patent

Romag Fasteners, Inc. v. Fossil, Inc.

Issues

Does Section 35 of the Lanham Act require willful infringement to award a prevailing plaintiff profits of an infringer who violated Section 43(a)?

This case asks the Supreme Court to determine whether a plaintiff must show that an entity willfully infringed on a trademark in order to be awarded the infringer’s profits for violating the Lanham Act. Romag Fasteners, Inc. argues that the plain text of Section 1117(a) and the structure of the Lanham Act omits a willfulness requirement, and the phrase “subject to the principles of equity” in Section 1117(a) does not justify such a requirement. Fossil, Inc. counters that the textual analysis of Section 1117(a) should incorporate traditional principles of equity that require willfulness for profits awards because the text expressly allows for consideration of equitable principles. The outcome of this case has important implications for the rights of trademark holders and awards of damages.

Questions as Framed for the Court by the Parties

Whether, under Section 35 of the Lanham Act, 15 U.S.C. § 1117(a), willful infringement is a prerequisite for an award of an infringer’s profits for a violation of Section 43(a), 15 U.S.C. § 1125(a).

In 2002, Fossil, Inc., a company that designs and sells handbags, entered into a trade agreement  with Romag, a company that has trademarked and patented magnetic snap fasteners used in handbags. Romag Fasteners, Inc. v. Fossil, Inc. at 2.

Written by

Edited by

Additional Resources

Submit for publication
0

SAS Institute Inc. v. Matal

Issues

Does 35 U.S.C. § 318(a) require the Patent Trial and Appeal Board to issue a written decision on every claim challenged by the petitioner?

This case arises from a suit in which ComplementSoft claimed SAS Institute infringed its patent and SAS responded by petitioning the Patent Trial and Appeal Board (“PTAB”) for a determination on the validity of ComplementSoft’s patent. SAS argues that, based on a straightforward reading of 35 U.S.C. § 318(a) and the legislative history of the America Invents Act (“the Act”), the PTAB must issue a final written decision on each of the petitioner’s claims. Relying on the same methods of analysis, ComplementSoft reaches the opposite conclusion, arguing that the PTAB must be allowed discretion to select specific claims for review. The Director of the Patent and Trademark Office, which sits above the PTAB, also asserts that the PTAB must have discretion in selecting claims for review. Accordingly, the Court’s decision will affect the efficiency of the PTAB’s review proceedings and impact how parties petition the PTAB.

Questions as Framed for the Court by the Parties

Does 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” require that Board to issue a final written decision as to every claim challenged by the petitioner, or does it allow that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the Federal Circuit held?

Issued on September 19, 2006, United States Patent Number 7,110,936 (“’936 patent”) was thereafter assigned to ComplementSoft, LLC (“ComplementSoft”). SAS Institute, Inc. v. ComplementSoft, LLC., 825 F.3d 1341, 1343 (Fed. Cir.

Written by

Edited by

Additional Resources

Submit for publication
0

Stanford University v. Roche Molecular Systems, Inc.

Issues

May an employee of a university receiving government funding assign the rights in an invention to a third party without the university’s consent, or does the university retain the rights to the invention under the Bayh-Dole Act?

 

In the late 1980s, Dr. Mark Holodniy, a Stanford University researcher, conducted part of his research at a private biotechnology company. The result of his work, which was partially funded by the government, was an improved method for testing the effectiveness of HIV treatments. Over the next few years, Roche Molecular Systems, the owner of the biotechnology company at which Dr. Holodniy conducted his research, incorporated his invention into its publicly sold HIV-testing kits. At roughly the same time, Stanford, Dr. Holodniy’s employer, began the process of patenting the invention under the University and Small Business Patent Procedure Act, commonly known as the Bayh-Dole Act. In 2005, Stanford sued Roche for patent infringement, arguing among other things that the Bayh-Dole Act gave Stanford the exclusive first right to acquire ownership of Holodniy’s invention. The district court ruled for Stanford, but the Federal Circuit reversed, holding that an assignment of ownership rights in an earlier confidentiality agreement between Holodniy and the biotechnology company trumped Stanford’s ownership rights. Now, the Supreme Court must decide whether the Bayh-Dole Act prevents individual inventors from assigning to third parties their ownership rights in federally funded inventions.

Questions as Framed for the Court by the Parties

Whether a federal contractor university’s statutory right under the Bayh-Dole Act, 35 U.S.C. §§ 200-212, in inventions arising from federally funded research can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor’s rights to a third party.

In the late 1980s and early 1990s, a team of scientists working at Stanford University and Cetus Corporation laboratories developed a method to discern the efficacy of HIV drug treatments. See Stanford Univ. v. Roche Molecular Sys., 583 F.3d 832, 837 (Fed. Cir.

Written by

Edited by

Additional Resources

· Bloomberg.com: Stanford-Roche Patent Fight Draws U.S. Supreme Court Review (Nov. 1, 2010)

· Economist: Innovation’s Golden Goose (Dec. 12, 2002)

top

Submit for publication
0

TC Heartland v. Kraft Foods Group Brands LLC

Issues

Does the general venue statute, 28 U.S.C. § 1391, define “where the defendant resides” for purposes of the patent venue statute, 28 U.S.C. § 1400(b)?

In 1957, the Supreme Court held in Fourco Glass Co. v. Transmirra Products Corp. that the patent venue statute, 28 U.S.C. § 1400(b), was the “sole and exclusive” venue provision in patent infringement actions. After Congress amended the general venue statute, 28 U.S.C. § 1391, in 1988, the Federal Circuit in VE Holding Corp. v. Johnson Gas Appliance Co. held that the statutory amendments supplanted Fourco and § 1391(c)’s definition of a defendant’s “residence” applied to § 1400(b). In 2011, Congress amended the general venue statute again.

TC Heartland and its many amici argue that the 2011 amendments supersede VE Holding and reinstate Fourco, thereby restricting a corporate defendant’s “residence” to its state of incorporation. In contrast, Kraft maintains that the 2011 amendments bolster VE Holding’s conclusion that a corporate defendant “resides” wherever it is subject to personal jurisdiction. The Court’s decision about which venue definition is proper in patent infringement actions could significantly limit where defendants are eligible to be sued, thereby reducing forum shopping in patent infringement actions.

Questions as Framed for the Court by the Parties

Whether 28 U.S.C. § 1400(b) is the sole and exclusive provision governing venue in patent infringement actions and is not to be supplemented by 28 U.S.C. § 1391(c).

TC Heartland is an Indiana limited liability company, headquartered in Indianapolis, which manufactures and sells liquid beverage enhancer products.

Written by

Edited by

Additional Resources

Submit for publication
0

Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc.

Issues

Should the Federal Circuit review the construction of patent claims de novo or for clear error?

The Federal Circuit reviewed the district court’s claims construction in a patent infringement case de novo and reversed that court’s decision. The Supreme Court’s decision in this case will impact whether the interpretation of patent claim construction involves questions of law. Sandoz and amici argue that claim construction involves questions of law, and to review interpretations deferentially would cause interpretive contradictions between district courts. However, Teva and amici argue that de novo review would undermine the district courts and lead to over-litigation of issues.

Questions as Framed for the Court by the Parties

Whether a district court's factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.

Teva Pharmaceuticals USA, and other related companies (collectively, “Teva”), developed and obtained a patent for Copaxone, a drug used in the treatment of multiple sclerosis. See Teva Pharmaceuticals USA Inc. et al., v. Sandoz Inc., 876 F. Supp.

Edited by

Acknowledgments

The authors would like to thank Professor Oskar Liivak for his insights into this case. 

Additional Resources

Submit for publication
0

Thryv, Inc. v. Click-To-Call Technologies, LP

Issues

Does 35 U.S.C. Section 314(d) insulate Patent Trial and Appeal Board interpretations of Section 315(b)’s limitations period for initiating an inter partes review from judicial review?

In this case, the Supreme Court will decide whether 35 U.S.C. § 314(d) precludes judicial review of the Patent Trial and Appeal Board’s (“the Board”) decision to grant an inter partes review after determining that an effective statute of limitations under Section 315(b) does not apply. Thryv, Inc., contends that the plain language of Sections 314(d) and 315(b) and relevant Supreme Court precedent renders such decisions nonappealable. Click-To-Call Technologies counters that the plain language of Section 314(d) contains nothing to indicate that judicial review of the Board’s interpretation of Section 315(b) is prohibited, and that Supreme Court precedent has confirmed this understanding. The outcome of this case will have important implications on the scope of administrative power, incentives for product innovation, and the integrity of the patent system.

Questions as Framed for the Court by the Parties

Whether 35 U.S.C. § 314(d) permits appeal of the Patent Trial and Appeal Board’s decision to institute an inter partes review upon finding that 35 U.S.C. § 315(b)’s time bar did not apply.

Inforocket.Com, Inc. (“Inforocket”) was the original licensee of Patent No. 5,818,836 (“the ‘836 patent”). Click-to-Call Technologies, LP, v. Ingenio, Inc., Yellowpages.com, LLC at 3. In 2001, Inforocket filed suit against Keen, Inc. (“Keen”) alleging Keen’s infringement of the ‘836 patent.

Written by

Edited by

Additional Resources

Submit for publication
0
Subscribe to patent