In the past two months, the Trademark Trial and Appeal Board has issued three opinions citable as Board precedent. The following is a brief summary of each opinion and its precedential impact. Continue Reading
On Tuesday, March 24, 2015, the U.S. Supreme Court issued its second decision in substantive trademark law in nearly a decade. B&B Hardware, Inc. v. Hargis Indus., Inc., No. 13-352, slip op., 575 U.S. __ (2015). Sheppard Mullin argued on behalf of the prevailing respondent in the first case, Hana Financial, Inc. v. Hana Bank, decided earlier this year. Continue Reading
In a decision imparting more certainty to the Post Grant Review process, the Court of Appeals for the Federal Circuit (the “CAFC”) held that it lacks jurisdiction to review the Patent and Trademark Office’s (the “PTO’s”) decision to institute inter partes review (“IPR”). It also concluded that the PTO properly adopted the broadest reasonable interpretation standard for reviewing claims under IPR proceedings.
Sheppard Mullin’s intellectual property group prevailed before the United States Supreme Court in the trademark matter entitled Hana Financial v. Hana Bank. 574 U.S. ___ (2015). Justice Sotomayor, writing for a unanimous court, affirmed a Ninth Circuit ruling that the doctrine of trademark tacking presents a question of fact appropriate for jury determination. 735 F.3d 1158 (9th Cir. 2013). This was the first substantive trademark decision by the U.S. Supreme Court in nearly a decade. Partner Carlo Van den Bosch argued the case before the Supreme Court. With him on the briefs were Bob Rose, Michelle Wisniewski, and Gazal Pour-Moezzi. Karin Vogel and Robert Stumpf from the appellate group also contributed.
On Jan. 20, 2015, the U.S. Supreme Court issued a decision setting forth a new standard for appellate review of a district court’s claim construction ruling. Teva Pharmas. USA, Inc. v. Sandoz, Inc., No. 13-854, slip op., 574 U.S. __ (2015). Prior to this decision, a district court’s claim construction ruling was reviewed de novo (from scratch) by the Federal Circuit. The Supreme Court held, by a 7-2 majority authored by Justice Breyer, that factual issues decided by a district court are to be reviewed for “clear error”, while all other aspects of a claim construction ruling continue to be reviewed de novo.
On December 15, 2014, the U.S. Patent and Trademark Office (PTO) released its updated 2014 Interim Guidance on Patent Subject Matter Eligibility (the “ Interim Eligibility Guidance”) in light of the recent Supreme Court decision in Alice Corp. v. CLS Bank (“Alice”), the Association for Molecular Pathology v. Myriad Genetics (“Myriad”) and Mayo Collaborative Serv. v. Prometheus Labs. (“Mayo”). The Interim Guidance Document states the PTO will use a two-pronged subject matter eligibility test in response to the Alice, Myriad, and Mayo decisions. This article summarizes the prongs of the test and provides some analysis about how the PTO is interpreting the language of Mayo, Myriad, and Alice under the Interim Eligibility Guidance.
DDR Holdings, LLC v. Hotels.com, L.P., Appeal No. 2013-1505 (Fed. Cir. Dec. 5, 2014)
For those following the law of patent eligibility in the United States, a December 5, 2014 precedential decision by the Court of Appeals for the Federal Circuit held that a patent on webpage-display technology is patent eligible under 35 U.S.C. § 101. A slew of recent court decisions have gone the other way, leaving arguably similar patents invalid.
In a recent decision, Versata Software, Inc. v. Callidus Software, Inc., No. 2014-1468 (Fed. Cir. Nov. 20, 2014), the Federal Circuit ordered the District of Delaware to stay district court litigation pending a covered business method (CBM) review, reversing the district court’s decision to deny the accused infringer’s motion to stay. In reversing the district court’s decision, the Federal Circuit sharply criticized what it perceived as the district court’s categorical rule that a failure to challenge all asserted claims in the CBM proceeding disfavors a stay.
On November 6, 2014, the Federal Trade Commission proposed a consent order that would settle charges against a patent assertion entity, MPHJ Technology Investments, LLC (“MPHJ”), and a law firm that represented MPHJ.
Led by Judge Richard Posner, the Seventh Circuit Court of Appeals recently refused what Posner called a “quixotic” attempt to extend copyright law. While the holding was perhaps to be expected, the opinion introduced a mystery of its own: If not copyright, what will stop today’s public-domain derivatives from sullying the eccentric detective’s hard-earned reputation?