Yesterday, the US Supreme Court issued its decision in Abitron Austria GmbH v. Hetronic Int’l, Inc. on the foreign reach of the Lanham Act that prohibit trademark infringement, finding that the implicated sections are not extraterritorial and extend only to claims where the infringing use in commerce is domestic.
Tag Archives: United States Supreme Court
US Supreme Court
The United States Supreme Court issued several decisions yesterday that may be of interest:
- Twitter, Inc. v. Taamneh and Gonzalez v. Google LLC – social media companies are not liable for terrorist attacks by hosting accounts from terrorists: “To impose aiding-and-abetting liability for passive nonfeasance, plaintiffs must make a strong showing of assistance and scienter. Plaintiffs fail to do so.”
- Andy Warhol Foundation for Visual Arts, Inc. v. Goldsmith – copyright fair use does not cover Warhol’s use of a photograph by Goldsmith to create a silkscreen portrait of Prince -> “the purpose of the Orange Prince image is substantially the same as that of Goldsmith’s original photograph. Both are portraits of Prince used in magazines to illustrate stories about Prince.”
- Amgen Inc. v. Sanofi – patent enablement -> “Amgen’s claims sweep much broader than the 26 exemplary antibodies it identifies by their amino acid sequences. Amgen has failed to enable all that it has claimed, even allowing for a reasonable degree of experimentation
US Supreme Court
Earlier today, the US Supreme Court agreed to take up Jack Daniel’s Properties, Inc. v. VIP Products LLC on “whether humorous use of another’s trademark as one’s own on a commercial product is subject to the Lanham Act’s traditional likelihood-of-confusion analysis, or instead receives heightened First Amendment protection from trademark-infringement claims”. The defendant sells a “Bad Spaniels” squeaky dog toy.
US Supreme Court
On Friday, the US Supreme Court granted review in two IP cases:
- Amgen Inc. v. Sanofi – on patent enablement and whether the full scope of the patent has to be enabled.
- Abitron Austria GmbH v. Hetronic International – on the scope of the Lanham Act on extraterritorial sales that never reach the United States or confuse US consumers.
Assignor Estoppel
Yesterday, the US Supreme Court upheld but limited the doctrine of assignor estoppel for patents in Minerva Surgical Inc. v. Hologic Inc.: “When an assignor warrants that a patent claim is valid, his later denial of validity breaches norms of equitable dealing. … [But an] example of non-contradiction is when an assignment occurs before an inventor can possibly make a warranty of validity as to specific patent claims.”
PTAB
The US Supreme Court has found that the judges of the Patent Trial and Appeal Board (PTAB) were improperly appointed under the U.S. constitution but fixed the issue by making PTAB determinations reviewable by the director of the USPTO (see Arthrex).
PTAB
In other Supreme Court news, earlier today, the United States Supreme Court granted cert in Arthrex considering the constitutionality of the appointment of USPTO’s PTAB judges and their subsequent decisions.
Foreign Updates
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.”
IPRs
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.
IPRs
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.