Posts Tagged: "SCOTUS"

In the brief, the ABA takes no official opinion on whether the disparagement provisions of the Lanham Act are invalid in the face of constitutionally-protected free speech. The organization does want to correct what it sees as “certain principles of trademark law erroneously set forth by the court of appeals,” however. The ABA argues that Federal Circuit misapplied the basics of U.S. trademark law in confusing the separate concepts of mark validity and mark registrability. Specifically, the Federal Circuit’s decision seemed to indicate to the ABA that a determination of unregistrability for a mark on the principal register would also restrict the ability to use that mark in commerce.

In EON Corp. IP Holdings LLC v. Silver Spring Networks, Inc., No. 15-1237, 815 F.3d 1314 (Fed. Cir. 2016), the Federal Circuit reversed a jury verdict and ordered judgment as a matter of law (“JMOL”)—without further proceedings in the district court—on an unarticulated claim construction that was raised by neither party below or on appeal. Specifically, the case presents the issue: “Whether the Federal Circuit erred in ordering entry of judgment as a matter of law on a ground not presented in a Rule 50 motion in the district court, even though the ground presented a purely legal question.”

The stage is now set for the Supreme Court to weigh in on the future of laches in patent litigation. If the Court closely follows its analysis in the Petrella decision, it is fairly likely that the Court will reverse the Federal Circuit and hold that laches cannot bar claims for damages within the six-year period set forth in § 286. Indeed, given the en banc ruling, it is unlikely that the Court would grant certiorari simply to confirm that Aukerman remains good law. There is also the conspicuous absence of the term “laches” (or any other reference to “equitable” defenses) in the Patent Act. While the Federal Circuit found that the doctrine of laches was implied by the language of § 282, the Supreme Court may not be so willing to entertain the same statutory interpretation.

The Supreme Court need not wait for Congress to act. This is a case of first impression in interpreting the provision. Guided by its own law on design patent infringement and legislative history, the Court can reach the common sense result provided by the provision’s wording. Design owners should be made whole, but not unjustly enriched. Awarding the infringer’s total profits regardless of the contribution of the design to the end product’s value subverts patent law’s mandate to promote technological progress.

The U.S. government weighs in on Life Technologies’ side because “the application of U.S. patent law to participation by U.S. exporters in foreign markets also raise issues concerning the competiveness of American companies abroad and the respective roles of the United States and other nations’ patent laws.” The government argues that the Federal Circuit has not given a workable definition to determine when a component is sufficiently important or essential as to be “a substantial portion of the components.” The government also argues that, in legislating § 271(f), Congress’s purpose was to outlaw evasion of a U.S. patent by conduct that tantamount to manufacturing the patented invention in the U.S. for export. The government argues that there is no clear expressed Congressional intent for § 271(f) to reach supplying a single staple article: when the product is made abroad except for such a staple article, Congress left that predominantly foreign conduct to be regulated by foreign law. Finally, the government argues that the presumption against extraterritoriality requires the courts to assume both that “legislators take account of the legitimate interests of other nations” and “foreign conduct is generally the domain of foreign law.”

Much of the court’s line of questioning at times sought answers to whether a standard could be applied in a design patent infringement case in such a way that adequately identifies the amount of profit that could be attributed to a particular aspect of a product’s design. In the words of Justice Kennedy: “Once you’ve identified the relevant article, then it seems to me necessarily what you’re doing is apportioning profits. I just don’t see how we can get away from that word.” While it may have seemed that the oral arguments went well for Samsung, that is not always, or even usually, a good gauge of how the Court will ultimately decide. Of course, time will tell.

Based on the question presented in Lee v. Tam, the Supreme Court made clear that its grant of review is only as to the disparagement provision in Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), but the outcome of this case will affect the other types of marks excluded by Section 2(a), such as marks that may be viewed as immoral or scandalous. Indeed, in a footnote in its en banc decision the Federal Circuit “recognized…that other portions of § 2 may likewise constitute government regulation of expression based on message, such as the exclusions of immoral or scandalous marks….”

The USPTO, through its Trademark Trial and Appeal Board (TTAB), denied a standard character mark for “The Slants” to be used with live music performance entertainment on the basis that the term is a highly disparaging reference to people of Asian-American descent. The writ of certiorari was issued for this case after the U.S. Court of Appeals for the Federal Circuit (Fed. Cir.) issued a decision last December in In re Tam, an appeal filed by Simon Tam to overturn the TTAB decision. In that case, the Federal Circuit voted 9-to-3 to vacate the TTAB decision to deny the trademark to Tam because § 2(a) of the Lanham Act was unconstitutional “under the intermediate scrutiny traditionally applied to regulation of the commercial aspects of speech.” The majority opinion issued by Federal Circuit noted that the First Amendment protects even hurtful speech and that the federal government has offered no legitimate interests justifying § 2(a) of the Lanham Act.

In its upcoming term, the Supreme Court will once again consider the extraterritorial effect of U.S. patent law; specifically, whether “the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all worldwide sales.” Life Tech. Corp. v. Promega Corp., No. 14-1538. Petitioners (all subsidiaries of Thermo Fisher Scientific Inc., which I shall collectively call “Life”) urge the Court to hold the statute requires “all or a large percentage closely approximating all” of the components of the invention to have been made in the United States. Though Promega Corporation has yet to respond, the Court should decline Life’s invitation. This does not mean, however, that the decision of the Federal Circuit, Promega Corp. v. Life Tech. Corp., 773 F.3d 1338 (Fed. Cir. 2014), should be affirmed. Rather, though none of the briefs filed in the case have said so, the Supreme Court should reverse because the single, commodity component at issue cannot, as a matter of law, even under Promega’s interpretation of the statute, comprise a “substantial portion” of the components of the invention.

The Supreme Court granted certiorari this term in Star Athletica, L.L.C. v. Varsity Brands, Inc., which considers whether typical designs on cheerleading uniforms can be copyrightable subject matter. The appeals court believed that the designs were appropriate, but my guess is that several Supreme Court justices reacted with skepticism, which is why they decided to take the appeal. Those engaged with product development eagerly await the decision in this case because there is significant judicial uncertainty about the application of copyrights to useful products, and in particular, with how to draw the line between artistic craftsmanship and industrial design. Unfortunately, this case raises rather narrow issues, and the Court will be able to resolve them while skirting the most difficult debates. Thus, I believe that those looking for hard-and-fast rules will ultimately feel no more satisfied than observers did after the Court’s decisions with patentable subject matter, such as in Bilski v. Kappos.

Pactiv, LLC v. Lee presents a question fundamental to all ex parte reexaminations: whether, after the PTO initiates an ex parte reexamination, that proceeding is limited in scope to the question determined to qualify as the “substantial new question of patentability.” The “substantial new question of patentability” identified by the Director included certain prior art references. But the examiner subsequently rejected several of Pactiv’s claims due to wholly different prior art references. There was never any determination under 35 U.S.C. § 303 that these other references raised a “substantial new question of patentability,” nor did the Director issue the order required under Section 304 identifying a “substantial new question of patentability” based on these wholly different prior art references.

With over 205 billion in cash reserves at last count, Apple certainly doesn’t “need” the full nine-figure damage award. And, unless Congress steps in and amends the damage award statute, Apple will likely find itself defending its “total profits” for devices even where accused of infringing minor design features. Given the current statutory language the Supreme Court could very well agree with the Federal Circuit and find that it is bound by the clear statutory language. Clearly it is time for Congress to step in and amend Section 289, possibly to add apportionment.

Removing section 101 would remove the language granting patents only to processes, machines, manufactures, compositions of matter, or new and useful improvements thereof. These categories however have only rarely been used to limit patentablity. The Court has in fact described these terms as expansive. Their removal would not suddenly make the inventions found unpatentable by the Court as abstract ideas or articles of nature patentable. As shown by the discussion above, the judicial exceptions do not rest on a legal interpretation of section 101 in any of its forms. They come from Supreme Court precedent established BEFORE section 101 existed.

How will our patent system treat this wonderful new discovery? How long will it take before its curative benefits can be deployed ? We can only hope that DC’s meddlers in our innovation ecosystem read the Ms. Sun’s article. Because however fervently the medical and scientific communities respond to this growing superbug crisis, IP’s DC government legal eagles are either unaware or unconcerned. The USPTO is regularly rejecting microbial patent applications in blind servitude to Alice-Mayo’s confusing eligibility formula. We can hope, but cannot be assured, the Federal Circuit will make sense some day of Alice-Mayo’s two-step test. But when? Worse, it appears that SCOTUS is infected by the anti-patent poison infesting our Capitol. How refreshing it would be to have our Congress and the nation’s highest Court be as concerned with superbugs as they seem to be with PR-created patent trolls.

This case concerns Star Athletica’s alleged infringement of Varsity Brands’ purported copyrights in the design of certain cheerleading uniforms. Under the Copyright Act, because clothing possesses an intrinsic utilitarian function (covering the body, providing warmth and protection from the elements, etc.), clothing designs historically have not been protected by copyright unless the claimed design is physically or conceptually separable from the garment’s utilitarian features. The district court found in favor of defendant Star Athletica, concluding that the design elements in Varsity Brands’ cheerleading uniforms were not separable from the uniform’s function. The Court of Appeals for the Sixth Circuit reversed, and in doing so, devised a new test for assessing the copyrightability of a design of a useful article.