This week, the U.S. Court of Appeals for the Ninth Circuit joined a majority of appellate courts that have rejected rigid tests for attorneys’-fees awards in favor of flexible discretion at the district court level. The Ninth Circuit’s pre-Octane Fitness rulings provided a safe-harbor for litigants: fees were only to be awarded in instances of “malicious, fraudulent, deliberate or willful” infringement or where a frivolous case was brought or maintained in bad faith. That standard has been discarded and replaced by a different, more general test that asks whether the case stands out in terms of its strength or unreasonableness in the way it was litigated.
In Federal Trade Commission v. LeadClick Media, LLC, 2016 U.S. App. LEXIS 17383 (2nd Cir. 2016), the Second Circuit recently held that an affiliate marketing network provider could be subjected to liability under the Federal Trade Commission Act (“FTC Act”) for deceptive marketing materials published by the affiliates. It also concluded that Section 230 of the Communications Decency Act (“CDA”) did not immunize the network provider from liability. In doing so, the Second Circuit emphasized that the network provider had knowledge of and the authority to control the content of the affiliate websites. This ruling could increase the exposure of internet businesses to liability for deceptive acts or practices engaged in by third-party vendors or independent contractors.
The Supreme Court agreed on September 29 to consider whether a provision of the Lanham Act that allows the USPTO to refuse to register “disparaging” trademarks violates the constitutional right to free speech. The case is Lee v. Tam (Docket No. 15-1293).
Patent attorneys are often asked the question: “Is my idea patentable?” Often the idea is related to software or business methods. Well-known business methods include Amazon’s “1-click shopping” and Priceline’s “reverse auction.” In the new digital economy, innovative software and business method models have given rise to new very successful companies such as LinkedIn, Uber, and Airbnb. As important software and business method inventions are in the new digital economy, it is often unclear whether they can be patented. This uncertainty is largely due to a legal rule that “abstract ideas” are not eligible for patent protection. This rule originates from a long line of U.S. Supreme Court cases, with Alice Corporation v. CLS Bank International, decided in June of 2014, being the most recent and influential of these cases. The basic rationale for the rule is a concern over so-called “preemption” of abstract ideas. That is to say abstract ideas are the basic building blocks of science and industry, and allowing patents to monopolize abstract ideas can preempt the use of such basic building blocks.
The Federal Circuit overturned a District Court ruling that a patent directed to automated lip synchronization and manipulation of animated characters’ facial expressions was invalid under Section 101 as being an abstract idea. The patent disclosed that this automation is accomplished through rules that aim to produce more realistic speech by taking into consideration the differences in mouth positions for similar phonemes based on context.
Does your company’s wholly-owned subsidiary own trademarks in its own name? Has your company acquired any companies that own trademarks? If so, your company’s use of those trademarks will not prevent cancellation of those trademark registrations unless you have proper trademark license agreements in place. This is exactly what happened to Floorco Enterprises, LLC’s NOBLE HOUSE trademark registration. In a precedential decision, the Trademark Trial and Appeal Board (“TTAB”) cancelled Floorco’s trademark registration because only Floorco’s parent company was using the trademark and there was no trademark license agreement in place between Floorco and its parent company.
Although some version of the Uniform Trade Secrets Act (“UTSA”) has widely been adopted by most states, including California, variations among the versions and related judicial interpretation has led to uncertainty—particularly in today’s interstate economy where trade secrets and misappropriation easily may cross multiple states.
This week, the United States Patent and Trademark Office (USPTO) announced1 the Post-Prosecution Pilot Program (“P3”) for applicants to respond to a final rejection in a utility patent application. Under the P3, an applicant may participate in a conference with a panel of three examiners to review the applicant’s response to a final rejection. To obtain entry into the pilot, an applicant must submit:
In response to President Obama’s National Cancer Moonshot initiative to eliminate cancer, the USPTO has launched the “Cancer Immunotherapy Pilot Program.” The Pilot Program provides an accelerated review for applications related to cancer immunotherapy and is set to launch in July 2016. According to the USPTO, this initiative:
Pharmaceutical and biotech companies breathed a sigh of relief Monday when the Federal Circuit unanimously ruled in a precedential opinion that the mere sale of manufacturing services to create embodiments of a patented product is not a “commercial sale” of the invention that triggers the on-sale bar of 35 U.S.C. § 102(b) (pre-AIA). The en banc opinion in The Medicines Company v. Hospira Inc., Case No. 14-1469 (Fed. Cir. July 11, 2016) considerably mitigates patent law’s disparate treatment of inventors who rely upon contract manufacturing organizations (CMOs) and an those who manufacture in-house.