Court Says Patent Mediators Are Subject to Same Neutrality and Disclosure Rules as Judges

mediation alternative dispute resolutionThe US Court of Appeals for the Federal Circuit ruled that a mediator in a patent infringement dispute has a duty to disclose a relationship with the law firm representing one of the parties.

In the case of CEATS, Inc. v. Continental Airlines, et al., CEATS brought a patent infringement suit against Continental and other airlines and parties for alleged infringement of its patents.  After the parties failed to settle the case during court-ordered mediation, the case went to trial.

A jury found that CEATS’s patents were infringed but invalid.

CEATS filed a motion for relief from the judgment based on an undisclosed relationship between the court-appointed mediator and the law firm representing one of the defendants.

Previously, the law firm that one of the parties’ lawyers worked for had arbitrated a case before the same mediator and he had made an award of $22 million to the firm’s client.  Discovery in that case also disclosed an “enduring social relationship” between the mediator and one of the firm’s attorneys involving “expensive outings and gifts.”

The district court denied this motion and CEATS appealed.

The Federal Circuit disagreed with the district court’s finding that the mediator had no duty to disclose his relationship with one of the firms, but found that this did not warrant relief from judgment.

The Circuit Court noted:

Courts must feel confident that they are referring parties to a fair and effective process when they refer parties to mediation. And parties must be confident in the mediation process if they are to be willing to participate openly in it. Because parties arguably have a more intimate relationship with mediators than with judges, it is critical that potential mediators not project any unreasonable hint of bias or partiality. Indeed, all mediation standards require the mediator to disclose any facts or circumstances that even reasonably create a presumption of bias.

The court noted that this duty was similar to the recusal requirements imposed on judges.

The court found that the mediator should have disclosed his involvement in the previous case but that this was not an “extraordinary circumstance” where relief from judgment was warranted.

The court noted that CEATS was able to fully and fairly present its case to an impartial judge and jury and thus suffered no injustice as a result of the mediator’s failure to disclose.

If you are considering mediation or another form of alternative dispute resolution for your patent dispute, contact our office to arrange a free initial consultation with one of our attorneys.

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Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

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Photo Attribution: “A logo for Mediation Cabal. Arm cropped at circle boundary” by Atyndall is licensed under CC-A-SA 3.0.

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Tomato? Tomahto? Is There One Right Way to Pronounce a Trademark?

Tomato Trademark PronunciationFederal Circuit Says No When Trademark is Not a Recognized Word

The case arose out of a dispute between StonCor and Specialty Coatings, competitors in the market for “epoxy coatings used on concrete floors.”

In 1992, StonCor registered the mark STONSHIELD with the US Patent and Trademark Office in connection with “floors and flooring systems comprised of epoxy resins . . . for use in industrial and institutional applications,” among other products.

In 2008, Specialty Coatings applied to register the trademark “ARMORSTONE” in connection with “[e]poxy coating for use on concrete industrial floors,” among other products. StonCor opposed registration of the ARMORSTONE mark on six grounds.  Among other things, it argued that:

  • The USPTO should not allow registration of the ARMORSTONE mark because consumers would likely confuse it with STONSHIELD when used in connection with epoxy floor products.
  • ARMORSTONE is not eligible for registration because the mark is merely descriptive.

The Trademark Trial and Appeal Board (TTAB) analyzed the likelihood of confusion based on thirteen factors, the relevant ones being:

  • The similarity or dissimilarity of the marks in their entireties as to appearance, sound, connotation and commercial impression, and
  • The number and nature of similar marks in use on similar goods.

With regard to the first factor, the TTAB considered how consumers would pronounce “STONSHIELD.”

StonCor presented evidence that “ston” would be pronounced like “stone.”

However, the TTAB reasoned that the spelling of the word and “ordinary rules of English” dictated that the word would be pronounced with a short “o” as in “on.”

Taking this and other factors into consideration, the TTAB found there was no likelihood of confusion.

See Also:  Monetize Your Ideas — Trademarks

StonCor appealed.

The Federal Circuit found that the TTAB had erred by failing to credit StonCor’s evidence that consumer would pronounce “STON” as “stone”:

Where a trademark is not a recognized word and the weight of the evidence suggests that potential consumers would pronounce the mark in a particular way, it is error for the Board to ignore this evidence entirely and supply its own pronunciation.

However, the court concluded that this was harmless error and that other factors supported the TTAB’s conclusions.   The Federal Circuit held that there is no single correct way to pronounce a trademark that is not a recognized word.

If you have questions about your whether your trademarks would be considered confusingly similar to a competitor’s, contact our office for a free initial consultation.


Please Like us on Facebook and Follow us on Twitter for the most current intellectual property news.

Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution:  “Flash-lit Macro Tomatoes” by The Ewan is licensed by CC BY-SA 2.0 Generic.

Trade Secrets: South Korean Chemical Firm to Pay $2 Million Penalty

trade secretsSouth Korean Company Attempts to Steal Trade Secrets from DuPont

The US Department of Justice said that Toray Chemical Korea, Inc. agreed to pay the penalty and cooperate with a US government investigation of its activities.

Toray also agreed to implement an improved compliance and ethics program for its company. In return, the Department of Justice agreed to drop the case in two years if Toray abides by its agreement.

The criminal complaint against Toray was filed at the same time as the deferred prosecution agreement.

DuPont and Toray have also agreed to resolve any potential civil claims DuPont might have for attempted trade secret theft.

The Justice Department said that Toray, formerly doing business as Woongjin Chemical Co. Ltd., attempted to steal trade secrets from DuPont so that it could develop a product to compete with DuPont’s Nomex fiber.

Nomex is a fire-resistant material used in firefighting gear (such as the hood shown in the photo) and other applications.

The US Attorney’s office said that during 2011 Woongjin sought to improve its own Arawin fiber product by hiring, and attempting to hire, former DuPont employees as consultants.

The office said that two former DuPont employees met with Woongjin management in South Korea.  The managers asked the former employees to reveal details about DuPont’s processes.

One of the former employees offered to obtain the information from a current DuPont employee when he returned to the US.  However, he apparently did not actually do so.

A Woongjin executive reportedly also told an employee to obtain a sample of the short-cut fiber, called “floc,” used to make Nomex paper, by either legal or illegal means.

DuPont became aware of these efforts and contacted federal authorities.  FBI agents then interviewed the former DuPont employees who had met with Woongjin.

If you have questions about seeking a criminal investigation of trade secret theft, contact our office for a free initial consultation.


Please Like us on Facebook and Follow us on Twitter for the most current intellectual property news.

Leech Tishman’s Intellectual Property attorneys are dedicated to the protection and monetization of your ideas and innovations. Many of our registered patent attorneys have advanced degrees enabling them to truly understand the complex technical details of your idea. Several bring engineering expertise, others molecular biology, manufacturing and business acumen to your trademark, copyright, patent prosecution and litigation and trade secret issues, both domestic and international.
Our clients range from individual inventors, authors and owners of creative works to entrepreneurial enterprises, government entities, mid-sized corporations and Global 500 companies with operations throughout North and Central America, Europe, South Asia, the Far East and Australia.
We have serviced a vast array of industries including automotive, cosmetics, e-commerce, electronics, entertainment, fashion, food and beverage, furniture, internet, manufacturing, networks, optics, publishing, software, technology, toys, and wireless.
We are committed to providing you with strategic counseling and personal attention throughout the entire life cycle of your project.
We are proud of our longstanding relationships with local innovation communities and enjoy working with entrepreneurs and businesses who wish to protect their ideas and good names.
Please contact us today for a free consultation at (855) UR- IDEAS or (626) 796-4000.

Disclaimer: We fully comply with all laws related to attorney marketing and this posting is considered an advertisement.

Photo Attribution: “2007 Toronto Fire Service” by Sherurcij is licensed by Creative Commons Attribution 2.5 Generic.