Spotlight on Upcoming Oral Arguments - October 2015

In re Tam, No. 14-1203 – 10:00 A.M. Courtroom 201

Under 15 U.S.C. § 1052(a), trademarks that “may disparage or falsely suggest a connection with persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” must be refused registration on the principal register.  In recent years, this provision has been used to cancel the registration of the Washington REDSKINS mark and, in this appeal, to refuse registration of THE SLANTS mark used by an Asian-American dance-rock band.  The Federal Circuit will convene en banc to consider a single constitutional issue: whether the bar on registration of disparaging marks in § 1052(a) violates the First Amendment.  The PTO has intervened in the case, and numerous amici have weighed in on the issue.

Lexmark International v. Impression Products, No. 14-1617 – 2:00 P.M. Courtroom 201

After panel briefing in this appeal, the Federal Circuit ordered en banc review of two fundamental issues relating to patent exhaustion: (1) whether authorized foreign sales can exhaust U.S. patent rights; and (2) whether the sale of a patented article, made under a restriction that is otherwise lawful and within the scope of the patent grant, gives rise to patent exhaustion.  Dozens of amici have added their views on these issues, and several will participate in oral argument: Biotechnology Industry Organization and CropLife International have jointly received five minutes of Lexmark’s original 30 minutes; Dell, Google, Intel, L Brands, LG Electronics, Newegg, Ninestar Image Tech, QVC, Samsung Electronics, SAS Institute, and Xilinx have jointly received ten minutes of Impression’s original 30 minutes; and the United States government has received an additional ten minutes of time.

Wednesday, October 7, 2015

Commonwealth Scientific and Industrial Research Organization v. Cisco Systems, No. 15-1066 – 10:00 A.M. Boston, MA

In another case drawing significant amicus participation, a Federal Circuit panel (sitting at the Boston University School of Law) will consider whether the Eastern District of Texas properly determined a reasonable royalty for infringement of a standard-essential patent.  This case highlights the tension between damages apportionment principles, which may suggest the use of one royalty base, and the evidentiary value of comparable licenses or offers based on a different royalty base.

Thursday, October 8, 2015

Nike v. Adidas, No. 14-1719 – 10:00 A.M. Courtroom 402

After granting Adidas’s IPR petition to review the validity of Nike’s patent, the PTAB refused Nike’s request to narrow the patent’s claims to avoid the prior art of record because the proposed amendments were obvious in view of the prior art of record and Nike failed to demonstrate that the proposed amendments overcame prior art not of record.  In this appeal, the Federal Circuit could potentially address which party bears the burden for IPR claim amendments—specifically, whether the patent owner bears the burden of demonstrating the proposed amendment’s patentability or whether the petitioner bears the burden of demonstrating its unpatentability.  The PTO has intervened to defend the PTAB’s decision.

Harmonic v. Avid Technology, No. 15-1072 – 10:00 A.M. Courtroom 402

In the IPR proceeding, from which this case is appealed, the petitioner, Harmonic, proposed seven different grounds of unpatentability.  The PTAB instituted the petition on one ground and determined that three of the remaining grounds were redundant.  On appeal, the petitioner argues that the PTAB must consider the merits of redundant grounds in addition to those from which the IPR was instituted.  The PTO has intervened, arguing that the Federal Circuit lacks jurisdiction to review the PTAB’s institution decision.