Year End 2021 IP Newsletter
Issues on Intellectual Property Law
Establishing infringement of “thin” copyrights
The copyright troll, whose business model the U.S. Court of Appeals for the Seventh Circuit has described as an “intellectual property shakedown,” again found its claims under scrutiny by the court. This time, the court took the occasion to clarify what’s necessary for a successful claim of infringement of works with “thin” copyright protection. This article reviews two well-established copyright doctrines: scènes à faire and merger. It looks at how they restrict the ability of infringement plaintiffs to claim expansive intellectual property rights. A brief sidebar details how the copyright troll plaintiff operates.
Design Basics, LLC v. Signature Construction, Inc., Nos. 19-2716 (7th Cir. April 23, 2021); Design Basics, LLC v. Lexington Homes, Inc., 858 F.3d 1093 (7th Cir. 2017).
Supreme Court shakes up the PTAB
A decade after the American Invents Act of 2011 (AIA) brought significant change to the U.S. patent system, the courts and players in the patent regime continue to grapple with some aspects of the law. This article reviews a recent U.S. Supreme Court finding that the Patent Trial and Appeal Board’s administrative patent judges’ power is incompatible with their status as inferior officers. The article also reviews guidance from the U.S. Patent and Trademark Office in the wake of the Court’s holding.
U.S. v. Arthrex, Inc., No. 19-1434 (U.S. June 21, 2021).
SCOTUS upholds, but limits, “assignor estoppel”
It seems like a simple matter of fairness that an inventor who assigns its patent rights can’t later challenge the validity of the underlying patent. But, as the U.S. Supreme Court recently explained, assignors can do just that in certain limited circumstances. This article reviews the case and the ability of assignors to challenge a patent’s validity.
Minerva Surgical, Inc. v. Hologic, Inc., No. 20-440 (U.S. June 29, 2021).
What constitutes an “exceptional case”?
Court adopts new standard for attorneys’ fees in trademark cases
The U.S. Court of Appeals for the Tenth Circuit has for the first time addressed whether the U.S. Supreme Court’s standard for awarding attorneys’ fees under the Patent Act also applies to such awards under federal trademark law’s Lanham Act. This article summarizes the court’s finding that because the fee provisions in the Patent Act and the Lanham Act are identical, the standard also applies to the Lanham Act.
Derma Pen, LLC v. 4EverYoung Limited, No. 19-4114 (U.S. June 8, 2021).