by Christopher H. Blaszkowski & Shayne D. Rasay In United States v. Arthrex, Inc., 594 U.S. ___ (2021), the Supreme Court determined that the authority exercised by Administrative Patent Judges (APJs) in rendering inter partes review (IPR) decisions as members of the Patent Trial and Appeal Board (PTAB) violates the Appointments Clause of the Constitution. […]
Written by: Rex A. Donnelly On June 30, 2020, the U.S. Supreme Court issued an 8-1 opinion finding “Booking.com” is not generic for online hotel-reservation services, expressly declining to adopt a per se rule urged by the United States Patent and Trademark Office (USPTO) that would have essentially excluded registration of all “[generic term].com” marks. […]
Written by: Benjamin E. Leace In a 9-0 decision, the Supreme Court held that a plaintiff is not required to prove a defendant willfully infringed a trademark as a prerequisite to a court awarding lost profits damages. Romag Fasteners, Inc. v. Fossil, Inc., 590 U. S. ____ (2020). Romag is a trademark dispute involving Fossil […]
Written by: Brett J. Rosen On April 27, 2020, the U.S. Patent and Trademark Office (PTO) announced that it denied an Applicant’s request to recognize an Artificial Intelligence (AI) computer program named “DABUS – Invention Generated by Artificial Intelligence” as an inventor on a pending U.S. patent application. A copy of the decision can be […]
Written by: Benjamin E. Leace The Supreme Court in a 7 -2 decision held that a decision by the PTAB on whether an inter partes review (IPR) is time-barred is NOT reviewable by the courts. THRYV, INC. v. CLICK-TO-CALL TECHNOLOGIES, LP. 590 U.S. ____ (2020). In other words, the PTAB’s decision to institute an IPR […]
Written by: Shayne D. Rasay In Peter v. NantKwest, Inc., the Supreme Court established a bright-line rule that the United States Patent and Trademark Office (PTO) may not recover legal personnel fees as “expenses” under 35 U.S.C. § 145. The language referencing “expenses” in § 145 states that “[a]ll the expenses of the proceedings shall […]
Written by: Andrew J. Koopman With its latest application of Alice precedent, the Federal Circuit affirmed the invalidation of claims covering methods for manufacturing propshafts in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC. The Court’s ruling is the latest in a line of recent cases upholding judicial exceptions to subject matter eligibility in the face […]
Written by: Rex. A Donnelly Following on its decision two terms ago that the Lanham Act’s bar on the registration of “disparaging” trademarks violated the First Amendment (Matal v. Tam, 582 U. S. ___ (2017)), the Supreme Court has now struck the related bar on registration of “immoral or scandalous” trademarks. Both bars infringe the […]
Written by. Rex A. Donnelly The Supreme Court’s May 20 decision in Mission Product Holdings, Inc. v. Tempnology, LLC resolved a dispute among the circuits and may have had some trademark licensees breathing a sigh of relief – no longer will a debtor-in-possession-licensor’s rejection of a license agreement terminate all rights of the licensee to […]
Written by: Benjamin E. Leace & Christopher H. Blaszkowski On May 7, 2019, Patent Trial and Appeal Board (PTAB) designated multiple decisions as precedential and informative. Each of the newly designated decisions described below relate to the PTAB’s inherent authority under 35 U.S.C. § 325(d) and 35 U.S.C. § 314(a) to deny institution even where […]
