Uber in Gainesville? Not So Fast...

This will be my first post on a case from outside the Middle District of Florida, but instead comes from the Northern District.  I'll let the Judge provide the intro:

You live in Gainesville and need to book a party bus, or perhaps a non-party bus or a limo to take a number of people to an event. You run a Google search for “Gainesville party bus” and, not satisfied with any of the offerings on page one of the results, turn to page two. There is a listing there for “Uber Promotions.” Thinking that perhaps this is somehow affiliated with Uber, a nationally known taxi-like service that has recently come to town, you click on the link. You are taken to a webpage with a bright green and purple “über PROMOTIONS” logo. The crux of this trademark infringement case is (roughly speaking) whether you could reasonably conclude that Uber Promotions and Uber the taxi- like service are in some way connected. 

This case pits a Gainesville, Florida company (Uber Promotions, Inc.) ("Promotions") against the nationally known Uber Technologies, Inc. ("Tech"), an on-demand car service.   Tech began in a few cities, but has exponentially expanded over the last few years.  Tech's first foray into Florida was in Tampa [ed - thus the Middle District of Florida connection!] during the Republican National Convention in 2012.  

Promotions has been operating in Gainesville since 2006. Concerned that the junior user (Tech) was encroaching into its space in Gainesville, Promotions filed suit seeking a preliminary injunction to prevent Tech from operating in Gainesville.  This is an interesting case for showing a senior user relying on common law rights in a particular geographic area to fend off or stop a junior user relying on federal trademark rights (and the respective zones of natural expansion of the two rights holders).  The Court described the respective sizes of the companies in colorful language:

Elephants don't look out for gerbils when they plow through the bush.

Apparently Tech has unveiled a new service, called UberEVENTS, that allows you to purchase a ride for others that can be used at a particular time in the future.   It was this new service that the Court decided was preventable (at least pending trial), as a broader injunction seeking to stop Uber altogether in Gainesville was too broad.  Again, the Court used useful prose:

Arming Squirrels with Bazookas

The Court addressed the preliminary injunction factors and ultimately concluded that a narrow  injunction was proper to requiring Tech to:

• stop using the UBER mark (or any variant thereof) in connection with the UberEVENTS service in the Gainesville market (Alachua County) until further notice
• not advertise the UberEVENTS service in Alachua County or cause it to be advertised in Alachua County until further notice.  A posting promoting UberEVENTS placed on the Facebook wall or page of an entity with its principal place of business in Alachua County is an advertisement.  A posting promoting UberEVENTS placed on the Facebook wall or page of a real person whose usual place of abode or residence is in Alachua County is an advertisement.
• ensure that if a person attempts to book an event in Alachua County through the UberEVENTS webpage, that booking is not allowed to be completed.
• set up a 352-area-code phone number to handle phone calls
• make sure that internet searches for the phrase "Uber Gainesville phone" or "Uber Gainesville phone number" returns Defendant's 352-area-code number along with words clearly indicating that the results are clearly Defendants

(The injunction further required Tech to buy Google AdWords (or similar products) if necessarily to accomplish the injunction search result obligations.)  

I'm certain this case is far from done.  Stay tuned...

Uber Promotions, Inc. v. Uber Technologies, Inc., Case No. 1:15-CV-206 (N.D. Fla. Feb. 16, 2016) (J. Walker)

Preliminary Injunction - David vs. Goliath

Conair Corporation has substantial rights to U.S. Patent Nos. 8,607,804 and 8,651,118 (and its subsidiary owns Design Patent D696,456) relating to a hair styling device.  Conair sold approximately one million of these devices in 2013 and projects that it will sell approximately two million this year (2014).  Barbar, Inc apparently made 2,500 hair styling devices that bear a resemblance to Conair's.  

On May 30, 2014, Conair sought a temporary restraining order to prevent Barbar from displaying the allegedly infringing device at a trade show in Orlando the next day.  The Court denied that motion and converted it into a motion for preliminary injunction.  In denying the TRO, the Court noted:

Patent cases are notoriously complex. See Minemyer v. B-Roc Representatives, Inc., 07 C 1763, 2010 WL 3787093 (N.D. Ill. Sept. 21, 2010) aff'd sub nom. Minemyer v. R-Boc Representatives, Inc., 515 F. App’x 897 (Fed. Cir. 2013) (noting that patent cases are more time- consuming and are more taxing on judicial resources than most civil cases). In this instance, the Plaintiffs ask the Court to determine in less than a day that they have a substantial likelihood of success on a patent case involving three patents, unfair competition, and an alleged violation of trade dress. Simply put, less than twenty-four hours is too little time for a Court to make a reasoned and reflective determination as to whether Plaintiffs have a substantial likelihood of succeed on such a complex matter.

Conair Corp. v. Barbar, Inc, Case No. 6:14-CV-831 (M.D. Fla. May 30, 2014) (J. Presnell).  The parties moved onto a preliminary injunction.  The Court held an evidentiary hearing and ultimately concluded a preliminary injunction was not warranted because of the significant difference in the parties' respective sizes:

The Plaintiffs' theory of irreparable harm is that they will suffer price erosion and that their reputation and product's reputation will be tarnished. (See Doc. 2–1 at 6–7). As to price erosion, a competitor whose sales would represent less than .2% of the Plaintiffs projected sales for this year is not a significant threat to the Plaintiffs' price point. Moreover, the testimony at the evidentiary hearing showed that the Defendants' two-for-one pricing discount was simply for trade show marketing purposes and does not represent the regular pricing of the Defendants' product. (See Doc. 30 at 32:16–33:7 (describing receipt for two of Defendants' products for total cost of $100)). That limited marketing effort does not represent an intent to presently compete with the Plaintiffs' product at a dramatically lower price. 

With respect to the representational injury to the Plaintiffs' product, the evidence was mixed and none of the negative reviews could be clearly traced to any alleged faults with the Defendants' product. (See Docs. 1–1, 1–3 (attachments to Complaint showing positive reviews of Plaintiffs' product); Docs. 21–3. 21–4, 21–5, 21–6 (showing negative reviews of Plaintiffs' product). Further, even assuming that representational harm can be traced to the Defendants' product, the volume of Defendants' sales is de minimis. See Am. Beverage Corp. v. Diageo N. Am., Inc., 936 F.Supp.2d 555, 615 (W.D.Pa.2013) (addressing where large sales volume supported lack of irreparable harm upon showing of fault with allegedly infringing product). Accordingly assertions that the Defendants' product would be tarnished in a non-compensable manner are speculative.

Motion for preliminary injunction, denied.

Conair Corp. v. Barbar, Inc., Case No. 6:14-CV-831 (M.D. Fla. July 3, 2014) (J. Presnell)

Selling a product that can be used in a patented method does not constitute infringement

Minsurg markets and sells to physicians the TruFUSE system for use in spinal fusion surgeries. Minsurg also owns U.S. Patent No. 7,708,761 protecting a method for performing spinal surgery. The method protected generally requires the following steps:

1. place a portal into a human patient through a minimally invasive opening
2. access a spinal joint through the portal
3. insert a drill bit into the portal
4. drill a hole into the spinal joint
5. remove the drill bit
6. insert a joint fusion plug into the hole drilled
7. insert a tamping instrument into the portal
8. tamp the fusion plug

(while not claimed in the patent, presumably the surgeon should also remove the tamping instrument.)

Minsurg sued a number of defendants who sell competing surgical systems. Minsurg sought a preliminary injunction. Magistrate Judge Jenkins conducted an evidentiary hearing recommended denial of Minsurg's motion. The decision turned on how important "minimally invasive" was.

First, to get a preliminary injunction, Minsurg needed to establish that it was: (1) likely to succeed on the merits; (2) likely to suffer irreparable harm without the injunction; (3) the balance of hardships favored Minsurg; and (4) the public interest would be best served by granting the injunction.

A problem for Minsurg was that the '761 Patent protects a method of performing surgery, but the defendants were not the surgeons who allegedly practice the method. The defendants sell products which can be used to practice the method. So Minsurg asserted three theories of liability: (1) Defendants directly infringed the patent; (2) Defendants actively induced their customers to practice the method; and (3) Defendants contributed to the infringement.

To have patent infringement (under any of the theories), there must be an act of direct infringement. And with a method patent, direct infringement happens "only by one practicing the patented method." Joy Techs., Inc. v. Flakt, Inc., 6 F. 3d 770, 775 (Fed. Cir. 1993).

Direct Infringement

Because the Defendants themselves do not perform the steps of the method, they are not direct infringers:

Defendants do not perform the steps of the process set forth in the '761 Patent because they do not perform spinal fusion surgeries. Rather, Defendants sell systems used by physicians to perform such surgeries. Consequently, Plaintiff is not likely to succeed on its claims of direct infringement.

(This does not seem to have been a tough part of the decision, and skimming Plaintiff's motion, it does not appear Plaintiff really pursued direct infringement as a grounds for preliminary injunction here.)

Indirect Infringement - Induced infringement and Contributory infringement

Even though a defendant does not directly infringe a patent, it can still be held liable if it actively induces others to infringe the patent or contributes to another's infringement of the patent (where the piece the defendant contributes has no alternative non-infringing uses). Minsurg's theory here was that Defendants sold their kits and instructed their customers (the surgeons) on how to use them. And using the kits required practicing the claimed method. The Court did not agree.

As a factual matter, the claimed method requires the portal to be placed into a patient through a "minimally invasive" opening. Defendants offered testimony that the vast majority of spinal surgeries are done through an "open incision," as opposed to through a "minimally invasive incision." Thus, none of the Defendants' systems necessarily infringe because they can be used in non-infringing ways -- specifically when they are used through an "open incision."

Because there is a substantial, non-infringing use, Minsurg's only hope was to show evidence of active and willful inducement. "Evidence of active steps taken to induce infringement, such as advertising an infringing use, can support a finding of an intention for the product to be used in an infringing manner." Lucent Techs., Inc. v. Gateway, Inc., 580 F.3d 1301, 1322 (Fed. Cir. 2009). Minsurg presented evidence of Defendants' advertising showing their systems being used in both open incisions and minimally invasive incisions. But Minsurg did not have any evidence of any physicians actually using the equipment in a minimally invasive procedure. And the advertising evidence did not appear to be sent out after the '761 Patent issued. (Thus, how could one market infringing steps before the patent laying out what infringement entailed issues. Presumably, there is an argument that whatever intervening rights attached to the '761 Patent during prosecution could help Minsurg here, but that is a topic for another post.)

Motion for preliminary injunction denied.

Minsurg International, Inc. v. Frontier Devices, Inc., Case No. 8:10-cv-1589, slip op. (Feb. 7, 2011) (J. Covington) adopting Report & Recommendation of Mag. Jenkins