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Judicial Advocacy 2016

Lee v. Tam, U.S., No. 15-1293, amicus brief filed 11/18/2016.​​

The Lanham Act ban on registering a mark that “may disparage” is unconstitutionally vague under the 5th Amendment and violates the First Amendment as applied to “The Slants” name for a band of Asian musicians, AIPLA argued to the Supreme Court in a November 18, 2016 amicus brief. This part of Section 2(a) of the Lanham Act, 15 U.S.C. 1052(a), according to the brief, fails to satisfy the due process requirements of clarity in the law, as demonstrated by a long list of contradictory rulings as to what marks may or may not disparage. Alternatively, the brief contends that the provision’s application in this case violated the applicant’s First Amendment right by conditioning the important right of trademark registration on the government’s disapproval of a mark that “reclaims” a derogatory term as an expression of a viewpoint about racism against Asian Americans.

In re Aqua Products, Inc., Fed. Cir., No. 2015-1177, amicus brief filed 10/4/2016.

The right of a patent owner to amend its patent claims in an inter partes review proceedings is improperly limited by the PTAB requirement that the patent owner bear the burden of persuasion that the amended claims are patentable, AIPLA argued to the en banc Federal Circuit in an amicus brief filed October 4, 2016. The requirement conflicts with the required at 35 U.S.C. §316(e) that “the petitioner shall have the burden of proving a proposition of unpatentability by a preponderance of the evidence.” However, the PTAB properly imposes on a patentee a limited burden of production under 37 C.F.R. 41.121(a)(2) that the offered amendment “responds” to the ground of unpatentability, does not enlarge the scope of the claims, and does not introduce new matter.​

Life Technologies Corp. v. Promega Corp., U.S. No. 14-1538, amicus brief filed 9/8/2016.

Patent infringement liability under 35 U.S.C. §271(f)(1) for supplying a “substantial portion of the components” of the invention may be established by supplying a single component that is crucially important to a multi-component invention, AIPLA argued to the Supreme Court in a brief filed September 8, 2016. According to the brief, a quantitative-only approach to § 271(f)(1) could not only create liability for an accused infringer who supplies multiple but relatively unimportant components, but could also excuse one who supplies a single, “substantial,” and indispensable component. While the statutory language and legislative history support a primarily qualitative analysis, the number of supplied components may well be an important consideration. However, the determination of whether supplied component(s) are a “substantial portion of the components of a patented invention” should be assessed based on the importance of the supplied components to the overall invention as determined by considering the disclosure of the specification.

Samsung Electronics Co., Ltd. v. Apple, Inc., U.S., No. 15-777, amicus brief filed 8/4/2016.

The plain language and legislative history of 35 U.S.C. 289 demonstrates that Congress has provided design patent owners with an infringement remedy of the infringer's profits that is based on the total, unapportioned revenue from sales of the entire article of manufacture, AIPLA argued August 4, 2016, in a Supreme Court amicus brief. Congress over the years has made different decisions on recovering an infringer’s profits with respect to utility patents (repealed in 1946), trademarks (granted in 1946, placing the apportionment burden on the infringer), and copyrights (granted in 1976, placing the apportionment burden on the infringer), the brief noted. However, Congress has not moved away from its grant to design patent owners of the right to recover an infringer’s total, unapportioned profits, according to the brief.

​Star Athletica, L.L.C. v. Varsity Brands, Inc., U.S., No. 15-866, amicus brief filed 7/22/2016.

Any test of copyrightability for features contained in a utilitarian work must first determine whether the work contains pictorial, graphic or sculptural elements, and if so, whether they can be identified separately from and exist independently of the unprotectable utilitarian features of the work, AIPLA argued July 22, 2016, in a Supreme Court amicus brief. While various​ separability tests may be well-suited to particular works under consideration, according to the brief, the statutory scheme focuses on whether pictorial, graphic or sculptural elements remain copyrightable when incorporated into an unprotectable utilitarian design. The brief argues that many of the separability tests (including the Sixth Circuit test) inappropriately gives more attention to the utility of the work than to the presence of copyrightable elements, and specifically criticizes the use of marketability as a test of copyrightability.

SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, U.S., No. 15-927, amicus brief filed 7/22/2016.

A laches defense may not be raised against a claim for damages based on patent infringement occurring within the six-year limitations period of 35 U.S.C. 286, AIPLA argued to the Supreme Court in a July 22, 2016 amicus brief. According to the brief, this rule should be applied to patent law for the same reasons it was applied to copyright law in Petrella v. Metro-Goldwyn Mayer, Inc., 134 S.Ct. 1962 (2014). As stated in Petrella, where Congress has enacted a specific limitations period in which a legal claim of damages may be asserted, the equitable defense of laches may not override such clear congressional intent. While a substantial delay that prejudices a defendant may warrant barring equitable relief, laches cannot bar all relief for infringing acts during the six-year limitations period.

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc.​, Fed. Cir., No. 16-1284 and -1787, amicus brief filed 5/2/2016.

The America Invents Act amendment to 35 U.S.C. §102(a)(1), adding the list of patent-barring events the phrase “or otherwise available to the public,” imposes a public-availability requirement to the on-sale bar, AIPLA argued to the Federal Circuit in a May 2, 2016 amicus brief. According to the brief, eliminating a secret sale from that list is consistent with the purpose of encouraging prompt filing and discouraging extensions of period of exclusivity and with the legislative goals of increasing objectivity, predictability, simplicity, and transparency in the acquisition and enforcement of patent rights.

Kirtsaeng v. John Wiley & Sons, Inc., U.S., No. 15-375, amicus brief filed 3/7/2016.

Copyright attorneys' fees, under 17 U.S.C. 505, should be awarded to prevailing parties under a totality of the circumstances test, guided by such considerations as objective reasonableness, frivolousness, motivation, and the need to consider compensation and deterrence, AIPLA argued to the Supreme Court in a March 7, 2016 amicus brief. As in Octane Fitness , LLC v. ICON Health & Fitness, Inc., 134 S.Ct. 1749 (2014), no single factor, such as the objective reasonableness of the losing party's position, should be determinative of the fee decision.​

Cuozzo Speed Technologies, LLC v. Lee, U.S., No. 15-446, amicus brief filed 3/7/2016.

The Federal Circuit erred in endorsing the PTAB’s use of the broadest reasonable interpretation (BRI) standard for claim construction in AIA trial proceedings, ​AIPLA argued to the Supreme Court in a March 7, 2016 amicus brief. The BRI standard was specially crafted for examinational proceedings, not for the adjudicative proceedings created by the AIA. Congress intended those adjudicative proceedings to be an efficient alternative to district court trials, according to the brief, and they should follow the Phillips/Markman standard for claim construction used in district courts. The amicus brief also argued that the Federal Circuit incorrectly bars appellate consideration of issues raised in the PTAB final written decision when those issues were also addressed in the PTAB decision to institute the AIA trial. The Court’s misinterpretation of the bar on appeals at 35 U.S.C. §314(d) conflicts with the presumption of judicial review of executive branch actions.​

The Medicines Company v. Hospira Inc., Fed. Cir., No. 2014-1469,-1504, amicus brief filed 1/19/2016.

A transaction between an inventor and its supplier to produce the claimed invention is not a commercial offer for sale, and therefore does not trigger the on-sale bar to patentability under 35 U.S.C. §102(b)(pre-AIA), AIPLA argued to the en banc Federal Circuit in a January 19, 2016 amicus brief.  “[T]his Court has applied the on-sale bar to supplier-to-inventor transactions involving activities that would not result in a patent-barring event if performed in-house by the inventor,” the brief states. “The application of the on-sale bar should not turn on whether inventors need or choose to commercially contract with third parties to develop or produce their inventions.” AIPLA urged the court to overrule Special Devices, Inc. v. OEA, Inc., 270 F.3d 1353 (Fed. Cir. 2013) to that it is necessary to recognize that a supplier transaction falls outside of the on-sale bar.​​​​​​​​​​​​​​​