Docket – March 27, 2019

4th U.S. Circuit Court of Appeals

United States v. Smith (P), 4th Cir. (Richardson) from DMD at Baltimore (Bredar).

In the defendants’ trial for gang-related violence, the district court properly addressed some jurors’ fears about gang retaliation and admitted an FBI agent’s expert testimony decoding intercepted calls between gang members.

After learning of one juror’s fears, the district judge here questioned each juror individually. That required balancing the need to detect bias against the concern that inartful questioning could itself generate bias. The trial judge thus asked about bias directly, without explicitly discussing the particular juror or any fears of violent retaliation. In evaluating their responses, he considered the jurors’ reactions and, where necessary, followed up. He made reasoned judgments in walking the line between detecting bias and creating bias. This court is not here to micro-manage those considered choices.

As to the FBI agent, the defendants claim first that his experience-based linguistic opinions were not the product of a reliable methodology for interpreting coded jargon. They further argue that the agent impermissibly blended fact and expert testimony, creating jury confusion and unfair prejudice.

It’s not surprising that the agent didn’t always point to a specific experience that informed each expert opinion. He based his interpretations on years of investigatory experience and exposure to thousands of gang and drug conversations. The application of this experience to analyze the meaning of certain terms does not lend itself to a direct correlation between one experience and one opinion. This is much like how foreign-language interpreters apply their training and experience to translate conversations.

Some aspects of the agent’s fact testimony were not only permissible but indeed necessary to provide context for his interpretations of the intercepted calls. An expert’s methodology cannot be applied in a factual vacuum. Thus, an expert in code or language must consider the context surrounding the language in determining the appropriate interpretation. Along with date, time, and participants, the context of a conversation also includes the surrounding circumstances, like whether a participant in the call was incarcerated or whether police found a man shot shortly after a call seemingly authorized a shooting. Far from generating confusion for the jury, including this factual context reduced the risk of jury confusion by providing a more coherent narrative of the investigation and a proper framework for the agent’s expert opinions.


U.S. District Court – Virginia Eastern

RXD Media LLC v. IP App. Dev., EDVA at Alexandria (O’Grady).

At issue in this trademark case is the use of the IPAD mark in commerce.

Plaintiff RXD Media launched its website,, in 2007 as a platform for note-taking. In 2016 RXD relaunched its website as, offering a wider array of services than previously. Both RXD and the defendants, Apple and its trademark subsidiary IP App, claim to have priority in the rights to use the IPAD mark in commerce. The Trademark Trial & Appeal Board found in Apple’s favor.

Because RXD didn’t produce new evidence pertinent to any disputed question of fact decided by the Board, this court reviews that decision under the substantial-evidence standard. The Board determined that RXD’s use of the IPAD mark was a descriptive composite that didn’t acquire secondary meaning before the constructive use dates. For de novo review, , RXD would have had to provide new evidence to suggest that a material aspect of these determinations was wrong. It didn’t do so. The Board reached its decision after a full trial and reviewing a voluminous record. Its opinion is thorough and supported by law.

Apple also has established a bona fide intent to use the mark. The company has produced its license agreement for the IPAD mark, and evidence that it had the capacity to produce its applied-for services. In the context of Apple’s brand and breadth of products and services, this evidence is sufficient to establish Apple’s bona fide intent to use.

In Apple’s counterclaims for trademark infringement, it has demonstrated that it owns IPAD as a valid, protectable mark and that there’s a likelihood of confusion between Apple’s mark and RXD’s mark. Its evidence includes a consumer survey that showed over 25 percent actual confusion.

Motion for summary judgment granted.

Virginia Circuit Courts

Omnisec Int’l Investigations Inc. v. Stone, Fairfax (Gardiner).

In the parties’ employment agreement, the non-solicitation of customers/clients clause is enforceable. Because it protects the employer’s legitimate business interest and is not unduly burdensome on the employee’s ability to earn a living, it is a valid restraint on trade. However, the non-compete provision of the non-disclosure clause is not enforceable, and the court will sever it from the agreement.

As an initial matter, at the plea in bar stage, the employer has the burden to prove that a challenged restrictive covenant is narrowly drawn to protect the employer’s legitimate business interest, is not unduly burdensome on the employee’s ability to earn a living, and is not against public policy. It is not the burden of the employee to demonstrate the unreasonableness of the restrictive covenants.

Despite a perpetual bar on non-disclosure, this prohibition does not impair the employee’s ability to earn a living. But while Omnisec has a legitimate business interest in preventing the disclosure of confidential and third-party information, the non-compete provision of the non-disclosure clause is not narrowly drawn. The employee can’t know which potential future employment “likely will result in the use or disclosure, even if inadvertent.”

Moreover, the bar is perpetual, and it’s a bridge too far to restrict an employee’s future employment in perpetuity with a restriction pursuant to which the employee can’t know which potential future employment she may undertake because she can’t know which future employment likely will result in the use or disclosure, even if inadvertent.

As to non-solicitation, however, the employee worked only in a specific area for Omnisec, i.e. security clearance background investigations for federal agencies, so the restriction is effectively limited to a specific area of competition. And because she did only security clearance background investigations for federal agencies, the restriction is effectively limited to her past activities and to activities in which she was specifically engaged.

Further, the restraint here is limited to customers or clients, or potential customers or clients, that the employee solicited, called upon, conducted business with, became aware of, or identified as a potential customer or client during her employment.

Approximately nine entities qualify as a “Restricted Entity,” so the employee could work directly for, or even solicit for another entity, the FBI or the State Department. She could also work directly for, or even solicit for, any bank or other commercial client, or even any of the 49 state governments and numerous local governments for which Omniplex performed no work.

Plea in bar granted in part and denied in part.

Categories: Daily Dockets

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