Supreme Court Holds “Expenses” Exclude PTO Employee Salaries in Civil Action Challenges Under the Patent Act

By Daniel M. Staren and David G. Barker The Supreme Court unanimously held that the United States Patent and Trademark Office (PTO) may not recover the salaries of its legal personnel as “expenses” in a civil action challenging an adverse decision by the PTO under the Patent Act. The Court’s decision in Peter v. NantKwest affirmed a Federal Circuit en banc decision that premised its holding on the American Rule, which provides that each litigant is responsible for its own attorneys’ fees unless a statute or contract provides otherwise. NantKwest owned a patent application directed to a method for treating   Read More »

Posted in Patent Litigation | Tagged , , ,

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Google v. Oracle Heads to the Supreme Court

By Andy Halaby The Supreme Court’s cert grant on the Federal Circuit’s most recent decision in the long-running and highly publicized battle between Oracle and Google appears to confront policy questions as much as legal ones — such as whether the nation’s economy would be better or worse off, and under what circumstances, allowing software developers to copy others’ application programming interfaces without paying for them.  That the Court granted cert, notwithstanding the Solicitor General’s urging it not too, suggests the Court may be prepared to tackle those questions. Google’s petition challenges the Federal Circuit’s determinations that •  certain of   Read More »

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

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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 »

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

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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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