By: Andrew Homer *| Guest Writer

The Supreme Court recently ruled that the United States Patent and Trademark Office (USPTO) cannot deny the registration of a trademark because some may find the mark disparaging or offensive. The case that led to the ruling, Matal v. Tam, upended a 70-year-old tradition of federal trademark law found in 15 U.S.C. §1052 (a) and commonly named the disparagement clause. The Court holding that the disparagement clause is unconstitutional will have broad reaching effects to other aspects of intellectual property law and the nature of the corporation.

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By: Katherine Escalante*| Staff Writer

On March 21, 2017, the Supreme Court heard oral arguments in Lexmark International, Inc. v. Impression Products, Inc. relating to the doctrine of patent exhaustion. While the opinion is not yet available, the Supreme Court’s decision is expected to become a pivotal decision on the application of the patent exhaustion doctrine. The Supreme Court will review the Federal Circuit’s en banc decision finding: “(1) the first sale doctrine does not apply to patented articles sold subject to restrictions . . .; and (2) the first sale doctrine does not apply to patented articles sold outside of the United States.”

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By: Katherine Escalante*| Staff Writer

Many questions are looming with the recent passing of the bill in the United States House of Representatives (“House”) aimed at ending agencies’ judicial deference in promulgating rules.  The Regulatory Accountability Act was passed by the House on January 11, 2017.  If passed by the Senate, the bill would legislatively repeal the Chevron deference doctrine that gives deference to federal agencies interpretations when evaluating federal rules and regulations.  A principle that has been the foundation of judicial review of statutory interpretation by administrative proceedings since 1984.  The name comes from a Supreme Court case, Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc., in which the Court held that deference would be given to agency interpretations, unless the interpretation was found unreasonable.  Continue reading »

By: Hunt Harris*| Staff Writer 

Back in December of 2015, Samsung agreed to pay Apple $548 million in damages stemming from a 2011 lawsuit filed by Apple.  In the lawsuit, Apple argued that Samsung infringed on three design patents that represent the essence of the iPhone.  Design patents are meant to protect items whose design is central to the product.  As part of the deal, Samsung and Apple agreed to withdraw all patent lawsuits outside of the United States. Samsung also reserved the right to reclaim the funds if the verdict is subsequently overturned.  In March of this year, the Supreme Court agreed to hear an appeal from Samsung over the appropriate amount of damages to be paid to Apple. Continue reading »

By: Valerie Mock* | Summer Guest Writer

In April of 2010, Justin Bieber released “Somebody to Love,” an upbeat urban pop song that peaked at number 15 on the Billboard Hot 100 and earned a Platinum certification from the Recording Industry Association of America (RIAA).  The track received positive critical reception from industry standards like Rolling Stone, and was so popular that Bieber eventually re-recorded the song with his superstar mentor, Usher, for distribution both as a remix and as part of Usher’s 2010 EP “Versus.”

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By: Tyler S. Hood* | Staff Writer

On September 17, the federal circuit decided Apple, Inc. v. Samsung Electronics Co., Ltd., the latest patent case decision in a protracted series of smartphone patent infringement battles between the two electronics giants.  The case concerned Samsung’s alleged infringement on a few Apple smartphone patents, perhaps most notably the patent for the swipe-to-unlock feature. The District Court had ruled that Samsung had infringed on the Apple patents in question, but the court denied to issue a permanent injunction on the grounds that Apple  failed to demonstrate that the infringement resulted in irreparable harm.

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By: John S. Sears* | Summer Guest Writer

Is it “pharmaceutical innovation” or “product hopping”?  The distinction is not always clear.  While pharmaceutical innovation brings new and improved pharmaceuticals to patients, the term “product hopping” refers to a tactic by which brand name pharmaceutical companies try to obstruct generic competition by making modest reformulations that offer little or no therapeutic advantages.  Such approaches are contrary to section 2 of the Sherman Act that makes it an offense to “monopolize, or attempt to monopolize … any part of the trade or commerce among the several States.” Continue reading »

By: John S. Sears* | Summer Guest Writer

Despite recent years having witnessed the most extensive overhaul of U.S. patent law since the U.S.  Patent Act of 1952, it is clear more reform of U.S. patent law is on the horizon.  I recently had the privilege of leading a panel discussion on patent reform legislation at a meeting of university technology transfer professionals. Some proposals in the 114^th Congress could have significant impacts on university tech-transfer practice, but for now I want to give a more general summary of the bills making their way through Congress

There are three bills in the 114^th Congress considered “comprehensive” patent reform legislations, including major revisions such as to how we handle post-grant review proceedings, pleading requirements, demand letter practice, discovery, and willful infringement.  These include the Innovation Act (HR.9) and the corresponding Protecting American Talent and Entrepreneurship (PATENT) Act of 2015 (S1137), and the Support Technology and Research for Our Nation’s Growth (STRONG) Patents Act of 2015 (S.632).

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By: Hunt Harris* | Summer Guest Writer

Jillian Michaels, the popular celebrity trainer and former host of “The Biggest Loser,” has filed a $10 million lawsuit against Lionsgate over YouTube videos posted to its channel.  Michaels, who recently quit the show for the third time in June 2014, claims Lionsgate has not compensated her for her workout videos that are used on the company’s YouTube channel.  The complaint states that “despite receiving millions of dollars in revenue from YouTube, and half of all views on the YouTube BeFit channel relate to Ms. Michaels’ Lionsgate (videos), Ms. Michaels has not received any compensation whatsoever.”  Lionsgate’s BeFit, which launched in 2012, has generated more than 200 million views to date and has more than 1.5 million subscribers on YouTube. According to Michaels, Lionsgate “did not consult her before they used her image and brand on the channel, and exceeded the number of videos posted to YouTube allowable under her contract.”

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By: Amanda Whorton* | Summer Guest Writer

Your friendly neighborhood U.S. Supreme Court laid down a crucial decision involving patent royalties and a Spiderman themed toy that has everyone’s spidey senses tingling.

Kimble v. Marvel Entertainment involves a toy Stephen Kimble invented and patented called the “Web Blaster,” which consists of a glove with a valve and canister of pressurized foam, allowing kids to pretend that they are their favorite web-slinging superhero by having string shoot from the palm of their hands.  Kimble had previously sued Marvel for marketing a similar toy and their settlement included an agreement that licensed the patent to Marvel in return for royalty payments from its sale.  However, the agreement set no end date for these payments.  Neither side was aware at the time that a 1964 Supreme Court case, Brulotte v. Thys, made agreements for royalty payments after the expiration of a patent per se unlawful.  Kimble urged the Court to overturn this decision, while Marvel argued that Brulotte prevented them from having to pay royalties after the patent expired in 2010.  Marvel already paid Kimble $6 million for use of his patent. Continue reading »