On Monday, August 12, Michael Harris will conduct a discussion of two cases, one dealing with the prior art status of a printed publication, and the other about unclean hands as a defense to trademark infringement.

The 2021, Ninth Circuit case of Metal Jeans, Inc. v. Metal Sport, Inc. (case here) is the unclean hands case. The unclean hands doctrine is an equitable defense in which the defendant argues the plaintiff may not obtain an equitable remedy because the plaintiff is acting unethically or has acted in bad faith regarding the subject of the complaint. Topolewski, the founder of plaintiff’s predecessor, TA, filed at trademark application saying TA had continuously used the METAL mark on jeans, shirts, and boots since 1999. That was false—no boots. The PTO canceled TA’s registration of METAL. Topolewski through Metal Jeans reapplied for the mark and obtained the METAL registration in 2013. Metal Sport obtained a registration for METAL for powerlifting apparel. In the infringement suit, defendant asserted plaintiff was guilty of unclean hands. The trial judge granted summary judgment on that ground.

The court of appeals held that it should review the unclean hands ruling under the abuse of discretion standard. But in a separate unpublished decision, the court of appeals reversed the trial court finding because of disputed issues of fact.

As an aside, John Jahrmarkt, plaintiff’s earlier attorney, was sanctioned and applied to the Ninth Circuit to stay sanctions. Denied. 2019 U.S. Dist. LEXIS 60668.  

The other case is from the PTAB, Topcon Medical Systems, Inc. v. Carl Zeiss Meditec, Inc. (case here) The good stuff begins about page 5. Topcon claimed Zeiss’ patent was invalid under § 102 because of an Abe research article. Topcon submitted an Internet Archive record showing the article was publicly about two months before the patent’s effective filing date, but it is a text version with none of the figures or tables. Topcon relied on Figure 3 of the article for invalidation, missing from the text version. The board held Abe Fig. 3 was not prior art. Topcon had “the burden to show that [the figures] were publicly accessible before the critical date …, [so that], a person of ordinary skill in the art would have been able to view the figures and tables, for example, by clicking on operable links that led to the figures and tables.”

All are welcome to attend the program at 1:00 p.m. Pacific Time. To join the discussion, please RSVP via email to elisham @ socalip.com (remove the spaces, which have been inserted to thwart spammers) by noon the day of the program to obtain a video conference link. The State Bar of California approves this activity for one hour of CLE credit.