Posts in Courts

Last Wednesday the Eastern District of Virginia issued its opinion and order on cross-motions for summary judgment in Pro-Football v. Blackhorse, the case in which the National Football League (NFL) appealed the Trademark Trial and Appeal Board’s (TTAB) precedential cancellation of the REDSKINS trademark on Lanham Act 2(a) disparagement grounds. The long and short of it is, it didn’t turn out well for the Redskins, who will almost certainly appeal the decision, which affirmed the TTAB’s 2014 cancellation.

In three related decisions (most recently including a denial of rehearing en banc by a badly divided 6-5 decision issued concurrently with reissuance of the earlier panel decision) titled In re Cuozzo Speed Technologies, the Federal Circuit has held: (1) claim construction in IPR proceedings is governed by the prosecution standard of “broadest reasonable interpretation,” rather than the adjudicatory standard applied in the district courts (i.e., claim terms have their “ordinary and customary meaning” per the 2004 Federal Circuit decision of Phillips v. AHW Corp.); and (2) the Federal Circuit lacks appellate jurisdiction to review the PTAB’s decision to institute an IPR proceeding. Whether the AIA permits appellate review of improperly instituted IPR proceedings, the Administrative Procedures Act clearly permits such appellate review.

The U.S. Supreme Court’s recent decision in Kimble v. Marvel Entertainment, LLC (2015) rejuvenates a 50-year-old rule that limits collecting patent royalties after a patent expires. On June 22, 2015, the Court upheld its per se Brulotte rule that bars a patent licensor’s collection of royalties for the use of a claimed invention beyond the expiration date of the underlying patent. The Court directly addressed criticisms of this rule, which originated in its Brulotte v. Thys Co. (1964) decision, and foreclosed any speculation about the continued viability of Brulotte’s bright-line rule in current practice.

In this issue of the Federal Circuit Review: (1) Damages for Lost Profits May Not Be Based On Extraterritorial Services Performed by an Infringer’s Customers Under § 271(f); (2) Federal Circuit Invalidates Claims Under the On-Sale Bar for Commercial Exploitation of the Invention Before the Critical Date; and (3) The PTO’s 180-Day Filing Deadline of the Optional Interim Procedure for PTA Reconsideration Request Is Not Arbitrary and Capricious.

Former Finnegan, Henderson partner Kara Stoll has been unanimously confirmed by the United States Senate for a seat on the United States Court of Appeals for the Federal Circuit. According to Politico, Stoll’s confirmation makes history because she is the first minority woman to serve on the Federal Circuit.

During the last hearing of the House Judiciary Committee there was an attempt to insert language via amendment that would make it impossible for Kyle Bass and others to challenge pharmaceutical patents via post grant challenge at the Patent Office. Judiciary Chair Congressman Bob Goodlatte (R-VA) vociferously objected saying that if the amendment to prevent post grant challenges to pharmaceutical patents passed it would create a so-called scoring problem with the Congressional Budget Office (CBO). What an admission by Goodlatte! No legislative help is coming for pharma’s post grant challenge problem because the federal government likes the idea of some patents on important drugs being invalidated, which will save Medicare money.

The Apple Pay mobile payment service created by the company should get an important security upgrade through the technology described within U.S. Patent Application No. 20150127549, which is titled Using Biometric Authentication for NFC-Based Payments. The electronic device claime includes a secure element with a payment applet and a processor which is configured to compare local authentication information for the device with stored authentication information. The processor also provides local validation information for the device to allow a payment applet to conduct a financial shopping center servicestransaction. This system relates to secure mobile payments and works without requiring a user to manually input authentication information for each transaction.

Last week the Federal Circuit scheduled oral argument en banc in THE SLANTS trademark case for the morning of October 2, 2015, taking up the question of whether §2(a) of the Lanham Act (15 U.S.C. § 1052(a)) can withstand First Amendment scrutiny. Writing separately after the panel decision, Judge Moore offered 24 pages of “additional views” on the matter, encouraging the Federal Circuit to “revisit McGinley’s holding on the constitutionality of §2(a),” noting that “the protection accorded to commercial speech has evolved significantly since the McGinley decision.”

In this issue of the Federal Circuit Review: (1) Bad Lawyering Is Not Misconduct For Awarding Attorneys Fees; (2) Continuing Applications Are not Entitled to Patent Term Adjustment for Delay in the Prosecution of the Parent Application.

Patent prosecution describes the interaction between applicants and their representatives, and a patent office with regard to a patent, or an application for a patent. (source: Wikipedia). It is a well-known term of art commonly used in the IP community. On the other hand, patent persecution describes the activities among various actors currently dismantling the US patent system, block by block. It is a recent phenomenon and seems to know no boundaries. (source: read the news!).

It is undeniable that the major destructive force in the patent system today is the United States Supreme Court. Indeed, over the last several years, the Supreme Court has become extremely active in the area of patent law. They have made decisions on a number of cases that have significantly altered the patent landscape and negatively affecting patent value. Without any legitimate statutory precedent or authority the Supreme Court is wrecking the U.S. economy just as sure as snow is white and water is wet. As a lawyer it is hard to watch the Supreme Court. I increasingly wonder how anyone could teach either patent law or constitutional law without simply acknowledging to the students that there is no rhyme or reason in the decisions of our High Court.

In this issue of the Federal Circuit Review: (1) A Patent Owner Must Show They Are Entitled to Amended Claims In an Inter Partes Review, Including in View Of All Prior Art of Record, and Known to the Patent Owner; (2) Federal Circuit Reverses Every E.D. Va. Claim Construction on Appeal in TomTom v. Adolph Mobile Tracking System Suit; and (3) Federal Circuit Overrule the “Strong Presumption” Embodied in § 112 para. 6 for Functional Limitations Expressed Without the Term “Means.”

Partners Joe Robinson and Bob Schaffer have for some time published a Federal Circuit Review Newsletter. I have been a subscriber since they started publishing that newsletter just over a year ago. I pitched Joe and Bob with the idea of publishing their weekly newsletter on IPWatchdog.com. They liked the idea. Thus, I am pleased to announce that beginning Friday, June 26, 2015, IPWatchdog.com will publish the Troutman Sanders newsletter each Friday.

There can be little doubt of the exceptional importance of Akamai Technologies, Inc. v. Limelight Networks, Inc. to the intellectual property community, and to innovators as a whole. The issue of joint infringement has been the focus of much discussion in recent years by academia, the media, and industry. In its 2014 remand of this case, the Supreme Court suggested this Court would have the opportunity to “revisit the § 271(a) question if it so chooses,” 134 S. Ct. 2111, 2120 (“Akamai III”). The AIPLA, as amicus curiae, argues that the Federal Circuit should choose to do so by rehearing the case en banc because the single entity rule as set out by the Panel majority would make it nearly impossible for certain patent holders to enforce their patents against joint infringers.

Simply stated, any patent decision from the Supreme Court that cites stare decisis lacks all intellectual credibility given how arbitrarily and capriciously they have ignored their patent own precedent and the patent statutes over the past decade. Obviously, this Supreme Court doesn’t understand the true definition of stare decisis. Given how frequently the Court disturbs well-established principles and precedent in the patent space the use of stare decisis in this case is nothing more than a complete and total cop-out. It also insults the intelligence of anyone who has even casually observed the Supreme Court on patent matters over the past decade.