Supreme Court Hears Oral Argument on “Immoral or Scandalous” Trademark Prohibition

By: Anne M. Bolamperti and David G. Barker Earlier this week, the Supreme Court of the United States heard oral argument in Iancu v. Brunetti (see previous discussion here) regarding the constitutionality of the portion of Lanham Act, Section 2(a) (15 U.S.C. § 1052(a)) that prohibits the United States Patent and Trademark Office’s registration of trademarks comprising “immoral . . . or scandalous matter.”  Previously, in June 2017, the Court unanimously affirmed in Matal v. Tam that the same statute’s bar on disparaging marks was unconstitutional under the First Amendment. The PTO refused to register Erik Brunetti’s trademark application for   Read More »

Posted in IP and Technology Litigation, Trademark Litigation | Tagged

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SCOTUS to Consider USPTO’s Attorneys’ Fees Policy

By Tyler J. Fortner and David G. Barker On Monday, the Supreme Court of the United States granted certiorari in Iancu v. NantKwest to resolve a circuit split concerning “expenses” a patent applicant must pay when challenging the United States Patent and Trademark Office’s (“USPTO’s”) refusal to issue a patent.  Under 35 U.S.C. § 145, the USPTO requests attorneys’ fees as expenses when applicants seek review of a denied patent application in district court, regardless of whether the applicant wins or loses. The en banc Federal Circuit held here that applicants seeking review in district court are not required to   Read More »

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Supreme Court Copyright Decision Indicates Greater Proactivity by Would-Be Infringement Plaintiffs

Supreme Court Copyright Decision Indicates Greater Proactivity by Would-Be Infringement Plaintiffs

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

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SCOTUS: “Full Costs” Are Just Costs

By Mark Webb and David G. Barker Today, the Supreme Court of the United States ruled in Rimini Street v. Oracle USA that  “full costs” described in 17 U.S.C. § 505 of the (Copyright Act) are limited to the six categories of taxable costs set forth in 28 U.S.C.  §§ 1821, 1920. The decision reversed the district court’s award of, and the Ninth Circuit’s order affirming, $12,774,550.26 in additional costs to Oracle for litigation costs outside of those delineated in §§ 1821 and 1920, such as expert witnesses, e-discovery, and jury consulting. The Court determined, absent an explicit statutory instruction, a   Read More »

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

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Helsinn Healthcare v. Teva Pharmaceuticals USA: Textualism Runs Aground

By Andrew F. Halaby Affirming the Federal Circuit, the Supreme Court on January 22 held that post-AIA section 102(a)(1)’s provision, A person shall be entitled to a patent unless . . . the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention, (emphasis added), does not require that the invention “on sale” be “available to the public.” To be sure, the “on sale” bar historically has not required public availability, at least according to the Federal Circuit. (As the   Read More »

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

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