ITC Doubles Down On Its Interpretation Of Section 337’s Domestic Industry Requirement

Just one month after the U.S. International Trade Commission (ITC) issued an important decision in Certain Solid State Storage Drives, Stacked Electronics Components, and Products Containing Same, Inv. No. 337-TA-1097 holding that labor, capital, and employment investments in non-manufacturing activities, such as engineering and research and development, can satisfy Section 337’s domestic industry requirement (see our prior post), it has gone out of its way to issue another opinion reinforcing its earlier reasoning. Continue Reading

GDPR’s Impact on Use of Employee Images in Marketing Campaigns – How to Protect Yourself!

The practise of employers using their employees’ images and names within marketing materials (from graduate recruitment materials and internal-only promotions, to nationally distributed campaigns) has become a riskier strategy in light of the consent requirements under the General Data Protection Regulation (GDPR), which recently came fully into force across the EU.  Even where employers have obtained an employee’s consent to process personal data for the purposes of these types of campaign, the inclusion – in Article 7(3) of the GDPR – of an express and absolute right for a data subject to withdraw his or her consent “at any time” presents a commercial risk.  Continue Reading

EU Court Ruling Keeps Shoe Designers On Their Toes

Last month, on the heels of the ruling from the District Court of The Hague, the Court of Justice of the European Union (CJEU) ruled that Christian Louboutin’s red high-heeled soles are protectable as a trademark.

As previously discussed, Louboutin decided to sue to protect its hue.  Louboutin has owned a registered Benelux trademark for the red sole since 2010, and in 2013, Louboutin sued Van Haren Schoenen BV (Van Haren), alleging that Van Haren’s blue high heels with red soles infringed Louboutin’s trademark.  In rebuttal, Van Haren argued that Louboutin’s trademark is invalid because the red color is part of the “shape” of the shoe, and shapes are not protectable as trademarks under the EU equivalent of the US “functionality doctrine.”  The functionality doctrine does not protect aspects of trade dress that serve a utilitarian purpose.  If a product feature is essential to the use or purpose of the article, or affects the cost or quality of the article, then the product feature is deemed functional and cannot be trademarked. Continue Reading

ALJ Cheney Grants Motion To Terminate Based On Arbitration Agreement

Just a few days after denying a motion to terminate in Certain Color Intraoral Scanners and Related Hardware and Software, Inv. No. 337-TA-1091, Order No. 23 (May 18, 2018) that was based on a forum selection clause in a prior agreement between private parties (see our prior post), Administrative Law Judge Cheney granted a motion to terminate in another investigation based on an arbitration clause contained in a license agreement.  Certain Wafer-Level Packaging, Semiconductor Devices And Products Containing Same (Including Cellular Phones, Tablets, Laptops, And Notebooks) And Components Thereof, Inv. No. 337-TA-1080, Order 26, (May 21, 2018).

As highlighted in our prior post, Judge Cheney had explained some distinctions between forum selection and arbitration clauses in Intraoral Scanners, including that arbitration is a policy expressly favored by law.  Now, Judge Cheney has made the distinction between the two types of clauses even more explicit by expressly distinguishing his decision in Intraoral Scanners as involving “different facts.”  According to Judge Cheney, “a prior agreement between private parties selecting a court in another country [Denmark] to resolve contractual disputes presents different considerations than a prior agreement to arbitrate.”

Takeaway:  Section 337(c)’s authority to terminate an investigation “on the basis of an agreement between the private parties” is discretionary.  Judge Cheney’s recent decisions on motions to terminate illustrate that the issue is fact-specific and may require a detailed look at both the agreement in question and the policy behind the discretionary authority to terminate.


The Federal Circuit Shuts the Door on Use of Tribal Immunity in IPRs

The Federal Circuit has rejected Allergan’s ploy to shield its Restasis patents from the scrutiny of inter partes review by assigning them to the St. Regis Mohawk Tribe, finding that tribal immunity does not apply in such proceedings.  The case is Saint Regis Mohawk Tribe, Allergan, Inc., v. Mylan Pharmaceuticals Inc., et al., Case No. 18-1638, July 20, 2018.

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Subsidiary’s Facility Qualifies as a Regular and Established Place of Business of the Parent for Patent Venue Purposes

A recent decision from the US District Court for the Western District of Texas suggests that district courts are taking a more expansive view of what constitutes a “regular and established place of business” for purposes of establishing venue in patent infringement cases.  Board of Regents, The Univ. of Texas Sys. v. Medtronic PLC, Case No. 17-942 (W.D. Tex.)

In November 2017, the Board of Regents of the University of Texas System (the “Board’) sued Medtronic, Inc. for patent infringement in the US District Court for the Western District of Texas (the “Western District”).  Medtronic responded to the Complaint by challenging venue as improper. Continue Reading

The China Rules of Evidence Series – Online Purchase of Infringing Products and Forum Shopping in Trademark Infringement Cases

In China, to succeed in an intellectual property (IP) infringement lawsuit, it is beneficial to have the case heard in a court that specializes in IP disputes (e.g., the IP courts in Beijing, Shanghai and Guangzhou). Securing a court that is away from the domicile of the infringer may also be beneficial, as it will reduce the risk of the court being influenced by local factors, and and the unknown legal environment will force the defendant to increase its defensive efforts. Continue Reading

USITC Issues Important Opinion Concerning Section 337’s Domestic Industry Requirement

The U.S. International Trade Commission issued an important opinion on Friday concerning Section 337’s “domestic industry” requirement, holding that investments in non-manufacturing activities, such as engineering and research and development, can be used to satisfy the required “significant investment in U.S. plant and equipment” or “significant employment of U.S. labor or capital.”

The Commission’s opinion (in Certain Solid State Storage Drives, Stacked Electronics Components, and Products Containing Same, Inv. No. 337-TA-1097) is noteworthy because it directly addresses, for the first time, a difference of opinion among the Commission’s administrative law judges (ALJs) concerning the proper treatment of engineering and research and development investment under the statutory scheme.  The issue arises because the statute provides three, seemingly distinct, options for satisfying the domestic industry requirement in cases involving alleged infringement of statutory intellectual property rights: Continue Reading

A Forum Selection Clause Provides No Basis For Terminating A Section 337 Investigation

Does a forum selection clause in a pre-existing agreement between opposing parties in a Section 337 investigation provide grounds for terminating the investigation?  A recent decision of Administrative Law Judge Cheney in Certain Color Intraoral Scanners and Related Hardware and Software, Inv. No. 337-TA-1091, Order No. 23 (May 18, 2018) concludes that the answer is no. Continue Reading

U.S. Supreme Court Opens the Door to Allow Patent Owners to Recover Foreign Lost Profits

The United States Supreme Court ruled on Friday that a patent owner can, at least in some situations, recover lost profits for the unauthorized use of its patented technology abroad.  The 7-2 decision in WesternGeco LLC v. ION Geophysical Corp. overturned the Federal Circuit’s opinion, which relied on the presumption against extraterritorial application of U.S. law to vacate a jury’s award of $93.4 million in profits that the patent owner would have earned on overseas contracts.

In the opinion, the Supreme Court soundly rejected the Federal Circuit’s view that profits lost outside the United States are categorically unavailable as a matter of United States patent law.   But the Court declined to go as far as the patent owner requested and find that the “presumption against extraterritoriality should never apply to statutes, like 35 USC § 284 [the patent damages statute], that merely provide a general damages remedy for conduct Congress has declared unlawful.”  (For more details on the Federal Circuit decision and briefing, see our prior posts here and here.)   The Court instead focused on the narrower question of “whether the case involves a domestic application of the statute.” Continue Reading