, Inc. v. H & H Sports Prot. USA Inc.

Court: U.S. Court of Appeals for the Second Circuit

Docket: 23-7586

Opinion Date: February 6, 2025

Judge: Denny Chin

Areas of Law: Intellectual Property

Cardinal Motors, Inc. filed a lawsuit against H&H Sports Protection USA Inc., alleging that H&H unlawfully copied the design of its motorcycle helmet, "The Bullitt." Cardinal claimed trade dress infringement and unfair competition under Section 43(a) of the Lanham Act and analogous state laws. Cardinal described two alternative trade dresses for The Bullitt: the "General Trade Dress" and the "Detailed Trade Dress," each specifying various design features of the helmet.

The United States District Court for the Southern District of New York dismissed Cardinal's complaint with prejudice, ruling that Cardinal failed to articulate a precise expression of the trade dress, including how it was distinct. The court focused on the General Trade Dress and did not separately consider the sufficiency of the Detailed Trade Dress, assuming it was inadequate based on the General Trade Dress.

The United States Court of Appeals for the Second Circuit reviewed the case and concluded that the district court erred in its application of the articulation requirement for trade dress infringement cases. The appellate court clarified that the articulation requirement is separate from the distinctiveness requirement. A plaintiff satisfies the articulation requirement by listing with precision the features that comprise its trade dress, without needing to prove distinctiveness at this stage.

The Second Circuit held that both the General Trade Dress and the Detailed Trade Dress were articulated with the requisite precision. Therefore, the district court's dismissal was incorrect. The appellate court vacated the judgment and remanded the case for further proceedings to determine whether Cardinal's trade dress claims meet the elements of distinctiveness, likelihood of confusion, and nonfunctionality. The district court was also instructed to address Cardinal's state law claims of unfair competition.

Pie Development v. Pie Carr Holdings

Court: U.S. Court of Appeals for the Fifth Circuit

Docket: 24-60155

Opinion Date: February 3, 2025

Areas of Law: Civil Procedure, Intellectual Property

Pie Development, L.L.C. was formed to develop an application to streamline the process of purchasing workers compensation insurance. The company alleged that Dax Craig, a consultant, stole the idea and shared it with John Swigart. Craig and Swigart then used the idea to create Pie Insurance Holdings, Inc. and other affiliated entities, generating significant profits. Pie Development sued Craig, Swigart, Pie Insurance Holdings, and Pie Insurance Services, alleging misappropriation of trade secrets under the Mississippi Uniform Trade Secrets Act (MUTSA) and the federal Defend Trade Secrets Act (DTSA), among other claims.

The United States District Court for the Southern District of Mississippi dismissed the complaint for failing to provide sufficient detail on each claim, but allowed Pie Development to amend its complaint within thirty days. Pie Development chose not to amend and instead appealed. The United States Court of Appeals for the Fifth Circuit affirmed the district court's decision, noting that Pie Development did not sufficiently plead that it took reasonable measures to protect its business plan's secrecy.

While the appeal was pending, Pie Development filed a new lawsuit against additional defendants, including Pie Carrier Holdings, Gallatin Point Capital, Sirius Point Ltd., and Pie Casualty Insurance Company, and later added the original defendants. The district court dismissed the new claims, citing res judicata, as the claims were identical to those in the first lawsuit. Pie Development appealed this decision.

The United States Court of Appeals for the Fifth Circuit reviewed the case and affirmed the district court's dismissal. The court held that res judicata applied because the prior action was concluded by a final judgment on the merits when Pie Development chose to appeal rather than amend its complaint. The court also found that Pie Development failed to state a claim against Gallatin and Sirius, as the complaint did not plausibly allege that they knew or should have known about the misappropriation of trade secrets.

AQUARIAN FOUNDATION, INC. V. LOWNDES

Court: U.S. Court of Appeals for the Ninth Circuit

Docket: 22-35704

Opinion Date: February 3, 2025

Judge: Margaret McKeown

Areas of Law: Business Law, Contracts, Copyright, Intellectual Property, Non-Profit Corporations, Trademark

Aquarian Foundation, Inc., a non-profit religious organization, alleged that Bruce Lowndes infringed on its copyrights by uploading spiritual teachings of its late founder, Keith Milton Rhinehart, to various websites. Lowndes claimed he had a license from Rhinehart, granted in 1985, to use the materials. Rhinehart passed away in 1999, bequeathing his estate, including the copyrights, to Aquarian.

The United States District Court for the Western District of Washington granted partial summary judgment, confirming that Rhinehart's copyrights were properly transferred to Aquarian via his will. After a bench trial, the court ruled against Aquarian on its claims of copyright infringement, trademark infringement, and false designation of origin. The court found that Rhinehart created the works as his own, not as works for hire, and that he had validly licensed them to Lowndes. The court also determined that Lowndes did not breach the licensing agreement and that Aquarian could not terminate the license under 17 U.S.C. § 203(a). The court denied attorneys’ fees to both parties.

The United States Court of Appeals for the Ninth Circuit affirmed the district court’s findings that Rhinehart’s works were not created as works for hire, that he validly licensed the works to Lowndes, and that Lowndes did not breach the licensing agreement. The court also affirmed the decision not to award Lowndes attorneys’ fees under the Lanham Act. However, the Ninth Circuit reversed the district court’s determination regarding the termination of the license, holding that Aquarian’s termination letter in May 2021 was effective. The case was remanded for further proceedings to address any infringement that may have occurred after the license termination, as well as the denial of injunctive relief and attorneys’ fees under the Copyright Act.

HD SILICON SOLUTIONS LLC v. MICROCHIP TECHNOLOGY INC.

Court: U.S. Court of Appeals for the Federal Circuit

Docket: 23-1397

Opinion Date: February 6, 2025

Judge: Alan Lourie

Areas of Law: Intellectual Property, Patents

HD Silicon Solutions LLC (HDSS) appealed a decision by the United States Patent and Trademark Office Patent Trial and Appeal Board (the Board) which held claims 1–7 and 9–17 of U.S. Patent 6,774,033 (the '033 patent) unpatentable as obvious. The '033 patent pertains to a local interconnect layer in an integrated circuit, specifically involving a method of forming this layer using titanium nitride and tungsten films.

Microchip Technology Inc. (Microchip) petitioned for inter partes review (IPR), arguing that the claims were obvious over U.S. Patent 5,847,463 (Trivedi). The Board construed the term "comprising tungsten" to include both elemental tungsten and tungsten compounds, and found that the claims were unpatentable based on Trivedi alone or in combination with other references. HDSS appealed this decision, challenging the Board's claim construction and its findings on the motivation to combine references.

The United States Court of Appeals for the Federal Circuit reviewed the case. The court agreed with HDSS that the Board's construction of "comprising tungsten" was incorrect, determining that the term should be limited to elemental tungsten. However, the court found that this error was harmless because Trivedi disclosed both elemental tungsten and tungsten-silicide layers, either of which would render the claims obvious. The court also upheld the Board's findings on the motivation to combine references, rejecting HDSS's arguments that the Board misinterpreted Trivedi and failed to explain the motivation to combine references to meet specific claim limitations.

Ultimately, the Federal Circuit affirmed the Board's decision, holding that the claims of the '033 patent were unpatentable as obvious.