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Posts Tagged: "amicus briefs"

Amici Ask SCOTUS to Correct Third Circuit’s ‘Overly Simplistic’ Formulation of Trademark Functionality in Ezaki Glico

On July 29, several IP organizations and one global snack conglomerate filed amicus briefs at the U.S. Supreme Court asking the nation’s highest court to grant a petition for writ of certiorari to take up Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp. At issue in the appeal is a ruling from the U.S. Court of Appeals for the Third Circuit regarding the definition of “functionality” in trademark law. In finding the stick-shaped, chocolate-covered Pocky cookies sold by Ezaki Glico to be “functional” because of the usefulness of their design, amici argue that the Third Circuit erred in its application of functionality doctrine in a way that threatens trade dress protections for any product when any part of the product’s design provides some usefulness.

INTA Urges EUIPO Grand Board to Provide Guidance on Similarity Between Alcoholic and Non-Alcoholic Beverages

The International Trademark Association (INTA) submitted observations in a trademark case before the European Union Intellectual Property Office (EUIPO) Grand Board of Appeal on April 1. The case concerns the similarity of goods in Class 32 (non-alcoholic beverages, including flavored carbonated beverages, waters and vitamin-enriched sparkling water, as well as beers) and goods in Class 33 (alcoholic beverages except beers, including wines, spirits, liqueurs, and alcoholic preparations for making beverages). The dispute arose after the owner of the mark VIÑA ZORAYA, registered in Class 33, filed an opposition to an EUTM application for ZORAYA in Class 32 based on Article 8(1)(b) EUTMR. The opposition was rejected on the basis that the goods were dissimilar.

INTA Comments in George Orwell EUTM Cases on Names and Titles

The International Trademark Association (INTA) last week filed amicus briefs before the European Union Intellectual Property Office (EUIPO) Grand Board of Appeal in three cases concerning applications to register EU trademarks (EUTMs) for the words GEORGE ORWELL, ANIMAL FARM and 1984. The  briefs concern the registration of trademarks for names of historical persons/famous authors (the GEORGE ORWELL case) and titles of literary or artistic works (the ANIMAL FARM and 1984 cases). All of the applications were filed in 2018 by The Estate of the Late Sonia Bronwell Orwell (George Orwell’s second wife, who survived him and died in 1980) without evidence of acquired distinctiveness through use.

Arthrex Update: With Responses Due Next Week, Amici Urge Federal Circuit to Grant Rehearing

In December, petitions for rehearing were filed at the U.S. Court of Appeals for the Federal Circuit by each party involved in Arthrex, Inc. v. Smith & Nephew, Inc., including the United States government as intervenor in the case. The panel decision in that case, rendered on October 31 of last year, severed a tenure provision protecting administrative patent judges (APJs) at the Patent Trial and Appeal Board (PTAB). This severance was determined by the Federal Circuit to overcome a constitutional challenge brought by Arthrex that APJs were principal officers of the United States, and thus their appointments by the U.S. Secretary of Commerce, rather than the President of the United States, with the advice and consent of the Senate, didn’t pass muster under the Constitution’s Appointments Clause. In their petitions for rehearing, Arthrex argued that the removal of the tenure provision was an insufficient solution, Smith & Nephew contended that the fix was incorrect because APJs were already inferior officers, and the U.S. government urged rehearing so that several legal errors made by the original Federal Circuit panel could be corrected. On January 3, Federal Circuit Clerk Peter Marksteiner informed  the parties in Arthrex that they could file a single response to the petitions for rehearing. Those petitions are due by January 17 and the parties have been informed that no extensions of time for submitting responses will be granted. By the end of December, the Federal Circuit had received a pair of amicus briefs in the case, one from the Association for Accessible Medicines (AAM) and the other from the New York Intellectual Property Law Association (NYIPLA).

A Look at the Chrimar Amici: Inventors and IP Organizations Advocate for Rehearing En Banc as Federal Circuit Calls for ALE Response

Today, the U.S. Court of Appeals for the Federal Circuit (CAFC) invited ALE USA Inc. to respond to Chrimar System Inc.’s petition for rehearing en banc. Five amici consisting of inventors and intellectual property advocates have now filed amicus curiae briefs  in support of Chrimar and the petition for rehearing. In September, the CAFC affirmed a Patent Trial and Appeal Board (PTAB) decision in Chrimar Systems, Inc. v. ALE that rendered a previously affirmed jury verdict null and void. The heavily contested decision found the PTAB, an executive administrative agency, vacating the judicial verdict of an Article III court. According to FedCircuitBlog, there are currently 17 pending petitions for en banc rehearing with the Federal Circuit, while 22 petitions have been denied between August and November 2019. Of the 22 petitions denied, nine included a call for response, or 41% of denied petitions. Thus, while not a sure indicator that the court will grant the petition, the court’s invitation for response in Chrimar is at least a necessary step toward that goal. Here is what the amici are saying.

The Final Plea for 101 Sanity? Athena Amici Ask Supreme Court to Clean Up U.S. Patent Eligibility Mess

November 1 was the deadline for filing amicus briefs to the U.S. Supreme Court, which is considering whether to grant a petition for writ of certiorari to take up Athena Diagnostics v. Mayo Collaborative Services on appeal from the U.S. Court of Appeals for the Federal Circuit. Almost every amicus filing to the Supreme Court in this case supported granting the petition or backed up the position of petitioner Athena, who is asking the Supreme Court to clarify its patent-eligibility doctrine under the Alice/Mayo framework on the subject of medical diagnostic patent claims. The appeal to the Supreme Court follows a hotly contested denial of an en banc rehearing of the Federal Circuit’s original panel decision in Athena, which produced eight opinions, including four dissents, with many judges agreeing that Athena’s invention should be patent eligible even while they disagreed over whether Supreme Court precedent allowed for patent protection of diagnostic methods.

Supreme Court Directs Apple and Cisco to Respond to Petition for Cert Challenging Rule 36

The Supreme Court has requested that Apple and Cisco file responses to Straight Path IP Group, LLC’s (SPIP’s) petition for certiorari in Straight Path IP Group, LLC v. Apple Inc., et al. The petition presents the following question: “Whether Rule 36(e) of the Federal Circuit’s Rules of Procedure violates the Fifth Amendment by authorizing panels of the Federal Circuit to affirm, with no explanation whatever, a District Court judgment resolving only issues of law.” SPIP filed its petition on August 23 and Apple and Cisco filed waivers of their right to respond on September 4 and 5, respectively. But on September 18, the Court requested that both companies file their responses by October 18.

Romag Fasteners: IPO Departs From Other Amici in Urging SCOTUS to Require Willfulness to Award Trademark Profits

The Intellectual Property Owners Association and four other associations have filed amicus briefs with the Supreme Court in the case of Romag Fasteners v. Fossil, Inc., Fossil Stores, I. Inc., Macy’s Inc, and Macy’s Retail Holdings, Inc. The case will examine whether lower courts have discretion under the Lanham Act with respect to how to award damages in trademark infringement cases, or whether courts are required to establish that the infringement was willful before awarding profits. While the American Bar Association (ABA), the International Trademark Association (INTA), the American Intellectual Property Law Association (AIPLA) and the Intellectual Property Law Association of Chicago (IPLAC) support adopting a more flexible approach that would not make willfulness a prerequisite to recover profits, IPO argues that the plain language of the statute necessitates such a requirement.

AIPLA: The Supreme Court Must Ensure the U.S. Government Adheres to the American Rule in Peter v. NantKwest

When a patent or trademark applicant loses in front of the U.S. Patent and Trademark Office (USPTO), they can either appeal to a court of appeals or develop a fuller record by starting a district court action. If the applicant goes to district court, then the applicable statute says that the applicant-appellant pays “[a]ll the expenses of the proceedings,” and everyone at one time agreed that those expenses did not include fees for the government’s attorneys. That changed in 2013, when the USPTO unilaterally started including its attorney and support staff fees amongst the expenses. On the first Monday of October—the first day of arguments in the Supreme Court’s 2019 term—the Court will hear argument in Peter v. NantKwest, No. 18-801. The question in that case is whether the word “expenses” includes the government’s attorneys’ fees. On July 22, we filed an amicus brief on behalf of the American Intellectual Property Law Association (AIPLA) arguing that it does not.

Nantkwest Amici Urge SCOTUS Not to Shift Attorney’s Fees in Section 145 Appeals

This March, the U.S. Supreme Court granted a petition for writ of certiorarito take up Peter v. Nantkwest Inc., on appeal from the Court of Appeals for the Federal Circuit. The case will ask the nation’s highest court to determine whether the phrase “[a]ll expenses of the proceeding” found in 35 U.S.C. § 145, which governs appeals to district court of U.S. Patent and Trademark Office decisions to deny the issue of a patent grant, encompasses personnel expenses incurred by the USPTO, including attorneys’ fees, when its employees defend the agency against Section 145 litigation. On July 22, a series of intellectual property and law associations filed amicusbriefs in the case by and large supporting the position of Nantkwest. This includes the American Bar Association, which argued that the USPTO’s interpretation of the statute would “hamper the equal access to justice and chill the assertion of meritorious claims.” Other Nantkwest amici argued that the government has had the statutory authority to collect ‘expenses of the proceeding’ in patent cases since 1839 but for the 174 years prior to the case against Nantkwest, the USPTO has declined to seek attorney’s fees.

Request for Amici: Tell the Supreme Court to Clarify Section 101

On March 8, Foster Pepper filed a petition for certiorari with the Supreme Court, case number 18-1199, challenging the Federal Circuit’s emerging “physical realm” test as part of its Alice/Section 101 analysis. Amicus briefs in support of our cert petition are most welcome to assist the Court’s understanding of why it is important to grant cert and clarify the correct patent eligibility test for computer-implemented inventions. We are also seeking amicus brief writers for the many amici we have already secured. These efforts will help clear up the uncertainty innovators and patent holders face in cutting-edge fields of our modern economy and, as a result, help drive innovation forward. 

Internet Companies File Latest Brief in Support of Google in Fight with Oracle at Supreme Court

Mozilla, Mapbox, Medium, Patreon, Etsy, and Wikimedia have filed an amicus brief in support of Google in its case against Oracle at the U.S Supreme Court. The platforms disagree with the Federal Circuit’s March 27, 2018, ruling that Google’s use of Oracle’s Java application programming interface (API packages) was not fair as a matter of law, reversing the district court’s decision on the matter. The brief is the latest of 14 that have been filed in the last week in support of granting the petition.

Is the Government a ‘Person’? NYIPLA tells SCOTUS it depends

After reviewing the way the term “person” is used throughout the statute it is clear that in some provisions of the Patent Act, the term necessarily should be interpreted to include the government (e.g., 35 U.S.C. § 296(a), expressly including government in the definition of “person”), while in other provisions the term “person” should be interpreted to exclude the government (see, e.g., 35 U.S.C. §§ 3(a) and 6(a), which clearly exclude the governmental entities like the USPS, but would include individuals in the government’s employ). Accordingly, reliance on universal definitions from the Dictionary Act, 1 U.S.C. §§ 1 and 8, governing the U.S. Code in general, and likewise on other general definitions of “persons” from relevant case law (e.g., Cooper), may well cause inadvertent problems with respect to the Patent Act. Rather, as set forth below, the answer to the question posed by this case should depend on the legislative context relating to creation of various post-issuance patent challenge proceedings and the PTO’s longstanding interpretation of “person” to include the governmental entities for purposes of ex parte  and inter partes reexaminations.

Supreme Court Refuses to Take SSL Services v. Cisco, Will Not Answer Question on Multiple Proceedings Rule at PTAB

In its petition for writ, SSL Services argued that the PTAB’s decision to institute the IPR incorrectly denied the application of 35 U.S.C. § 325(d), the statute governing multiple proceedings at the USPTO; giving the USPTO Director authority to reject a proceeding based on substantially similar prior art or arguments already presented to the agency in a validity review. While the PTAB laid out a multi-factor test for applying the multiple proceedings rule in a 2017 precedential decision in General Plastic v. Canon, SSL Services argued that this test is legally incorrect because the factors in that test do not find support in the statute. Further, the PTAB has applied Section 325(d) to bar the institution of IPRs in far less meritorious cases, including multiple cases where the asserted prior art had only been cited in the original prosecution of the patent and not a validity challenge after the patent had issued. This has resulted in a standard for applying Section 325(d) which is unworkable, SSL Services argued.

Can the Federal Circuit use Rule 36 Affirmances in PTAB Appeals?

Inventor advocacy group US Inventor recently filed an amicus brief with the U.S. Supreme Court asking the nation’s highest court to grant a petition for writ of certiorari in Capella Photonics v. Cisco Systems. This case, if taken up on appeal, will require the Supreme Court to answer whether the Court of Appeals for the Federal Circuit operates in violation of 35 U.S.C. § 144, the statute governing how the Federal Circuit must respond to appeals of decisions from the U.S. Patent and Trademark Office. In other words, can the Federal Circuit use Rule 36 to issue an affirmance without opinion of decisions appealed from the Patent Trial and Appeal Board (PTAB).