AIPLA Direct is an exclusive online information service that delivers substantive, to the point, and useful information to all AIPLA members. Substance, clarity, and brevity are the hallmarks of this newsletter. Cases, rulemaking, legislation, and industry developments are carefully distilled and reported.

 

 

  • Minerva-6-9-21-logo Supreme Court Rules to Keep the Doctrine of Assignor Estoppel in Minerva v. Hologic

    June 29, 2021

    On June 29, 2021, the U.S. Supreme Court ruled to keep the doctrine of assignor estoppel, but with limits on its application. This ruling is consistent with the amicus brief filed by AIPLA on March 1, 2021.
  • Arthrex-Direct-logo Supreme Court Reverses and Vacates Federal Circuit in United States v. Arthrex, Inc.

    June 21, 2021

    On June 21, 2021, the U.S. Supreme Court reversed and vacated the Federal Circuit decision, dividing 5-4 on the judgment in United States v. Arthrex, Inc. In this majority opinion, the Supreme Court held that the unreviewable authority wielded by Administrative Patent Judges (APJs) during inter partes review is constitutionally incompatible with their appointment by the Secretary of Commerce to an inferior office.
  • GoogleVOracle Supreme Court Overturns Oracle Copyright Win Regarding Programming Code, Holds Fair Use

    April 5, 2021

    On April 5, 2021, the US Supreme Court overturned Oracle’s copyright win over Google, holding that Google’s use of Oracle’s programming code from the Java SE Application Programming Interface (API) in their Android platform was a fair use and did not violate copyright laws. The Court determined that Google’s use of only the code that was needed to allow programmers to work in a new and transformative program was a fair use of that material. Writing for a 6-2 majority, Justice Breyer declined to address the first question on copyrightability and instead resolved the case focusing on the question of fair use by referencing the four guiding factors in the Copyright Act’s fair use provision. Justice Thomas filed a dissenting opinion that the ruling bypasses the question of whether the software code is protected by the Copyright Act. AIPLA filed an amicus brief in this case on January 13, 2020.
  • Supreme Court Supreme Court Will Decide If PTAB Violates Appointments Clause

    October 13, 2020

    On October 13, 2020, the Supreme Court agreed to decide whether the Patent Trial and Appeal Board, as created by the AIA, violates the Appointments Clause in Article II of the Constitution. The Court granted certiorari in three consolidated cases (United States v. Arthrex, Inc., et al. 19-1434; Smith & Nephew, Inc., et al. v. Arthrex, Inc., et al., 19-1452; and Arthrex, Inc., v. Smith & Nephew, Inc., et al., 19-1458), but limited its review to two specific questions
  • Direct Live Senator Coons AIPLA Q&A with Senator Chris Coons

    August 4, 2020

    In this edition of AIPLA Direct Live, AIPLA President Barbara A. Fiacco asks the Honorable Chris Coons, United States Senator from Delaware, about the state of the intellectual property landscape.
  • Senator Tillis 2020 Web AIPLA Q&A with Senator Thom Tillis

    July 1, 2020

    Senator Tillis speaks on his tenure as Chairman of the Senate Judiciary IP Subcommittee, the need for strong intellectual property protection, Section 101 reform, DMCA review, oversight over the USPTO and the Copyright Office, and more.
  • Booking-400x200 SCOTUS Rules That Addition of “.com” to a Generic Term Can Create a Trademark

    June 30, 2020

    On June 30, 2020, the U.S. Supreme Court held that the addition of “.com” to a generic term can create a protectable trademark, affirming a decision by the U.S. Court of Appeals for the Fourth Circuit. United States Patent and Trademark Office v. Booking.com B.V., U.S., No. 19-46. In doing so, the Court rejected the United States Patent and Trademark Office's (USPTO) "nearly per se rule" that when a generic term is combined with a generic top-level domain the resulting combination is generic.
  • Jeans Supreme Court Dismisses ‘Defense Preclusion’ in Designer Jeans Trademark Fight

    May 14, 2020

    On May 14, 2020, the US Supreme Court reversed and remanded the US Court of Appeals for the Second Circuit's decision in Marcel Fashions Grp., Inc. v. Lucky Brand Dungarees, Inc., et al. No. 2017-0361, (2nd. Cir.), ruling that federal preclusion principles do not bar Lucky Brand Dungarees, Inc. (Lucky Brand) from raising a defense it failed to litigate in an earlier suit between it and Marcel Fashions Group, Inc. (Marcel).
  • PublicResource-400 Georgia Loses Annotated Code Copyright Battle at Supreme Court

    April 27, 2020

    Copyright protection does not extend to works produced by judges or legislators in the course of their official duties, the United States Supreme Court held on April 27, 2020. Georgia v. Public.Resource.Org, Inc., U.S., 18-1150.
  • Handbag v1 Supreme Court Finds Willfulness Not Required for Trademark Profit Award

    April 23, 2020

    On April 23, 2020, the United States Supreme Court vacated and remanded the US Court of Appeals for the Federal Circuit's decision in Romag Fasteners, Inc. v. Fossil, Inc., No. 2018-2417 (Fed. Cir. 2019), ruling that a plaintiff is not required to show that a defendant willfully infringed the plaintiff’s trademark as a precondition to a profits award.
  • Time Bar Supreme Court Says PTAB’s Time Bar Decisions Not Appealable

    April 20, 2020

    The United States Supreme Court on April 20, 2020, held that 35 U.S.C. § 314(d), which states that the Patent Trial and Appeal Board's (PTAB) decision to institute an inter partes review (IPR) is nonappealable, also precludes judicial review of a time bar determination under 35 U.S.C. § 315(b).
  • American Rule v1 Supreme Court Says Government Can't Recoup Attorney's Fees When Defending § 145 Actions

    December 11, 2019

    The United States Patent and Trademark Office (USPTO) cannot recover the pro rata salaries of its legal personnel under § 145 of the Patent Act, the Supreme Court held December 11, 2019. Peter vs. NantKwest, Inc., U.S., No. 18-801, 12/11/19.
  • FUCT Supreme Court Finds Bar on Scandalous or Immoral Trademarks Unconstitutional

    June 25, 2019

    On June 24, 2019, the Supreme Court upheld the Federal Circuit's decision in In re Brunetti, 877 F.3d 1330 (Fed. Cir. 2017), ruling that the Lanham Act provision which bars the registration of “immoral[ ] or scandalous” trademarks violates the First Amendment. Iancu v. Brunetti, No. 18-302, 6/24/2019.
  • Supreme Court Says Government Can't Challenge Patents Through AIA Proceedings

    June 11, 2019

  • USPTO Scott Boalick Named PTAB Chief Judge

    March 13, 2019

    The USPTO has appointed Scott R. Boalick as Chief Judge for the Patent Trial and Appeal Board (PTAB).
  • Helsinn Helsinn: Supreme Court Rules That AIA Did Not Change On-Sale Doctrine

    January 23, 2019

    The Supreme Court held that the America Invents Act (AIA) did not change the on-sale doctrine, affirming the decision of the Federal Circuit.
  • USPTO Crest USPTO Announces Revised Guidance on Sections 101 and 112

    January 4, 2019

    The United States Patent and Trademark Office (USPTO) on January 4, 2019, announced newly revised 35 U.S.C. § 101 guidance for use by USPTO personnel in evaluating subject matter eligibility. The USPTO also announced guidance on the application of 35 U.S.C. § 112 to computer-implemented inventions.
  • USPTO Issues Final Rule on Claim Construction Standard USPTO Issues Final Rule on Claim Construction Standard

    October 11, 2018

    The final rule replaces the "broadest reasonable interpretation" standard with the federal court claim construction standard, also known as the Phillips standard, that is used to construe a claim in a civil action under 35 U.S.C. § 282(b).
  • David Ruschke to Become Senior Advisor to Patents

    September 2, 2018

    USPTO Patent Trial and Appeal Board (PTAB) Chief Judge David P. Ruschke is stepping down from his current role on September 2, 2018, to accept a new position as Senior Advisor to Patents, according to the USPTO.
  • Fees ​USPTO May Not Collect Attorneys’ Fees in Section 145 Actions​

    July 30, 2018

    The U.S. Patent and Trademark Office is not entitled to an award of attorneys' fees under the statutory language in 35 U.S.C. 145 stating that "[a]ll the expenses of the proceedings shall be paid by the applicant," the en banc Federal Circuit held July 27, 2018 in a 7-4 decision. Nantkwest, Inc. v. Iancu, Fed. Cir., No. 16-1794, 7/27/2018.
AIPLA Direct is the proprietary material of the American Intellectual Property Law Association and may not be copied, distributed, or posted on the Internet without permission. The reports are provided to AIPLA members as an Association benefit and are meant to encourage non-members to join the Association. Authorization to make copies of selected material may be obtained by sending requests to Meghan Donohoe, Chief Operating Officer, at mdonohoe@aipla.org.