Supreme Court to Decide Multiple IP Issues This Term

 By Taryn J. Gallup and David G. Barker On October 26, 2018, the Supreme Court of the United States (“SCOTUS”) granted certiorari in two IP cases.  In Mission Product Holdings, Inc. v. Tempnology, LLC, SCOTUS will address a circuit split on the effect bankruptcy has on trademark license rights.  In Return Mail, Inc. v. U.S. Postal Service, et al., SCOTUS will address whether the government may challenge patents as a “person” under the America Invents Act (“AIA”). In Mission Product Holdings, Tempnology, LLC (“Tempnology”) filed for Chapter 11 bankruptcy protection and cancelled a trademark licensing agreement that it had with   Read More »

Posted in IP and Technology Litigation, Patent Litigation, Trademark Litigation | Tagged , , , , ,

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Ninth Circuit Holds County’s Advertising Restriction on “Disparaging Material” Unconstitutional

By Justin K. Powley and David G. Barker The Ninth Circuit held yesterday in American Freedom Defense Initiative v. King County that a county’s advertising program on public buses that rejected advertisements on the basis of disparaging material violates the First Amendment’s free speech clause and therefore is unconstitutional. King County provides public transportation in the Seattle metropolitan area and sells advertising space on the exterior of public buses. The County generally accepts all advertisements that do not contain prohibited content, including: false statements, disparaging material, or content that may disrupt the transit system. American Freedom Defense Initiative submitted a   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged ,

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Federal Circuit Holds Tribal Immunity Does Not Bar IPR of Tribe-Owned Patents

By Tyler J. Fortner and David G. Barker Last week, the Federal Circuit held that tribal sovereign immunity does not apply to inter partes review (IPR) actions instituted at the Patent Trial and Appeal Board.  The decision, in Saint Regis Mohawk Tribe et al. v. Mylan Pharmaceuticals Inc., comes approximately a month and a half after a Federal Circuit panel heard the issue (see here). The decision opens the door for generic drug manufacturers (including Mylan) and others to challenge the validity of patents owned by Native American tribes that enjoy sovereign immunity. During oral argument, Allergan and the Mohawk Tribe   Read More »

Posted in Inter Partes Review, IP and Technology Litigation, Patent Litigation | Tagged

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First Amendment Free Speech Protection Is Alive and Well

By Jessica D. Kemper* and Andrew F. Halaby The First Amendment’s free speech guarantee has proved determinative in a variety of very recent Supreme Court decisions. In Matal v. Tam (see here), the Court held that the First Amendment precludes denial of registration of an allegedly offensive trademark.  In National Institute of Family and Life Advocates v. Becerra (“NIFLA”) (2018), the Court held that California may not compel crisis pregnancy centers to provide, against their wishes, abortion-related information.  And in Janus v. American Federation of State, County, and Municipal Employees, Council 31 (2018), the Court held that the First Amendment   Read More »

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SCOTUS to Consider Copyright Registration Circuit Split

By Peter R. Montecuollo and David G. Barker The Supreme Court of the United States granted certiorari in Fourth Estate Public Benefit v. Wall-Street.com to resolve a long-standing split among the United States Circuit Courts of Appeals concerning whether copyright owners must wait to file infringement suits until the United States Copyright Office has registered their works.  For instance, the Fifth and Ninth Circuits apply the “application approach,” which permits copyright owners to file infringement suits once upon applying for copyright registration.  Other circuits, including the Tenth and Eleventh Circuits, apply the “registration approach.”  In those circuits, failure to secure   Read More »

Posted in Copyright Litigation, IP and Technology Litigation | Tagged , , ,

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