U.S. Congress created the first statutory private federal cause of action for trade secret misappropriation when it enacted the Defend Trade Secrets Act (DTSA) on May 11, 2016. Now, more than a year since its enactment, the DTSA is being shaped and interpreted by various federal court decisions and enforcement trends are emerging.
It’s game, set, match for Adidas when it comes to the protectable trade dress in its iconic Stan Smith tennis shoe. In a dispute between Adidas and Skechers over the “Skecherizing” of the Stan Smith shoe, the District Court for the District of Oregon denied Skechers’ motion for summary judgment finding that Adidas could show it has protectable trade dress in its well-known shoe design because the design was recognizable to consumers and not functional. Adidas America Inc. et al. v. Skechers USA Inc., D. Or (August 3, 2017) (order granting in part and denying in part motion for summary judgment).
The United Kingdom’s new Intellectual Property (Unjustified Threats) Act 2017 (the Act) was recently granted royal assent and is set to come into force in October 2017. The Act should make it easier to advise clients, avoid litigation and facilitate the negotiation of settlements by outlining what types of threats are unjustified. The Act will also harmonise the UK law on unjustified threats across patents, trade marks and design rights.
Currently, the law allows those accused of infringing intellectual property to sue for damages if threats of legal action against them are revealed to be groundless. This can lead to rights-holders becoming wary of challenging perceived threats to their intellectual property because they do not want to risk their threats being perceived as groundless and, as a result, do not exercise full protection of their intellectual property rights.
On June 12, 2017, the U.S. Supreme Court granted Oil States Energy Services, LLC’s petition for a writ of certiorari to address the following question: “Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.” The Supreme Court declined to grant certiorari on Oil States’ remaining two questions presented, relating to amendment procedures and claim construction.
Oil States’ argument is that patents are private property rights that can only be revoked by an Article III court, not by an Article I agency. In particular, Oil States urges the Supreme Court to overturn the Federal Circuit’s decision in MCM Portfolio LLC v. Hewlett-Packard Co., which held that patents are public rights and that “Congress has the power to delegate disputes over public rights to non-Article III courts.”[1] The Federal Circuit has already upheld the constitutionality of the PTO’s ex parte reexamination process in Patlex Corp. v. Mossinghoff.[2] In doing so, consistent with MCM, the Federal Circuit affirmed the power of an Article I agency to adjudicate the validity of an issued patent in the first instance.[3]
The Supreme Court previously rejected three other petitions challenging the constitutionality of Patent Trial and Appeal Board (“PTAB”) proceedings. And, as recently as last month, the same issue was presented for en banc review to the Federal Circuit, which declined to review in a 10–2 vote.[4] Accordingly, this case will present the first opportunity for the Supreme Court to consider the constitutionality of the immensely popular post-grant proceedings put in place by the America Invents Act. The case also presents interesting issues regarding a patentee’s right to a jury trial under the Seventh Amendment.
Updates to this alert will be provided as they become available.
[1] 812 F.3d 1284, 1289 (Fed. Cir. 2015). [2] 758 F.2d 594 (Fed. Cir. 1985). [3] Id. at 604. [4] Cascades Projection LLC v. Epson Am., Inc., No. 2017-1517, slip op. at 2 (Fed. Cir. May 10, 2017).By: Jason Engel, Devon Beane and Erik Halverson
This legal alert is a follow-up to “Coming Home?: Federal Circuit Asked to Immediately Weigh in on Proper Venue Post-TC Heartland,” available here.
On the morning of June 9, 2017, the defendants in Cobalt Boats, LLC v. Sea Ray Boats, Inc., filed their Mandamus Petition seeking immediate review of the district court’s decision to deny their request to transfer venue. [1] The defendants also renewed their emergency motion to stay the proceedings pending Federal Circuit review. The Federal Circuit denied both requests late in the afternoon the same day. The Federal Circuit did not weigh in on any of the substantive issues regarding waiver of venue challenges, but rather determined that mandamus relief was not the appropriate recourse in this instance. [2]
As with the previous denial of the defendants’ emergency motion to stay, Judge Newman dissented from the opinion. Judge Newman again reiterated that “[t]here is little doubt that the Court’s decision in TC Heartland LLC v. Kraft Foods Grp. Brands LLC, No. 16-341, 2017 WL 2216934 (U.S. May 22, 2017), was a change in the law of venue . . .” [3] Judge Newman also opined that the case presented exceptional circumstances warranting mandamus review because “if the trial commences next Monday as scheduled, the landscape will have changed dramatically—without a stay, the event will be over, and an opportunity for this court to determine whether the district court’s decision was in compliance with the venue requirements revived by TC Heartland may have harsh consequences.” [4]
The district court in the underlying litigation is set to begin trial today.
Notes:
[1] No. 15-cv-21 (E.D. Va.).
[2] In re Sea Ray Boats, Inc., No. 17-124, Dkt. No. 15 at 2 (Fed. Cir. June 9, 2017).
[3] Id. at 5 (Newman, J., dissenting).
[4] Id.
By: Jason Engel and Devon Beane
In a case pending in the Eastern District of Virginia, set to start trial on June 12, 2017, the defendants filed a motion to transfer the case to the Eastern District of Tennessee following the Supreme Court’s decision in TC Heartland LLC v. Kraft Foods Group Brands LLC, No. 16-341, 2017 WL 2216934 (U.S. May 22, 2017). The district court ordered expedited briefing on the issue and ultimately determined that the defendants had waived their right to challenge venue. In particular, according to the district court, “TC Heartland does not qualify for the intervening law exception to waiver because it merely affirms the viability of Fourco [Glass Co. v. Transmirra Products Corp., 353 U.S. 222, 226 (1957)].” Cobalt Boats, LLC v. Sea Ray Boats, Inc., No. 15-cv-21, Opinion & Order at 6 (E.D. Va. June 7, 2017).
Because trial is just around the corner for these defendants, they filed an emergency motion to stay the district court case with the Federal Circuit to allow time to file a Petition for Writ of Mandamus (“Mandamus Petition”). On June 8, 2017, the Federal Circuit denied the motion without prejudice to refiling if defendants filed the Mandamus Petition. Interestingly, however, Judge Newman dissented from the denial, stating unequivocally that TC Heartland “was a change in the law of venue.” In re: Sea Ray Boats, Inc., No. 17-124, Dkt. No. 4 at 3 (Fed. Cir. June 8, 2017) (Newman, J., dissenting). Judge Newman explained that “[t]he processes of law are designed not for the convenience of judges, but as safeguards to litigants and warders of justice.” Id. at 4. Because the change in law “bring[s] the propriety of the current venue directly into question,” Judge Newman believed a stay of the underlying trial was appropriate. Id.
On the morning of June 9, 2017, the defendants filed their Mandamus Petition and renewed their emergency motion to stay the trial.
Updates to this alert will be provided as they become available.
By: Jason Engel and Devon Curtis Beane
The Charging Bull has been an iconic New York City landmark since it was placed outside the New York Stock Exchange in December 1989 in an act of guerrilla art. Despite initially being removed, the statue’s popularity caused it to be relocated to Bowling Green days later, where it has since remained, on loan to the New York City Council. Earlier this year, on the eve of International Women’s Day, Charging Bull was joined at Bowling Green by a second guerrilla-art installation, sculptor Kristen Visbal’s four foot statue titled Fearless Girl, who stares defiantly at the Charging Bull.
The artist behind the Charging Bull, Artutro Di Modica, claims that the placement of Fearless Girl is an insult to the Charging Bull and that her placement is ‘attacking the bull’. The competing interests of the artists raise interesting questions in intellectual property law, specifically regarding Di Modica’s ‘moral rights’. Does the Fearless Girl have reason to fear impending intellectual property litigation? Or will the Charging Bull have to accept the new kid on the block?
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By: Sophie Taylor
K&L Gates has prepared the first edition of Patent and Plant Breeder’s Rights Year in Review which examines the significant judgments, development and events effecting patents and plant breeder’s rights in Australia.
The Review looks at a number of cases over the year including the Australian High Court’s decision in D’Arcy v Myriad Genetics Inc in the biotech industry, whether an Australian affiliate of an international pharma company was an exclusive licensee and whether it had standing to sue, and the Productivity Commission’s “IP Arrangements” Inquiry Report plus other updates. Click here for the summary or click here for the ePublication.
By: Simone Mitchell, Veg Tran, Michael Christie, Alex Dunlop, Jillian Lim, Jamie Wolbers and Jessica Mandla
In its first design patent case in over a century, the Supreme Court on Tuesday, December 6, 2016, reversed a damages award Apple Inc. (“Apple”) had won over Samsung Electronics Co., Ltd. (“Samsung”) in their protracted patent battle. The design patents at issue were directed to certain elements of Apple’s iPhone. The Court focused its attention on the meaning of the term “article of manufacture,” suggesting that the Federal Circuit’s definition, which encompassed the entire phone, might be too broad. Instead, the Court determined that “article of manufacture” could be limited to a particular component of a product, regardless of whether that component is severable (or sold separately) from the product as a whole. Declining to decide how much money Apple was entitled to under this new interpretation, the Court remanded the case to the Federal Circuit for further proceedings.
The Federal Circuit’s recent decision in Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., addressed the effect of the Supreme Court’s decision in Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), on the issue of whether termination of instituted inter partes review (“IPR”) proceedings based on a failure to meet the statutory filing requirements for a petition (namely, to identify all real parties-in-interest) would be barred from review by 35 U.S.C. § 314(d). The Court found that Cuozzo did not disturb Federal Circuit precedent as to the § 314(d) bar on review for reconsiderations of institution decisions.
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