August 21, 2019

Tenth Circuit: Failure to Brief on Alternative Bases for Summary Judgment Amounts to Concession of the Proof

The Tenth Circuit Court of Appeals issued its opinion in Digital Ally, Inc. v. Utility Associates, Inc. on February 16, 2018.

Utility Associates, Inc. (Utility), owns U.S. Patent No. 6,381,556 (the ’556 patent). Utility purchased the patent and other assets in January 2013 from a supplier of in-car mobile surveillance systems. Utility believed that the ’556 patent was potentially valuable and covered existing systems already in commerce. After the purchase was complete, Utility sent letters to potential customers (who were at that time customers of competitors), including Digital Ally, Inc. (Digital Ally), regarding the consequences of purchasing unlicensed and infringing systems; urging instead that customers purchase systems from Utility because it was now the rightful owner of the ’556 patent.

Upon receipt of the letter from Utility, Digital Ally filed a petition for inter partes review with the Patent Trial and Appeal Board (PTAB) in May 2103 to determine the validity of all claims on the ’556 patent. The PTAB determined that claims 1-7, 9, 10, and 12-25 were unpatentable, and that Claim 11 was not shown to be unpatentable; Claim 8 was not reviewed. In October 2013, Digital Ally sought a declaratory judgment of non-infringement in Kansas federal district court, but the suit was dismissed for lack of personal jurisdiction over Utility. The following year, Digital Ally filed this suit containing nine counts against Utility, including monopolization, false advertising, tortious interference, bad faith, assertion of patent infringement, defamation and product disparagement, and trade secret misappropriation. The district court granted Utility’s motion for summary judgment on all nine counts and denied Digital Ally’s motion of partial summary judgment.

Digital Ally appeals only from the grant of summary judgment on counts I-IV, focusing on bad faith, while Utility contends that Digital Ally’s brief fails to address the alternative bases for summary judgment as to Counts 1-IV. The failure to do so amounts to a concession of the proof.

Regarding Count I, the elements of a monopoly claim under 15 U.S.C. § 2 include “(1) monopoly power in the relevant market; (2) willful acquisition or maintenance of this power through exclusionary conduct; and (3) harm to competition.” Because Digital Ally did not address in its opening brief the district court’s decision that it did not prove a relevant market and market power, it has conceded the lack of proof on these elements and the district court’s decision must be affirmed.

With regards to Count II, bad faith assertion of patent infringement under Ga. Code Ann. § 10-1-771, Digital Ally did not adequately address the district court’s decision that Utility’s letters were not demand letters and that Digital Ally was not injured by the letters. The district court stated that the letters “merely suggest that recipients consider investigating whether products they are purchasing fall under the claims of the patent, and that if so, recipients investigate whether their supplier is licensed or needs to be,” and Digital Ally’s brief fails to adequately address this argument. The district court also concluded that the “plaintiff provided insufficient evidence that plaintiff was injured by those statements” and ruled Mr. Heckman’s testimony inadmissible to prove injury. On appeal, Digital Ally argues the testimony was admissible, but the Tenth Circuit could not determine whether the admissibility arguments concern the injury or demand letter requirement. Under Rule 28(a)(8)(A), which requires appellants to clearly state what part of the district court’s decision they are appealing, Digital Ally’s inadequate briefing has waived any argument on the injury element of its claim, in addition to whether the letters constitute demand letters. Thus, Digital Ally’s cannot prove its claim.

Finally, to state a false advertising claim under § 43(a) of the Lanham Act on Counts III and IV, Digital Ally was required to establish: (1) the defendant made material false or misleading representations of fact in connection with commercial advertising or promotion of its product; (2) in commerce; (3) that are either likely to cause confusion or mistake as to (a) the origin, association or approval of the product with or by another, or (b) the characteristics of the goods or services; and (4) injure the plaintiff. Digital Ally did not adequately address the district court’s holding that the claim failed because the statements in Utility’s were not false, but rather were made as a promotional strategy that included some puffery. Thus, Digital Ally has also waived this argument and conceded summary judgment on Counts II and IV.

The Tenth Circuit AFFIRMED the district court’s opinion.

Be an IP Superhero at the 15th Annual Rocky Mountain Intellectual Property & Technology Law Institute

Be an IP Superhero like Nate and Molly!

Evil trolls are coming to destroy our patents —

Ransomware and robots are taking over our computers —

Unfair competition is just, well, UNFAIR! —

Virtual reality has gone rogue —


But who can we call?

The IP Superheroes!

You can be an IP Superhero, too. Find out how by registering today for the 15th Annual Rocky Mountain Intellectual Property and Technology Law Institute. This year’s Institute features three plenary sessions:

  1. Mile High Sports Law with major team general counsels,
  2. Trends in IP law and litigation, presented by a panel of national federal court judges, and
  3. Ethics of Artificial Intelligence and Ethics and Disclosure Exposure.

Plus much more! The chief judges of the PTAB and TTAB will discuss new developments, and attorneys will present the Year in Review for the PTAB and TTAB. There will be sessions on Six Things You Can Do to Protect your Company and Clients • Cannabis and Marijuana Update • Hot Topics in Bio-Pharma Prosecution • Big Data, Data Breaches, Open Source, and More • Trademarking Pop Culture • Ransomware, Robots, and Raging Machines • Getting Indemnity Agreements Right • and Many More!

The 15th Annual Rocky Mountain Intellectual Property and Technology Law Update will take place on June 1-2 at the Westin Westminster, 10600 Westminster Blvd., Westminster, CO 80020. Click here to register today!

District of Colorado Local Rules Amended, Effective December 1, 2016

The U.S. District Court for the District of Colorado has adopted changes to its local rules, effective December 1, 2016. The changes include a new Rule 2.1, “Forms of Action,” and an entire section on Local Patent Rules.

New Rule 2.1 clarifies that a proceeding not defined as a civil action under F.R.C.P. 2 should be filed as a civil miscellaneous (“mc”) or registered judgment (“rj”) action only if included in the List of Miscellaneous Cases. Rule 5.3 was amended by the addition of a subparagraph (c) dealing with written discovery requests or responses. The subparagraph specifies that other than in prisoner cases or as otherwise ordered, discovery requests shall be submitted by email or in other non-paper form. There were several other minor changes to various rules.

Section III on the Local Patent Rules is a comprehensive section dealing with the handling of patent claims in the U.S. District Court. The local rules are to be cited as D.C.Colo.LPtR _. The rules are to be known as the Local Rules of Practice of the United States District Court for the District of Colorado – Patent Rules. The rules specify that the civil local rules apply except as inconsistent with the patent rules. Topics addressed in the local patent rules include scheduling conferences and orders, discovery and confidentiality, infringement, invalidity, declaratory judgment, reliance on counsel’s opinion, claim construction, final infringement and invalidity contentions, and word limits. The remaining sections were renumbered accordingly.

Comments about the local rules may be submitted to the Advisory Committee on the Local Rules via email. For more information about the local rule changes, click here. For a redline of the changes, click here.

Comment Period Open for Proposed Changes to District of Colorado Local Rules

On Monday, September 26, 2016, the U.S. District Court for the District of Colorado proposed changes to its local rules. The proposed changes will take effect December 1, 2016.

The district court invites public comment on the proposed changes; comments may be submitted via email to or via U.S. Mail to Clerk of the Court, United States District Court, Attn: Edward Butler, Legal Officer, Alfred A. Arraj U.S. Courthouse, Room A-105, 901 19th Street, Denver, Colorado 80294. Comments should specify to which local rule they relate. All comments must be received by October 26, 2016, to be considered.

The comments include a new Section III, “Local Patent Rules,” which comprehensively addresses patent filings in the district court. There are many other changes to the existing rules, including updates to rules about written discovery requests, changes to reflect filings by unrepresented prisoners, disposition of conventionally submitted materials after the time for filing appeals has passed, and more. A redline of the changes is available here.

For more information regarding the updates to the District of Colorado Local Rules, click here.

Top Ten Reasons to Attend the Rocky Mountain Intellectual Property Institute

Each year, Colorado Bar Association CLE hosts the Rocky Mountain Intellectual Property & Technology Institute, the “place to be for the best IP.” In case you haven’t yet registered for this year’s event, here are the Top Ten Reasons to Attend:

Top Ten Reasons to Attend the 2016 Intellectual Property & Technology Institute

10. Anyone who’s anyone will be there! And if you’re not there, anyone who’s anyone will know.
9. Patents … Trademarks …Copyrights … Licensing …Technology & Transactions!
8. Learn best practices and practical tips that you can apply immediately.
7. Special panels of USPTO patent judges and SPEs discussing developments at the USPTO.
6. Over 40 sessions presented by an all-star faculty of leading IP practitioners.
5. Grow your professional contacts through networking opportunities with IP attorneys from … well … from all over!
4. Receive the digital course materials AND the MP3 audio download for the ENTIRE Institute!
3. Some of the best from across the nation come together to share their knowledge & insights with you!
2. Annual case law updates of all branches of IP law.
1. This Institute has quickly become “the place to be for the best IP” in the western United States!

If that wasn’t enough to convince you, watch this video of Rocky Mountain Regional U.S. Patent & Trademark Office Director Molly Kocialski and Program Chair Nate Trelease explaining what you’ll learn at the Institute:

Don’t miss the 14th Annual Rocky Mountain Intellectual Property & Technology Institute! Register today.

CLE Program — 14th Annual Rocky Mountain Intellectual Property & Technology Institute

This CLE presentation will occur on June 2-3, 2016, at the Westin Westminster Hotel. Register online or call (303) 860-0608. Can’t make the live program? Order the homestudy here: CDMP3

Tenth Circuit: “Forum Shopping” Does Not Prohibit Filing Identical Claims in Federal and State Court

The Tenth Circuit Court of Appeals issued its opinion in Predator International, Inc. v. Gamo Outdoor USA, Inc. on Tuesday, July 14, 2015.

Tom May and Lee Phillips invented a new type of air gun pellet in January 2000 and filed a provisional patent application. They formed Predator to manufacture, promote, and sell the new product, with May as president and Phillips as vice-president and secretary. In 2002, Phillips resigned from Predator due to a lengthy prison term arising from an unrelated traffic accident, and he sold May “all of [his] capital stock and rights and interests in Predator International, Inc.” The patent application was granted in 2003, and May sold Predator to its current owners in 2007. About two years later, Predator discovered Gamo was marketing an air-gun pellet substantially identical to its own pellet, using virtually the same trade dress, slogan, and advertising copy. May assigned his interest to Predator, and Predator’s attorney, John Cogswell, filed a federal complaint against Gamo asserting claims for trade-dress infringement, slogan infringement, copyright infringement, violation of Colorado’s Consumer Protection Act, unjust enrichment, unfair competition, and patent infringement.

Predator attempted to obtain a written assignment of patent ownership rights from Phillips in February 2010, but Phillips refused to assign his rights, instead asserting a 50% ownership interest in the patent. This jeopardized Predator’s patent infringement claim because a co-owner of a patent lacks standing for an infringement suit unless all other co-owners join the suit. The standing issue did not require dismissal but rather required the ownership issue to be litigated and determined, which could happen in state or federal courts. However, in March 2010, Predator moved to dismiss without prejudice its patent infringement claim pending resolution of the ownership issue in state court. In May, while its motion to dismiss was pending, Predator moved to file a fourth amended complaint excluding the patent infringement claim. The district court granted the motion to amend and denied as moot the motion to dismiss. The May motion to amend stated, “Predator seeks to voluntarily dismiss its patent infringement claims . . . because it has discovered that it cannot prove that it had standing to pursue these claims without a written assignment from Mr. Lee Phillips.” Both Gamo and the district court interpreted this as an admission that Predator lacked standing to bring the claim.

Meanwhile, Predator had filed suit in April 2010 in Colorado state court against Phillips, seeking a determination that Phillips had transferred or must transfer his ownership interest in the patent to May and consequently Predator. In June, Phillips assigned his purported patent interest to Gamo. Predator learned about the assignment no later than September 27, and on November 2 it filed in state court an amended complaint adding new claims against Phillips that his assignment to Gamo breached his duties to Predator and that Predator still owned the patent. Gamo moved to intervene in the state court action. Phillips filed counterclaims against Predator and a third-party complaint against May. Gamo also submitted a proposed answer and six counterclaims against Predator. Predator moved for a separate trial on the ownership issue in December 2010, which the court denied on January 1, 2011, also granting Gamo’s motion to intervene. Later in January, Predator moved to dismiss Gamo’s counterclaims on the grounds of state-federal comity and standing and to dismiss Phillips’ counterclaims on the grounds that Phillips’ assignment and sale to May was valid and Phillips’ claims were barred by laches and statute of limitations. The state court denied Predator’s motions in April 2011.

On July 11, 2011, Predator filed in federal court a motion for leave to file a supplemental complaint asserting a patent ownership claim against Gamo and for leave to amend its complaint to reassert its patent infringement claim. The district court imposed a Rule 11 sanction against Cogswell, finding the motion was unwarranted under three grounds: (1) Predator’s motion was sanctionable “forum shopping,” (2) there was no justification for the delay in filing, since Predator learned of Phillips’ assignment on September 27, 2010 but didn’t file its motion until July 11, 2011, and (3) Predator had no better ground for standing than when it filed its first patent infringement claim. The Tenth Circuit evaluated and rejected each of the district court’s grounds for imposing the sanction.

The Tenth Circuit disagreed that Predator’s decision to litigate the patent ownership issue in state court rather than federal court was “forum shopping.” Predator could not have brought the infringement claim in state court, so there was no forum shopping as to that claim, and the Tenth Circuit found the district court “misconceived” legal doctrine on forum shopping. The Tenth Circuit found there is no impropriety in pursuing the same claim in state and federal courts, and that the general rule is that both courts can proceed with the litigation until one court rules on the issue. The Tenth Circuit noted that the district court was not required to permit amendment of the claim to add a claim already pending in state court, and cited several abstention doctrines. However, the district court did not cite the abstention doctrines in its sanction imposition, and the Tenth Circuit could not say that any abstention doctrine would have made Cogswell’s filings unreasonable. The Tenth Circuit found that Predator’s decision to file its patent ownership claims in federal court was not objectively unreasonable and reversed the sanction award on this ground.

The Tenth Circuit evaluated the district court’s other justifications for imposition of the sanction. As to the delay, the Tenth Circuit noted that if anything Predator’s motion to amend was premature, not late, because the ownership issue was not yet adjudicated in state court. On the standing issue, the Tenth Circuit found that this was not a valid ground for sanctions because Predator was not required to prove ownership at that stage of the litigation. The Tenth Circuit found that Cogswell’s tactical decision to file the ownership and infringement claims in federal court was not objectively unreasonable.

The Tenth Circuit reversed the sanction award and remanded to district court.

HB 15-1063: Prohibiting Certain Communications Concerning Patents

On January 7, 2015, Rep. Dan Pabon and Sen. David Balmer introduced HB 15-1063 – Concerning Prohibited Communication Concerning PatentsThis summary is published here courtesy of the Colorado Bar Association’s e-Legislative Report.

The bill prohibits a person from making a written or electronic communication with another concerning a patent if: The communication falsely states that litigation has been commenced against the recipient or an affiliated party; The communication threatens litigation and there is a consistent pattern of such threats having been made but no litigation is filed; or The allegations in the communication lack a reasonable basis because of specified deficiencies. The bill contains specified exclusions from the prohibition. The bill authorizes only the attorney general to file an action to enforce the prohibition and authorizes specified damages.

The bill was assigned to the Business Affairs and Labor Committee, where it passed unamended. It was referred to the Appropriations Committee on January 29.

Tenth Circuit: Case Involving Interpretation of License Agreement was Contract Dispute, Not Patent Resolution Claim

The Tenth Circuit Court of Appeals issued its opinion in Cellport Systems, Inc. v. Peiker Acoustic GMBH & Co. KG on Tuesday, August 5, 2014.

Cellport, a Colorado corporation, designs technology to allow vehicle owners to connect different cell phone models to a single hands-free system through specialized “pockets.” In August 2001, Cellport entered into an agreement with Peiker, a German corporation, granting Peiker a non-exclusive license to Cellport’s intellectual property. After Cellport filed a lawsuit alleging breach of the 2001 agreement, the parties came to terms on a second license agreement in October 2004. The 2004 agreement provided that Peiker would pay Cellport royalties on products that use Cellport’s intellectual property. In 2009, Cellport filed suit in the district court in Boulder County, alleging breach of the 2004 agreement and seeking royalties for seven Peiker products. Peiker removed the case to federal district court. The district court found that Peiker owed royalties on only two products, interpreting a provision in the license agreement as a “rebuttable presumption,” and awarded Cellport prejudgment interest at the statutory rate rather than the 1.5% monthly interest proscribed in the license agreement. The district court declined to award costs, determining that neither party was a “prevailing party” as defined in the license agreement. Cellport appealed and Peiker cross-appealed.

Peiker first asserted that the Tenth Circuit lacked jurisdiction to hear the appeal, moving instead to transfer the appeal to the United States Court of Appeals for the Federal Circuit, which has exclusive jurisdiction over patent claims. The Tenth Circuit analyzed the exclusive jurisdiction provisions of 28 U.S.C. §§ 1295 and 1338 and found that they did not apply because the claims could be analyzed under contract law, not patent law. The parties’ dispute involved the language of sections 1.17(i) and 3.5 of their license agreement, which the Tenth Circuit interpreted as involving acknowledgments of the parties requiring Peiker to pay royalties on any products included in sections 1.17(i) and 3.5.

Following its analysis that section 1.17(i) requires royalties regardless of whether Cellport’s patents were infringed, the Tenth Circuit reversed the judgment of the district court and determined Peiker owed royalties on two additional products, since Peiker conceded that section 1.17(i) applied to those products. Because the district court did not rule on whether section 1.17(i) applied to the remaining product, the Tenth Circuit remanded for the district court to make further findings concerning the applicability of section 1.17(i) to that product.

Regarding its BT-PSC product, Cellport argued that royalties were due under section 1.17(i) or (iii). The contractual provisions were ambiguous, and the district court resolved the ambiguity by determining no royalties were due. The Tenth Circuit could not find clear error in the district court’s factual findings and affirmed as to the BT-PSC product.

Cellport also argued that it was due royalties for the BT-PSC product due to its ‘456 patent. Because the district court only briefly addressed the relationship between the BT-PSC product and the ‘456 patent, the Tenth Circuit remanded for further findings on that issue. Turning to Cellport’s contention of entitlement to royalties on the SIAB product, the Tenth Circuit could find no clear error in the district court’s determination that no royalties were owed.

Cellport next argued that it was due interest at the contractual rate rather than the statutory rate. The placement of the interest provision in the contract indicated that the interest rate would apply only to royalties due as a result of audits. The Tenth Circuit found the district court’s application of the statutory interest rate appropriate. As to Cellport’s contention that it was owed costs as the “prevailing party,” the Tenth Circuit noted that on remand the balance would shift and the cost provision should be reassessed.

Turning to Peiker’s cross-appeal, the Tenth Circuit addressed Peiker’s contention that since the ‘456 patent had been revoked, it owed no further royalties. Cellport appealed the revocation and that appeal is pending. Cellport argued that Peiker’s cross-appeal is not yet ripe because Cellport’s revocation appeal is still pending. The Tenth Circuit agreed with Cellport that the issue is not ripe and vacated the district court’s judgment on the issue.

The judgment of the district court was affirmed in part, reversed in part, and remanded for further proceedings consistent with the Tenth Circuit’s opinion.