ARCHIVES

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.

Read More

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).

Read More

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. 

Read More

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.”

Read More

“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.

Read More

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

Read More

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).  

Read More

Supreme Court Holds States Are Immune From Copyright Suits
March 24, 2020

In a unanimous decision issued on March 23, 2020, the Supreme Court held that Congress’ attempt to strip states of their sovereign immunity from copyright infringement suits “lacked a valid constitutional basis.”  (Slip Op. at 1.)  Justice Kagan’s opinion in Allen v. Cooper, 589 U.S. ___ (2020), follows closely the Court’s prior decision in Florida Prepaid Postsecondary Ed. Expense Bd. V. College Savings Bank, 527 U.S. 627 (1999).  That case held that Congress’ parallel attempt to abrogate sovereign immunity in the patent context was also unconstitutional.

Read More

Browsewrap Agreements — Ninth Circuit Requires Mobile App Terms of Service to Be Conspicuously Displayed
March 23, 2020

A “browsewrap” agreement is one in which assent to the terms of use of an Internet service is inferred from the user’s continued use of the service in question.  Browsewrap agreements can be distinguished from “clickwrap” agreements, in which the user is required to click a link or check a box affirming agreement to the terms before using the service.

Read More

American Axle: Another Section 101 Decision Divides the Federal Circuit
February 15, 2020

In American Axle & Manufacturing, Inc., v. Neapco Holdings, LLC (Fed. Cir. Oct. 3, 2019), a split Federal Circuit panel affirmed the district court’s grant of summary judgment holding claims from plaintiff’s patent ineligible under § 101.  Even among the many post-Alice Federal Circuit decisions that have fractured the court, American Axle stands out for several reasons.  Some background on the technology at issue helps to illustrate why. 

Read More