Charles R. Macedo

On November 21, 2024, Cody Allen Easterday filed a Petition for Rehearing En Banc in Cody Allen Easterday v. Tyson Fresh Meats Inc., No. 23-3836, (link here). Easterday’s case involves a timely and important issue regarding his name, photograph, and likeness rights (commonly referred to as name, image, and likeness “NIL” rights). Specifically, the Panel (at the Ninth Circuit) erred in barring  Easterday from presenting NIL claims involving trespass on his rights as recently as six months before the action was filed, based on a misreading of the statute of limitations law that Washington state would apply.

On October 21, 2024, Island Intellectual Property LLC (Island) filed a Petition for Certiorari to the Supreme Court in Island Intellectual Property LLC v. TD Ameritrade, Inc. This case exemplifies two dangerous trends in patent cases. First, district courts in patent cases are granting summary judgment while ignoring factual disputes and/or weighing evidentiary disputes against non-movants, thus depriving parties of their right to a jury trial under the Seventh Amendment.  Rather than police this inappropriate summary judgment procedure, the Federal Circuit, on appeal, has either ignored or encouraged a special patent case procedure in manner that in effect makes it so that Rule 56 seems not to apply like it would in other civil litigation. Second, as proved to be the case in Island, the Federal Circuit is making matters worse by summarily affirming in single-word affirmances without any further guidance.

The Magistrate Judge in his report and recommendation invalidated Claim 1 of U.S. Patent No. 7,509,286 (“’286 Patent”), with a cursory analysis on summary judgment, failing to provide an Alice Step 2 analysis or any analysis at all of the over 1,400 pages of evidence supporting the unconventional, non-routine, and inventive aspects of claim.  The District Court then adopted the Magistrate Judge’s report, after erroneously characterizing the briefing by Island, with a statement merely commenting that all Island’s evidence was “unavailing,” and no more. On appeal, the Federal Circuit failed to cure any of these deficiencies, instead issuing an order under Federal Circuit Rule 36 simply stating “affirmed” and nothing more. This case is thus a poster child of how patent cases are increasingly deviating from the norms of civil procedure.

On April 9, the New York Intellectual Property Law Association (NYIPLA) filed an amicus brief in Ericsson Inc. v. Samsung Electronics Co., Ltd., No. 2021-1565, urging a panel of the U.S. Court of Appeals for the Federal Circuit to balance U.S. interests in adjudicating U.S. patent rights against the rule of comity, with respect to an order by a Chinese court restricting the litigation of certain U.S. patents in U.S. courts. Senator Thom Tillis (R-NC), Judge Paul Michel and former U.S. Patent and Trademark Office (USPTO) Director Andrei Iancu also filed an amicus brief in the case on the same day in support of Ericsson…. Although the NYIPLA did not take a position on the exact scope and content of Judge Gilstrap’s order, it filed an amicus brief to highlight our country’s “strong policy interest in allowing U.S. patent rights to be adjudicated in U.S. courts” and to point out that “[a]llowing China to exercise exclusive dominion over U.S. patent rights and royalty rates and to preclude enforcement of U.S. patent rights within the United States would cause a severe reduction in the value of U.S. patents and jeopardize the very underpinnings of the U.S. patent system.”

The U.S. Supreme Court has agreed to hear, on March 1, 2021, whether administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are “inferior” officers properly appointed under the Appointments Clause of the U.S. Constitution (U.S. Const., art. II, § 2, cl. 2), and, if not, whether the “fix” by the Federal Circuit in Arthrex v. Smith & Nephew, 941 F.3d 1320 (Fed. Cir. 2019) worked. On February 25, 2021, the New York Intellectual Property Law Association (NYIPLA), will be presenting a special webinar titled “Getting Ready for Arthrex Oral Arguments,” which will summarize the issues presented and include presentations by representative amici on their respective positions.