Opinions — Monday, June 8, 2026

The Eighth Circuit affirmed the district court's dismissal on forum non conveniens grounds. Plaintiffs Vaughn Boyd and SWI-DE, LLC (doing business as Drew Estate) sold Deadwood Tobacco Company to defendants William Rectenwald and Jodene Rectenwald pursuant to a Stock Purchase Agreement that expressly reserved from the sale three registered trademarks: DEADWOOD TOBACCO CO. SWEET JANE, DEADWOOD TOBACCO CO. FAT BOTTOM BETTY, and DEADWOOD TOBACCO CO. CRAZY ALICE. After defendants began using marks including DEADWOOD TOBACCO CO. CHASING THE DRAGON and others, and represented their products as part of the "Yummy Bitches" lineage, plaintiffs filed suit in South Dakota federal court alleging only federal Lanham Act claims under § 32 and § 43(a)(1)(A). The district court dismissed based on a forum selection clause in the Agreement designating the circuit court in Lawrence County, South Dakota as the mandatory venue for "any dispute arising out of this Agreement." Reviewing de novo whether the claims arose out of the Agreement, the circuit held that plaintiffs' trademark infringement claims necessarily depended on the Agreement because trademarks cannot be assigned or reserved apart from the goodwill they symbolize, citing 15 U.S.C. § 1060(a)(1). The court reasoned that the Agreement's reservation of certain marks either retained sufficient goodwill to support continued ownership or was void, requiring interpretation of the Agreement to resolve plaintiffs' Lanham Act claims.

The case is significant for its application of fundamental trademark assignment principles to contract-based jurisdictional questions. The court held that even purely federal Lanham Act claims "arise out of" an agreement when resolving the claim requires determining whether a trademark assignment or reservation validly transferred the underlying goodwill. Because trademark rights arise solely from use and the goodwill generated thereby—not from registration or contractual language—a reservation of marks without accompanying business or goodwill would be void under common law and § 1060(a)(1). The court rejected plaintiffs' argument that their pre-existing ownership of the registered marks made the Agreement irrelevant, holding instead that any finder of fact would need to examine the Agreement to determine what goodwill, if any, Boyd retained when reserving the three marks while selling the company and related marks including THE YUMMY BITCHES and DEADWOOD TOBACCO CO. The decision thus treats goodwill allocation as a threshold contractual question that must be resolved before addressing likelihood of confusion or any other substantive trademark issues, bringing disputes over trademark reservations in business sales within the scope of contractual forum selection clauses even when pleaded exclusively as federal statutory claims.

The Federal Circuit affirmed the district court's finding that claim 18 of U.S. Patent No. 11,304,908, owned by Knoa Pharma LLC (formerly Purdue Pharma), was invalid as obvious. The patent claimed an abuse-deterrent oxycodone tablet manufactured using a product-by-process that included heating tablets "in a coating pan" for a specified time and temperature. Accord Healthcare had stipulated to infringement of its proposed generic but successfully challenged validity at a bench trial, relying on the Bartholomäus prior art reference, which taught the same abuse-deterrent formulation but used a tablet press for heating rather than a coating pan.

The court's analysis turned on clearly erroneous review of the district court's factual findings that a person of ordinary skill would have been motivated to substitute a coating pan for Bartholomäus's tablet press and would have had a reasonable expectation of success. The Federal Circuit rejected Purdue's argument that the district court improperly "collapsed" the coating pan limitation into the broader convection heating requirement, finding the district court properly distinguished between claims and addressed each limitation. On secondary considerations, the court held that Purdue forfeited its new theory on appeal that the long-felt need was for scalable abuse-deterrent tablets, having argued at trial only that the need was for abuse-deterrent properties generally—a need the district court found Bartholomäus had already satisfied.

The Federal Circuit affirmed the Court of Federal Claims' dismissal for lack of subject matter jurisdiction in Aljindi v. United States, where pro se plaintiff Dr. Aljindi alleged the government had taken his copyrighted dissertation on artificial intelligence without compensation. The court held that Section 1498(b), which provides an exclusive remedy for copyright infringement by the government, displaces Tucker Act jurisdiction over takings claims premised on copyright infringement. Although Aljindi's complaint made a single reference to Section 1498(b), it expressly and repeatedly stated it was "grounded solely in the Tucker Act and Fifth Amendment takings," which the Claims Court properly interpreted as invoking only Tucker Act jurisdiction.

The decision extends the reasoning of Golden v. United States, which held that Section 1498(a) displaces Tucker Act jurisdiction for patent-infringement-based takings claims, to the copyright context under Section 1498(b). The court emphasized the statute's explicit language designating Section 1498(b) as "the exclusive action" for copyright infringement by the government, combined with its detailed remedial scheme specifying forum, plaintiff, liable acts, statute of limitations, and damages (including incorporation of the Copyright Act's statutory damages). Because Aljindi identified no taking apart from alleged acts of reproduction constituting infringement, his takings claim was inseparable from copyright infringement and therefore had to proceed, if at all, under Section 1498(b)'s exclusive framework rather than through general Tucker Act jurisdiction.