Supreme Court to Decide Two Trademark Cases

By Shalayne Pillar and David G. Barker The Supreme Court of the United States recently granted certiorari in two trademark cases.  In Romag Fasteners v. Fossil, the Court will consider whether courts can order trademark infringers to disgorge their profits without a finding of “willful” infringement. In Lucky Brand Dungarees v. Marcel Fashion Group, the Court will consider whether claim preclusion may bar a defendant from raising a defense late in litigation. In Romag Fasteners, a jury found that Fossil infringed Romag’s trademarks.  Nevertheless, the district court refused to award $6.8 million of Fossil’s profits because Romag could not prove   Read More »

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

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Supreme Court Holds Bar on Immoral or Scandalous Trademarks Unconstitutional

By: Anne M. Bolamperti and David G. Barker The Supreme Court held Monday that the Lanham Act’s bar on “immoral or scandalous” trademarks is unconstitutional under the First Amendment.  Delivering the 6-3 opinion of the Court, Justice Kagan relied on the Court’s previous decision in Matal v. Tam (discussed here), which held that the Lanham Act’s ban on “disparaging” trademarks also was unconstitutional. Respondent Erik Brunetti first sought federal registration of the trademark FUCT in connection with his urban clothing line.  Claiming use since December 1991, Brunetti’s line stands for “Friends U Can’t Trust,” but sounds like an expletive in acronym   Read More »

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Supreme Court: Federal Government Is Not Permitted to Challenge Patents Under the AIA

By C. Matthew Rozier In a recent 6-3 decision, the Supreme Court held that the U.S. Postal Service and other federal agencies are prohibited from challenging the validity of patents post-issuance under the proceedings created by the Leahy-Smith America Invents Act (“AIA”).  The Court’s decision in Return Mail Inc. v. U.S. Postal Service reversed a Federal Circuit decision holding that the federal government is a “person” for the purposes of 35 U.S.C. §§ 311 and 321.  In reversing, the Court cited a longstanding presumption that a “person” does not include the federal government.  Importantly, the decision leaves the door open for   Read More »

Posted in IP and Technology Litigation, Patent Litigation, Post Grant Proceedings | Tagged ,

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Section 101 in 2019

Snell & Wilmer Lawyers presented their article, Section 101 in 2019, at the ABA Section of Intellectual Property Law’s Annual Meeting in Arlington, Virginia, as part of a program, “101 ‘301’: Advanced Subject Matter Eligibility.”  The article summarizes the existing patent eligibility test, discusses recent Federal Circuit decisions, and provides practical strategies for practitioners navigating the Section 101 landscape.

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

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Federal Circuit Broadens Personal Jurisdiction Based on Patent Infringement Letters

By Daniel S. Ivie and David G. Barker A recent decision by the Federal Circuit has broadened the potential for declaratory judgment personal jurisdiction to exist based on letters sent to accused patent infringers in a foreign forum. In Jack Henry & Associates, Inc. v. Plano Encryption Technologies, LLC, the Federal Circuit appears to now require that a patentee make a “compelling case” that the exercise of jurisdiction in the foreign forum “would be unreasonable and unfair.” For years, the Federal Circuit has held that infringement letters, without more, “are not sufficient to satisfy the requirements of Due Process in   Read More »

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