A split Supreme Court has decided that, under a plain reading of the Copyright Act, a party alleging copyright infringement may obtain damages for the entire damages period, so long as the suit itself is timely brought....more
5/15/2024
/ Appeals ,
Copyright ,
Copyright Infringement ,
Copyright Litigation ,
Damages ,
Discovery Rule ,
Intellectual Property Litigation ,
Intellectual Property Protection ,
Music Industry ,
SCOTUS ,
Statute of Limitations ,
The Copyright Act ,
Warner Chappell Music v Nealy
On June 30, 2020, the US Supreme Court held that a “generic.com” mark (a generic term in combination with “.com”) could be eligible for federal trademark registration, refusing to adopt the US Patent and Trademark Office’s...more
7/1/2020
/ Acquired Distinctiveness ,
Appeals ,
Booking.com ,
Domain Name Registration ,
Domain Names ,
Generic Marks ,
Lanham Act ,
SCOTUS ,
Trademark Registration ,
Trademark Trial and Appeal Board ,
Trademarks ,
United States Patent and Trademark Office v Booking.com BV ,
USPTO
On May 14, 2020, in a unanimous opinion authored by Justice Sotomayor, the US Supreme Court overturned the “defense preclusion” doctrine proposed by the Second Circuit, upholding the requirement that preclusion of a defense...more
5/19/2020
/ Claim Preclusion ,
Collateral Estoppel ,
Counterclaims ,
Defense Preclusion ,
Fashion Branding ,
Issue Preclusion ,
Lucky Brand Dungarees v Marcel Fashion Group ,
Motion to Dismiss ,
Release Agreements ,
Remand ,
Res Judicata ,
SCOTUS ,
Split of Authority ,
Subsequent Litigation ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Vacated
On April 23, 2020, the U.S. Supreme Court unanimously clarified that the Lanham Act does not require a showing of willful trademark infringement as a statutory prerequisite for a plaintiff to recover a defendant’s profits...more
4/29/2020
/ § 1125(a) ,
§ 1125(c) ,
Appeals ,
Burden of Proof ,
Charge-Filing Preconditions ,
Compensatory Awards ,
Dilution ,
Lanham Act ,
Lost Profits ,
Remand ,
Remedies ,
Romag Fasteners v Fossil ,
SCOTUS ,
Trademark Infringement ,
Trademark Litigation ,
Trademarks ,
Vacated ,
Willful Infringement
On June 24, 2019, the US Supreme Court clarified that the Lanham Act’s bar on “immoral” or “scandalous” trademarks violates the First Amendment because it discriminates based on viewpoint. The decision followed the Supreme...more
6/26/2019
/ Appeals ,
Constitutional Challenges ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Reaffirmation ,
Reversal ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Viewpoint Discrimination
On May 20, 2019, the US Supreme Court clarified that when a trademark licensor rejects a trademark license agreement in a Chapter 11 bankruptcy proceeding, the rejection does not rescind the use rights of the licensee under...more
6/24/2019
/ Bankruptcy Appellate Panel (BAP) ,
Bankruptcy Code ,
Breach of Contract ,
Chapter 11 ,
Commercial Bankruptcy ,
Debtors ,
Exclusions ,
Executory Contracts ,
IP License ,
Mission Product Holdings Inc v Tempnology LLC ,
Rescission ,
Reversal ,
SCOTUS ,
Section 365 ,
Split of Authority ,
Trademark Licenses ,
Trademarks ,
Trustees
On June 10, the US Supreme Court ruled 6-31 that the Federal Government is not a “person” entitled to institute post-grant proceedings - inter partes review, post-grant review, or covered business method review (CBM review) -...more
It has been a big week for copyright cases, and it’s only Wednesday. This Monday, the Supreme Court issued opinions on two copyright cases pending before it from the October 2018 term. ...more
3/7/2019
/ Appeals ,
Copyright ,
Copyright Exhaustion ,
Copyright Infringement ,
Copyright Litigation ,
Copyright Registration ,
Damages ,
Expert Fees ,
Fourth Estate Public Benefit Corp v Wall-Street.com LLC ,
Judicial Discretion ,
Litigation Fees & Costs ,
Prevailing Party ,
Remedies ,
Rimini Street Inc v Oracle USA Inc ,
SCOTUS ,
Split of Authority ,
The Copyright Act ,
Uniformity
On June 22, 2018, the US Supreme Court clarified the scope of permissible patent damages awards by holding that when a party is found liable under
35 U.S.C. § 271(f) for exporting components of a patented invention, foreign...more
6/26/2018
/ 35 U.S.C. § 271(f)(2) ,
Appeals ,
Component Parts Doctrine ,
Damages ,
Domestic Injury ,
Exports ,
Extraterritoriality Rules ,
Foreign Profits ,
Foreign Sales ,
Lost Profits ,
Patent Act ,
Patent Infringement ,
Patent Litigation ,
Patents ,
SCOTUS ,
WesternGeco LLC v Ion Geophysical Corporation
On April 24, 2018, the US Supreme Court decided two important cases that directly impact inter partes reviews (IPRs) before the Patent Trial and Appeal Board (PTAB), and patent litigation as a whole. In Oil States Energy...more
4/30/2018
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Chevron Deference ,
Constitutional Challenges ,
Estoppel ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Litigation ,
Patent Ownership ,
Patent Trial and Appeal Board ,
Patents ,
Post-Grant Review ,
Public Rights Doctrine ,
SAS Institute Inc. v Iancu ,
SCOTUS ,
Seventh Amendment ,
USPTO
When the US Supreme Court decision in TC Heartland was published, many patent practitioners thought that the decision would adversely affect the Eastern District of Texas, a popular venue for patentees because of its quick...more
7/13/2017
/ Corporate Counsel ,
Forum Shopping ,
Patent Infringement ,
Patent Litigation ,
Personal Jurisdiction ,
Principal Place of Business ,
Raytheon ,
SCOTUS ,
State of Incorporation ,
TC Heartland LLC v Kraft Foods ,
Venue
On June 19, 2017, the US Supreme Court in Matal v. Tam unanimously affirmed a decision by the US Court of Appeals for the Federal Circuit that Section 2(a) of the Lanham Act, which precludes “disparaging” trademark...more
On May 22, 2017, the US Supreme Court unanimously rejected prior case law allowing patent holders to rely on the general venue statute, 28 U.S.C. § 1391(c), to file suit where a domestic defendant makes sales. TC Heartland,...more
5/24/2017
/ Domestic Corporations ,
Foreign Corporations ,
Forum Shopping ,
Non-Practicing Entities ,
Patent Infringement ,
Patent Litigation ,
Personal Jurisdiction ,
Principal Place of Business ,
SCOTUS ,
TC Heartland LLC v Kraft Foods ,
Venue
On March 21, 2017, the U.S. Supreme Court issued a 7-1 decision in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, wiping out the equitable defense of laches in some patent cases. In particular, where patent...more
The US Supreme Court held in Life Techs. Corp. v. Promega Corp., Slip No. 14-1538 (Feb. 22, 2017) that supplying a single component of a multi-component invention manufactured abroad does not give rise to patent infringement...more
In a case reversing a $399 million damages award to Apple, the U.S. Supreme Court has held unanimously that an “article of manufacture” under the design patent damages statute can be anything from an entire product to a...more
12/9/2016
/ Apple v Samsung ,
Article of Manufacture ,
Calculation of Damages ,
Component Parts Doctrine ,
Design Patent ,
Patent Infringement ,
Popular ,
Remand ,
Reversal ,
SCOTUS ,
Smartphones
On June 20, the U.S. Supreme Court’s decision in Cuozzo Speed Technologies, LLC v. Lee, 2016 WL 3369425 (June 20, 2016) upheld the Patent Office’s long-held policy of construing a patent claim according to its broadest...more
6/22/2016
/ America Invents Act ,
Broadest Reasonable Interpretation Standard ,
Chevron Deference ,
Chevron v NRDC ,
Claim Construction ,
Cuozzo Speed Technologies ,
Cuozzo Speed Technologies v Lee ,
Inter Partes Review (IPR) Proceeding ,
Patent Litigation ,
Patent Trial and Appeal Board ,
SCOTUS ,
USPTO
On June 16, the U.S. Supreme Court’s decision in Kirtsaeng v. John Wiley & Sons Inc., No. 15-375, resolved a circuit court split by reaffirming the test district courts should use to determine whether to award attorney’s fees...more
On June 13, the U.S. Supreme Court unanimously rejected the Federal Circuit’s rigid two-part test for awarding enhanced damages in patent cases. In two cases decided together, Halo Elecs., Inc. v. Pulse Elecs., Inc., and...more
6/15/2016
/ 35 U.S.C. § 284 ,
Enhanced Damages ,
Halo v Pulse ,
Judicial Discretion ,
Octane Fitness v. ICON ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Preponderance of the Evidence ,
SCOTUS ,
Seagate ,
Stryker v Zimmer ,
Willful Infringement
The U.S. Supreme Court, in a 6 to 3 ruling citing stare decisis, upheld the half-century rule against royalty payments accruing after expiration of a patent. The Court’s decision in Kimble v. Marvel Entertainment, LLC is a...more
6/24/2015
/ Brulotte ,
Expiration Date ,
Kimble v Marvel Enterprises ,
License Agreements ,
Patent Expiration ,
Patent Infringement ,
Patent Royalties ,
Patents ,
Royalties ,
SCOTUS ,
Settlement Agreements ,
Stare Decisis
In its first substantive trademark ruling in more than a decade, the U.S. Supreme Court unanimously held on January 21, in Hana Financial, Inc. v. Hana Bank et al., No. 13-1211, that tacking – which is whether two trademarks...more
On January 20, the U.S. Supreme Court, in Teva Pharmaceuticals USA, Inc. v. Sandoz, rejected the de novo review standard applied by the U.S. Court of Appeals for the Federal Circuit when reviewing all claim construction...more
1/22/2015
/ Claim Construction ,
Clear Error Standard ,
De Novo Standard of Review ,
Intellectual Property Litigation ,
Patent Litigation ,
Patents ,
Pharmaceutical Industry ,
Prescription Drugs ,
SCOTUS ,
Standard of Review ,
Teva Pharmaceuticals ,
Teva v Sandoz
On June 2, a unanimous U.S. Supreme Court held in Nautilus Inc. v. Biosig Instruments Inc. that a patent claim may be found indefinite if it fails to convey the scope of the invention “with reasonable certainty” to a person...more
On June 2, 2014, a unanimous U.S. Supreme Court held in Limelight Networks, Inc. v. Akamai Technologies, Inc. that direct infringement by a single party is a prerequisite to a finding of induced infringement. In doing so, the...more
In twin unanimous opinions issued yesterday, the U.S. Supreme Court has rejected long-standing Federal Circuit rules governing the award of attorneys’ fees to the prevailing party in patent litigation, and appellate review of...more