In a Wednesday decision, the Federal Circuit affirmed a district court decision that a patent holder's communications with a competitor's customers that the competitor's products were infringing were not objectively baseless, and therefore could not support state law tort claims of unfair competition, intentional interference with contractual relations, interference with prospective economic advantage, and trade libel.  The court noted that the patent holder had successfully defeated a motion for summary judgment of non-infringement before the ITC and an ALJ had found infringement of one of the patentee's patents.  Thus, it could not logically follow that the patentee's pre-litigation communications alleging patent infringement were objectively baseless.

The court also reaffirmed that in order for such communications to support state tort claims such as those asserted in this case, the assertions of infringement must be both objectively and subjectively baseless.  Here, the plaintiff attacked that patentee's opinion of counsel that infringement was occurring as incompetent, but the court noted that this was only relevant to whether the claims were subjectively baseless.  Because the claims were not such that "no reasonable litigant could reasonably expect success on the merits," the plaintiff could not show objective baselessness, and the court therefore did not even consider whether the claims were subjectively baseless.  All in all, the case confirms that it is extremely difficult for plaintiffs to prevail on these types of claims.

More concerning Dominant Semiconductors Sdn. Bhd. v. OSRAM GmbH after the jump,

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In a decision last week, the Eleventh Circuit affirmed a district court's decision granting summary judgment of no trademark infringement and no unfair competition.  The plaintiff and defendant had entered into a contract for the plaintiff to design a water meter reading system.  After the plaintiff allegedly breached the contract, the defendant engaged different companies to complete the project.  The replacement companies used some of the parts the plaintiff had used when it was performing the initial work, and some of the circuit boards used retained the plaintiff's trade name.

The court held that this was insufficient to create a likelihood of consumer confusion.  The circuit boards were housed in an opaque plastic unit and placed as high as possible in attics and on the exterior of buildings in order to minimize interference.  The court therefore noted that confusion was highly unlikely for purchasers of the products, namely owners and managers of apartment complexes.  There was also insufficient evidence of likely confusion in the context of repair technicians, who may actually view the circuit boards in question.  As a result, there could be no likely confusion.  The failure of the trademark infringement claim also doomed the plaintiff's unfair competition claim, and the district court's decision was affirmed.

More detail of Custom Mfg. & Eng'g, Inc. v. Midway Servs., Inc. after the jump.

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