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Judicial Advocacy 2014

Microsoft Corp. v. Motorola, Inc., 9th Cir., No. 14-35393, amicus brief filed 9/22/14.

AIPLA, in a September 22, 2014 amicus brief, argued to the Ninth Circuit that, absent express terms to the contrary, the calculation of patent royalties under the “reasonable and non-discriminatory” (RAND) provisions of a standards-essential patent license must be based on established principles of patent law, including the principles set out in Georgia-Pacific Corp. v. U.S. Plywood Corp., 318 F. Supp. 1116 (S.D.N.Y. 1970). While that analysis may not be the exclusive way to determine a royalty, the brief argues that courts should apply patent law principles while conforming their methodology to the objective expectations of the parties subject to the RAND commitment at issue. In any event, background principles of patent law, which provide an established and neutral framework to assess a hypothetical reasonable royalty, must inform the expectations of parties who commit to license SEPs on “reasonable” terms, according to the brief.

B&B Hardware, Inc. v. Hargis Industries, Inc., U.S., No. 13-352, amicus brief filed 9/11/2014.

AIPLA, in a September 11, 2014 amicus brief, argued to the Supreme Court that a Trademark Trial and Appeal determination of likelihood of confusion can, although only in rare circumstances, bar a district court from deciding that issue in a trademark infringement trial. The brief filed in support of neither party acknowledges that the TTAB’s consideration of likelihood of confusion does not ordinarily include marketplace usage of a mark as considered by district courts in infringement cases. However, the determination of issue preclusion, according to the brief, requires a fact-intensive inquiry into the record presented and considered by a previous tribunal and the issues to be decided in the subsequent proceeding.

Hana Financial, Inc. v. Hana Bank, U.S. No. 13-1211, amicus brief filed 9/4/2014.

AIPLA, in a September 4, 2014 amicus brief, argued to the Supreme Court that the determination of eligibility for “trademark tacking” is an issue of fact for the jury to decide, not an issue of law for a judge,  The brief, filed in support of neither party, explains that whether a trademark owner is eligible to “tack on” to its current trademark usage an earlier period of using a prior version of its mark requires a finding that the earlier and current marks are “legal equivalents,” i.e., that they create the same commercial impression on consumers. Given these circumstances, the jury, made up of consumers, is in the best position to make determinations of consumer perception, according to the brief.

Suprema, Inc. v. International Trade Commission, Fed. Cir., No. 12012-1170, amicus brief filed 8/18/2014.

AIPLA, in an August 18, 2014 amicus brief, argued to the en banc Federal Circuit that the U.S. International Trade Commission is authorized to grant relief from unfair acts of importation involving induced infringement of method patent claims in actions under Section 337 of the Tariff Act of 1930, 19 U.S.C. 1337. The case was taken for review by the en banc Court after a panel of the Court held 2-1 that the ITC was not authorized to act on the inducement charge because the acts alleged as direct infringement in support of inducement liability occurred after the articles were imported. The brief, filed in support of neither party, maintains that ITC jurisdiction over "unfair acts of importation" is not temporally restricted and that Section 337 is informed by, and not restricted by, the Patent Act.

Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.​, U.S., No. 13-854, amicus brief filed 6/20/2014.

AIPLA, in a June 20, 2014 amicus brief, argued to the Supreme Court that claim construction ultimately is an issue of law based on underlying questions of fact, and that the Federal Circuit's practice of applying de novo review across the board to claim construction should be reversed. Rather than applying a de novo standard of review exclusively or a clearly erroneous standard of review exclusively, the brief filed in support of neither party state​s that the correct approach is somewhere in between. AIPLA advocates a hybrid approach to appellate review with a clearly erroneous standard applying to matters of extrinsic evidence and de novo review applying matters of intrinsic evidence. A rule that applies this distinction is simple and clear, complies with the requirements of Fed. R. Civ. P. 52(a)(6), and preserves the paramount role of the intrinsic evidence in providing public notice of the scope of the patent.

Limelight Networks, Inc. v. Akamai Technologies, Inc.​, U.S., No. 12-786, amicus brief filed 4/1/2014.

AIPLA, in an April 1, 2014 amicus brief, argued to the Supreme Court that infringement of a method claim can be found under 35 U.S.C. §271(a) where all of the method steps are performed collectively, even if no single entity has done so.  Indirect infringement requires (1) proof of direct infringement with evidence that all steps of the claimed method were performed, no matter how many separate actors performed the separate steps, and (2) proof that the statutory terms for induced or contributory infringement are met. Requiring complete performance of claim steps by a single entity conflates infringement with liability, according to the brief.  Infringement is established with evidence that all method steps are performed, no matter how many actors performed the separate steps; liability is separately determined under traditional tort law principles of joint tortfeasance by looking at the substantiality of the named actor's participation as the proximate cause in producing the harm of infringement.

Nautilus, Inc. v. Biosig Instruments, Inc., U.S., No.​ 13-369, AIPLA amicus brief filed 3/3/2014.

AIPLA questioned the Federal Circuit’s use of shorthand phrases, such as “not capable of construction” and “insolubly ambiguous,” for the failure of a patent claim to satisfy 35 U.S.C. 112(b) by particularly pointing out and distinctly claiming what the inventor regards as his invention. The brief points out that in most instances Federal Circuit decisions on the definiteness requirement correctly state that a patent claim satisfies this requirement if its meaning is reasonably clear to a person of skill in the art, in light of the patent specification and prosecution history. However that court’s shorthand labels for the definiteness requirement may cause tribunals and litigants to erroneously focus on the mere ability to adopt a definition, rather than the clarity of the patent claim itself. The brief urged the Federal Circuit decision be vacated and remanded.

American Broadcasting Companies, Inc. v. Aereo, Inc., U.S., No.​ 13-461, AIPLA amicus brief filed 3/3/2014.

AIPLA argued that, contrary to the decision of the Second Circuit, the retransmission of broadcast television programming over the Internet to subscribers constituted an infringing public performance under the Copyright Act. The brief acknowledged the difficulty of defining the scope of the copyright owner’s public performance right, but maintained that the actions under the facts of this case are encompassed by the Copyright Act’s definition of that right as including transmissions to members of the public capable of receiving the performances at different times and places. The brief urged that the resolution of any tension between the development of new technologies and copyright policies is best left to Congress, which has demonstrated in the statute its desire to create particular exemptions to the public performance right.

POM Wonderful LLC v. The Coca-Cola Company, U.S., No.​ 12-761, AIPLA amicus brief filed 3/3/2014.

AIPLA questioned the Ninth Circuit conclusion that a defendant’s compliance with labelling regulations of the Food and Drug Administration bars a plaintiff’s claim under Section 43(a) of the Lanham Act that the label constituted false advertising. In this case, the allegedly misleading product name was “Pomegranate Blueberry Flavored Blend of 5 Juices” for juice containing only 0.3% pomegranate juice and over 99% apple and grape juice. The brief maintains that the appellate court incorrectly relied on its view that Congress intended for the FDA to comprehensively regulate food and beverage labelling, rather than determining whether a direct conflict with the rights under the Lanham Act is created by FDA regulations that were detailed and specific as to the content of the labels in question. While a Lanham Act claim may be barred where labelling regulations state express requirements or provide agency review, in the absence of that, according to the brief, there should be room for a Lanham Act challenge labelling conduct. The brief urged that the Ninth Circuit decision be vacated and remanded.

Alice Corporation Pty, Ltd. v. CLS Bank International, U.S., No.​ 13-298, AIPLA amicus brief filed 1/27/2014.

In a January 27, 2014 amicus brief, AIPLA argued to the Supreme Court that the current jurisprudence on patent eligibility under 35 U.S.C. 101 is in disarray as evidenced by the Federal Circuit's failure to agree in this case on a rationale for applying the "abstract idea" exclusion to computer implemented inventions. Noting the absence of a clear means of distinguishing a patent-ineligible abstract idea from a patent-eligible application of an abstract idea, the brief urges the Court to focus on the specific facts of each case and the features of each invention as revealed by the detail of the claim language, the specifications, and the prosecution history for the particular patent in suit. According to the brief, Supreme Court precedent in this area has rejected categorical criteria for patent eligibility and specifically disclaimed any intent to find software inherently ineligible for patent protection.​​​​​​​​​