Federal Circuit Considers Possible Tribal Immunity from Inter Partes Review

By Daniel S. Ivie and David G. Barker Last week, a Federal Circuit panel considered whether transferring patents to a tribal nation invoked the tribe’s sovereign immunity precluding inter partes review. The panel heard oral argument in Saint Regis Mohawk Tribe et al. v. Mylan Pharmaceuticals Inc. et al., which concerns an appeal from the Patent Trial and Appeal Board’s recent decision that the St. Regis Mohawk Tribe’s sovereign immunity did not shield it from inter partes review. In late 2017, pharmaceutical company Allergan transferred the patents for its dry-eye medication Restasis to the St. Regis Mohawk Tribe. Allergan paid   Read More »

Posted in Inter Partes Review, Patent Litigation | Tagged

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Supreme Court Confirms Inter Partes Review Is Constitutional

By Jacob C. Jones and David G. Barker In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the United States Supreme Court held today, in a 7-2 decision, that the inter partes review process under the America Invents Act (AIA), 35 U.S.C. § 100 et seq. (2011), does not violate Article III or the Seventh Amendment of the U.S. Constitution. As we noted previously, inter partes review is a popular administrative proceeding where the Patent Trial and Appeal Board (PTAB; part of the United States Patent and Trademark Office) decides whether challenged patents are valid.  As of March   Read More »

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

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Billions Once Again on the Line After Federal Circuit’s Reversal in Oracle v. Google

By Rachael Peters Pugel and David G. Barker The Federal Circuit has reversed, for the second time, the much-followed copyright infringement case, Oracle America, Inc. v. Google LLC, which has been ongoing since 2010.  Oracle filed suit alleging Google copied and used 37 packages of Oracle’s Java application programming interface (“API”), as well as the structure, sequence, and organization (“SSO”) of those API packages, in its Android smartphone platform. Google and Oracle’s predecessor, Sun, began discussing Google’s licensing of the Java platform for mobile devices in 2005.  But the parties were unable to come to an agreement.  Google then worked   Read More »

Posted in Copyright Litigation | Tagged ,

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The Supreme Court to Consider Patent Infringement Damages Accrued Abroad

By Robert A. Clarke and David G. Barker The Supreme Court has granted certiorari to consider whether damages for infringement of a U.S. patent include lost profits resulting from activities outside the U.S. In WesternGeco L.L.C., v. Ion Geophysical Corporation, the Federal Circuit affirmed a jury verdict that Ion infringed WesternGeco’s patent for a device used to search for oil and gas beneath the ocean floor, but the Federal Circuit reversed an award of damages for lost profits.  The district court awarded lost profits from the use of the infringing devices abroad because WesternGeco would have been awarded the contracts   Read More »

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Federal Circuit Holds “Scandalous and Immoral” Ban Unconstitutional

By Tyler J. Fortner and David G. Barker Last Friday, in In re Brunetti, the Federal Circuit held that the ban on “scandalous and immoral” trademarks under 15 U.S.C. § 1052(a) is unconstitutional. The decision follows the June 19, 2017, Supreme Court decision, Matal v. Tam (discussed here), which held that the clause prohibiting marks that “disparage” in the same statute is unconstitutional. In Tam, the Court held that the PTO’s refusal to register the Asian-American band name, “THE SLANTS,” violated the First Amendment. Relying on Tam, the Federal Circuit reversed the PTO’s refusal to register “Fuct” as a trademark.   Read More »

Posted in Trademark Litigation | Tagged ,

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