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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Supreme Court to Determine “Full Costs” Under Copyright Act

By Mark K. Webb and David G. Barker Yesterday, the Supreme Court of the United States granted certiorari in Oracle USA v. Rimini Street to resolve a split among the United States Circuit Courts of Appeals concerning costs awarded to a prevailing party under the Copyright Act. The Sixth, Seventh, and Ninth Circuits permit an award of “full costs” under 17 U.S.C. § 505 (Copyright Act) that is not limited by the six categories of taxable costs under 28 U.S.C.  § 1920. The Eighth and Eleventh Circuits do not permit additional costs, because the “full costs” language does not “clearly,”   Read More »

Posted in Copyright Litigation, Uncategorized | 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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Supreme Court Opens the Door to Recovering Lost Foreign Profits in Patent Cases

By Peter R. Montecuollo and David G. Barker In a 7-2 decision, the Supreme Court of the United States has opened the door for patent owners to recover lost foreign profits under §§ 284 and 271(f)(2) of the Patent Act. Although the Court’s decision in WesternGeco LLC v. ION Geophysical Corp. represents a marked shift from the lost-foreign-profits calculus courts applied previously, it does not create an automatic right to recover lost foreign profits.  Instead, the Court supplanted the Federal Circuit’s rigid prohibition against recovering lost foreign sales (see Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.) with a case-by-case   Read More »

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

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