Latest updates

Supreme Court – Lanham Act disparagement clause unconstitutional
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • July 17 2017

The Supreme Court recently held that the Lanham Act's disparagement clause is unconstitutional under the First Amendment's free speech clause. The court explained that the disparagement clause "offends a bedrock First Amendment disparagement principle". Trademarks cannot be denied federal registration or be cancelled merely because they offend. Assuming that they otherwise qualify, offensive trademarks are entitled to the substantial benefits of federal trademark registration.

Biosimilar makers can give notice of commercial marketing before FDA licensure
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • July 03 2017

The Supreme Court recently ruled that biosimilar makers can give notice of commercial marketing before Food and Drug Administration (FDA) licensure. The ruling resolves an ambiguity in the text of the Biologics Price Competition and Innovation Act, which gave rise to a presumption that biosimilar makers had to wait until 180 days after FDA licensure before providing notice of the commercial marketing of those products.

Federal Circuit weighs tests for evaluating infringement under doctrine of equivalents
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • June 12 2017

In a recent panel decision, the Federal Circuit suggested that an 'insubstantial differences' test may be more suitable than a 'function-way-result' test for evaluating infringement under the doctrine of equivalents in patent cases involving the chemical arts. The decision arises from unusual procedural circumstances.

Supreme Court decision limits venue in patent cases
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • June 05 2017

The Supreme Court recently issued a decision limiting venue in patent cases to districts in which the defendant is incorporated or where the defendant has committed acts of infringement and has a regular and established place of business. The decision overturns decades-long Federal Circuit precedent under which patent defendants have been sued in states other than those in which they are incorporated or have regular places of business.

Federal Circuit clarifies application of post-America Invents Act on-sale bar
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • May 22 2017

The Federal Circuit panel recently held four pharmaceutical patents invalid under the on-sale bar of 35 USC Section 102(b). Under the post-America Invents Act version of Section 102(b), public disclosure of the existence of the sale of a patented item may suffice to invalidate a patent under the on-sale bar, even if the details of the invention are not publicly disclosed in the terms of sale.

Supreme Court hears oral argument in Sandoz Inc v Amgen Inc
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • May 15 2017

The Supreme Court recently heard oral argument in Sandoz Inc v Amgen Inc on two questions regarding the Biologics Price Competition and Innovation Act. If the court affirms Sandoz's position on these issues, sponsors will need to carefully consider how to prepare for and undertake declaratory judgment actions, perhaps within a compressed time frame and with little knowledge at the outset of the proposed biosimilar or its manufacturing process.

Supreme Court hears oral argument in Heartland
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • April 24 2017

The Supreme Court recently heard oral argument in TC Heartland LLC v Kraft Food Brands Group LLC. The case concerns the application of part of the general venue statute which allows a corporation to be sued in multiple districts. If the court rules in TC Heartland's favour, the venue in patent cases could potentially be limited to those districts where the defendant is incorporated or has a regular and established place of business.

Supreme Court hears oral argument in Impression Products Inc v Lexmark Int'l Inc
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • April 17 2017

The Supreme Court recently heard oral argument in Impression Products Inc v Lexmark Int'l Inc on whether a patentee's US patent rights may be exhausted by certain conditional US sales or by foreign sales of a patented item, acknowledging that these would disrupt settled expectations and present serious consequences.

Test determining whether designs on useful articles are eligible for copyright protection
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • April 10 2017

While federal copyright laws unquestionably allow protection for original works of art, copyright eligibility has been less clear in situations where artistic designs are incorporated into articles with utilitarian features. In a recent decision, the Supreme Court clarified the test for determining whether artistic elements incorporated into a useful article are eligible for copyright protection.

Supreme Court rejects Federal Circuit's basis for finding infringement liability for exporters
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • March 13 2017

The Supreme Court recently reversed the Federal Circuit's interpretation of an infringement liability statute in litigation over whether shipping a single component of a patented multi-component invention to be assembled overseas qualifies as infringement under 35 USC Section 271(f)(1). In doing so, the Supreme Court clarified that Section 271(f)(1) does not cover the supply of a single component of a multi-component invention.

Supreme Court hears oral argument in Lee v Tam
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • February 06 2017

The US Supreme Court recently heard oral argument in Lee v Tam. The decision in this case will address whether Section 2(a) of the Lanham Act, which permits the US Patent and Trademark Office to refuse to register 'disparaging' trademarks, is constitutional under the First Amendment. It is difficult to tell from the oral argument how the Supreme Court will decide this case.

Federal Circuit dismisses appeal by inter partes review petitioner
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • January 16 2017

In a recent case, petitioner Phigenix challenged the validity of a patent which related to antibody-maytansinoid conjugates for the treatment of cancer. The Federal Circuit dismissed Phigenix's appeal for lack of standing under Article III of the Constitution. In dismissing the appeal, the Federal Circuit, among other things, reiterated the minimum requirements for Article III standing.

Supreme Court hears oral argument on infringement liability for US exporters
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • January 09 2017

The Supreme Court recently heard oral argument on the interpretation and application of a statutory provision which imposes infringement liability on US manufacturers that supply components of patented inventions for use abroad. At issue is whether the export from the United States of a single component of a patented multi-component invention, which is later assembled outside the United States, qualifies as an infringing act.

Supreme Court rejects Federal Circuit's basis for affirming $399 million damages in Apple v Samsung
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • December 19 2016

In a recent decision, the Supreme Court rejected the Federal Circuit's interpretation of a damages statute in litigation between Apple and Samsung over Apple's smartphone design patents. The court disagreed with the Federal Circuit over the term 'articles of manufacture' and overturned its decision, therefore raising the possibility that Apple's $399 million in damages could be reduced significantly.

Federal Circuit holds failure to provide opportunity to respond to portion of prior art is procedural violation
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • December 05 2016

The Federal Circuit recently found that the Patent Trial and Appeal Board (PTAB) violated a patentee's rights in an inter partes review proceeding by cancelling patent claims based on a portion of a prior art reference that was not specifically identified and by denying the patentee the opportunity to address that portion of the reference. The Federal Circuit vacated the cancellation of the claims and remanded the matter to the PTAB.

TTAB refuses marijuana-related mark
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • November 28 2016

The Trademark Trial and Appeal Board recently reiterated its position that a product or service which is legal at the state level cannot qualify for a federal service mark registration if the product or service is illegal under federal law. This ruling, which is especially relevant in view of the growing number of states legalising marijuana, demonstrates the growing practice of the US Patent and Trademark Office to look beyond the language used by applicants to determine a hidden agenda.

TTAB finds colour white distinctive
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • November 21 2016

In a rare decision resulting in trademark registration status for a colour mark, the Trademark Trial and Appeal Board (TTAB) recently found the colour white to be registrable. The TTAB noted that while a mark comprised of a single colour cannot be inherently distinctive, a product's colour can be protected as a trademark and acquired distinctiveness can be found for a colour in conjunction with a product. Nonetheless, the process of obtaining colour registrations remains difficult.

TTAB affirms refusal of motion mark for hand tools on grounds of functionality
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • November 07 2016

In another chapter chronicling the relationship between functionality and trademarks, the Trademark Trial and Appeal Board (TTAB) recently found that an application claiming a motion mark depicting a specific product configuration was functional, thereby making the mark unregistrable. The TTAB considered four factors when analysing the functionality of Loggerhead Tools, LLC's trademark application and affirmed the refusal on all factors.

TTAB instructive decision concludes that social media advertising is not evidence of trademark services
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • October 31 2016

In an instructive decision for trademark applicants relying on social media to help advertise and promote their products and services, the Trademark Trial and Appeal Board recently concluded that advertising and promoting via a social networking website does not, in and of itself, support a trademark registration for such services, unless the applicant is in the business of providing such services.

Acquired distinctiveness trumps likelihood of confusion in TTAB decision
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • October 24 2016

The Trademark Trial and Appeal Board recently concluded a nine-year battle between Mini Melts, Inc and Reckitt Benckiser LLC, refusing the applicant's mark on the basis of descriptiveness. The decision warns trademark applicants seeking to register an arguably descriptive mark on the grounds of acquired distinctiveness that advertising and sales evidence may be insufficient to support their claim.

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