On June 24, 2019, the US Supreme Court invalidated the Lanham Act’s ban on registering “immoral or scandalous” trademarks. In Iancu v. Brunetti, the Court held that that the ban, in Section 2(a) of the Lanham Act, violated the First Amendment because it required the Government to discriminate against certain viewpoints: marks considered to have … Continue Reading
The recent judgment in ATB Sales Limited v Rich Energy Limited [2019] EWHC 1207 (IPEC) illustrates the difficulties parties will have in defending copyright infringement claims over artistic works, if they can only provide limited documentary proof of the creative design process. Background ATB Sales Limited (“Claimant”) brought the action against three Defendants: Rich Energy … Continue Reading
In VersaTop Support Sys., LLC v. Ga. Expo, Inc., 2019 U.S. App. LEXIS 11404 (Fed. Cir. Apr. 19, 2019), the Federal Circuit turned its eye to the Trademark Statute and reaffirmed that the cornerstone of an infringement action under the Lanham Act – with or without “use in commerce” as that term is defined in … Continue Reading
Seeking an interim injunction to protect against copyright infringement can often run into difficulties, as demonstrated by the recent judgment in Happy Camper Productions Ltd v British Broadcasting Corporation [2019] EWHC 558 (Ch). The dispute centred on the script for an episode of ‘Pitching in’, a comedy-drama programme by the BBC about a widower in … Continue Reading
In a pair of unanimous rulings on March 4, 2019, the Supreme Court clarified (1) that the U.S. Copyright Office must issue a registration certificate before a plaintiff can commence suit and (2) that a prevailing plaintiff cannot recover fees for expert witnesses, jury consultants or other “costs” that are not specifically called for in … Continue Reading
Enforcement of a copyright requires that “a registration of the copyright claim has been made.” But what does this mean? On January 8, the U.S. Supreme Court heard arguments in Fourth Estate Public Benefit Corp. v. Wall-Street.com to decide the meaning of this phrase and, in particular, whether submission of the registration application is sufficient.… Continue Reading
The Federal Circuit Court of Appeals has been a consistent punching bag for the Supreme Court over the past ten or so years. The high court has repeatedly reversed the Federal Circuit in key decisions such as Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014) (patentable subject matter), TC Heartland LLC v. Kraft … Continue Reading
The Federal Circuit recently affirmed a Patent Trial and Appeal Board (“PTAB”) inter partes review (“IPR”) decision in Palo Alto Networks, Inc. v. Finjan, Inc., No. 2017-2059, holding that the PTAB did not err in concluding that a person of ordinary skill would not have combined certain prior art identified by Palo Alto Networks, Inc. … Continue Reading
In Click-to-Call Technologies, LP v. Oracle Corporation, No.2015-1242 (en banc), the Federal Circuit has overturned the Patent Trial and Appeal Board’s longstanding interpretation of 35 U.S.C. §315(b)’s time bar for inter partes review (“IPR”) petitions, finding that the service of any civil complaint for patent infringement— even if later dismissed—starts the clock on the statute’s one-year … Continue Reading
In yet another twist in the saga of Certain Beverage Brewing Capsules, Components Thereof, and Products Containing Same, Inv. No. 337-TA-929, the U.S. International Trade Commission (ITC) has issued an order temporarily rescinding the extant remedial orders in that investigation pending appeal of a district court judgment finding the claims of the patent-in-suit invalid. The … Continue Reading
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 … Continue Reading
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 … Continue Reading
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 … Continue Reading
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, … Continue Reading
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 … Continue Reading
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 … Continue Reading
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 … Continue Reading
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 … Continue Reading
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. … Continue Reading
The Federal Circuit recently issued a precedential decision in Stone Basket Innovations, LLC v. Cook Medical LLC, No. 2017-2330 that has important ramifications for litigants seeking attorneys’ fees under Section 285 of the Patent Act. Section 285 authorizes a court to award reasonable attorneys’ fees to the prevailing party in “exceptional cases.” In Octane Fitness, … Continue Reading
Having just addressed several, important patent venue issues on mandamus in a trilogy of cases (see our prior posts here, here, and here), the Federal Circuit recently issued a terse opinion denying mandamus on yet another venue-related petition, stating that mandamus was unwarranted.… Continue Reading
The U.S. International Trade Commission (ITC) has published in the Federal Register final revisions to its rules of practice and procedure governing Section 337 investigations, the investigations that the ITC conducts under 19 U.S.C. § 1337 based on private party complaints against imported articles that allegedly violate U.S. intellectual property rights. This completes a process … Continue Reading
In the third important patent venue decision it has issued in the past week (In re: BigCommerce, No. 2018-122 (May 15, 2018)), the Federal Circuit has clarified the proper location for patent infringement suits against U.S. corporations whose state of incorporation is large enough to have multiple federal judicial districts. According to the Court, a … Continue Reading
