Prosecution History Negates Finding Of Patent Infringement In Mixed Decision On Patent, Trademark, And Trade Dress

In Focus Products Group International, LLC v. Kartri Sales Co., Inc., the Federal Circuit issued a mixed decision in an appeal raising multiple issues, including patent infringement, trademark infringement, trade dress infringement, and standing.

Focus owns many patents directed to "hookless" shower curtains. The district court determined on summary judgment that Katri and Marquis infringed three of Focus' patents covering a projecting edge as the clasping mechanism on the shower curtain. In a subsequent bench trial, the district court found that Kartri infringed Focus' asserted trademarks and trade dress.

On appeal, the Federal Circuit reversed the district court's infringement determinations for two of the patents, finding that Focus had disavowed a ring having a flat upper edge during prosecution, and it was undisputed that the accused products only contain rings with flat upper edges. The Federal Circuit upheld the district court's construction of the term "projecting edge" in a third patent, but criticized its infringement analysis for failing to properly explain its reasoning. The Federal Circuit thus remanded that issue for further findings. The Federal Circuit also rejected Marquis' argument that Focus acted with unclean hands in filing a terminal disclaimer after succeeding on claim construction for failure to allege any specific intent to deceive the Patent Office.

The Federal Circuit also vacated the district court's findings of infringement of Focus' "HOOKLESS" trademark. While the Federal Circuit agreed the record appeared to support a finding of actual confusion, it rejected the court's infringement analysis for failing to compare the products "in light of the way in which the marks are actually displayed." And the Federal Circuit reversed the court's finding of infringement of Focus' "EZ ON" mark because Focus had not registered the trademark before filing suit. The Federal Circuit vacated the district court's trade dress infringement finding for failing to perform the functionality analysis required under the Supreme Court's 2001 TrafFix opinion. And finally, the Federal Circuit vacated the district court's findings of willful infringement and its award of attorneys' fees.

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