Does the COVID Crisis Warrant Ex Parte Relief to Address Price Gouging under Trademark Theories?

Yes, with some reluctance.

3M, the well-known manufacturer of n95 masks, has filed a number of lawsuits throughout the country asserting trademark claims against defendants who are offering to sell to the government and others "3M" masks at extremely elevated prices.  3M asserts claims for trademark infringement, false advertising, dilution, among others.  Part of the harm 3M argues is that, aside from the defendants not being authorized to sell 3M products, 3M does not want to be associated with allegations of price gouging during this crisis.

To that end, 3M sought a temporary restraining order against such a seller in the Middle District.  After noting that hundreds of millions of dollars that 3M has invested in advertising its products under the 3M brand, the Court granted the ex parte relief:

Based on the evidence discussed above, Plaintiff has established a likelihood of success on the merits. Also based on those filings, it is clear that irreparable injury will be suffered if Plaintiff’s goodwill is injured due to Defendant’s price gouging and sale of either fraudulent PPE that is either below industry quality standards or that does not exist. Further, the Court places specific importance on the fact that if these fraudulent masks are sold, the public––likely healthcare workers––may be given PPE that is faulty, and therefore, expose them to COVID-19 and put their lives at risk. That potential harm obviously constitutes irreparable harm to 3M’s goodwill, but especially to the public. And, keeping that possibility from occurring, at least until the Court has the opportunity to further address these issues, outweighs any potential harm to Defendant and is certainly serving the public interest. 

The Court did note some hesitation with handling this ex parte:

The Court notes that it does have certain misgivings about whether Plaintiff met its burden regarding the propriety of ex parte relief here. The TRO’s argument regarding ex parte relief constitutes only one paragraph and contains no explanation as to why notice and a hearing would be impractical. M.D. Fla. R. 4.05(b)(2) (noting that to obtain such emergency, ex parte relief, Plaintiff must explain why notice and a hearing would be “impractical if not impossible.”). However, in light of the COVID-19 global pandemic and the harm that could occur should fraudulent masks be introduced by Defendant into the public, the Court finds that a TRO is necessary here. Accordingly, while the Court concludes that a TRO in this case is permissible, the Court will set an expedited schedule regarding service and the preliminary injunction hearing to ensure sufficient ability for Defendant to be heard on the matter. 

The Court then immediately enjoined the defendant's accused activities, required a $10,000 bond, and set an evidentiary hearing for tomorrow, May 7, 2020.

Defendant has appeared and asked that the hearing be delayed a week, and asked that it be conducted by Zoom.  The Court agreed to delay the hearing, but given that it will be an evidentiary hearing, is requiring in person attendance.

3M Company v. Geftico, LLC, Case No. 6:20-CV-648-ORl-41GJK (M.D. Fla. April 30, 2020) (J. Mendoza)

USPTO Further Extends Certain Patent and Trademark Deadlines

For many patent and trademark filing deadlines that would have been due between March 27, 2020 and May 31, 2020, the USPTO will consider them timely filed so long as: (1) they are filed on or before June 1, 2020; and (2) they are accompanied by a statement that the delay in filing was due to the COVID19 outbreak.

Patent Deadlines Further Extended

The USPTO exercised authority granted to it under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to extend certain deadlines. Notably, the extension does not apply to original filing deadlines, PCT deadlines, national stage filing deadlines, non-provisional filing deadlines, or the deadlines to file an inter partes review petition.

The USPTO previously extended by 30 days deadlines for certain events that fall between March 27, 2020 and April 30, 2020, if the applicant includes a statement that the delay in filing or payment was due to the COVID-19 outbreak.  The USPTO has broadened these extensions to now include certain events that fall between March 27, 2020 and May 31, 2020.  So long as a response is filed on or before June 1, 2020, the response will be considered timely. The USPTO provided the following in defining what it means to be “due to the COVID-19 outbreak”:

A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, patent owner, petitioner, third-party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

The response deadline extension covers a number of events, including pre-examination processing notices for small or micro entities, non-final and final office actions, issue fees, notices of appeal, appeal briefing, requests for oral hearing before the Patent Trial and Appeal Board, maintenance fees for small or micro entities, or requests for rehearing before the PTAB.

The USPTO has also superseded its prior announcement concerning waivers of certain petition fees associated with the revival of applications and reexamination proceedings. 

The USPTO also reminded everyone in its notice that it remains open for filing of USPTO documents and fees.

The USPTO’s patent notice is here.  

Trademark Deadlines Further Extended

The USPTO exercised the same authority under the CARES Act to extend certain trademark deadlines.  The deadline to respond to certain events that was due between March 27, 2020 and April 30, 2020 will be extended 30 days from the initial date it was due, provided the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.  The USPTO again defined what it means by “due to the COVID-19 outbreak” in the context of trademark deadlines:

A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

The response deadline extension covers a number of events, including office action responses, notices of appeal, statements of use or requests for extension of time to file a statement of use, notice of oppositions or requests for extension of time to file them, priority filing, renewal applications, and affidavits of use or excusable nonuse.

For Trademark Trial and Appeal Board issues, while deadlines are not automatically extended, requests or motions to extend deadlines may be made.

The USPTO has also superseded its prior announcement concerning waivers of certain petition fees associated with the revival of applications and reinstating canceled/expired registrations. 

As with the Patent notice above, the USPTO reminds everyone that it remains open to receive filing and fees.

The USPTO’s trademark notice is here.  

Does a State Judicial District's COVID19 Administrative Order Justify Alternative Service of Process?

No.

Blue Water Dynamics, LLC has sued Anthony Kalil for copyright infringement, but Blue Water is having difficulty serving Kalil.  According to Plaintiff, its process server made 3 attempts to serve Kalil in March, 2020, and Defendant either was not home or refused to answer the door.  Plaintiff seeks permission to serve Defendant via U.S. Mail and FedEx.

Plaintiff argues that the 19th Judicial District, presumably where Defendant may be found, has issued an Administrative Order prohibiting certain activities.  Plaintiff argues that "No authorized process servers are permitted to personally serve Mr. Kalil at this time.  Accordingly, this Court should permit service of Defendant by U.S. Mail or Federal Express."

The Court was not convinced.  Failing to find the language in the Administrative Order which Plaintiff relies on, the Court instead turned to Executive Order 20-91, entered by Florida's Governor on April 1, 2010.   That Executive Order explicitly supersedes any conflicting official action or order issued by local officials and recognizes that "professional services, such as legal" are essential services which may continue operating.

If take-out and delivery of pizza and beer are currently permitted as essential by the various governing orders, the Court is hard-pressed to conclude that the perfection of service of process (as legally-mandated by the Federal Rules of Civil Procedure and Florida statute) does not fall within the exception for “professional services”; service of process is a legal service necessary to comply with the relevant statutes and rules, ensure due process, and allow for the orderly resolution of disputes and operation of the Court.

[Editor note: Interestingly, Ex. Order 20-91 was amended a few hours after it was entered by Ex. Order 20-92.  The amendment changed the provision relied upon by the Court in this decision.  Prior to the amendment, Ex. Order 20-91 provided:

This Order shall supersede any conflicting official action or order issued by local officials in response to COVID-19 but only to the extent that such action or order allows essential services or essential activities prohibited by this Executive Order. 

After amendment, Ex. Order 20-92 provides:

This Order shall supersede any conflicting official action or order issued by local officials in response to COVID-19. 

]
Ex Parte Motion for Order Authorizing Alternative Service of Process, Denied.
Blue Water Dynamics, LLC v. Kalil, Case No. 6:20-CV-290-ORL-78DCI (M.D. Fla. Apr. 17, 2020) (Mag. J. Irick)

Does COVID19 Warrant A 90-Day Extension Of a Case Pending More Than A Year?

No.

Plaintiff in a patent infringement matter concerning Plaintiff's ceiling fan patents asked the court to delay all deadlines 90-days in light of the COVID19 crisis.  Plaintiff noted that the parties and attorneys are all located in states that imposed social distancing guidelines and other stay at home restrictions.  Due to this, the parties "are doubtful that any in person depositions may be taken at least for another sixty (60) days."

While sympathetic to the ongoing crisis, the Court also needed to weigh its obligation to advance cases on its docket, so it granted the motion in part, encouraging the parties to use remote technology to advance the case:

While the Court understands the challenges presented by the COVID-19 pandemic, the Court is not convinced that a three-month continuance is warranted. This case, which was filed in the District of Maryland in December 2018, has already been pending for well over a year. In addition, the parties still have more than three months for factual discovery, much of which can be conducted using remote technology. Nevertheless, out of an abundance of fairness, the Court will grant a 60-day extension of the case management and scheduling order. The parties are advised that the Court has an obligation to move its cases forward and will be disinclined to grant any further extensions of these deadlines. Therefore, in order to avoid any further delay, the parties are encouraged to utilize remote technology to conduct discovery until it is considered safe to meet in person. 

Motion for continuance, granted in part.
Delta T, LLC v. Dan's Fan City, Inc., Case No. 8:19-CV-01731 (M.D. Fla. April 9, 2020) (J. Covington)

Does the COVID19 Crisis Warrant Relief from a Preliminary Injunction Related to Fire Engines?

Yes.

Pierce Manufacturing secured a preliminary injunction prohibiting E-One from selling its Metro 100 single rear axle quint.  That preliminary injunction prohibits E-One from selling the Metro 100 during the pendency of the patent infringement litigation Pierce Manufacturing is pursuing against E-One. 

Pierce Manufacturing accuses E-One of infringing 2 of its quint configuration patents: U.S. Patent 9,597,536 and 9,814,915.  (It appears from later pleadings that Pierce has dropped claims related to the '915 Patent). 

Trial had been scheduled for March 23, 2020, after the COVID19 pandemic had taken over in Florida and the U.S.  Pierce asked the court to delay trial by 60-days, but E-One would only agree if the injunction was modified.   The Court quickly set a telephonic hearing to address the motion.  During the hearing, the Court granted the motion to remove the case from a March 23, 2020 trial start, and ordered the parties to meet and confer to see if agreement could be reached on the injunction.  The Court gave the parties 20-days to see if they could reach a resolution.

The parties did not reach a full agreement, but got close.  Pierce didn't agree a modification was appropriate, but in the case the Court ruled otherwise, Pierce and E-One agreed to provide certain relief from the injunction from the time period essentially overlapping with what will be the COVID19-related delay of the trial.  Specifically, the parties agreed that E-One may sell the Metro 100 during this time period to fire departments.  The parties agreed that if the jury eventually determines that sales of the Metro 100 are infringing, these interim sales can be factored into a damages award.  The parties further agreed that nothing about permitting the interim sales during this COVID19 crisis could be used by the parties to argue there would be no irreparable harm in continued sales of the Metro 100.

The parties were unable to agree as to whether or not a future injunction could cover these interim sales.  The Court entered the modification to the preliminary injunction, and sided with E-One in holding that:

Any such Interim Sales, as defined by the receipt of a purchase order from a bona fide purchaser, shall not be subject to any future injunction, regardless of the outcome of the jury trial in the case.

Preliminary injunction modified.
[Notably, shortly after entering this modification, Judge Moody transferred this case to Judge Barber, with his consent.] 
Pierce Manufacturing, Inc. v. E-One, Inc., Case No. 8:18-CV-617-JSM-TGW (M.D. Fla. Apr. 8, 2020) (J. Moody)

Patent, Trademark, and Copyright Deadlines Extended Due To COVID-19

Patent, Trademark, and Copyright deadlines extended due to the COVID19 crisis.

The United States Patent and Trademark Office today extended certain deadlines in connection with patent and trademark related matters due to the COVID19 crisis.  Similarly, the United States Copyright Office has announced modifications to deadlines in light of the crisis.

Patent Deadlines Extended

The USPTO exercised authority granted to it under the Coronavirus Aid, Relief, and Economic Security Act (CARES Act) to extend certain deadlines.  Specifically, deadlines for certain events that fall between March 27, 2020 and April 30, 2020, will be extended by 30 days if the applicant includes a statement that the delay in filing or payment was due to the COVID-19 outbreak.  The USPTO provided the following in defining what it means to be “due to the COVID-19 outbreak”:

A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, patent owner, petitioner, third party requester, inventor, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

The response deadline extension covers a number of events, including pre-examination processing notices for small or micro entities, non-final and final office actions, issue fees, notices of appeal, appeal briefing, requests for oral hearing before the Patent Trial and Appeal Board, maintenance fees for small or micro entities, or requests for rehearing before the PTAB.

Notably, the extension does not apply to original filing deadlines, PCT deadlines, national stage filing deadlines, non-provisional filing deadlines, or the deadlines to file an inter partes review petition.

The USPTO has also announced that it is waiving certain petition fees for patent owners and applicants who were unable to timely file a response because of the COVID-19 crisis.

The USPTO also reminded everyone in its notice that it remains open for filing of USPTO documents and fees.  The Patent notice is here.

Trademark Deadlines Extended

The USPTO exercised the same authority under the CARES Act to extend certain trademark deadlines.  The deadline to respond to certain events that was due between March 27, 2020 and April 30, 2020 will be extended 30 days from the initial date it was due, provided the filing is accompanied by a statement that the delay in filing or payment was due to the COVID-19 outbreak.  The USPTO again defined what it means by “due to the COVID-19 outbreak” in the context of trademark deadlines:

A delay in filing or payment is due to the COVID-19 outbreak for the purposes of this notice if a practitioner, applicant, registrant, or other person associated with the filing or fee was personally affected by the COVID-19 outbreak, including, without limitation, through office closures, cash flow interruptions, inaccessibility of files or other materials, travel delays, personal or family illness, or similar circumstances, such that the outbreak materially interfered with timely filing or payment.

The response deadline extension covers a number of events, including office action responses, notices of appeal, statements of use or requests for extension of time to file a statement of use, notice of oppositions or requests for extension of time to file them, priority filing, and affidavits of use or excusable nonuse.

For Trademark Trial and Appeal Board issues, while deadlines are not automatically extended, requests or motions to extend deadlines may be made.

As with the Patent notice above, the USPTO reminds everyone that it remains open to receive filing and fees.  The Trademark nice is here.

Copyright Deadlines Extended

The U.S. Copyright Office has also made adjustments under the authority of the CARES Act.  For those copyright applicants able to submit electronic copyright applications with electronic deposit copies, no changes have been made.  But for those applicants who must submit a physical deposit copy, the Copyright Office will accept an electronic application and a declaration or similar statement certifying, under penalty of perjury, that the applicant is unable to submit the physical deposit and would have done so but for the national emergency.  The applicant must set forth “satisfactory evidence” in support of this statement.  The Copyright Office provided the following examples of “satisfactory evidence:”

·      statement that the applicant is subject to a stay-at-home order issued by a state or local government

·      a statement that the applicant is unable to access required physical materials due to closure of the business where they are located

If an applicant is unable to submit an electronic application, the applicant may do so after the Acting Director of the Copyright Office has announced the end of the COVID-19 disruption, so long as the applicant includes a declaration or similar statement certifying, under penalty of perjury, that the applicant was unable to submit an application electronically or physically and would have done so but for the national emergency, and providing “satisfactory evidence” in support.  This “satisfactory evidence” may include:

·      a statement that the applicant did not have access to a computer and/or the internet

·      a statement that the applicant was prevented from accessing or sending required physical materials for reasons such as those noted above

The Copyright notice is here.

Is Identifying An Allegedly Infringed Claim Sufficient To Survive Dismissal?

Not necessarily.

Advanced Screenworks, LLC sued Gold Star Ventures and its owner for alleged infringement of U.S. Patent 8,146,647 for "Screen Clipping System and Clips Therefor."   Advanced alleges that Gold Star infringes the '647 Patent by:

making, using, offering to sell, and selling products, methods, and apparatuses for the screening of windows, doors, pool cages, and patios, including [Defendant's] "Screening Buddy Dual Purpose Screen Retainer System" ... which comes within the scope of the ['647 Patent] without authority or license from [plaintiff].

Advanced further alleges that Gold Star has infringed on "at least claims 1, 2, and 3 of the '647 Patent."  But identifying the patent and the specific claims infringed was not sufficient to survive dismissal:

An allegation of direct patent infringement is “insufficient under Twombly and Iqbal if it simply recites some of the elements of a representative claim and then describes generally how an accused product operates, without specifically tying the operation to any asserted claim or addressing all of the claim requirements.” Blue Water Innovations, LLC v. Fettig, 2019 WL 1904589, *2 (S.D. Fla. Mar. 8, 2019) (citation omitted).

Because Advanced "does not sufficiently tie any specific operation to a patent claim," Gold Star's motion to dismiss is granted.  The Court did grant leave to file a Second Amended Complaint.

Advanced Screeworks, LLC v. Mosher, Case No. 2:19-civ-758-FtM-29MRM (M.D. Fla. Mar. 12, 2020) (J. Steele)