Justia Civil Procedure Opinion Summaries

Springboards for Education (“Springboards”) brought trademark infringement claims against McAllen Independent School District (“MISD”), a public school district in Texas, and IDEA Public Schools (“IDEA”), a nonprofit organization operating charter schools in Texas. The district court dismissed the suit against IDEA, concluding it was an arm of the state and therefore shared Texas’s sovereign immunity. As for MISD, the court found that it did not have sovereign immunity but ultimately granted summary judgment in MISD’s favor.   The Fifth Circuit affirmed the district court’s judgment for MISD. The court explained that while it disagrees with the district court’s conclusion that IDEA has sovereign immunity, the court affirmed the judgment for IDEA on alternate grounds. The court reasoned that in determining whether an entity is an arm of the state, the court balances the so-called “Clark factors,” which our court first articulated decades ago in Clark v. Tarrant County. Those factors are: (1) whether state statutes and case law view the entity as an arm of the state; (2) the source of the entity’s funding; (3) the entity’s degree of local autonomy; (4) whether the entity is concerned primarily with local, as opposed to statewide, problems; (5) whether the entity has the authority to sue and be sued in its own name; and (6) whether it has the right to hold and use property. The court held that factors one and three favor sovereign immunity while factors two, four, five, and six do not. The court concluded that IDEA is not an arm of the state and does not share in Texas’s sovereign immunity. View "Springboards v. IDEA Public Schools" on Justia Law

Defendant Citizens Equity First Credit Union (CEFCU) petitioned the Trademark Trial and Appeal Board (TTAB) to cancel a trademark registration belonging to plaintiff San Diego County Credit Union (SDCCU). SDCCU procured a stay to the TTAB proceedings by filing an action seeking declaratory relief to establish that it was not infringing either of CEFCU’s registered and common-law marks and to establish that those marks were invalid. The district court granted SDCCU’s motion for summary judgment on noninfringement. After a bench trial, the district court also held that CEFCU’s common-law mark was invalid and awarded SDCCU attorneys’ fees.   The Ninth Circuit affirmed in part and vacated in part the district court’s judgment and award of attorneys’ fees in favor of Plaintiff and remanded. The panel held that SDCCU had no personal stake in seeking to invalidate CEFCU’s common-law mark because the district court had already granted summary judgment in favor of SDCCU, which established that SDCCU was not infringing that mark. Hence, there was no longer any reasonable basis for SDCCU to apprehend a trademark infringement suit from CEFCU. After it granted summary judgment in favor of SDCCU, the district court was not resolving an actual “case” or “controversy” regarding the validity of CEFCU’s common-law mark; thus, it lacked Article III jurisdiction to proceed to trial on that issue. The panel therefore vacated the district court’s judgment and its award of attorneys’ fees, which was based, in part, on the merits of the invalidity claim over which the district court lacked Article III jurisdiction. View "SAN DIEGO COUNTY CREDIT UNION V. CEFCU" on Justia Law

Ahern Rentals, Inc. (Ahern), alleges that two competitors— EquipmentShare.com, Inc. (EquipmentShare) and EZ Equipment Zone, LLC (EZ)— misappropriated its trade secrets to gain an unfair advantage in the construction equipment rental industry. The district court first dismissed EZ from the lawsuit, ruling that Ahern failed to state a plausible claim for relief against it. Later, the district court dismissed the case altogether, ruling that Ahern’s remaining claims against EquipmentShare were duplicative of claims against EquipmentShare in several other ongoing lawsuits brought by Ahern. Ahern appealed both rulings, arguing that the district court erred in dismissing its claims.   The Eighth Circuit reversed. The court reasoned that, according to Ahern, EquipmentShare developed programs by exploiting Ahern’s trade secrets. Ahern also alleged that the market information used by EZ to develop profitable utilization and rental rates is based on Ahern’s trade secrets illegally obtained by EquipmentShare. Taking all factual allegations as true, Ahern pled enough facts to make it entirely plausible that EZ is at least using systems developed by EquipmentShare through the exploitation of Ahern’s trade secrets. Further, the court found that Ahern has pled sufficient facts to state a claim against EZ for unjust enrichment. It is not disputed that Ahern’s trade secrets are a benefit with real economic value. And, as alleged in the complaint, EquipmentShare and EZ have used the benefit to their advantage. Finally, Ahern plausibly alleges malfeasance in the acquisition of these confidential trade secrets. Thus, the district court erred in dismissing Ahern’s claims against EZ for civil conspiracy and unjust enrichment. View "Ahern Rentals, Inc. v. EquipmentShare.com, Inc." on Justia Law

Jawbone sued Google for patent infringement in the Western District of Texas after being assigned ownership of the nine asserted patents and seven months after being incorporated in Texas. Jawbone rents space in Waco to store documents relating to the patents, from which it conducts some distribution and sales activities. No Jawbone personnel work at any location in the Western District. Google moved under 28 U.S.C. 1404(a) to transfer the action to the Northern District of California, arguing that: the relevant technical aspects of the accused earbuds, smartphones, speakers, displays, and software products were researched, designed, and developed at Google’s headquarters within Northern California; the technology underlying the asserted patents assigned to Jawbone was likewise developed and prosecuted in Northern California; witnesses and sources of proof (prototypes, Google’s key personnel, and four of the six named inventors) were primarily located in Northern California; no witnesses or sources of proof were located in Western Texas.The Federal Circuit ordered the district court to grant the motion. The center of gravity of this action, focusing on the “Volkswagen factors” and the overriding convenience inquiry, is clearly in the Northern District of California, not in the Western District of Texas. Four factors favor transfer and four factors are neutral. No factor weighs against transfer. View "In Re Google LLC" on Justia Law

Stingray filed patent infringement suits in the Eastern District of Texas against TP-Link (organized and headquartered in China). TP-Link moved to dismiss for lack of personal jurisdiction or, alternatively, to transfer to the Central District of California (CDCA) under 28 U.S.C. 1406. TP-Link argued it was not subject to personal jurisdiction i Texas and that Federal Rule of Civil Procedure 4(k)(2) “does not cure this jurisdictional defect because Defendants would be amenable to suit in the Central District of California.” TP-Link also moved for transfer under 28 U.S.C. 1404(a). The court transferred the cases to the CDCA under section 1406, stating that its exercise of personal jurisdiction "would be unreasonable” and, “Defendants are amenable to suit in the CDCA” and have made affirmative representations that CDCA has proper jurisdiction and venue.The Federal Circuit granted a mandamus petition. TPLink’s unilateral, post-suit consent to personal jurisdiction in another state did not defeat the application of Rule 4(k)(2), which closed a pre-1993 loophole by which a nonresident defendant who did not have minimum contacts with any individual state sufficient to support the exercise of jurisdiction but did have sufficient contacts with the United States as a whole, could escape jurisdiction every state. The district court may assess whether TP-Link can satisfy Rule 4(k)(2)’s negation requirement on the grounds that Stingray “could have brought suit” in the CDCA, independent of TP-Link’s post-suit consent or may consider transfer under section 1404(a). View "In Re Stingray IP Solutions, LLC" on Justia Law

The District of Utah uses a “Standard Protective Order.” Pursuant to that order, Alaska designated certain source code files as “CONFIDENTIAL INFORMATION – ATTORNEYS’ EYES ONLY,” which precluded MFA’s in-house counsel from accessing those materials. MFA challenged Alaska’s designations and moved to amend the Standard Protective Order, seeking to permit its in-house counsel to access “all disclosed information,” including documents designated Attorneys’ Eyes Only, and to add additional designations to the Standard Protective Order specific to source code.The magistrate granted Alaska’s motions to maintain its protective order designations and denied MFA’s motion to amend, finding that Alaska had established that its source code contained trade secrets and merited “heightened protection.” The magistrate concluded that MFA’s in-house counsel was a “competitive decisionmaker” because of his licensing activities and because MFA’s “entire business model revolves around the licensing of patents through litigation with the assistance of its in-house counsel.” The district court affirmed, explaining that MFA had failed to support its argument that it should not bear the burden of proof to modify the Order and that the magistrate had appropriately cited cases “for their relevance to in-house counsel’s involvement in licensing making it a competitive decisionmaker.” The Federal Circuit rejected an interlocutory appeal for lack of jurisdiction under the collateral order doctrine. It is reviewable after a final judgment. View "Modern Font Applications LLC v. Alaska Airlines Inc." on Justia Law

Pocket Plus, LLC, sued Pike Brands, LLC (“Running Buddy”) for trade-dress infringement of Pocket Plus’s portable pouch. The district court granted summary judgment to Running Buddy and awarded it a portion of its requested attorney fees. Pocket Plus appealed the summary judgment, and both parties appeal the attorney fees award.   The Eighth Circuit affirmed. The court wrote there is no genuine dispute that Pocket Plus’s trade dress is functional and thus not protected by trademark law. To grant trade-dress protection for Pocket Plus would be to hand it a monopoly over the “best” portable-pouch design. Trademark law precludes that. Further, Running Buddy argued that the district court abused its discretion in awarding only a portion of the requested fees. The court found no abuse of discretion in finding that this was an exceptional case. It considered the appropriate law, reviewed the litigation history, held a hearing, and explained its decision. View "Pocket Plus, LLC v. Pike Brands, LLC" on Justia Law

Punchbowl is an online party and event planning service. AJ Press owns and operates Punchbowl News, a subscription-based online news publication that provides articles, podcasts, and videos about American politics, from a Washington, D.C. insider’s perspective. Punchbowl claimed that Punchbowl News is misusing its “Punchbowl” trademark (the Mark).   The Ninth Circuit affirmed the district court’s summary judgment in favor of AJ Press, LLC, in an action brought by Punchbowl, Inc. (Punchbowl), alleging violations of the Lanham Act for trademark infringement and unfair competition and related state law claims. The panel wrote that no reasonable buyer would believe that a company that operates a D.C. insider news publication is related to a “technology company” with a “focus on celebrations, holidays, events, and memory-making.” The panel wrote that this resolves not only the Lanham Act claims, but the state law claims as well. The panel explained that survey evidence of consumer confusion is not relevant to the question of whether AJ Press’s use of the Mark is explicitly misleading, which is a legal test for assessing whether the Lanham Act applies. The panel held that the district court’s denial of Punchbowl’s request for a continuance under Fed. R. Civ. P. 56(d) to permit further discovery was not an abuse of discretion. View "PUNCHBOWL, INC. V. AJ PRESS, LLC" on Justia Law

San Antonio Winery, Inc.’s filed a proof of service in which it stated that it had served Jiaxing Jiaxing Micarose Trade Co., Ltd., through the Director of the PTO. When Jiaxing did not appear to defend itself in the action, the district court clerk granted San Antonio’s request for entry of default, after which San Antonio filed the motion for default judgment in which it asked the district court to issue a permanent injunction. Noting the lack of circuit-level precedent on whether the procedures of Section 1051(e) provide a means of serving defendants in court proceedings, the district court denied the motion on the ground that Jiaxing had not been properly served.   The Ninth Circuit vacated the district court’s order denying San Antonio’s motion for a default judgment against in an action in which San Antonio asserts claims under the Lanham Act and related state-law claims. The panel held that the service procedures of Section 1051(e) apply not only in administrative proceedings before the PTO but also in court proceedings. Because the district court erred in concluding otherwise, the panel vacated the district court’s order and remanded for further proceedings. View "SAN ANTONIO WINERY, INC. V. JIAXING MICAROSE TRADE CO." on Justia Law

Aire sued Apple for patent infringement in the Western District of Texas in October 2021. In April 2022, Apple moved for transfer to the Northern District of California. Apple submitted a declaration from an Apple finance manager, “to establish certain facts, such as the relevance, role, and locations of witnesses and their teams, as well as the relevance and locations of various categories of documents.” Shortly before the close of venue discovery, Apple sought leave to supplement its motion with additional declarations, offering to make the declarants available for deposition and stating non-opposition to a “reasonable continuance” of the transfer proceedings.The district court granted Apple’s motion, but sua sponte ordered the parties to complete fact discovery on the merits (which it extended for an additional 30 weeks) and go through another six weeks of re-briefing of the motion before it would rule on Apple’s request to transfer. Apple then sought a writ of mandamus. Citing judicial economy, the Federal Circuit vacated the district court’s amended scheduling order and directed the court to postpone fact discovery and other substantive proceedings until after consideration of Apple’s motion for transfer. View "In Re: Apple Inc." on Justia Law