Will the Supreme Court Remove <i>Brulotte</i>'s Shadow Over Patent Licensing?
January 31, 2015
Part One, last month, set the stage for a possible overruling by the U.S. Supreme Court of its 1964 ruling in <i>Brulotte v. Thys Co.</i> that the collection of royalties after a patent's expiration constitutes per se patent misuse by looking at the case's critics and its impact on licensing over the last 50 years. In Part Two, the authors continue that discussion and look at the arguments made to the Supreme Court for and against overruling the case.
Supreme Court Rules Trademark Tacking Is a Question of Fact
January 31, 2015
Priority of use is a hallmark of trademark law. Over the years, lower courts have recognized a doctrine called "tacking," under which a trademark owner may "clothe a new mark with the priority position of an older mark." The key to the tacking doctrine is that the new trademark must "create the same, continuing commercial impression" as the old mark. In <i>Hana Financial</i>, the U.S. Supreme Court considered the question and settled the circuit split, holding that tacking is a question for the jury.
IP News
January 31, 2015
S. Ct.: Clear Error Standard Must Now Be Applied To District Court's Factual Claim Construction Findings
Will the Supreme Court Remove <i>Brulotte</i>'s Shadow Over Patent Licensing?
December 31, 2014
Fifty years ago, the U.S. Supreme Court held that the collection of royalties after a patent's expiration constitutes <i>per se</i> patent misuse. Although criticized by scholars, antitrust agencies and the lower courts, <i>Brulotte</i> has not only endured, it has impacted licensing practices in a number of contexts. All that may change, however.
Federal Circuit Tackles RAND Royalty Rates
December 31, 2014
The Court of Appeals for the Federal Circuit, in a case of first impression, ruled that when the patent at issue is a standard essential patent (SEP) and its owner is subject to an obligation to license that patent on reasonable and non-discriminatory (RAND) terms, the jury instructions must discuss the specific obligations of that patentee and not RAND commitments in general.
The Case for the GC
December 31, 2014
In a time of increasing regulatory risk, global complexity and shareholder activism, the role of the corporate general counsel in the boardroom has never been more important. Yet, companies have been slow to recruit general counsels or seasoned attorneys to serve as independent directors.
IP News
December 31, 2014
Federal Circuit Finds Internet Method Unpatentable Under <i>Alice</i><br>Federal Circuit: No Collateral Estoppel For Similar, But Unrelated, Patent
Federal Circuit Again Addresses Patent-Eligibility Of Internet-Centric Claims
December 31, 2014
On Dec. 5, 2014, a divided Federal Circuit panel held that claims directed to systems and methods of generating a composite Web page combining certain visual elements of a "host" website with content of a third-party merchant were patent-eligible. However, the patent-eligibility of Internet-centric claims remains unsettled.
Legal Presumptions of Consumer Confusion and Injury in Lanham Act Cases
November 30, 2014
The United States Court of Appeals for the Second Circuit "clarified certain aspects of [its] false advertising jurisprudence" and held that, where literal falsity and deliberate deception have been proved in a market with only two players, it is appropriate to use legal presumptions of consumer confusion and injury for the purposes of finding liability in a false advertising case brought under the Lanham Act. <i>Merck Eprova AG v. Gnosis S.p.A.</i>
