iStock_000050275830_LargeHana Financial, Inc. v. Hana Bank is the final case we’ll discuss reviewing the recent Supreme Court decisions. This case involved review of a very specific issue, namely, whether “tacking” is a question of fact or law.

What is “Tacking”?

Under general principles of trademark law, the first party to use a mark generally has the superior rights. Technically, each time a party modifies a trademark, a new trademark is created and use of that mark relates only to that particular mark and not to any prior iterations of the mark.

However, the doctrine of “tacking” has evolved to allow trademark owners the ability to change their marks and still claim priority based on prior versions of a mark. Basically, a trademark owner may “tack” its use of an altered mark onto its use of the original, prior mark when both marks convey a “continuing commercial impression.” The determination of whether there is this “continuing commercial impression” involves an assessment of how consumers would perceive the original and altered forms of the marks as they appear in the marketplace. If the two would be considered as conveying this “continuing commercial impression,” then the rights in the mark would relate back to use of the original mark.

Facts of the Case


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TrademarkUnder the Lanham Act, before any trademark registration will issue, an application must first be published for opposition. This publication provides the public with an opportunity to challenge registration of a trademark by another party. An opposition action is an adversarial proceeding before the Trademark Trial and Appeal Board (TTAB) and though not generally as lengthy or formal as litigation in the courts, follows essentially the same process. While there are a number of bases for an opposition, the most common is based on an allegation from one party that the trademark of the other party is likely to be confused with its own. Oppositions involve pleadings, discovery, depositions, legal briefs and ultimately oral arguments in front of a panel of three administrative judges of the TTAB. This panel ultimately issues a written opinion and a decision as to whether the opposed mark is or is not entitled to registration.

An opposition action is very narrow, however, as it only relates to the question of whether a particular trademark is entitled to registration. Issues outside that (such as any actual infringement of a trademark or damages) are not addressed. Historically, those issues are addressed via trademark infringement litigation in federal court. There has always been a question, however, as to the impact of a TTAB decision regarding registrability of a given trademark in any other trademark litigation between the parties at issue. If the TTAB determines that A’s trademark is confusingly similar to B’s, does that automatically mean that A’s mark is confusingly similar to B’s in the courts? Per the recent B.B. Hardware v. Hargis Industries decision, the answer is potentially yes.

Facts of the Case


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7122084695_11f7a0566e_zKimble v. Marvel Enterprises involved a device that allowed its user to shoot “webs” a la Spider-Man. Kimble invented and obtained a patent for this web-shooting device and tried to sell or license that patent to Marvel Entertainment, the creator/owner of Spider-Man. Marvel declined, but ultimately came to market with its own “Web Blaster,” which similarly allowed its user to shoot webs a la Spider-Man. Kimble brought an action for patent infringement which was settled by Marvel purchasing Kimble’s patent for a lump sum plus a royalty on future sales of the “Web Blaster.” The agreement was open ended as there was no termination to the royalty payment.

Are Royalties Due After Patent Expires?

Kimble’s patent expired in 2010. Thereafter, Marvel brought a declaratory judgment action seeking a determination that it was no longer required to pay royalties on an expired patent. Marvel’s position was based on Brulotte v. Thys Co., 379 U.S. 29 (1964), where the Supreme Court held that a licensor is not entitled to patent royalties from a licensee after expiration of the licensed patent. The district court agreed with Marvel, finding no distinction between the fact that Brulotte involved a patent license agreement where the party receiving royalties retained ownership of the patent at issue and the Kimble/Marvel relationship where the party receiving royalties no longer owned the patent at issue. Thus, Brulotte controlled and no further royalties were required after expiration of the Kimble patent. The Ninth Circuit Court of Appeals affirmed reluctantly, agreeing that Brulotte was controlling precedent but felt that the decision was “counterintuitive.”

Decision


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Gavel iconContinuing with our series reporting on the recent U.S. Supreme Court decisions, today we will decipher the impact of the second patent case, Commil v. Cisco, and the claim of “induced infringement.”

Belief in Patent Invalidity is not a Defense

The Commil v. Cisco decision involved the issue of what knowledge is required by a defendant in a claim of induced patent infringement. Briefly, a party can be liable for directly infringing the patent of another, where it utilizes patented matter of another without authorization, or by inducing a third party to infringe a patent of another. Induced infringement often involves situations where a party may simply provide the means to third-parties and their use of those means result in infringement of a patent.

Facts of the Case


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FlickrLess than five years after passing the America Invents Act (“AIA”), both the House and Senate have introduced bills to further reform the Patent Act, specifically in response to addressing the issue of abusive litigation by “patent trolls.” In the House, “The Innovation Act,” H.R. 9, was introduced in February, 2015. This bipartisan bill largely parallels legislation the House passed during the last Congress that ultimately died in the Senate. The House will likely pass this bill in the very near future, sending it again to the Senate. In the Senate, in May, 2015, the “Protecting American Talent and Entrepreneurship Act,” or PATENT Act, S. 1137, was introduced. This bill also has bipartisan support and was recently approved by the Senate Judiciary Committee.

Overall, both bills are quite similar as they both have the same general intent: to limit baseless, abusive litigation by trolls. However, there are some significant substantive differences between the bills in how this goal is reached. These differences focus primarily on the areas of fee shifting and recovery; pre-litigation demand letters by patent owners; claim construction during AIA review proceedings; and venue.

Loser Pays


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Teva_logoWhile the 2014-2015 U.S. Supreme Court term might be most remembered for the groundbreaking Obergefell v. Hodges decision, it can also be remembered for taking on six intellectual property cases, including two trademark cases. While the Court’s IP docket has grown in recent years, decisions touching on the subject are still fairly rare. Thus, when the Court takes an IP case, it is usually one that will carry significant impact. We will offer a brief summary of all the Court’s IP decisions, beginning with one of the patent cases, Teva Pharmaceuticals v. Sandoz.

New Standard of Review in Claim Construction

Teva Pharmaceuticals v. Sandoz involved a suit over alleged infringement of a patent relating to the manufacture of a multiple sclerosis drug and, in particular, the definition of the term “molecular weight” as it appeared in the patent claims. The language used in patent claims dictate the baseline scope of the patent holder’s rights and therefore a defendant’s putative infringement. Per the Supreme Court’s Markman v. Westview Instruments decision, patent claim construction is a legal issue to be determined by the Judge. As a legal issue, therefore, all district court determinations regarding claim construction were subject to de novo review in the Appellate Court – until Teva.
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