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Judicial Advocacy 2016
Lee v. TAM, U.S., No. 15-1293, amicus brief filed 11/18/2016.
The Lanham Act ban on registering a mark that “may disparage” is unconstitutionally vague under the 5th Amendment and violates the First Amendment as applied to “The Slants” name for a band of Asian musicians, AIPLA argued to the Supreme Court in a November 18, 2016 amicus brief. This part of Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), according to the brief, fails to satisfy the due process requirements of clarity in the law, as demonstrated by a long list of contradictory rulings as to what marks may or may not disparage. Alternatively, the brief contends that the provision’s application in this case violated the applicant’s First Amendment right by conditioning the important right of trademark registration on the government’s disapproval of a mark that “reclaims” a derogatory term as an expression of a viewpoint about racism against Asian Americans.
In re Aqua Products, Inc., Fed. Cir., No. 2015-1177, amicus brief filed 10/4/2016.
The right of a patent owner to amend its patent claims in an inter partes review proceedings is improperly limited by the PTAB requirement that the patent owner bear the burden of persuasion that the amended claims are patentable, AIPLA argued to the en banc Federal Circuit in an amicus brief filed October 4, 2016. The requirement conflicts with the required at 35 U.S.C. §316(e) that “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” However, the PTAB properly imposes on a patentee a limited burden of production under 37 C.F.R. 41.121(a)(2) that the offered amendment “responds” to the ground of unpatentability, does not enlarge the scope of the claims, and does not introduce new matter.
Life Technologies Corp v. Promega Corp, U.S. No. 14-1538, amicus brief filed 9/8/2016.
Patent infringement liability under 35 U.S.C. §271(f)(1) for supplying a “substantial portion of the components” of the invention may be established by supplying a single component that is crucially important to a multi-component invention, AIPLA argued to the Supreme Court in a brief filed September 8, 2016. According to the brief, a quantitative-only approach to § 271(f)(1) could not only create liability for an accused infringer who supplies multiple but relatively unimportant components, but could also excuse one who supplies a single, “substantial,” and indispensable component. While the statutory language and legislative history support a primarily qualitative analysis, the number of supplied components may well be an important consideration. However, the determination of whether supplied component(s) are a “substantial portion of the components of a patented invention” should be assessed based on the importance of the supplied components to the overall invention as determined by considering the disclosure of the specification.
Samsung Electronics Co., Ltd. v. Apple, Inc., U.S., No. 15-777, amicus brief filed 8/4/2016.
The plain language and legislative history of 35 U.S.C. 289 demonstrates that Congress has provided design patent owners with an infringement remedy of the infringer's profits that is based on the total, unapportioned revenue from sales of the entire article of manufacture, AIPLA argued August 4, 2016, in a Supreme Court amicus brief. Congress over the years has made different decisions on recovering an infringer’s profits with respect to utility patents (repealed in 1946), trademarks (granted in 1946, placing the apportionment burden on the infringer), and copyrights (granted in 1976, placing the apportionment burden on the infringer), the brief noted. However, Congress has not moved away from its grant to design patent owners of the right to recover an infringer’s total, unapportioned profits, according to the brief.
Star Athletica, L.L.C. v. Varsity Brands, Inc., U.S., No. 15-866, amicus brief filed 7/22/2016.
Any test of copyrightability for features contained in a utilitarian work must first determine whether the work contains pictorial, graphic or sculptural elements, and if so, whether they can be identified separately from and exist independently of the unprotectable utilitarian features of the work, AIPLA argued July 22, 2016, in a Supreme Court amicus brief. While various separability tests may be well-suited to particular works under consideration, according to the brief, the statutory scheme focuses on whether pictorial, graphic or sculptural elements remain copyrightable when incorporated into an unprotectable utilitarian design. The brief argues that many of the separability tests (including the Sixth Circuit test) inappropriately gives more attention to the utility of the work than to the presence of copyrightable elements, and specifically criticizes the use of marketability as a test of copyrightability.
SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, U.S., No. 15-927, amicus brief filed 7/22/2016.
A laches defense may not be raised against a claim for damages based on patent infringement occurring within the six-year limitations period of 35 U.S.C. 286, AIPLA argued to the Supreme Court in a July 22, 2016 amicus brief. According to the brief, this rule should be applied to patent law for the same reasons it was applied to copyright law in Petrella v. Metro-Goldwyn Mayer, Inc., 134 S.Ct. 1962 (2014). As stated in Petrella, where Congress has enacted a specific limitations period in which a legal claim of damages may be asserted, the equitable defense of laches may not override such clear congressional intent. While a substantial delay that prejudices a defendant may warrant barring equitable relief, laches cannot bar all relief for infringing acts during the six-year limitations period.
Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., Fed. Cir., No. 16-1284 and -1787, amicus brief filed 5/2/2016.
The America Invents Act amendment to 35 U.S.C. §102(a)(1), adding the list of patent-barring events the phrase “or otherwise available to the public,” imposes a public-availability requirement to the on-sale bar, AIPLA argued to the Federal Circuit in a May 2, 2016 amicus brief. According to the brief, eliminating a secret sale from that list is consistent with the purpose of encouraging prompt filing and discouraging extensions of period of exclusivity and with the legislative goals of increasing objectivity, predictability, simplicity, and transparency in the acquisition and enforcement of patent rights.
Kirtsaeng v. John Wiley & Sons, Inc., U.S., No. 15-375, amicus brief filed 3/7/2016.
Copyright attorneys' fees, under 17 U.S.C. 505, should be awarded to prevailing parties under a totality of the circumstances test, guided by such considerations as objective reasonableness, frivolousness, motivation, and the need to consider compensation and deterrence, AIPLA argued to the Supreme Court in a March 7, 2016 amicus brief. As in Octane Fitness , LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749 (2014), no single factor, such as the objective reasonableness of the losing party's position, should be determinative of the fee decision.
Cuozzo Speed Technologies, LLC v. Lee, U.S., No. 15-446, amicus brief filed 3/7/2016.
The Federal Circuit erred in endorsing the PTAB’s use of the broadest reasonable interpretation (BRI) standard for claim construction in AIA trial proceedings, AIPLA argued to the Supreme Court in a March 7, 2016 amicus brief. The BRI standard was specially crafted for examinational proceedings, not for the adjudicative proceedings created by the AIA. Congress intended those adjudicative proceedings to be an efficient alternative to district court trials, according to the brief, and they should follow the Phillips/Markman standard for claim construction used in district courts. The amicus brief also argued that the Federal Circuit incorrectly bars appellate consideration of issues raised in the PTAB final written decision when those issues were also addressed in the PTAB decision to institute the AIA trial. The Court’s misinterpretation of the bar on appeals at 35 U.S.C. §314(d) conflicts with the presumption of judicial review of executive branch actions.
The Medicines Company v. Hospira Inc., Fed. Cir., No. 2014-1469,-1504, amicus brief filed 1/19/2016.
A transaction between an inventor and its supplier to produce the claimed invention is not a commercial offer for sale, and therefore does not trigger the on-sale bar to patentability under 35 U.S.C. §102(b)(pre-AIA), AIPLA argued to the en banc Federal Circuit in a January 19, 2016 amicus brief. “[T]his Court has applied the on-sale bar to supplier-to-inventor transactions involving activities that would not result in a patent-barring event if performed in-house by the inventor,” the brief states. “The application of the on-sale bar should not turn on whether inventors need or choose to commercially contract with third parties to develop or produce their inventions.” AIPLA urged the court to overrule Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353 (Fed. Cir. 2013) to that it is necessary to recognize that a supplier transaction falls outside of the on-sale bar.
Judicial Advocacy 2015
Cuozzo Speed Technologies, LLC v. Lee, U.S., No. 15-446, amicus brief filed 11/9/2015.
AIPLA, in a November 9, 2015 amicus brief, urged the Supreme Court to grant certiorari in Cuozzo Speed Technologies, LLC v. Lee to address the proper standard for patent claim construction used by the Patent Trial and Appeal Board (PTAB) in post-grant trials under the Leahy-Smith America Invents Act (AIA). According to the brief, the post-grant trials were established to be “an inexpensive alternative to testing patent validity in district court.” The brief points out that Congress intended those trials be adjudications that following the district court manner of interpreting patent claims under Phillips v. AWH Corporation, 415 F.3d 1303 (Fed. Cir. 2005)(en banc), rather than the examination standard of the “broadest reasonable interpretation” currently used by the PTAB. The brief also argues that use of differing standards may result in inconsistent claim constructions in simultaneous proceedings on the same patent and, effectively negates the presumption of patent validity.
Halo Electronics, Inc. v. Pulse Electronics, Inc., and Stryker Corporation v. Zimmer, Inc., (consolidated cases), U.S., Nos. 14-1513 and 14-1520, amicus brief filed 12/16/2015.
AIPLA, in a December 16, 2015 amicus brief, argued to the Supreme Court that it should adopt a subjective bad faith standard for willful patent infringement. The brief argues that it is well settled that proof of willfulness is required for an award of enhanced damages against patent infringers. Although the standard of In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007), was meant to curtail excessive claims and findings of willful infringement, that standard goes too far, allowing blameworthy conduct to go unpunished. The standard for willfulness should be predictable enough to ensure consistent application by the lower courts, and a subjective bad faith standard is more consistent with Supreme Court precedent and the purpose of enhanced damages, the brief concluded.
Akamai Technologies, Inc. v. Limelight Networks, Inc., Fed. Cir., No. 2009-1372, amicus brief filed 6/24/2015.
AIPLA, in a June 24, 2015 amicus brief, argued to the Federal Circuit that it should grant en banc review of the Court’s panel decision that 35 U.S.C. 271(a) incorporates no joint tortfeasor principles for joint infringement, and that indirect infringement liability must be based on direct infringement by a single entity. According to the brief, the panel decision is at odds with the plain language of the Patent Act; continues conflicts and tensions with longstanding common law concepts of joint tortfeasor liability; and creates a gaping loophole in infringement liability. The brief contended that the single entity rule would make it nearly impossible for certain method patent holders to enforce their patents against joint infringers, permitting evasion of patent rights and the development of business models designed to misappropriate the patented methods of others.
Lexmark International, Inc. v. Impression Products, Inc., Fed. Cir., No. 2014-1617, amicus brief filed 6/5/2015.
AIPLA, in a June 5, 2015 amicus brief, argued to the en banc Federal Circuit that the Supreme Court decisions in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351 (2012), and Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617 (2008), require no change to the Federal Circuit law of patent exhaustion and conditional sales. The brief explains that Kirtsaeng, which interprets a copyright statute setting out the rights of an owner of a copy under the copyright “first sale” doctrine, is not controlling of the longstanding patent exhaustion doctrine set out in Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094 (Fed. Cir. 2001). It further explains that Quanta, which found that sale limitations in a Master Agreement rather than in a patent license failed to avoid patent exhaustion, was a case-specific application of the rules of conditional sales set out in Mallinckrodt, Inc. v. Medipart, Inc., 976 F.2d 700 (Fed. Cir. 1992).
Belmora LL v. Bayer Consumer Care AG, 4th Cir., No. 15-1335, amicus brief filed 6/2/2015.
AIPLA argued in an amicus brief to the Fourth Circuit that the “well known marks” doctrine is encompassed in the Lanham Act. Specifically, the brief maintains that a foreign owner of a well-known mark has Lanham Act standing in U.S. courts and in the U.S. Patent and Trademark Office to protect its mark from consumer confusion in the United States, even though it has not used its mark in the United States. According to the brief, the Lanham Act permits any person damaged by commercial acts of misrepresentation or false association to obtain the relief provided by the statute, and such harm satisfies the traditional requirements of standing under U.S law.
SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, Fed. Cir., No. 2013-1564, amicus brief filed 3/10/2015.
AIPLA, in a March 10, 2015 amicus brief, argued to the en banc Federal Circuit that the rules on laches in patent cases, as stated in A.C. Aukerman Co. v R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992), should be overruled in response to the Supreme Court's decision in Petrella v. Metro-Goldwyn-Mayer, 1354 S. Ct. 1962 (2014). Petrella recognized a copyright plaintiff’s “right to sue” during the statutorily provided period for commencing civil actions under 17 U.S.C. § 507(b). Aukerman conflicts with that decision in holding that laches can bar a claim for damages based on patent infringement occurring within the six-year limitations period established by 35 U.S.C. § 286. Despite their differences, both statutes provide a fixed time for seeking damages which laches cannot curtail.
Kimble v. Marvel Enterprises, Inc., U.S. No. 13-720, amicus brief filed 2/4/2015.
AIPLA, in a February 4, 2015 amicus brief, argued to the Supreme Court that it should not overturn the per se rule in Brulotte v. Thys Co. against patent license requirements for royalty payments for uses of the claimed invention after the patent expires. Although the decision has been widely criticized, those criticisms are based on an overreading of the opinion as an antitrust decision rather as an application of a fundamental principal of patent policy that patent exclusivity is limited in time. The per se unenforceability of license provisions requiring royalties for post-expiration uses is a clear rule that reduces uncertainties about what royalty practices are permitted and which are not. According to the brief, Brulotte is critical to limiting a patent holder’s ability to extend its exclusive rights beyond the congressionally-mandated patent term.
Commil USA, LLC v. Cisco Systems, Inc., U.S. No. 13-896, amicus brief filed 1/27/15.
AIPLA, in a January 27, 2015 amicus brief, argued to the Supreme Court that a defendant’s belief of invalidity should not be a defense to induced infringement under Section 271(b) of the Patent Act. The brief, filed in support of neither party, contended that infringement and validity are separate and distinct concepts, and there is no basis in either the statute or the legislative history for considering a belief about patent validity in determining a violation of Section 271(b). Doing so, according to the brief, will result in unexpected consequences with respect to the law of infringement and will erode Section 271(b)’s effectiveness.
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 states 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.