Justia U.S. 5th Circuit Court of Appeals Opinion Summaries

This case arose when Ford sent a cease-and-desist letter to NBFP, demanding that NBFP pay damages and refrain from using Ford's trademarks on its websites. NBFP sued Ford in Texas state court, seeking a declaratory judgment that its online printing operations did not infringe Ford's trademark rights. NBFP subsequently appealed the district court's partial grant of summary judgment for Ford; the district court's final judgment holding NBFP liable for trademark infringement; and the district court's order denying NBFP's motion to amend its complaint. Ford cross-appealed from the district court's final judgment, disputing that court's findings on infringement, dilution, and attorney's fees. The court held that the district court's grant of partial summary judgment to Ford was affirmed. Because there was no likely threat of consumer confusion as to NBFP's sale of products bearing the Ford marks to three independent used car dealers, the court reversed the district court's judgment finding that NBFP's sale of these products amounted to trademark infringement, the court remanded to the district court with instructions to enter judgment for NBFP on this category of products. The court affirmed the district court's judgment in all other respects.

Plaintiff sued defendant for fraud and for misappropriation of trade secrets over plaintiff's invention of the "Pit Bull," a machine intended to make the process of cleaning drilling fluids more efficient. Defendant appealed from a jury verdict awarding plaintiff compensatory damages and punitive damages for fraud and compensatory damages for misappropriation of trade secrets. Because plaintiff did not prove that he was entitled to damages on his fraud claim, the court rendered a take-nothing judgment on plaintiff's fraud claim, and reversed the jury's award of punitive damages. Because the verdict for misappropriation of trade secrets was supported by sufficient evidence, the court affirmed the jury's verdict on plaintiff's claim for misappropriation of trade secrets.

This suit stemmed from the efforts of plaintiff and its owner and founder to obtain a patent for an invention related to personalized postage stamps and the suit involved state law claims of fraud and breach of fiduciary duty in connection with a patent application. Plaintiff appealed the district court's grant of summary judgment in favor of defendants, holding that there was no genuine issue of material fact as to whether plaintiff's claims were time-barred such that defendants were entitled to judgment as a matter of law and that in the alternative, there was no genuine issue of material fact as to the causation elements of plaintiff's claims. The court held that this case raised issues of patent law, and those issues were substantial because of the special federal interest in developing a uniform body of patent law in the Federal Circuit as recognized in Scherbatskoy v. Halliburton Co. and expressed by Congress's grant of exclusive appellate jurisdiction over patent cases to that court. Therefore, the court held that it lacked jurisdiction over the appeal and transferred the suit to the United States Court of Appeals for the Federal Circuit pursuant to 28 U.S.C. 1631.