quinn emanuel
quinn emanuel urquhart & sullivan, llp | business litigation report
INSIDE
One Year After Nautilus:
Application of the Reasonable
Certainty Standard for
Deniteness of Patent Claims
Page 4
Practice Area Updates:
Asia-Pacic Litigation
Update
Page 6
Entertainment Litigation
Update
Page 6
International Arbitration
Update
Page 8
Letter of Credit Victory and
Other Victories
Page 10
Attorney Advertising
July 2015
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B&B Hardware
: The Preclusive Effect of TTAB Decisions in Court
Introduction
Issue preclusion is a familiar concept to most practicing
attorneys. Under this doctrine, “later courts should
honor the rst actual decision of a matter that has been
actually litigated.” Charles Alan Wright et al., Federal
Practice and Procedure § 4416, at 386 (2d ed. 2002).
However, courts have struggled with the question
of whether a prior decision by an administrative
agency, as opposed to the judgment of an Article III
court, can serve as the basis for issue preclusion. e
Supreme Court recently addressed this issue in B&B
Hardware Inc. v. Hargis Industries, Inc., 135 S. Ct.
1293 (2015), nding that, in certain circumstances,
a prior decision by the Trademark Trial and Appeal
Board (“TTAB”) can have a preclusive eect on an
Article III court. is article explores the rationale
behind B&B Hardware and the potential impact of
that decision on practice before both the TTAB and
other administrative agencies charged with deciding
issues related to intellectual property.
I. B&B Hardware: Finding Preclusive Eect Based
on TTAB Decisions
A. Procedural Background. In 1993, B&B Hardware
(“B&B”) registered the trademark “SEALTIGHT” for
use in connection with various metal fasteners for the
aerospace industry. ree years later, Hargis Industries
(“Hargis”) attempted to register the trademark
“SEALTITE” for use in connection with certain metal
screws for the manufacture of metal and post-frame
buildings. B&B opposed Hargis’ registration on the
grounds that SEALTITE was confusingly similar
to B&B’s own SEALTIGHT mark, and instituted
opposition proceedings before the TTAB.
While the TTAB proceeding was pending, B&B
sued Hargis for trademark infringement in district
court, based on its previously registered “SEALTIGHT”
mark. Prior to any ruling in the district court on
infringement, the TTAB issued a decision nding a
likelihood of confusion between SEALTITE and the
prior SEALTIGHT mark. Notably, Hargis did not
Quinn Emanuel Named “Antitrust Litigation Department of
the Year”
e Recorder has named Quinn Emanuel “2015 Antitrust Litigation Department of
the Year.” e rm was chosen from a pool of more than 100 nominees based on the
degree of diculty, dollar value, and importance of the antitrust cases it litigated. In
selecting the rm, e Recorder identied several key achievements. In connection with
the successful defense of a signicant patent infringement case, the rm obtained a
$26 million monopolization jury verdict for its client Transweb on its Walker Process
antitrust counterclaims—a rare and signicant victory in the expanding interface
between antitrust and intellectual property law. As a result of this victory, Los Angeles
partners Michael Williams and Harold Barza were named “Litigators of the Week”
by e AmLaw Litigation Daily. e rm was also recognized for its successful
representation of DIRECTV in BYBB v. DIRECTV, where the rm obtained summary
judgment on a Cartwright Act claim based on theories of monopsony, price xing,
group boycott, and market allocation. e Recorder also recognized the rm’s appellate
win for Samsung against Panasonic and SD-3C LCC in a case involving secure digital
(SD) memory cards.
Quinn Emanuel and Licks Attorneys to Host “Strategies
and Trends on Intellectual Property, Technology Law, and
Litigation in Brazil”
Page 9
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