A principal aim of IPLAC is to aid in the development and administration of the patent, trademark, copyright, trade secret, and associated fields of law and the manner by which they are applied by the courts and by the United States Patent and Trademark Office. IPLAC represents both patent holders and other innovators in roughly equal measure. In litigation, IPLAC's members are split roughly equally between plaintiffs and defendants. IPLAC attempts to act as a guide to the practical effects of interpretation of intellectual property laws by various courts and by the United States Patent and Trademark Office.
Quoting Chief Judge Rader in the ABA Landslide interview in the March/April 2011 issue:
The best amicus briefs try to help us see the implications of our cases long term, how this would affect a particular segment of the IP community or a particular part of the marketplace, how it would inhibit investment, and whether it would spur investment and cause more dedication to proper IP principles. That's the kind of thinking we need. We need something that looks long term and tries to predict with statistics and insights into how the court's cases would have some impact downstream in the marketplace....
[W]e recognize and must recognize that our cases have an impact beyond just the parties before us and again that's where the amicus process can inform us and help us to give a better decision. We can resolve the case before us in a responsible manner according to the law and at the same time ameliorate any unintended consequences if we understand them in advance. We can write the case in a way that narrowly decides the issue before the parties without having any impact beyond that case, or we can resolve it in a way that gives guidance for future cases and makes the law more predictable and more amenable to facilitate business decisions. But we need information before we can do that well.
IPLAC is dedicated to maintaining a high standard of professional ethics in the practice of patent, trademark, copyright, trade secret, and associated fields of law.
Issue: Whether a process can be considered for patent eligibility under 35 U.S.C. § 101 only if the process is tied to a particular machine or apparatus, or transforms a particular article into a different state or thing (“machine-or-transformation” test).
Date of Amicus Brief: August 2009
IPLAC Amicus Position: IPLAC does not support either party on the merits of the case, but takes the position that the Federal Circuit’s “machine-or-transformation” test must be rejected as the sole test for determining patent eligibility.
Date Court Decided: June 28, 2010
Holding: The machine-or-transformation test is not the sole test for determining patent eligibility. Patent-eligible subject matter should be broad. Any bright-line rule should be directed to what is excluded from eligible subject matter, not what is included. Laws of nature, algorithms, and abstract ideas should be excluded.
Issue: Whether “correlations between blood tests results and patients health,” can exist as patentable subject matter.
Date of Amicus Brief: November 7, 2011
IPLAC Amicus Position: IPLAC believes the Federal Circuit holding should be upheld and urges the Court not to disturb the broad and accessible threshold of statutory subject matter that has fostered innovation and public disclosure over a wide variety of useful arts and in new and emerging fields of technology.
Date Court Decided: March 20, 2012
Holding: Processes involved in this test are unpatentable laws of nature. The “steps” Prometheus added to their application are merely instructions to apply the laws of nature. Allowing patents on laws of nature would unnecessarily inhibit further discovery.
Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012).
Issue: Test for patent eligible subject matter for computer-implemented inventions.
Date of Amicus Brief: December 4, 2012
IPLAC Amicus Position: IPLAC ultimately suggests that only patent claims that do not wholly preempt their subject matter are patentable.
Date Court Decided: May 10, 2013
Holding: The asserted method and computer-readable media claims are not directed to eligible subject matter. The asserted system claims are not directed to eligible subject matter.
CLS Bank Int’l v. Alice Corp. Pty, 717 F.3d 1269 (Fed. Cir. 2013).
Issue: Application of 35 U.S.C. § 101 to computer-implemented inventions
Date of Amicus Brief: October 7, 2013
IPLAC Amicus Position: IPLAC submitted this brief in support of the petition for a writ of certiorari, but not in support of either party on the merits of the case. IPLAC argued the Federal Circuit had not provided clear guidelines for determining whether computer-implemented inventions are patent eligible subject matter.
Issue: Application of 35 U.S.C. § 101 to computer-implemented inventions
Date of Amicus Brief: January 28, 2014
IPLAC Amicus Position: IPLAC submitted this brief in support of neither party on the merits of the case. IPLAC argued that the Court should continue to apply prior precedent regarding patent eligibility under 35 U.S.C. § 101 that exceptions under § 101 must necessarily include laws of nature, natural phenomena and abstract ideas.
Date Court Decided: June 19, 2014
Holding: Claims regarding computer-implemented inventions are not patent-eligible subject matter. The claims here did no more than require a generic computer to implement this abstract idea by performing generic computer functions, which is not enough to transform an abstract idea into a patent-eligible invention.
Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 134 S. Ct. 2347 (2014).
Issue: Whether the inquiry under 35 USC § 101 requires courts to ignore the specification or whether courts should ascertain the true scope of the claims in light of the specification and intrinsic record in determining whether they are drawn to a patent-ineligible concept; and whether an otherwise revolutionary technological breakthrough is not an “inventive concept” under the second step of Alice merely because the court believed the breakthrough could theoretically be implemented without a computer.
Date of Amicus Brief: May 30, 2017
IPLAC Amicus Position: The Court should recognize the courts’ ongoing misinterpretations of post-Alice patent eligibility jurisprudence and provide the appropriate protection to innovators.
Issue: Whether a new and specific method of diagnosing a medical condition is patent-eligible subject matter, where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.
Date of Amicus Brief: October 31, 2019
IPLAC Amicus Position: IPLAC supports Petitioners’ request to grant certiorari. The Supreme Court should clarify whether, and by what measure, a new and specific method of diagnosing a medical condition is patent-eligible subject matter. The patent in suit claims a process, not a law of nature. The Federal Circuit’s confusion cries out for cert. review. Granting cert. manifestly serves the public interest.
Issue: Whether the Patent Trial and Appeal Board (PTAB) committed legal error by affirming the rejection under § 101 for lack of patent-eligible subject matter on the grounds that the claims at issue were directed to the patent-ineligible abstract idea of “collecting, storing, and organizing data.”
Date of Amicus Brief (tendered): June 5, 2018
IPLAC Amicus Position: IPLAC believes the Federal Circuit should vacate the final decision of the PTAB because the PTAB failed to follow proper procedures in reaching its conclusion that the claims at issue did not recite patent-eligible subject matter under § 101.
Date Court Decided: June 27, 2018
Holding: After IPLAC filed its amicus brief, the Solicitor General on behalf of the USPTO filed an unopposed motion to vacate and remand the case back to the PTAB – the very thing advocated for in IPLAC’s amicus brief. On June 27, 2018, the Federal Circuit granted the unopposed motion to vacate and remand, and denied all other motions as moot, including IPLAC’s motion for leave to file the amicus brief.
Issue: Role of dictionary definitions in claim construction
Date of Amicus Brief: September 10, 2004
IPLAC Amicus Position: IPLAC submits that dictionaries are useful reference works, but they must not supplant the actual evidence of what the inventor objectively presented to and obtained from the Patent and Trademark Office as the metes and bounds of the invention.
Date Court Decided: July 12, 2005
Holding: Clarified the hierarchy of evidentiary sources usable for claim construction. Most importantly, the words of the claims should be given their ordinary meaning in the context of the patent documents, as interpreted by a person of ordinary skill in the art to which the patent pertains. Other claims and the specification can provided important clues to the intended meaning of the claim language. Prosecution history and other documents in the file are also important, but should be viewed with more skepticism than the plain language of the claims themselves. Extrinsic evidence (like dictionaries) are of secondary importance and may be used, but cannot be given the same weight as the claim language itself.
Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005).
Issue: Whether factual findings made by a district court in the course of interpreting patent claims should be reviewed under the clearly erroneous standard of review
Date of Amicus Brief: May 28, 2013
IPLAC Amicus Position: IPLAC supports neither party but believes the factual findings should be review under the clearly erroneous standard of review, but the import of the facts and the ultimate interpretation should be reviewed de novo.
Date Court Decided: June 23, 2015
Holding: Affirmed the ruling of the district court, as it relied on factual determinations that were not clearly erroneous.
Lighting Ballast Control LLC v. Philips Elecs. N. Am. Corp., 790 F.3d 1329 (Fed. Cir. 2015).
Issue: Whether a contract between two U.S. companies for performance in the U.S. may constitute an offer to sell within the meaning of 35 U.S.C. § 271(a).
Date of Amicus Brief: August 9, 2013
IPLAC Amicus Position: IPLAC supports the petition for writ of certiorari because the Federal Circuit decision extends liability for patent infringement to extra-territorial offers to use a patented product in this country, without actual infringing activities within the U.S., and this extension will have a significant adverse impact on sales and marketing activities world-wide.
Issue: Whether the Federal Circuit has erred in holding that a claimed invention cannot be held “obvious,” and thus unpatentable under 35 U.S.C. § 103(a), in the absence of some proven “teaching, suggestion, or motivation” [TSM] that would have led a person of ordinary skill in the art to combine the relevant prior art teachings in the manner claimed.
Date of Amicus Brief: October 2006
IPLAC Amicus Position: IPLAC supports the requirement of objective evidence of obviousness, including object evidence of TSM.
Date Court Decided: April 30, 2007
Holding: The Federal Circuit “analyzed the issue in a narrow, rigid manner inconsistent with [Section 103(a)] and our precedents.” The Federal Circuit’s TSM test was not to be applied as a mandatory rule because it was too narrow.
KSR Int’l Co. v. Teleflex Inc., 127 S. Ct. 1727 (2007).
Issue: Whether the Federal Circuit test for inequitable conduct is at substantial variance with Supreme Court precedent demands
Date of Amicus Brief: August 2, 2010
IPLAC Amicus Position: IPLAC believes the Federal Circuit should decide whether the Federal Circuit test for inequitable conduct is at substantial variance with Supreme Court precedents. Specifically, it should consider whether one such precedent demands that even if conduct can be characterized as “perhaps reckless,” but cannot be characterized as a basis for the granting of a patent or essentially material to the grant, the conduct is not to be characterized as inequitable conduct.
Date Court Decided: May 25, 2011
Holding: The Court raised the standards for proving that the alleged bad act was material to patentability and that the patentee undertook the alleged bad act with intent to deceive the USPTO. The Court also rejected the sliding scale approach. The Court also held that a finding of inequitable conduct should not immediately render a patent unenforceable. Rather, the court must also “weight the equities” to determine whether the inequitable conduct warrants the unenforceability remedy.
Therasense, Inc. v. Becton, Dickinson & Co., 649 F.3d 1276 (Fed. Cir. 2011).
Issue: The appropriate weight to be given in determination of indefiniteness
Date of Amicus Brief: March 3, 2014
IPLAC Amicus Position: IPLAC believes the appropriate weight to be given to determination of indefiniteness should be that factual findings made by a district court in interpreting patent claims and assessing validity under section 112 should be reviewed under the clearly erroneous standard of review, but that the import of the facts and the ultimate interpretation should be reviewed de novo.
Date Court Decided: June 2, 2014
Holding: Determining whether a patent claim is sufficiently definite must be done by evaluating the patent with the perspective of an individual learned in the relevant field. A patent is sufficiently definite when the patent taken as a whole (includes patent app, USPTO response, and any amendments) informs those learned in the relevant field of the scope of the invention with reasonable certainty.
Issue: PTAB applies a different and broader standard of claim construction than the federal courts.
Date of Amicus Brief: November 9, 2015
IPLAC Amicus Position: IPLAC supports Petitioners’ request to grant certiorari to clarify that the same standard of claim construction applies regardless of forum.
Issue: Whether the discovery of a previously unknown source of a problem could not be considered as part of the obviousness analysis.
Date of Amicus Brief: April 15, 2016
IPLAC Amicus Position: IPLAC supports the Appellants’ petition for rehearing en banc to address an improper restriction on the application of Eibel Process.
Issue: Whether a court may permissibly find inequitable conduct as a sanction against the patent owner by attributing, to an attorney or agent who prosecuted a patent, specific intent to deceive the PTO based on the post-prosecution actions of litigation counsel in a patent infringement case.
Date of Amicus Brief: September 26, 2017
IPLAC Amicus Position: Finding inequitable conduct by the patent prosecution lawyer as a penalty for the tactics of subsequent litigation counsel is a departure from past jurisprudence of such gravity that this Court should consider this issue en banc.
Issue: Whether a patent right can be fully extinguished based on misconduct committed by the patentee’s counsel during federal district court litigation to enforce the patent right.
Date of Amicus Brief: July 9, 2018
IPLAC Amicus Position: IPLAC supports the petition for writ of certiorari because a finding of intent to deceive the patent office by “adverse inference” as a penalty for the tactics of litigation counsel is a serious departure from past inequitable conduct jurisprudence. The Supreme Court should clarify that a ruling of unenforceability for inequitable conduct requires something different than litigation misconduct. A ruling of unenforceability for inequitable conduct requires a careful consideration of the actions, knowledge, and intent of persons involved in the patent prosecution at the Patent Office. The wrong remedy was applied by the district court.
Issue: Whether, under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.
Date of Amicus Brief: August 30, 2018
IPLAC Amicus Position: Under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential should not qualify as prior art for purposes of determining the patentability of the invention. The specific subject of AIA §102(a)(1) is whether a claimed invention has been the subject of a patent, a printed publication, or in the alternative to patents and publications, the subject of any way or manner of the making of public availability, such as a public use that makes the claimed invention available to the public, an on sale that makes the claimed invention available to the public, or any other way or manner that makes the claimed invention available to the public. To interpret §102(a)(1) differently would require that its specific structure and content be ignored.
Date Court Decided: January 22, 2019
Holding: A commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” under §102(a).
Issue: Circuit split in the approach to preliminary injunctions.
Date of Amicus Brief: December 19, 2011
IPLAC Amicus Position: IPLAC urges the Court to resolve the internal inconsistency in the Federal Circuit’s approach to preliminary injunction – the “vulnerability” standard vs. the four requirements of eBay – and to bring the Federal Circuit in line with the rest of the courts in the United States.
Issue: Daubert challenges to patent damages presentations
Date of Amicus Brief: December 4, 2012
IPLAC Amicus Position: IPLAC does not take a position on whether any of the parties satisfied Daubert standards, but stresses the implications the Court’s decision in the case on the IP community and market in the long term. Ultimately, IPLAC stresses that trends toward more exactness in damages presentations in patent law cases presentations is harmful to the patent law system.
Date Court Decided: April 25, 2014
Holding: Experts’ testimony regarding damages was admissible.
Apple Inc. v. Motorola, Inc., 757 F.3d 1286 (Fed. Cir. 2014).
Issue: Imbalance in parties’ burdens seeking attorney fees (prevailing accused infringer seeking attorney fees must show subjective bad faith on the part of the patentee, however this showing is not required of the prevailing patentee).
Date of Amicus Brief: December 9, 2013
IPLAC Amicus Position: IPLAC requests the Court provide a consistent and party-neutral standard for applying section 285 to provide guidance to parties to patent litigation where there has been neither inequitable conduct nor litigation misconduct.
Date Court Decided: April 29, 2014
Holding: Appellate Court construed the attorney fees statute in a manner that was unduly rigid. Section 285 imposed only one constraint on district courts’ discretion to award attorney’s fees in patent litigation: the power was reserved for “exceptional” cases. An “exceptional” case under the statute is simply one that stands out from others because of its frivolous nature. District courts may determine exceptionalness by considering the totality of the circumstances on a case-by-case basis. Appellate court standard to determine whether granting attorneys fees is a simple discretionary inquiry and not “clear and convincing” standard.
Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014).
Issue: Whether Brulotte bars post-expiration royalties in patent licenses that supported by sound economic analysis and do not run afoul of the antitrust law of the United States.
Date of Amicus Brief: February 4, 2015
IPLAC Amicus Position: IPLAC supports that the per se rule of Brulotte v. Thys Co. should be overruled (post-expiration royalties in patent licenses were unlawful).
Date Court Decided: June 22, 2015
Holding: The precedent established in Brulotte, that a patentee cannot receive royalty payments after the patent has expired, should be upheld.
Kimble v. Marvel Entm’t, LLC, 135 S. Ct. 2401 (2015).
Issue: Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act’s six-year statutory limitations period, 35 U.S.C. § 286.
Date of Amicus Brief: July 20, 2016
IPLAC Amicus Position: Laches should be available in patent cases within the 6 year damages limitation period.
Date Court Decided: March 21, 2017
Holding: Laches cannot be invoked as a defense against a claim for damages brought within the six-year limitations period of Section 286 of the Patent Act.
SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 137 S. Ct. 954 (2017).
Issue: Whether lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases where patent infringement is proven under 35 U.S.C. § 271(f).
Date of Amicus Brief: March 2, 2018
IPLAC Amicus Position: Lost profits should be recoverable for patent infringement found under 35 U.S.C. § 271(f), irrespective of where those damages are determined to have arisen or occurred.
Date Court Decided: June 22, 2018
Holding: A patent owner who proves infringement under 35 U.S.C. § 271(f)(2) can recover lost foreign profits.
Issue: Elimination of the need for economic analysis of the markets for the tying product and the tied product.
Date of Amicus Brief: July 2005
IPLAC Amicus Position: IPLAC supports Illinois Tool Works, Inc. in its petition stating the elimination of the market analysis in the Court in incorrect.
Date Court Decided: March 1, 2006
Holding: In all cases involving a typing arrangement, the plaintiff must prove the defendant has market power in the tying product. Mere fact that a tying product is patented does not support presumption of market power.
Ill. Tool Works Inc. v. Indep. Ink, Inc., 126 S. Ct. 1281 (2006).
Issue: PTAB applies a different and broader standard of claim construction than the federal courts.
Date of Amicus Brief: March 7, 2016
IPLAC Amicus Position: The same standard should apply to claim construction regardless of forum.
Date Court Decided: June 20, 2016
Holding: PTAB may apply the broadest reasonable interpretation of patent claims during inter partes review proceeding, and such proceeding is not judicially reviewable.
Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016).
Issue: Whether the PTO can reject claims in reexamination based on prior art that did not form a part of the “substantial new question of patentability” in the petition for reexamination.
Date of Amicus Brief: September 9, 2016
IPLAC Amicus Position: IPLAC urges the Court to grant the cert. petition to settle the meaning and application of the ex parte reexamination statutes – these statutes control what prior art the PTO can consider; in this case the PTO and PTAB exceeded the limits of the reexamination statutes.
Issue: Whether inter partes review violates the Constitution by depriving patent holders of their property rights without providing them a jury and an Article III forum
Date of Amicus Brief: August 31, 2017
IPLAC Amicus Position: The patent in this case issued 11 years before effective date of IPR legislation, so the case should be constrained to deciding whether IPR statute can be constitutionally applied in a retroactive manner to affect pre-existing patent rights. This case should not address the constitutionality of IPR legislation as related to post-AIA patents.
Date Court Decided: April 24, 2018
Holding: Inter partes review does not violate Article III or the Seventh Amendment of the Constitution; this holding is narrow and addresses only the constitutionality of IPR and the precise constitutional challenges raised by Oil States – the decision should not be misconstrued as suggesting that patents are not property for purposes of the Due Process Clause or the Takings Clause.
Oil States Energy Services, LLC v. Greene’s Energy Group LLC, 584 U.S. _____ (2018)
Issue: “Bifurcated appeals” (appeals of liability issues before there are judgements on damages and willfulness in patent cases) are permitted by 28 U.S.C § 1292(c)(2).
Date of Amicus Brief: October 11, 2012
IPLAC Amicus Position: IPLAC does not take a position on the issue in the case, but suggests the Court should be aware that damages law in patent cases is trending to more exactness in damages presentation expenses, and if the law were to change, litigants and districts courts would likely seek bifurcated appeals by other means.
Date Court Decided: June 14, 2013
Holding: 28 U.S.C § 1292(c)(2) does confer jurisdiction on this court to entertain appeals when a trial on damages has not occurred and willfulness issues were outstanding.
Robert Bosch, LLC v. Pylon Mfg. Corp., 719 F.3d 1305 (Fed. Cir. 2013).
Issue: State courts’ jurisdiction over claims of malpractice in the conduct of patent litigation.
IPLAC Amicus Position: IPLAC believes that the exercise of subject matter jurisdiction over state malpractice claims involving substantial issues of patent law is most consistent with the Court’s jurisprudence and with congressional intent for the exercise of jurisdiction under 28 U.S.C. § 1338(a).
Date Court Decided: February 20, 2013
Holding: Federal courts do not have exclusive jurisdiction in any case that involves patent law. A case only arises under federal patent law when it necessarily raises a stated federal issue. A hypothetical patent case is not substantial enough to deprive the state court of jurisdiction. A state court decision in a state law malpractice case relating to patent law will not substantially affect federal patent law.
Issue: Whether 28 U.S.C. § 1400(b) is the sole and exclusive provision governing venue in patent infringement actions.
Date of Amicus Brief: February 6, 2017
IPLAC Amicus Position: IPLAC urges the Court that 28 U.S.C § 1400(b) is indeed the sole and exclusive provision governing venue in patent infringement actions.
Date Court Decided: May 22, 2017
Holding: The subsection of the general venue statute that allows a corporation to reside in many jurisdictions for the purpose of establishing jurisdiction does not apply to the patent venue statute. Although the general venue statute has been amended, Congress has not amended the patent venue statute since its interpretation in Fourco and the amendments to the general venue statute did not explicitly apply to patent venue.
TC Heartland LLC v. Kraft Foods Grp. Brands LLC, 137 S. Ct. 1514 (2017).
Issue: Did the panel correctly determine that 35 U.S.C. § 145’s “[a]ll the expenses of the proceedings” provision authorizes an award of the USPTO’s attorneys’ fees?
Date of Amicus Brief: January 23, 2018
IPLAC Amicus Position: The en banc panel should first reaffirm that the American Rule applies to § 145’s analysis, and, second, correctly find that the phrase “all expenses of the proceedings” is not sufficiently clear and explicit to authorize fee-shifting.
Date Court Decided: July 27, 2018
Holding: The en banc U.S. Court of Appeals for the Federal Circuit reversed the prior Federal Circuit panel decision and held that 35 U.S.C. § 145 does not require applicants appealing the U.S. District Court for the E.D. Virginia to pay the USPTO’s attorneys’ fees.
Issue: Whether the phrase “[a]ll the expenses of the proceedings” in 35 U.S.C. 145 encompasses the personnel expenses the USPTO incurs when its employees, including attorneys, defend the agency in Section 145 litigation.
Date of Amicus Brief: July 22, 2019
IPLAC Amicus Position: The en banc Federal Circuit decision should be affirmed because it correctly held that the American Rule applies to Section 145’s analysis, and, second, correctly found that the phrase “all the expenses of the proceedings” is not sufficiently clear and explicit to authorize fee shifting.
Date Court Decided: December 11, 2019
Holding: The PTO cannot recover the salaries of its legal counsel under §145. The American Rule’s presumption against fee shifting is particularly important here because reading §145 to permit an unsuccessful government agency to recover attorney’s fees from a prevailing party would be a radical departure from longstanding fee-shifting principles adhered to in a wide range of contexts. Section 145’s plain text does not overcome the American Rule’s presumption against fee shifting.
Issue: Whether copyright may exist on living works made by man
Date of Amicus Brief: August 24, 2011
IPLAC Amicus Position: IPLAC supports the petition for writ of certiorari, and ultimately that original works of art that incorporate life forms and have an admitted creative spark, should be subject to copyright.
Issue: What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?
Date of Amicus Brief: July 22, 2016
IPLAC Amicus Position: IPLAC supports Petitioner’s argument that the same standard test should determine when a feature of a useful article is protectable under § 101 of the Copyright Act.
Date Court Decided: March 22, 2017
Holding: A feature incorporated into the design of a useful article is eligible for copyright protection under the Copyright Act only if the feature (1) can be perceived as a two- or three- dimensional work of art separate from the useful article, and (2) would qualify as a protectable pictorial, graphic or sculptural work – either on its own or fixed in some other tangible medium or expression – if it were imagined separately from the useful article into which it is incorporated; that test is satisfied here.
Star Athletica, LLC v. Varsity Brands, Inc., 137 S. Ct. 1002 (2017).
Issue: Whether Congress validly abrogated state sovereign immunity under the Copyright Remedy Clarification Act, 17 USC § 511, which was enacted in 1990.
Date of Amicus Brief: August 13, 2019
IPLAC Amicus Position: (1) 17 USC § 511 provides clear and unambiguous abrogation of state sovereign immunity, such that the Court should reverse the Fourth Circuit’s decision to the contrary and uphold the statute; (2) Congress may validly legislate the abrogation of state sovereign immunity under Article I, Section 8 of the Constitution and upholding the statute in this case achieves a nationwide harmonization of the copyright system; (3) Copyright, as a protectable property right under the Privileges or Immunities Clause of the Fourteenth Amendment, is subject to protection under that Amendment, allowing for valid abrogation of state sovereign immunity, particularly where Congressional intent to abrogate state sovereign immunity is clear; and (4) N.C. Gen. Stat. 121-25(b) is preempted by federal law.
Issue: Seventh Amendment right to a jury in TTAB cases.
Date of Amicus Brief: September 10, 2014
IPLAC Amicus Position: IPLAC does not support either party on the merits of the case, but takes the position that fact-finding by the TTAB that would bind parties against jury trials over wholly common-law rights would implicate the Seventh Amendment and that binding parties in such litigations to TTAB decisions would violate the Seventh Amendment, unless the right to trial by jury were to be waived.
Date Court Decided: March 24, 2015
Holding: The Seventh Amendment does not strip competent tribunals of the power to issue judgments with preclusive effect. So, a finding by the TTAB can preclude re-litigation in federal courts.
B&B Hardware, Inc. v. Hargis Indus., 135 S. Ct. 1293 (2015).
Issue: Proper meaning of the term “expenses” as used in 15 U.S.C. § 1071
Date of Amicus Brief: November 30, 2015
IPLAC Amicus Position: IPLAC supports the petition for writ of certiorari and believes the Court should reject any definition of “expenses” that includes government attorney and paralegal salaries and other attorney fees.
Issue: Whether, under section 35 of the Lanham Act, 15 U.S.C. § 1117(a), willful infringement is a prerequisite for an award of an infringer’s profits for a violation of section 43(a), id., § 1125(a).
Date of Amicus Brief: September 20, 2019
IPLAC Amicus Position: (1) § 1117(a), through its grammatical structure, history, and context in conjunction with the dilution statute, does not require a plaintiff to show willful conduct; and (2) the principles of equity and foundational purposes of § 1117(a) and the Lanham Act disfavor any interpretation that would require a plaintiff to show willful conduct in order to be awarded an infringer’s profits.
Date Court Decided: April 23, 2020
Holding: Willfulness is not required for an award of profits for trademark infringement. The Court agreed with IPLACs amicus arguments that the construction of the statute does not require willfulness, the principles of equity disfavor requiring willfulness, and the history of the Lanham Act does not support a willfulness requirement.
Issue: Under the Lanham Act, 15 U.S.C. 1051 et seq., generic terms may not be registered as trademarks. The question presented is as follows: Whether the addition by an online business of a generic top-level domain (".com") to an otherwise generic term can create a protectable trademark.
Date of Amicus Brief: February 19, 2020
IPLAC Amicus Position: The Supreme Court should affirm the Fourth Circuit’s decision and find that the test for determining whether a proposed trademark or service mark, including a domain name, is generic and can never be protected as a source identifier for particular goods or services is the fact-specific “primary significance” test set forth in 15 U.S.C. § 1064(3), which can involve source-identifying evidence such as consumer surveys. The USPTO’s concerns regarding monopoly power are misplaced. First, a domain name such as BOOKING.COM does not provide monopoly power, but rather is simply a unique online address for a user to locate information (e.g., regarding a particular company’s goods or services) on the Internet. Second, courts have addressed monopoly concerns regarding descriptive marks for decades by granting them a narrower scope of protection than stronger marks, such as fanciful, arbitrary or suggestive marks.
Bilski v. Doll