The New Hybrid Standard for Appellate Review in Claim Construction
The Federal Circuit has long maintained that it is entitled to review a claim construction decision <i>de novo</i>, without deference to the district court. Over the years, this approach has led to a notably high reversal rate of district court claim construction decisions. This "two bites at the apple" approach remained controversial, and on Jan. 20, 2015, the Supreme Court rejected this blanket policy of <i>de novo</i> review in favor of a hybrid approach.
Trademark Licensees May Be Able to Have Their (Cup)Cake and Eat It, Too
Following a recent line of high-profile and notable decisions that have sought to protect the rights of trademark licensees in a trademark licensor's bankruptcy, the United States Bankruptcy Court for the District of New Jersey has issued a significant decision that, for the first time, extends the protections of Section 365(n) of the Bankruptcy Code, 11 U.S.C. ' 365(n), to trademark licensees on equitable grounds.
IP Licenses In Bankruptcy
When a licensor hits the skids, a licensee's two primary concerns should include: 1) whether the protections afforded by Bankruptcy Code section 365(n) are available if the debtor-licensor rejects the license; and 2) protecting its rights if the debtor-licensor seeks to sell the intellectual property. .
Will the Supreme Court Remove <i>Brulotte</i>'s Shadow Over Patent Licensing?
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
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
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?
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
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
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.
