Posts Tagged: "SCOTUS"

Supreme Court Will Review Doctrine of Assignor Estoppel

On Friday, the U.S. Supreme Court granted a petition for certiorari filed by Minerva Surgical, Inc. asking the Court to clarify questions around the doctrine of assignor estoppel. Specifically, the petition presents the question “whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.”

Inventors Have Their Say on PTAB at SCOTUS in Arthrex Amicus Briefs

Eleven amicus briefs were docketed during the last two business days of 2020 in United States v. Arthrex, Inc., et al., which is scheduled for oral argument on March 1, 2021. Several of the briefs were filed by independent inventors, who implored the Court to acknowledge the stories of entrepreneurs and small inventors who have been adversely impacted by the Patent Trial and Appeal Board (PTAB), in part because Administrative Patent Judges (APJs) are presently unaccountable.

The Patent System is ‘Desperate’: American Axle Implores High Court to Take Up Eligibility Fight

American Axle & Manufacturing, Inc. filed a petition for certiorari with the U.S. Supreme Court on December 28, 2020, asking it to review the Federal Circuit’s July 31, 2020 modified judgment and October 2019 panel opinion in a closely-watched Section 101 patent eligibility case involving driveshaft automotive technology. The Federal Circuit has been sharply divided by the issues presented, leading Judge Moore to refer to the original panel’s analysis as “validity goulash” and to state that the “majority’s Nothing More test, like the great American work The Raven from which it is surely borrowing, will, as in the poem, lead to insanity.”

Looking Back at the Highest Impact Trademark Cases of 2020

This year saw its fair share of high profile trademark cases: the Second Circuit vacated Tiffany & Co.’s $25 million summary judgment win against Costco Wholesale Corp. in a dispute over Costco’s use of the word “Tiffany” to identify a specific type of six-prong diamond ring setting in Tiffany and Co. v. Costco Wholesale Corp., 971 F.3d 74 (2d Cir. 2020);* the District Court for the Southern District of New York held that the First Amendment protects the use of Humvees in the acclaimed video game Call of Duty from claims of trademark infringement and dilution, and unfair competition in AM General LLC v. Activision Blizzard, Inc., 450 F. Supp. 3d 467 (S.D.N.Y. 2020).; and the District Court for the Western District of Texas refused to grant a “Brizzy” hard seltzer brand a preliminary injunction against Molson Coors over a competing “Vizzy” product because both names were based on the common descriptive term fizzy in Future Proof Brands, LLC v. Molson Coors Beverage, 2020 WL 3578327 (W.D. Tex. Mar. 24, 2020), aff’d, 2020 WL 7064607 (5th Cir. Dec. 3, 2020). But among all of the cases, a select few stand out as ones that have shaped trademark law and are already having an impact that may last for years to come.

Are There Really Any ‘Statutory Limits’ to Institution of Post-Grant Examination following SIPCO v. Emerson Electric Co.?

On November 17, 2020, in SIPCO LLP v. Emerson Electric Co., No. 2018-1635, slip op. (Fed. Cir. Nov. 17, 2020), the Court of Appeals for the Federal Circuit extended the reasoning of the Supreme Court in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020) barring appeal of decisions to institute inter partes review (IPR) under 35 U.S.C. § 314(d), and held that decisions made by the Patent Trial and Appeal Board (PTAB) to institute proceedings for covered business methods (CBMs) are not subject to appeal under 35 U.S.C. § 324(e). While the CBM transitional program of the America Invents Act (AIA) expired on September 16, 2020, the statutes applied when instituting and conducting review under the program were those of post-grant review (PGR) (under § 18(a)(1) of the AIA), and so the effect of the Federal Circuit’s decision in SIPCO is likely to be much more far-reaching.