A couple of non-Canadian developments that may be of interest:
- a majority of the US Supreme Court allowed the registration for the trademark “Booking.com” in the face of arguments that it was generic: “According to the PTO, adding “.com” to a generic term—like adding “Company”—can convey no source-identifying meaning. That premise is faulty, for only one entity can occupy a particular Internet domain name at a time, so a “generic.com” term could convey to consumers an association with a particular website.”
- the UK Supreme Court in Regeneron Pharmaceuticals Inc v Kymab Ltd considered patent sufficiency: “The disclosure required of the patentee is such as will, coupled with the common general knowledge existing as at the priority date, be sufficient to enable the skilled person to make substantially all the types or embodiments of products within the scope of the claim.”
The United States Supreme Court issued its decision in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC (link), where a majority found that the USPTO’s inter partes reviews (IPRs) were constitutional. In the proceeding, the petitioner had argued that actions to revoke a patent must be tried in an Article III court before a jury, rather than through an administrative procedure.
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Today, the United States Supreme Court heard oral arguments in Oil States v. Greene’s Energy on the propriety of inter partes review (IPRs). One of the issues before the court was whether IPRs violate the U.S. constitution by extinguishing private property rights through a non-Article III forum without a jury.
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Yesterday, the United States Supreme Court issued its decision in Matal v. Tam where the US Patent and Trademark Office had denied an application for “The Slants” under a Lanham Act provision prohibiting the registration of trademarks that may “disparage . . . or bring . . . into contemp[t] or disrepute” any “persons, living or dead.” The court held that the disparagement clause violates the First Amendment’s Free Speech Clause. (link)
The United States Supreme Court issued its decision in Impression Products, Inc. v. Lexmark International, Inc. on patent exhaustion reversing the en banc decision of the CAFC.
This case presents two questions about the scope of the patent exhaustion doctrine: First, whether a patentee that sells an item under an express restriction on the purchaser’s right to reuse or resell the product may enforce that restriction through an infringement lawsuit. And second, whether a patentee exhausts its patent rights by selling its product outside the United States, where American patent laws do not apply. We conclude that a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale.(link)
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The United States Supreme Court issued its decision in TC Heartland LLC v. Kraft Foods Group Brands LLC stating that corporate ‘residence’ refers only to the state of incorporation. The patent venue statute, 28 U. S. C. §1400(b), provides that “[a]ny civil action for patent infringement may be brought in the judicial district where the defendant resides, or where the defendant has committed acts of infringement and has a regular and established place of business.” This decision will likely have a significant effect on the number of cases filed in Texas, which saw 37% of all patent cases in 2016.
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The United States Supreme Court has issued a couple of intellectual property decisions this week:
- Star Athletica, L. L. C. v. Varsity Brands, Inc. where a majority found a feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic, or sculptural work—either on its own or fixed in some other tangible medium of expression—if it were imagined separately from the useful article into which it is incorporated. The particular facts related to cheerleading uniforms.
- SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC where a majority found that laches cannot be invoked as a defense against a claim for patent infringement damages brought within the 6-year limitations period.
The United States Supreme Court has released its decision in Samsung v. Apple regarding the damages for design infringement. Finding in favour of Samsung, the court held that in the case of a multicomponent product, the relevant “article of manufacture” for arriving at a §289 damages award need not be the end product sold to the consumer but may be only a component of that product. The $399 million damages award was reversed and the proceeding remanded back to the Federal Circuit.
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Canadian Intellectual Property