The U.S. Supreme Court will consider if the U.S. Patent and Trademark Office’s (USPTO) refusal to register the trademark “Trump too small” violates the Free Speech Clause of the First Amendment.
Read MoreOn July 25, 2017, the United States Patent and Trademark Office (USPTO) issued Patent Eligible Subject Matter: Report on Views and Recommendations From the Public (Report). The Report summarizes public comments on the state of subject matter eligibility law. Comments came from varied sources including industry, private practice, academia, trade associations, inventors, and small business.
After beginning with an overview of eligibility law in the U.S. and abroad, the Report summarizes the comments supportive and critical of the Supreme Court’s Bilski, Mayo, Myriad, and Alice decisions regarding subject matter eligibility. It polls opinions from the two most-impacted technology sectors, and reviews recommendations on how to move forward.
The U.S. Supreme Court unanimously decided Sandoz Inc., v. Amgen Inc., on Monday June 12, 2017, construing the Biologics Price Competition and Innovation Act (BPCIA). The Court held: (1) that the patent dance is not enforceable by injunction under Federal law, and (2) that a biosimilar applicant’s 180-day “notice of commercial marketing” can be provided before FDA approval. (See Sandoz Inc. v. Amgen Inc., Nos. 15-1039 and 15-1195, slip op. and our IP Alert Sandoz v. Amgen—Biosimilars at the Supreme Court—Oral Argument.)
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
By: John Cotter and Shamus Hyland
Under the U.S. Copyright Act, a “useful article” such as a chair, a dress, or a uniform may obtain copyright protection, but only for elements that “can be identified separately from, and are capable of existing independently of, the utilitarian aspects of the article.” 17 U.S.C. § 101. For apparel, this generally means that the overall design of a garment is not protected by copyright, but certain ornamental features (such as a pattern woven into the fabric) may be protectable. In practice, the Copyright Act protects fabric designs, not dress designs. Recently, the U.S. Supreme Court decided to tackle this uncertain area, granting certiorari in Star Athletica, LLC v. Varsity Brands, Inc. In that case, the Sixth Circuit Court of Appeals ruled 2 – 1 that the design features of Varsity Brands’ cheerleader uniform (e.g. “stripes, chevrons, color blocks, and zigzags”) were separable from the utilitarian aspects of the uniform, and thus eligible for copyright protection. Varsity Brands, Inc. v. Star Athletica, LLC, 799 F.3d 468 (6th Cir. 2015).
The majority opinion identified nine specific approaches plus hybrids that various courts and the Copyright Office have formulated over the years to analyze how copyrightable design features can be separated from utilitarian elements, and the extent to which design features can achieve copyright protection. Id. at 484-87. The majority then employed its own hybrid five-part test grounded in the text of the Copyright Act, finding that the designs at issue played no role in the overall function of the article as a cheerleading uniform. The majority broadly defined the function of a cheerleading uniform: “to cover the body, permit free movement, and wick moisture.” Id. at 492. The dissent, meanwhile, took a more “particularized” view of the function of the uniform. Id. at 496. It pointed out that the design elements at issue do serve a utilitarian function because they identify the wearer as a cheerleader and should therefore be afforded no protection under the Copyright Act. Id.
The dissent in Varsity Brands characterized the law of copyright protection for design elements of useful articles as “a mess.” Id. at 496-97. The consequences of this mess are significant for businesses with stakes in garment design. As the dissent observed, clarity is needed to alleviate the courts’ confusion and protect business interests. Id. The Supreme Court now has an opportunity to spell out a more consistent approach to the “metaphysical quandary” of design-functionality in garment copyright protection. Ideally, the Court will clarify the boundaries of copyright protection, and specify the appropriate factors for courts to weigh when separating expressive elements from utilitarian functions. Star Athletica’s opening brief is due around late June, and we will continue to monitor this case.
By Briony Pollard and Serena Totino
Designers will be disappointed by the recent Supreme Court decision in the long running Trunki (suit) case between Magmatic and PMS International, which finally put to bed whether surface decoration could and should form part of the global comparison test when assessing infringement of a Registered Community Design (RCD).
In 2013 Magmatic Ltd., manufacturer of ‘Trunki’, the ride-on suitcases for children, attempted to enforce its RCD against PMS International Group plc, importer and seller of the ‘Kiddee case’ in the UK and Germany.
Both Trunki and Kiddee cases are designed to look like animals, both have four wheels, a clasp at the front and a saddle-shaped top making the cases easy for children to ride on. The differences between the cases are largely limited to colour and the ‘protuberances’, which look like horns in the Trunki case and antennae or ears in the Kiddee case.
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