Posts Tagged: "SCOTUS"

Alice Insanity (Part Two): How the Dunning-Kruger Effect Influences the Outcome of Federal Circuit Decisions

The Dunning-Kruger effect is often defined as a type of cognitive bias whereby people are prone to vastly misjudge their competence. For example, smart and capable people tend to evaluate their skills and competence downward. That is, they tend to not just understand, but deeply internalize the idea that there’s a lot in life that they don’t understand. Circa 500BC, Confucius coined this wisdom stating, “Real knowledge is to know the extent of one’s ignorance.” Then there’s the flip side, where low ability and/or low knowledge people overestimate their own capabilities while simultaneously being unable to recognize their own incompetence. One-hundred and thirty years (give or take) before David Dunning and Justin Kruger conducted their studies on the issue, Charles Darwin described this effect, stating, “ignorance more frequently begets confidence than does knowledge.”

Alice-Insanity (Part One), or Why the Alice-Mayo Test Violates Due Process of Law

The Fifth Amendment of the U.S. Constitution guarantees, inter alia, that no person shall be deprived of property (including intellectual property), without due process of law. For instance, it is settled law that a federal statute may be so arbitrary and capricious as to violate due process. Similarly, it is settled that an administrative agency, e.g., the U.S. Patent and Trademark Office (USPTO), cannot escape the due process of law requirement when processing patent applications. In theory (less in reality), due process of the law extends to judicial as well as political branches of government, and judgments that violate constitutional limitations and guarantees are void or voidable.

Models’ Lawsuits Against Nightclubs Highlight SCOTUS Petition Challenging Elevation of ‘Public Prominence’ Factor in Lanham Act Cases

In mid-October, a pair of lawsuits were filed in the Eastern District of Virginia by different groups of professional models seeking damages and injunctive relief under the Lanham Act from adult entertainment clubs for the unauthorized use of the models’ images in promotional materials. The filings come at about the same time that the U.S. Supreme Court is considering a petition for writ of certiorari from the U.S. Court of Appeals for the Second Circuit which asks the nation’s highest court whether the Second Circuit was wrong to create a public prominence requirement that prevents lesser known models from being able to assert their rights to their own likeness.

The Section 145 Trilogy: Why More Applicants Might Take Patent Applications from the USPTO to the E.D. of VA

Typically, patent examiners are the prominent decision-makers controlling whether patent applications are allowed. However, Applicants have the power to change who controls these decisions. For example, each Examiner’s Answer must be approved by a supervisory examiner, so filing an Appeal Brief results in the supervisory examiner reviewing the rejections at hand, the appellant’s arguments, and the examiner’s responses to the appellant’s arguments. (If the supervisory examiner agrees with the appellant, then the application is either allowed or prosecution is reopened with one or more new rejections). So long as prosecution is not reopened, paying the Forwarding Fee subsequent to receiving the Examiner’s Answer results in jurisdiction shifting to the Patent Trial and Appeal Board (PTAB).

An Ax(le) Needs Grinding: Can the Federal Circuit Turn the Wheel?

I recently opened a Bordeaux and re-read the petition for certiorari in American Axle v. Neapco. Not because I like watching horror films or black-and-white footage of a piano sliding downstairs, mind you. But well, you know. The Petition is well written and the Bordeaux did its job; however, it was still painful to read the recounting of the successive bad decisions to invalidate American Axle’s patents in light of the arguments made by accused infringer Neapco. Yet, in context, it’s just another of the thousand blows against U.S. inventors and our innovation ecosystem. It’s shameful that a company with a new and useful technology in the automotive industry was stymied in its appeal by our nation’s highest patent court.

CareDx v. Natera: The Latest in Patent Eligibility of Medical Diagnostics

The latest ruling involving patent eligibility of medical diagnostics comes from Chief Judge Connolly of the United States District Court for the District of Delaware in a consolidated case brought by CareDx, Inc. and the Board of Trustees of the Leland Stanford Junior University against Natera, Inc. (Civil Action No. 19-0567-CFC-CJB) and Eurofins Viracor, Inc. (Civil Action No. 19-1804-CFC-CJB). After initially denying the Defendants’ motions for summary judgment of invalidity of the asserted patents under 35 U.S.C. §101 in December 2020, the Court then later denied certification motions for interlocutory appeal and instead ruled sua sponte to reconsider its own denial of summary judgment. Following an evidentiary hearing during which expert testimony was heard, the Court reversed its previous ruling to find all claims of the asserted patents invalid as a matter of law under §101.

SCOTUS Grants Government’s Request to Participate in Case Interpreting PRO IP Act Language on Copyright Invalidation

The U.S. Supreme Court today granted a motion made by the Acting U.S. Solicitor General to participate in oral argument as an amicus in the case of Unicolors v. H&M. The case asks the Court to decide whether the Ninth Circuit properly construed the language of 17 U.S.C. § 411 relating to whether courts must have evidence of intent to defraud before referring copyright registration validity questions to the Copyright Office. Oral argument is set for November 7.

Employing a Trademark Test to Determine When a Patent is ‘Directed To’ a Section 101 Judicial Exception

Under U.S. trademark law and court precedent, determining whether there is a likelihood of confusion involves weighing a number of factors (13 factors to be exact), known as the “Dupont factors,” set out in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357, 177 USPQ 563 (CCPA 1973). The CCPA (Court of Customs and Patent Appeals) is a predecessor court to the Federal Circuit. As noted by the Federal Circuit, not all the DuPont factors may be relevant or of equal weight in a given case and any one of the factors may control a particular case. Under 35 U.S.C. §101, patent-eligible inventions include any process, machine, manufacture, composition of matter and any new and useful improvement thereof. There are, in addition, three judicially created exceptions to the broad recitation of Section 101: laws of nature; natural phenomena; and abstract ideas…. If the goal of Section 101 is to act as a gatekeeper, rather than a roadblock, the factors approach seems appropriate to employ in a patentability analysis.

USPTO and Copyright Office Reports Attempt to Quantify Extent and Effect of IP Infringement by State Entities

On August 31, at the request of Senators Thom Tillis (R-NC) and Patrick Leahy (D-VT), the United States Patent and Trademark Office (USTPO) provided a report to Congress analyzing infringement disputes between patent and trademark rights holders and states and state entities. The U.S. Copyright Office produced a similar, much lengthier report, also in response to a letter from Tillis and Leahy, studying whether there is sufficient basis for federal legislation abrogating State sovereign immunity when States infringe copyrights. The Senators’ letters were prompted by the March 2020 Allen v. Cooper Supreme Court decision. While the USPTO report came to no conclusions, the Copyright Office found that “the evidence indicates that state infringement constitutes a legitimate concern for copyright owners.”

Practical Considerations for Patent Assignments After the Supreme Court’s Decision in Minerva Surgical v. Hologic

On June 29, 2021, the Supreme Court issued its long-awaited decision in Minerva Surgical, Inc. v. Hologic, Inc. in which it clarified the proper limits of the centuries-old doctrine of assignor estoppel, which operates to prevent an inventor who assigns a patent to another for value from later claiming that the patent assigned is invalid during litigation, holding that the doctrine only applies when “the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” The decision underscores the need to keep in mind a number of factors when preparing and executing patent assignments.  

Bobcar SCOTUS Petition Seeks Redress for Constitutional Violations Posed by Federal Circuit’s Abuse of Rule 36

On August 2, New York City-based marketing company Bobcar Media filed a petition for writ of certiorari with the U.S. Supreme Court asking the Court to consider various legal issues related to the use of Rule 36 summary affirmances by the U.S. Court of Appeals for the Federal Circuit (CAFC). Bobcar contends that the Federal Circuit’s Rule 36 practice, which allows the court to issue one-word affirmances of lower court decisions despite being fully briefed on the issues and holding oral arguments, “has gotten out of hand, contravening the principles set forth by the Founders of the Constitution, and basic tenets of justice.”

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.

USPTO Delivers on Senators’ Request for Patent Eligibility Jurisprudence Study

In March of this year, a bipartisan group of senators asked Drew Hirshfeld, who is Performing the functions and duties of the Director of the U.S. Patent and Trademark Office (USPTO), to “publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses,” and provide the senators with a detailed summary of the findings in order to assist them as they consider appropriate legislative action. The letter gave a deadline of March 5, 2022 to submit a report on the topic. Now, a Federal Register Notice (FRN) scheduled to be published July 9 is requesting answers and input from stakeholders to 13 questions/topics to assist in that effort, according to a publicly posted draft of the FRN.

Do You Really Want to Make PTAB Judges ‘Inferior Officers’? —Think Again!

In a recent Supreme Court decision in Arthrex v. Smith & Nephew, the Court held that the unreviewable authority wielded by Administrative Patent Judges (APJs) at the Patent Trial and Appeals Board (PTAB) of the U.S. Patent & Trademark Office (USPTO) exercises authority of a “principal officer” and is incompatible with their appointment by the Secretary of Commerce to an “inferior office.” Instead of declaring their appointment unconstitutional, the Court’s remedial ruling was aimed at making PTAB judges “inferior officers.” It did so by a ruling interpreting 35 U.S.C. § 6(c) as enabling the USPTO Director to “review decisions rendered by APJs,” subordinating them to the Director’s full supervision.

USPTO Provides Guidance on Director Review Process Under Arthrex

This week, the U.S. Patent and Trademark Office announced that it would be implementing an interim rule at the agency in response to the U.S. Supreme Court’s late June decision in Arthrex v. Smith & Nephew. Today, the Office held a Boardside Chat with Drew Hirshfeld, Performing the Functions and Duties of the Under Secretary of Commerce for Intellectual Property and Director of the USPTO; Scott R. Boalick, Chief Administrative Patent Judge; Jacqueline W. Bonilla, Deputy Chief Administrative Patent Judge; and Scott C. Weidenfeller, Vice Chief Administrative Patent Judge to explain how the interim process will work and answer questions submitted by the public. Janet Gongola, Vice Chief Judge for Engagement at the PTAB, moderated the panel.