Print PDF

August September 2017 Ideas on IP Law Newsletter

August 1, 2017

Click here to read the newsletter in full 

SCOTUS: Timing is everything in patent infringement cases
Three years ago, the U.S. Supreme Court ruled that “laches” — a plaintiff’s unreasonable delay in pursuing an infringement claim — couldn’t preempt a claim for damages sustained within the Copyright Act’s statute of limitations. Now the Court has extended its reasoning to patents, eliminating the laches defense for infringement allegedly committed within the Patent Act’s six-year statute of limitations. This article discusses the Court’s decision, which rejected the position long taken by the Federal Circuit Court of Appeals, which hears all appeals involving patent infringement. A sidebar notes that the doctrine of equitable estoppel might offer an alternative to a laches defense.
SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927, March 21, 2017 (U.S.)
Petrella v. Metro-Goldwyn-Mayer, Inc., No. 12–1315, May 19, 2014 (U.S.)

Access denied
Court shuts down copyright infringement claims
Vocabulary matters in the courts, as one company found out recently. According to the Ninth Circuit Court of Appeals, the term “volitional conduct” has nothing to do with voluntary actions when it comes to direct copyright infringement. This article explains the meaning of volition in a case where the court also denied a copyright holder’s secondary liability claims for infringement.
Perfect 10, Inc. v. Giganews, Inc., No. 15-55500, -55523, -56026, Jan. 23, 2017 (9th Cir.)

How much is enough?
Supreme Court clarifies overseas patent infringement liability
Just how much patent infringement does it take to be liable for damages? The U.S. Supreme Court recently tackled this question in one context, ruling that supplying only one component of an infringing multicomponent invention made abroad doesn’t make the supplier liable for patent infringement. This article reviews the case, in which the Court established a bright-line test for some circumstances, but created significant uncertainty for others.
Life Technologies Corp. v. Promega Corp., No. 14-1538, Feb. 22, 2017 (U.S.)

Why a kit bag doesn’t qualify for trade dress protection
Some product features are ornamental and others are functional. One manufacturer recently learned that the hard way. This short article reviews a decision from the Seventh Circuit Court of Appeals finding that a bag’s design and shape were functional — and therefore not protected as trade dress.
Arlington Specialties, Inc. v. Urban Aid, Inc., No. 14-3416, Jan. 27, 2017 (7th Cir.)

View Document(s):