The Supreme Court of the United States agreed to review the geographic scope of the Lanham Act and the extent to which trademark owners can use US trademarks to police foreign sales. Abitron Austria GmbH et al. v. Hetronic...more
The Supreme Court of the United States agreed to consider whether a copyright registration accurately reflecting a work can nevertheless be invalidated without fraudulent intent. Unicolors Inc. v. H&M Hennes & Mauritz LP,...more
In the wake of its six-week-old decision in Thryv, Inc. v. Click-to-Call Technologies, LP, the Supreme Court of the United States has now granted certiorari in an appeal of another case arising from a Federal Circuit appeal...more
6/24/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
In the wake of a 5-4 circuit court split, the Supreme Court of the United States granted certiorari to review the 1986 Computer Fraud and Abuse Act (CFAA) and specifically whether a person who is authorized to access...more
Addressing the scope of review of the PTAB’s application of the one-year time bar of 35 U.S.C. § 315(b) in deciding whether to institute an IPR proceeding, the US Supreme Court held that the PTAB’s application of the time bar...more
4/23/2020
/ § 314(d) ,
§ 315(b) ,
§314(a) ,
§314(b) ,
America Invents Act ,
Appeals ,
Dissenting Opinions ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Non-Appealable Decisions ,
Patent Infringement ,
Patent Litigation ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Thryv Inc v Click-To-Call Technologies LP ,
Time-Barred Claims ,
Vacated
The Supreme Court of the United States granted certiorari on a petition filed by the US Patent and Trademark Office (PTO) seeking to overturn a district court decision in favor of Booking.com. The PTO argues that the mark is...more
12/6/2019
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Certiorari ,
Descriptive Trademarks ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
gTLD ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
The Supreme Court of the United States granted writ of certiorari to consider the issue of profit disgorgement under 15 USC § 1117(a). Romag Fasteners, Inc. v. Fossil, Inc., et al., Case No. 18-1233 (S. Ct. June 28, 2019)....more
8/14/2019
/ Appeals ,
Calculation of Damages ,
Certiorari ,
Fashion Design ,
Lanham Act ,
Romag Fasteners v Fossil ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Willful Infringement
The Supreme Court of the United States granted certiorari in a sovereign immunity copyright case to consider the abrogation issue in the context of copyright law. Allen v. Cooper, Case No. 18-877 (S. Ct. June 5,...more
7/15/2019
/ Abrogation ,
Allen v Cooper ,
Authors ,
Certiorari ,
Congressional Intent ,
Copyright ,
Copyright Infringement ,
Copyright Ownership ,
Copyright Remedy Clarification Act ,
SCOTUS ,
Sovereign Immunity
The US Supreme Court has now held that a federal agency is not a “person” under the America Invents Act (AIA). Therefore, a federal agency cannot be a petitioner seeking review under the various AIA patent review procedures....more
6/13/2019
/ Administrative Agencies ,
America Invents Act ,
Covered Business Method Proceedings ,
Government Entities ,
Intellectual Property Protection ,
Inter Partes Review (IPR) Proceeding ,
Patent Validity ,
Patents ,
Post-Grant Review ,
Return Mail Inc v United States Postal Service ,
SCOTUS
In a unanimous decision authored by Justice Kavanaugh, the Supreme Court of the United States held that the term “full costs” in 17 USC § 505 of the Copyright Act has no special, expansive meaning, but is limited to the costs...more
4/10/2019
/ Appeals ,
Copyright Infringement ,
Copyright Litigation ,
Expert Fees ,
Judicial Discretion ,
Litigation Fees & Costs ,
Prevailing Party ,
Remand ,
Reversal ,
Rimini Street Inc v Oracle USA Inc ,
SCOTUS ,
The Copyright Act
On March 4, 2019, the US Supreme Court issued a unanimous decision authored by Justice Kavanaugh in Rimini Street, Inc. v. Oracle USA, Inc., finding that the term “full costs” in 17 USC § 505 of the Copyright Act has no...more
3/7/2019
/ Appeals ,
Copyright Infringement ,
Copyright Litigation ,
Expert Fees ,
Judicial Discretion ,
Litigation Fees & Costs ,
Prevailing Party ,
Remand ,
Reversal ,
Rimini Street Inc v Oracle USA Inc ,
SCOTUS
Addressing whether the review of a single claim on a single challenged ground in a petition may be sufficient to institute inter partes review (IPR) for all challenged claims on all challenged grounds, the Patent Trial and...more
In light of the Supreme Court of the United States decision in SAS Institute v. Iancu (IP Update, Vol. 21, No. 5), the US Court of Appeals for the Federal Circuit remanded an appeal from the Patent Trial and Appeal Board...more
8/29/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO
In a 5–4 decision, the Supreme Court of the United States reversed a decision by the US Court of Appeals for the Federal Circuit, holding that once the Patent Trial and Appeal Board (PTAB) institutes an inter partes review...more
In a 5-4 decision, the US Supreme Court reversed a decision by the US Court of Appeals for the Federal Circuit, holding that once the Patent Trial & Appeal Board of US Patent & Trademark Office (PTAB or Board) institutes an...more
In the continuing tug-of-war between antitrust and intellectual property, the US Court of Appeals for the Federal Circuit transferred a Walker Process claim to the Fifth Circuit for lack of appellate jurisdiction. Xitronix...more
The Supreme Court of the United States has agreed to consider whether US patent owners can recoup some profits lost because of infringement that occurs outside of the United States. WesternGeco LLC v. ION Geophysical Corp.,...more
Echoing Judge Newman’s dissent in the US Court of Appeals for the Federal Circuit’s decision in SAS Institute, Inc. v. ComplementSoft, LLC, Case Nos. 15-1346; -1347 (Fed. Cir., Nov. 7, 2016) (per curiam) (Newman, J,...more
In a unanimous decision, the United States Supreme Court has clarified certain portions of the Biologics Price Competition and Innovation Act of 2009 (BPCIA), concluding (1) that biosimilar makers do not have to wait for...more
In a 6-2 decision authored by Justice Thomas, the US Supreme Court has now provided guidance as to whether aesthetic designs, such as stripes, chevrons, zigzags and color blocks of a cheerleading uniform are eligible for...more
3/27/2017
/ Cheerleaders ,
Copyright ,
Copyright Infringement ,
Copyrightable Subject Matter ,
Fashion Design ,
Graphic Designs ,
SCOTUS ,
Section 101 ,
Separability ,
Sports Apparel ,
Star Athletica v Varsity Brands ,
The Copyright Act ,
Uniforms
A unanimous US Supreme Court held that for purposes of determining damages for design patent infringement under 35 U.S.C. §289, the relevant “article of manufacture” may include either the end product sold to the consumer or...more
12/8/2016
/ Apple ,
Apple v Samsung ,
Cell Phones ,
Design Patent ,
iPhone ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Samsung ,
SCOTUS ,
Smartphones
The Supreme Court of the United States agreed to review a decision by the US Court of Appeals for the Federal Circuit regarding active inducement infringement under 35 USC § 271(f)(1) in a case important to US manufacturers...more
7/29/2016
/ Appeals ,
Certiorari ,
Component Parts Doctrine ,
Cross-Border Transactions ,
Damages ,
Induced Infringement ,
Judgment As A Matter Of Law ,
Life Technologies Corp v Promega Corp ,
Manufacturer Liability ,
Patent Infringement ,
Patents ,
Reversal ,
SCOTUS
In Depth -
The Supreme Court of the United States (Justice Breyer writing for the majority) affirmed a US Court of Appeals for the Federal Circuit decision barring judicial review of most decisions regarding institution...more
6/30/2016
/ America Invents Act ,
Appeals ,
Broadest Reasonable Interpretation Standard ,
Claim Construction ,
Cuozzo Speed Technologies v Lee ,
Inter Partes Review (IPR) Proceeding ,
Judicial Review ,
Patent Trial and Appeal Board ,
Patents ,
SCOTUS ,
Standard of Review ,
USPTO
In Depth -
Under 17 USC § 505, a “court may … award a reasonable attorney’s fee to the prevailing party.” However, when deciding whether to award attorneys’ fees under the Copyright Act’s fee-shifting provision, 17 USC...more
Lexmark International, Inc., v. Impression Products, Inc., Case Nos. 14-1617, -1619 (Fed Cir, Feb. 12, 2016) (en banc) (Taranto, J., joined by Prost, CJ and Newman, Lourie, Moore, O’Malley, Reyna, Wallach, Chen and Stoll, JJ)...more