-
Federal Circuit Reverses Patent And Trademark Infringement Findings And Vacates Trade Dress And Willfulness Findings
10/06/2025On September 23, 2025, the Court of Appeals for the Federal Circuit (“CAFC”) issued a precedential opinion affirming in part, reversing in part, and vacating in part, decisions from the United States District Court for the Southern District of New York finding that appellants Kartri Sales Co., Inc. (“Kartri”) and Marquis Mills, International, Inc. (“Marquis”) infringed several patent, trademark, and trade dress rights owned by appellees (collectively, “Focus”), that the infringement was willful, and that the case was exceptional. Focus Prods. Grp. Int’l, LLC v. Kartri Sales Co., __ F.3d __ (Fed. Cir. September 30, 2025). In its decision, the CAFC concluded, inter alia, that the district court’s claim construction ruling and in its determinations of patent, trade dress, and trademark infringement were based on multiple erroneous legal and factual conclusions.
Focus and its predecessors invented and obtained U.S. Patent Nos. 6,494,248, 7,296,609, and 8,235,088 (the “asserted patents”) on a type of shower curtain—a “hookless” curtain. The claimed curtains do not require hooks to attach the curtain to a shower rod, but instead provide a series of openings along the curtains’ top end, reinforced by embedded rings, to receive the shower rod without the need to remove the rod from its supports.
Focus sold its patented shower curtains under the HOOKLESS® mark and the EZ ON mark. In addition to these trademarks, Focus also claimed that it has unregistered trade dress rights in the overall appearance of shower curtains sold under Focus’s HOOKLESS® brand.
Focus sued appellants in district court for infringement of the above patents, trademarks, and trade dress rights.
The district court construed several disputed claim terms of the asserted patents. Relevant to appellants’ appeal, the district court construed the terms “ring,” “outer circumference,” and “projecting edge.” With these constructions, the district court found no triable issue of fact as to infringement and granted Focus’s motion for summary judgment of patent infringement.
After a bench trial, the district court then held that (1) Focus did have standing to enforce the EZ ON mark, (2) both Kartri and Marquis infringed Focus’s EZ ON mark and trade dress, which it determined to be non-functional, and (3) Kartri infringed Focus’s HOOKLESS® mark. The district court then awarded lost profits and reasonable royalties to Focus and trebled the award for the period from March 1, 2015, to November 15, 2018. Last, the district court found the case exceptional and granted Focus attorneys’ fees, as well as costs and pre-and post-judgment interest.
Appellants timely appealed from these district court decisions.
Regarding patent infringement, Marquis argued that (1) the district court improperly found no prosecution history disavowal for the ’248 and ’609 patents when construing the claim term “ring;” and (2) the district court improperly construed “outer circumference” with regard to the ’088 patent.
The CAFC agreed with Marquis’s first argument that patent owner clearly disavowed curtains with rings having a flat upper edge, such as in the accused products, when prosecuting the ’248 and ’609 patents. This disavowal resulted when the patentee responded to an election requirement without objection by electing claims directed at rings with projections, e.g., fingers for engaging a shower rod, instead of rings with a flat upper edge. The CAFC also found patentee’s response to a double patenting rejection over the ’248 and ’609 patents during prosecution of the ’088 patent persuasive. In that response, patentee distinguished the pending ’088 patent claims over those in its prior patents based on the fact that the new claims recited rings having a flat upper edge.
The CAFC also agreed with Marquis’s argument with respect to infringement of the ’088 patent. The CAFC concluded that the district court failed to explain its reasoning for why one section of the outer edge of an accused product is the “outer circumference,” while another section ought to be deemed the “projecting edge.” According to the CAFC, the district court needed to explain, on remand, why a portion of the accused ring’s outer edge section constitutes a “projecting edge” that projects off the outer circumference, as opposed to simply being a continuation of the ring’s “outer circumference.”
Regarding infringement of the HOOKLESS® mark, Kartri argued that the district court erred in its “likelihood of confusion” analysis because it incorrectly analyzed whether Kartri’s product would be confused for products sold under the HOOKLESS® mark and not whether Kartri’s use of the term “hookless” itself created a likelihood of confusion with Focus’s HOOKLESS® mark. The CAFC agreed with Kartri and remanded so that the district court could perform the correct analysis.
Concerning infringement of the EZ ON mark, the CAFC agreed with appellants that Focus did not satisfy its burden to establish standing because the only evidence Focus relied on—a 2012 licensing agreement the district court incorrectly interpreted as including Focus’s grant of a license to the EZ ON mark—does not show that Focus actually owned the EZ ON mark at the time Focus filed its complaint. Accordingly, the CAFC reversed the district court’s infringement determination relating to the EZ ON mark.
Regarding the district court’s determination that Focus had unregistered trade dress rights in the overall “neat and orderly appearance” of shower curtains sold under the HOOKLESS® and EZ ON marks, the CAFC first explained that Focus bore the burden of proving that the asserted trade dress is not essential to the use or purpose of the curtain and does not affect the cost or quality of the curtain, i.e., that the trade dress is non-functional. The CAFC then concluded, as appellants had argued, that the district court’s functionality determination ignored the Supreme Court’s decision in TrafFix Devices, Inc. v. Marketing Displays, Inc., 532 U.S. 23 (2001). In that case, the Court held that the functionality determination must consider whether expired patents of the party asserting trade dress rights cover the features of the trade dress in question, an analysis the district court did not do. Accordingly, the CAFC vacated and remanded to the district court to perform the required analysis.
The CAFC also agreed with Kartri that the district court erred in finding willful infringement of the asserted patents and trade dress and vacated those findings. With respect to trade dress, the CAFC concluded that the district court wrongly found that a February 27, 2015, cease-and-desist letter received by appellants and mentioning only patent infringement, provided adequate notice of the trade dress infringement. With respect to patent infringement, the CAFC concluded that the district court ignored Kartri’s consistent conduct during the litigation showing that Kartri, through its counsel, had always “maintained that, under the claim constructions required in light of the histories of the asserted patents, the asserted patents were not infringed.”
Despite the errors noted above, the CAFC affirmed the district court’s “exceptional case” finding, although the CAFC remanded for recalculation of the attorneys’ fee award consistent with its decision. In particular, the CAFC found that the district court’s exceptional case finding reasonably pointed to various instances in which Kartri provided false sales data at trial; where Marquis chose not to conduct a patent analysis for a relatively small fee; where both appellants routinely flouted court orders; and where appellants advanced baseless claims without support.
The CAFC also affirmed the district court’s denial of appellants’ motion to dismiss or transfer venue and appellants’ defenses of equitable estoppel and unclean hands as untimely.
