In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., the Supreme Court ruled that an inter partes review (IPR) proceeding does not violate the Constitutional right to be heard in court. But that decision did not consider whether an IPR—a procedure in effect only since September 16, 2012—could be applied to patents filed prior to that date. In fact, the Supreme Court expressly reserved that issue of “retroactive application” for a future case. That is, the Court acknowledged there is a potential controversy regarding the application of IPR to patents filed before the effective date of the IPR procedure.
So, are patents that were filed prior to September 16, 2012, subject to IPR? If not, does that mean those patents are not subject to any inter partes challenge at the PTO? Or does that mean those patents may still be subject to an inter partes reexamination, as that proceeding existed prior to September 16, 2012?
Since the Supreme Court expressly reserved this issue for future cases, and since the IPR procedure remains a popular option, it is likely the Federal Circuit will weigh in on the issue before too long. Which aspects will the Federal Circuit find compelling?
-The reliance on the pre-IPR patent system by inventors who chose not to protect their invention through trade secrets?
-Statistical data that illustrates different substantive results between inter partes reexaminations and inter partes reviews?
-The strength or weakness of the particular patents before the court?
The statute that created the IPR defines that proceeding to apply to “any patent issued before, on, or after that effective date.” Pub. L. 112-29, § 6(c)(2). But with the express reservation by the Supreme Court, will the statute—or at least the retroactive application of it—survive?
On May 14, 2018, the Supreme Court issued a landmark 6-3 ruling in favor of striking down the Professional and Amateur Sports Protection Act (“PASPA”), which came into effect in 1992. PASPA was a federal law that barred state-authorized sports gambling on baseball, basketball, football and several other sports; a few states, however, and particularly Nevada, were exempted from the law because they had approved some form of sports wagering prior to when the law was enacted.
The decision in Murphy v. Ncaa, Nos. 16-476, 16-477, 2018 U.S. LEXIS 2805 (May 14, 2018) originated in a case from New Jersey, where the state argued that PASPA violated the Tenth Amendment because it was essentially compelling states to prohibit sports wagering. Writing for the majority, Justice Alito held that “[j]ust as Congress lacks the power to order a state legislature not to enact a law authorizing sports gambling, it may not order a state legislature to refrain from enacting a law licensing sports gambling.” Id. at 40-41. With the federal ban on sports gambling lifted, states are now given the green-light to legalize sports betting if they choose. In the months leading up to the high court’s decision – and assuming that PASPA would be struck down – various research firms estimated that at least 30 different states would likely offer sports betting within the next five years.
Public Domain Day, January 1 in the U.S., marks the end of term of copyright protection for all copyrights expiring within the year. For the last 20 years, however, Public Domain Day in the U.S. has been largely uneventful, as there has been an effective freeze on copyright expiration since 1998. January 1, 2019 will be the first Public Domain Day since then that copyrighted works see their expiration and transition into the public domain in the U.S.
Grumpy Cat Limited, owner of copyrights and trademarks pertaining to the cat named Tardar Sauce (which gained notoriety for its permanent scowl shown in popular memes), licensed certain limited rights to Grenade Beverage in relation to its "Grumppuccino" iced coffee. After Grenade Beverage allegedly breached and exceeded the scope of the agreement by selling "Grumppuccino" t-shirts and other coffee products, Grumpy Cat Limited filed suit in the United States District Court for the Central District of California.
After three years of litigation, a jury ultimately found in favor of Grumpy Cat Limited -- with Tardar Sauce actually making an appearance at one point during the trial -- and awarded $710,000.00 in damages for trademark and copyright infringement. David Jonelis, lawyer for Grumpy Cat Limited, was quoted saying that it was "the first verdict ever rendered in favor of a viral meme," and that "memes have rights too."
David Zindel has filed a lawsuit in the Central District of California against Fox, director Guillermo Del Toro, and others, for copyright infringement of a play penned by his father in 1969 titled Let Me Hear You Whisper, regarding the recent movieThe Shape of Water . Spoilers follow the break.
The term “substantially similar” causes plenty of confusion in copyright infringement cases. Beyond the amorphous nature of the term, itself, courts use this language with subtly different meanings when evaluating the separate prongs of the test for infringement: (1) copying, and (2) misappropriation. It’s not enough to merely copy; to be liable for infringement, the defendant must take elements of a work that are original. Copying can be demonstrated by circumstantial evidence of access to the plaintiff’s work and substantial similarity of the defendant’s work, calling for only a probative level of similarity to support a factual conclusion of copying. However, the second prong, misappropriation, requires a qualitative analysis of the plaintiff’s work to determine the scope of copyright protection, which in turn yields a sliding, legal standard for infringement, i.e., whether the accused work is similar in terms of copying a substantial amount of protectable expression. The Ninth Circuit recently took that to the extreme in Sophia & Chloe v. Brighton Collectibles, a case involving jewelry as a sculptural work. Because Sophia & Chloe’s “Buddha Kiss” earrings were deemed to be so minimally original, and thus entitled to narrow copyright protection, the panel ruled that the proper standard for the misappropriation prong was “virtually identical” rather than “substantial similarity,” thereby re-invigorating a legal test most often used in the past for obscure cases involving multiple listing services and other content of limited creativity. In copyright litigation, the various meanings of substantially similar are definitely not virtually identical.
While many federal agencies are currently furloughed, the U.S. Patent and Trademark Office (“USPTO”) has announced that it will be able to maintain regular operations for a few weeks due to excess revenue from last year’s fee collections. Should the USPTO exhaust its reserve funds, the agency will officially shut down but maintain a small staff to accept new applications and maintain information-technology (“IT”) infrastructure. There is no comment at this time on whether outstanding USPTO deadlines would be extended in the event of a closure, but the Firm will continue to monitor the USPTO’s status and advise clients accordingly.
One measure of damages for patent infringement is compensation for lost profits of the patent owner. Additionally, a patent owner may enjoin the export of parts of a patented invention from the United States, if the parts will be assembled or used for an infringing purpose. However, the Supreme Court is set to answer the question of whether lost profits may be awarded to the patent owner for service contracts, performed outside the U.S., making use of those parts exported from the U.S. in the case of WesternGeco LLC v. ION Geophysical Corp. If the answer is affirmative, then the scope of damages available to a patent owner may be drastically expanded -- up to USD $93 Million in WesternGeco's case.