IP Litigation | IP Law Watch

Full Federal Court Takes ‘New Aim’ at Experts: Appeal Decision Handed Down in New Aim Pty Ltd v Leung [2023] FCAFC 67

May 16 2023

The Full Court of the Federal Court of Australia handed down its appeal decision on 10 May 2023 in New Aim Pty Ltd v Leung [2023] FCAFC 67 (Appeal). A five judge panel presided over the Appeal and ultimately found in favour of the Appellant, New Aim Pty Ltd, including in relation to appeal ground 12 which contended that the primary judge erred in rejecting the entirety of the written and oral evidence of New Aim’s expert at trial, Ms Chen.

Unicolours v. H&M: Copyright Registration Validity

Jun 22 2021

On June 1, 2021, the Supreme Court granted certiorari in the ongoing case of Unicolors v. H&M Hennes & Mauritz, L.P., No. 20-915. With a nearly $1 million copyright verdict on the line, pattern manufacturer Unicolors, Inc.’s (“Unicolors”) fate is now at the Supreme Court to decide whether courts should refer copyright registration validity challenges to the Copyright Office where there is a known misrepresentation in the registration, but no evidence of intent to defraud.

A copyright registration certificate is not valid if obtained by offering false information and that information, if known, would have resulted in the registration being denied. Under 17 U.S.C. §411(b)(2), where knowingly inaccurate information is included in an application for copyright registration, “the court shall request the Register of Copyrights to advise the court whether the inaccurate information if known, would have caused the Register of Copyrights to refuse the registration.”

Sky v Skykick AG – is this the end of a claim for “computer software?”

Oct 21 2019

On 16 October 2019, Advocate General Tanchev of the CJEU has issued his opinion in Sky v SkyKick one of the most intriguing trade mark cases at the moment which will likely have a significant impact on EU trade mark law. Crucially the AG has advised that:

“registration of a trade mark for ‘computer software’ is unjustified and contrary to the public interest” because it confers on the proprietor a “monopoly of immense breadth which cannot be justified”, and it lacks sufficient clarity and precision; and
trade mark registrations made with no intention to use, in relation to the specified goods and services, may constitute bad faith.

U.S. Supreme Court Decides Two Copyright Cases and Impacts Registration Strategy for Copyright Owners

Mar 06 2019

March 4, 2019, marked the first time in over 100 years that the Supreme Court of the United States issued two copyright decisions in the same day[1] – both unanimous and both strict interpretations of statutory language. In the first of these two decisions, the Supreme Court unanimously held in Fourth Estate Public Benefit Corporation v. Wall-Street.com that copyright owners must obtain a registration from the U.S. Copyright Office prior to filing an infringement action.[2] The Court, in an opinion authored by Justice Ruth Bader Ginsburg, resolved a long-standing circuit split on whether the “application approach” (merely filing a copyright application) or the “registration approach” (obtaining a copyright registration) is sufficient to file a copyright infringement suit under § 411(a) of the Copyright Act of 1976. In the second decision, the Court in Rimini Street, Inc. v. Oracle USA, Inc. determined that “full costs” under § 505 of the Copyright Act did not authorize awarding litigation expenses beyond those specified in the general costs statute.

US: Helpful Guidance From Judge Bryson Regarding Stays Pending IPR

Mar 03 2019

Judge Bryson of the Federal Circuit, sitting by designation in the Eastern District of Texas, issued one of the clearest articulations to date in favor of granting a stay pending inter partes review.[1] Notably, in this case, claim construction had ended, discovery was nearly complete, and trial was set to begin in three months. The defendant, Samsung, had recently joined an instituted IPR covering six of the eleven asserted claims and moved to stay the district court proceeding.

Judge Bryson clearly articulated the three factors that district courts consider when analyzing whether or not to grant a stay:
1) whether the stay will unduly prejudice the non-moving party;
2) whether the proceedings had reached an advance stage, including the stage of discovery and whether a trial date is set; and
3) whether the stay will likely result in simplifying the case before the court.

After noting that the congressional intent of post-grant review before the patent office was to be a “quick and cost effective alternative[] to litigation” to provide a “faster, less costly alternative to civil litigation to challenge patents” and to be “an inexpensive substitute for district court litigation that allows key issues to be addressed by experts in the field” he proceeded to walk through the three factors.

A Modern Melody for the Music Industry: The Music Modernization Act is Now the Law of the Land

Oct 11 2018

On October 11, 2018, President Trump signed the Orrin G. Hatch-Bob Goodlatte Music Modernization Act (MMA) into law. The MMA is intended to “modernize copyright law” as applied to songwriters, music publishers, digital music providers, record labels, and others involved in the creation and distribution of music.

Emerging trends in U.S. Defend Trade Secrets Act litigation

Sep 25 2017

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.

UK to introduce new Unjustified Threats Bill across IP law

Aug 16 2017

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.

Supreme Court to Consider Constitutionality of PTAB Proceedings

Jun 14 2017

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

Coming Home?: Federal Circuit Asked To Immediately Weigh In On Proper Venue Post-TC Heartland

Jun 12 2017

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

Tag: IP Litigation