The NFL playoffs aren’t the only big football news happening this month! The U.S. Department of Justice recently decided to intervene in the Washington Redskins trademark litigation over the constitutionality of certain provisions of the Lanham Act.
On Tuesday, the U.S. Supreme Court issued its decision in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. partially modifying the standard of review to be applied by the Federal Circuit when reviewing a district court’s construction of a claim term. Prior to Teva, the Federal Circuit applied a de novo standard for claim construction review. Now, based on the Teva decision, the Federal Circuit must apply a “clear error” standard for factual questions, and a de novo standard for legal questions when reviewing a claim construction on appeal.
It’s a historic week for trademarks! On January 21, 2015, the U.S. Supreme Court issued a decision in the case of Hana Financial, Inc. v. Hana Bank, which marks the high court’s first substantive ruling on trademarks in more than ten years. In its decision, the Supreme Court unanimously held that trademark tacking is a factual question, and thus, should be decided by juries.
We have previously addressed the Supreme Court’s decision in Octane Fitness, LLC v. Icon Health & Fitness, Inc., 12-1184, Slip Op. at 7 (2014), which relaxed the standard for awarding attorney’s fees under Section 285 of the Patent Act (“§285”) and ruled that decisions on §285 are entitled to deference on appeal. In the patent litigation realm, the Octane Fitness decision does not seem to have led to an overwhelming trend toward awarding fees. It does, however, beg the question: how has this impacted the standard for awarding attorney’s fees in other types of intellectual property cases, such as trademarks and trade secrets?
Patents claiming inventions which must be used to comply with certain technical standards (for example, the Wi-Fi standard or standards for 3G) are referred to as standards-essential patents or “SEPs”. There has, historically, been little judicial guidance concerning damages in cases where SEPs are implicated. The recent Federal Circuit ruling in Ericsson, Inc. v. D-Link Sys., Inc., finally provides some guidance on the issue of determining damages in such cases. No. 2013-1625, 2014 WL 6804864 (Fed. Cir. Dec. 4, 2014). In addition to providing insight on several apportionment issues specific to SEPs, the court also held that simply reciting all Georgia-Pacific factors to a jury is unacceptable and that jury instructions must only include the specific factors relevant to the evidence presented.
Through its recent decision in Stryker Corp. v. Zimmer, Inc., the Federal Circuit gave Zimmer an early Christmas gift worth approximately $140 million by reversing a district court’s determination of willfulness and vacating a corresponding award of trebled damages against Zimmer. The reversal was based on the Federal Circuit’s finding that the noninfringement and invalidity defenses raised by Zimmer were “not objectively unreasonable.”
You are a trademark licensee, and your licensor suddenly declares bankruptcy. Then, to make matters worse, the bankruptcy trustee rejects your licensing agreement. What does this mean for you? Although intellectual property rights are protected under Section 365(n) of the Bankruptcy Code, trademarks are not covered under this provision, calling into question the trademark licensee’s right to continue to use the mark where the licensor has gone into bankruptcy and the license has been rejected by the bankruptcy trustee. However, a recent New Jersey bankruptcy court decision suggests that trademark licensees may avail themselves of the protections of Section 365(n) after all. In the case of In re Crumbs Bake Shop Inc., Case No. 14-24287 (Bankr. D. N.J. Oct. 31, 2014) (ECF No. 288), the court did what Congress failed to do, finding that trademark licensees are entitled to protection under Section 365(n) of the Bankruptcy Code, and allowing licensees to continue to use their intellectual property following the rejection of their licensing agreements by a bankruptcy trustee.
By: Kollin J. Zimmermann
“Priority of use” is a key issue in any case involving a trademark ownership dispute. As the Ninth Circuit has explained, “To acquire ownership of a trademark it is not enough to have invented the mark first or even to have registered it first; the party claiming ownership must have been the first to actually use the mark in the sale of goods or services.” Brookfield Commc'ns, Inc. v. W. Coast Entm't Corp., 174 F.3d 1036, 1047 (9th Cir. 1999).
Navigating damages in patent cases is a complex exercise. In this series, beginning with the marking statute, we explore various nuances of damages analysis.
In its most recent decision in Ultramercial, Inc. v. Hulu, the Federal Circuit finally concluded that the claims-at-issue do not cover patent-eligible subject matter under 35 U.S.C. § 101. This comes after two prior decisions by the Federal Circuit reaching the opposite conclusion, and two orders from the U.S. Supreme Court instructing the Federal Circuit to reconsider those two decisions.