ARCHIVES

Patent Owner’s Freedom of Speech to Communicate with Alleged Infringers Is Protected Unless Made in Bad Faith and “Objectively Baseless”
May 12, 2020

In Myco Industries, Inc. v, BlephEx, LLC (Case No. 2019-2374, April 3, 2020), the Federal Circuit held that a patent owner has a First Amendment right to communicate with alleged infringers, unless such communications are objectively baseless and made in bad faith.

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The Federal Circuit Clarifies Standard for Removal Where a Last-Minute Patent Issue Arises in a State Court Trade Secrets Case
May 4, 2020

In a case decided earlier last month, the Federal Circuit addressed the always difficult issue of when patent issues raised as part of the proof of claims that otherwise sound in state law are sufficiently preponderant to justify removal.  Intellisoft, Ltd. et al. v. Acer America Corporation, et al., 2020 WL 1647241 (Fed. Cir. April 3, 2020).

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Supreme Court Holds that Official Annotations of Georgia’s Code are Not Copyrightable
April 27, 2020

In a 5-4 decision published on April 27, 2020, the U.S. Supreme Court held in Georgia, et al., Petitioners v. Public.Resource.Org, Inc. that copyright protection does not extend to the annotations contained in Georgia’s official annotated code.  Chief Justice Roberts delivered the Court’s opinion, which Sotomayor, Kagan, Gorsuch and Kavanaugh joined.  Thomas dissented (with Alito joining and Breyer joining in part), as did Ginsberg (with Breyer joining).

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Justices Open the Door for Profit Awards Absent a Showing of Willfulness
April 23, 2020

Resolving a circuit split, on April 23, 2020, in Romag Fasteners, Inc. v. Fossil, Inc. a unanimous U.S. Supreme Court held that a trademark plaintiff need not prove that the defendant acted willfully to obtain a profits award, overruling what was settled law in the Second Circuit.

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SDNY Won’t Let Photographer Renege on Granting Instagram a Sub-licensable License
April 23, 2020

In a concise, well-reasoned decision published on April 13, 2020, Judge Kimba Wood of the Southern District of New York dismissed a photographer’s claim that digital media website Mashable infringed her copyright by embedding her Instagram post on its website.  See Sinclair v. Ziff Davis LLC,  18-cv-790 (KHM) (SDNY).

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Federal Circuit Addresses When the Petitioner in An IPR Proceeding Can Submit New Evidence in Replying to the Patent Owner’s Response
April 21, 2020

The USPTO’s Patent Trial Practice Guide (“Practice Guide”) states that, during an AIA trial proceeding, a petitioner may file a reply to a patent owner’s response.  (See Practice Guide, Section II(I).)  But the Practice Guide puts limits on what the petitioner may argue in its reply. 

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Court Holds that California’s Litigation Privilege Protects False Reporting to Amazon of Counterfeiting Allegations
April 16, 2020

Does California’s litigation privilege protect false reporting to Amazon of counterfeiting allegations that led to the removal of a competing seller from the Amazon.com platform?  Does the litigation privilege apply even if the reports were malicious, intentional, and made in bad faith?  In a recent decision in TP Link USA Corp. v. Careful Shopper LLC et al., 8:19-cv-0082 (C.D.C.A.), U.S. District Judge Josephine L. Staton answered “yes.”

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“Reasonable Certainty” Does Not Require That Infringement Necessarily Be Knowable in Advance for Definiteness
April 15, 2020

In 2014, the Supreme Court strengthened the requirement for patent claims to be definite.  It held that claims, interpreted in light of the specification and prosecution history, must “inform those skilled in the art about the scope of the invention with reasonable certainty.”  Nautilus, Inc. v. Biosig Instruments, Inc. 572 U.S. 898, 910 (2014).  Last week, in Nevro Corp. v. Boston Scientific Corporation, 2020 WL 1802794 (Fed. Cir. 2020), the Federal Circuit clarified the outer boundaries of that requirement.

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The Fourth Circuit Joins the Sixth in Approving Discovery in Aid of International Arbitration Tribunals Pursuant to 17 U.S.C. § 1782
April 13, 2020

Last September in In Re: Application To Obtain Discovery For Use In Foreign Proceedings, Abdul Latif Jameel Transp. Co. v. FedEx Corp., et al, 939 F.3d 710 (6th Cir. 2019), the Sixth Circuit became the first U.S. Court of Appeals to decide that Section 28 U.S.C. § 1782 enables parties to seek assistance with discovery for use in a private commercial arbitration

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5Pointz Revisited: Castillo v. G&M Realty LP
March 26, 2020

Headlines emphasized the $6.75 million dollar damages award in the Second Circuit’s recent decision in Castillo v. G&M Realty LP.  However, the primary significance of the case is that it establishes a test that is highly deferential to experts for when a work of visual art has achieved “recognized stature” — and thus merits protection from destruction under the Visual Artists Rights Act (“VARA,” 17 U.S.C. § 106A).  

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