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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Solicitor General Weighs in on Section 101, Prompts High Court to Grant Review in Athena Diagnostics v. Mayo Collaborative Services

By Andy Halaby At the Supreme Court’s request, the Solicitor General on Friday, December 6, weighed in on two pending cert petitions dealing with patent subject matter eligibility under 35 U.S.C. § 101.  Though the Solicitor General urged on behalf the United States that both those cert petitions be denied, he seized the opportunity, in both briefs, to maintain that the Supreme Court should accept review in yet another case, Athena Diagnostics v. Mayo Collaborative Services, and use that opportunity to straighten out what the Solicitor General maintains is a recent, deviant strain of Court decisions interpreting § 101. In   Read More »

Posted in IP and Technology Litigation, 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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Is “Booking.com” Generic? We’ll Booking.See

By Andy Halaby The Supreme Court’s decision in United States Patent & Trademark Office v. Booking.com to take up whether booking.com is generic, and thus unprotectable as a trademark, is intriguing. The government maintains the term is generic.  It starts with the premise that the root term “booking” is generic.  As for “.com,” the government likens it to “Company,” and invokes the Supreme Court’s 1888 decision in Goodyear’s Rubber Mfg. Co. v. Goodyear Rubber Co. where the Court observed, The addition of the word ‘Company’ only indicates that parties have formed an association or partnership to deal in such goods,   Read More »

Posted in Trademark Litigation | Tagged ,

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House Approves Legislation to Create Copyright Small Claims Board

By Shalayne L. Pillar and David G. Barker On October 22, 2019, the U.S. House of Representatives voted 410-6 in favor of the Copyright Alternative in Small-Claims Enforcement Act of 2019, or CASE Act.  If passed into law, the CASE Act would create a voluntary small claims board within the U.S. Copyright Office, called the Copyright Claims Board.  Lawsuits filed under the CASE Act would allow recovery up to $30,000, with a cap of $15,000 for statutory damages per work infringed. The CASE Act seeks to address the high cost of copyright litigation, which often limits the ability of small   Read More »

Posted in Copyright Litigation | Tagged

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