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Recent Developments in IP Law of Interest to Business Attorneys

February 26, 2013


The America Invents Act Changes the Rules

Since at least the turn of this century, almost anyone interested in innovation or technology could agree that something was rotten with the state of the U.S. patent system. Among the most common complaints were that there are too many patents, or not enough; that patents are too difficult to enforce, or too easy; that software or ways of doing business should not be patentable, or that all inventions are equal under the law; and that the U.S. should harmonize its patent laws with the rest of the world, or dance to its own tune. Unsurprisingly, several major patent reform bills have been floated in Congress over the last decade, where they sank more or less quickly in a sea of partisanship.

But on September 16, 2011, President Obama signed the Leahy-Smith America Invents Act (AIA), Public Law 112-29, into law. The AIA is the most important legislative patent reform in over 50 years. The AIA will change how patents are granted, how patent litigation will proceed and what kinds of inventions are eligible for patents, among other things. Because the AIA will likely affect most Oregon businesses, Oregon lawyers should be familiar with the new law, whether or not their practices focus on intellectual property issues.

Below we introduce some of the major provisions in the AIA. Our discussion is general and nontechnical, and is not a complete analysis of the law or legal advice.

First-to-file Will Now Establish Priority of Invention

It is not uncommon that several inventors will conceive of the same invention at about the same time. For example, Alexander Graham Bell and Elisha Gray independently developed telephonic technology in the mid-1870s, and both filed patent documents within hours of each other on Valentine's Day, 1876. But the fact that Bell may have filed a few hours earlier did not give him priority, because U.S. law gave priority to the first to invent, unlike the rest of the world where first-to-file is almost always the rule. The Patent Office did not rule that Bell had priority until after further proceedings determined that Bell had priority over Gray.

Perhaps the biggest change that the AIA will make is to convert the U.S. to a first-to-file system. When this provision takes effect on March 16, 2013, it will dramatically simplify the long and expensive disputes that arose when multiple applications were filed for similar inventions. The change will also lend more certainty to issued patents, which could previously be attacked by inventors claiming to have come up with the invention before the named inventor. Finally, it may lessen the burden on inventors to keep records on the timing of their inventive work, perhaps facilitating more productive activities such as improving inventions or conceiving new ones.

The first-to-file system will encourage early filings by large companies with the resources to do so, to the detriment of smaller companies who typically need to see if the invention really works before incurring the expense of a patent application. Given the one year grace period under which inventors can market their inventions prior to filing, there will be an incentive to file an application early, and then perhaps file another application later if the invention is changed after design work and market testing are completed. This is likely to increase the number of applications filed, and increase the expense to both small and large technology-based companies.

Prior Commercial User Defense is Established

Many companies choose not to patent some inventions that are incorporated into their products, especially when the invention is not visible to the public. The new law establishes a "prior commercial user" defense for such inventors who commercially use certain inventions at least one year before another inventor files a patent on the same invention or discloses it publicly.

New Post-grant Proceedings for Patent Validity Challenges

An accused infringer can usually challenge the validity of a patent in court, although such proceedings are expensive and lengthy. Prior to the AIA, a party could also challenge a patent by asking the U.S. Patent and Trademark Office (PTO) to reexamine the patent, in either an inter partes or an ex parte proceeding. Reexaminations were less expensive than court challenges, but these reexaminations could still extend over several years before the PTO issued its decision.

The AIA provides new ways to challenge patents in expedited, cost-effective proceedings. Any entity will now be able to petition for post-grant review of the validity of a patent on essentially any ground for nine months after issue, provided the entity has not made a claim to challenge the patent's validity in court and does not own the patent. In most cases, the entity requesting review will be barred from raising any claim that it made or could have made in the review, in any later court or administrative proceeding. A decision will generally issue within a year. After nine months from issue or after termination of post-grant review, a patent will still be open to challenge in an inter partes review, but on more limited grounds. These post-grant proceedings will eventually take the place of inter partes reexamination, although ex parte reexamination will still be available.

The PTO Will No Longer Grant Patents on Tax Strategy

The topic of business method patents that covered strategies to avoid tax liability was hotly debated leading up to passage of the new law. It was thought that the Supreme Court's recent decision in Bilski v. Kappos, 130 S. Ct. 3218 (2010), would provide guidance, but it did little to clear the air. But under the AIA, applications for inventions comprising strategy for reducing, avoiding, or deferring tax liability, which are pending on or filed after September 16, 2011, will not be granted.

Special Transitional Review for Certain Patents Related to Financial Products and Services

The AIA directs the PTO to establish a special procedure for challenging the validity of some "covered business method patents," defined as patents for performing data processing or other operations used in the practice, administration, or management of a financial product or service, though not including patents for technological inventions. Under the AIA's procedure, those accused of infringing these patents may bring a post-grant review proceeding without some of the restrictions generally applicable to such proceedings. The transitional review provision has an eight-year sunset provision. The AIA also provides that in an action for infringement of a covered business method patent, the location of an ATM machine shall not be deemed to be a regular and established place of business for venue purposes.

Most PTO Fees Will Increase By 15 Percent

There has been widespread frustration that the PTO takes three years on average to issue a patent, largely due to a shortage of funds. Although the PTO collects fees from patent applicants, some of this money is not available to the PTO but goes to other government programs. Many hoped that this would change under the AIA, but the new law makes no fundamental changes to address PTO fee diversion.

A 15 percent surcharge will apply to most PTO fees as of September 26, 2011. As in the past, "small entities" can pay fees at 50 percent of the normal rate, but under the new law a category of "micro-entity" is established that will permit fees to be reduced by 75 percent. A micro-entity is currently defined as a university or an entity with gross income of less than $150,000 per year and who has not filed more than four patent applications or assigned the invention to a large entity.

Limited Prioritized Examination Will be Available

For an additional fee initially set at $4800 (small entities at half that) it will be possible to have an application for an invention deemed important to the national economy or national competitiveness examined on an expedited basis. Until the PTO issues regulations, the AIA caps the number of such examinations at 10,000 per fiscal year.

New Rules will Affect Litigation by Nonpracticing Entities

It will no longer be possible to file a single patent infringement action against multiple defendants merely because they allegedly infringe the same patent, unless the defendants or the claimed acts of infringement are otherwise related according to the statute. This is a response to widespread concern about lawsuits filed by so-called nonpracticing entities (NPEs), which are often patent holding companies whose business model is to license patents or litigate, rather than to produce products embodying the patented technology.

The AIA requires the comptroller of the GAO to conduct a study and report to Congress on the consequences, good and bad, of NPEs. Although some have faulted the AIA for failing to address NPE litigation, the AIA contemplates further action by Congress in this area, since it requires that the comptroller's report make recommendations on changes to laws to "minimize any negative impact" of NPE litigation.

False Patent Marking Claims are Curbed

Under current law, a patentee may give constructive notice that a product is patented by marking it with the applicable patent number. Another section of the patent law prohibits falsely marking a product with an inapplicable patent number, intending to deceive the public. Under pre-AIA law, any person could bring a false marking claim as a qui tam relator on behalf of the United States, regardless of whether the relator had suffered any injury of the sort traditionally required for standing to sue. A recent Federal Circuit case confirming this principle led to a cottage industry in such lawsuits, many brought by entities that had no business other than suing for false marking. Stauffer v. Brooks Bros., Inc., 619 F.3d 1321 (Fed. Cir. 2010).

The pre-AIA penalties could be draconian, providing for fines of up to $500 for each falsely marked unit. In Pequignot v. Solo Cup Co., 608 F.3d 1356, 1359 n.1 (Fed. Cir. 2010), the court noted that defendant's potential liability for claims that 21,757,893,672 paper cups were falsely marked was "approximately $5.4 trillion, [which] would be sufficient to pay back 42 percent of the country's total national debt."

The AIA changes virtually everything about false marking. Standing to bring false marking claims is now limited to the United States, or to an entity that has suffered a competitive injury caused by the false marking. Only the United States may seek the $500 per unit penalty. Other plaintiffs are limited to compensatory damages. The AIA also eliminates civil liability for marking a product with the number of a patent that has expired, so long as the patent covered the product. Within days of the signing of the AIA, district courts began dismissing patent marking suits sua sponte for lack of standing.

Other Provisions Will Make it More Difficult to Attack Patent Validity

• Violation of the "best mode" requirement will not be a basis to invalidate a patent, although the patent statute still requires that a patent specification include the best mode contemplated by the inventor of carrying out the invention.

• A patent owner can correct inventorship defects without alleging that prior identification of inventors was "without deceptive intent."

• Patent owners are permitted to submit prior art to the PTO in a "supplemental examination" to correct mistakes in prior disclosures made to the PTO, which will make it more difficult to assert that the patent owner commuted inequitable conduct during the examination of the patent.

Global-Tech and Induced Infringement

In its recent Global-Tech decision (Global-Tech Appliances, Inc. v. SEB, SA, 563 U.S.______ (May 31, 2011), the Supreme Court clarified that induced infringement under Section 271(b) requires knowledge that the induced acts constitute patent infringement. The Court also held that this knowledge requirement could be met by willful blindness, which requires proof that: (1) the defendant must subjectively believe that there is a high probability that the infringement exists, and (2) the defendant must take deliberate actions to avoid learning of that fact. The Court noted that these requirements provide for a standard higher than recklessness or negligence. The Federal Circuit had held that inducement liability requires only a "deliberate indifference" to a known risk that a patent exists. The Supreme Court felt that the deliberate indifference standard did not require active efforts by an inducer to avoid knowing about the infringing nature of the activities, and that this was not sufficiently restrictive enough to be tantamount to knowledge that the induced acts constituted patent infringement.

I had a case that went to trial a couple of weeks after Global-Tech was decided, and because induced infringement was at issue, we all struggled with the meaning of Global Tech and how to craft jury instructions consistent with the holdings. There are some complicated issues there that are not by any means resolved by the Supreme Court's ruling.

It still appears that most plaintiffs asserting induced infringement will have to show that the defendant had actual knowledge that the acts it induced constitute patent infringement. Some feel this decision will be of little importance because the defendant clearly had its head in the sand. While the defendant commissioned a "right-to-use study," they did not tell the searcher that they had copied plaintiff's product. We all know how difficult it is to perform right to manufacture searches so this failure to disclose the copying of a product that might well be patented was held to qualify as "willful blindness." But the Federal Circuit will undoubtedly have to deal with situations where willful blindness is not so clear. How about when a defendant subjectively believes it is not infringing? Under what circumstances can that party be held guilty of inducing infringement?

But the Court didn't go so far as to require a search in every case, nor did it require "actual knowledge," which would have been easier to enforce but would have encouraged precisely the type of behavior we saw in Global-Tech.

Will the doctrine of "willful blindness," which we have not previously seen in a patent context, creep into other areas of patent law such as willful infringement. How different from "willful blindness" is "objective recklessness?"

In his dissent, Justice Kennedy, wondered whether this doctrine of willful blindness could extend to any federal cases involving knowledge. So the Federal Circuit may well have to deal with the willful blindness issue in the many other areas of federal law in which it hears cases in addition to patent law.

Finally, by requiring knowledge of the patent, Global Tech will encourage patentees to inform product-sellers of their patents, knowing that those products might possibly be used for infringing purposes. While this may lead to early resolution of potential disputes, it also may result in declaratory judgment actions and accompanying disputes over whether there is a "case or controversy" and subject matter jurisdiction. See MidImmune v. Genentech, Inc., 549 U.S. 118 (2007).

Therasense and Inequitable Conduct

The Therasense case (Therasense, Inc. v. Becton Dickinson and Co., 593 F.3d 1289 (Fed. Cir. 2011)) was decided in June of this year by an en banc Federal Circuit. In their opinion the Court toughened the test for successful assertion of the inequitable conduct defense in an attempt to address the "plague" of inequitable conduct allegations that are a part of the defense of so many patent infringement lawsuits.

According to the court, the "intent" prong is satisfied only by a showing of specific intent that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it.

To meet the "materiality" prong, the Court adopted a "but for" test, requiring the challenger to show that "the PTO would not have allowed a claim had it been aware of the undisclosed art."

An "egregious conduct" exception was added in the event the "but for" test is not met, for example, where a fraudulent affidavit is filed that might not have been critical to allowance.

But maybe all isn't resolved. The case was decided on a slim 6 to 5 majority, with 4 of the 5 dissenters arguing for application of the PTO's Rule 56 "reasonable examiner's" standard on materiality:

The current Rule 56(b) says that information is material to patentability when it is not cumulative, and (1) It establishes, by itself or in combination with other information, a prima facie case of unpatentability of a claim; or (2) It refutes, or is inconsistent with, a position the applicant has taken in arguing for allowance.

The dissent in Therasense argued that (1) the PTO is in the best position to know what information is material to the examination process; and (2) the higher standard of materiality will not provide appropriate incentives for applicants to comply with their disclosure obligations. Judge O'Malley, the only member of the court appointed after being a district court judge, said both the majority and the dissent strain too hard to impose hard and fast rules. The doctrine of inequitable conduct is based on equity, the district court should be given more leeway, being able to render fewer than all claims unenforceable, or fashion some other reasonable remedy commensurate with the violation.

So what is going to happen now with almost an equally-divided court, and the likelihood of a substantial turnover of judges in the next few years. Well, good things have happened since the Therasense decision. A few weeks after Therasense, in a precedential decision, the Therasense intent and materiality holdings were applied in American Calcar Inc. v. American Honda Motor Co., 2009-1503, 2009-1567 (Fed. Cir., June 27, 2011). The district court based its decision that intent had been shown on the finding that the testimony of one of the inventors "lacked credibility," a finding that under the pre-Therasense "sliding scale" might have permitted an affirmance of the decision. The opinion was written by Judge Lourie, who joined the majority in Therasense, but he was joined by Judges Bryson and Gajarsa, who dissented from the Therasense opinion.

And in another positive development, on July 21 the PTO proposed a new Rule 56(b) that mimics the Therasense standards.

It is also important to reduction of litigation surrounding allegations of inequitable conduct that section 257 of the AIA provides for supplemental examination of an issued patent. Specifically a request for supplemental examination may be filed by a patent owner requesting that the PTO consider or correct information believed to be relevant to the patent. The basis of the request is not limited to patents and printed publications, and may include other issues such as section 112. The standard for granting the request is whether one or more items of information raises a substantial new question of patentability, and if this threshold is met, an ex parte reexamination will be ordered. This supplemental examination provision becomes effective September 16, 2012, but applies to any patent issued before or after the effective date.

So hopefully between the Therasense decision and the patentee's ability to address disclosure problems in a Supplemental Examination, we will see inequitable conduct raised only in those cases where it really should be addressed.

Patent pleadings in view of Twombly

Bell Atlantic Corp. v. Twombly, 550 U.S. 544 (2007) required that plaintiffs include enough facts in their complaint to make it plausible, not merely possible or conceivable, that they will be able to prove facts to support their claims. Ever since Twombly, and the follow-up case Ashcroft v Iqbal, 129 S.Ct. 1937 (2009), courts have looked hard to determine whether pleadings are merely conclusory with few factual allegations or whether they provide facts sufficient to support the claim.

Twombly and Iqbal appear to be at odds with Form 18 of the Federal Rules of Civil Procedure, which was adopted after Twombly but prior to Iqbal. Form 18 sets forth a very basic example of a patent infringement pleading, which would not appear to pass muster in view of Twombly and Iqbal.

In McZeal v. Sprint Nextel Corp., 501 F.3d 1354 (Fed Cir. 2007) the Federal Circuit deemed a complaint that tracked Form 18 to be sufficient, but just barely, even though it asserted infringement under the doctrine of equivalents. A divided panel found the pleading adequate, but it did suggest it was doing to because the plaintiff was pro se, and specifically stated that it was not condoning his method of pleading.

Two recent patent cases illustrate that district courts appear to be handling Twombly arguments in very different ways. In The Nielsen Co. v. comScore, Inc., 11-cv-168 (E.D. Va., Aug. 19, 2011), the court denied a motion to dismiss, ruling that the pleading complied with Form 18, while in Medsquire LLC v. Spring Med. Sys., Inc., 2-11-cv-04504 (C.D. Cal., Aug. 31, 2011), the court granted a motion to dismiss because the Form 18 pleading included conclusory statements that failed to include any facts identifying the relevant aspect of the accused product that infringed the patent.

Twombly cases are now making their way to the Federal Circuit – see In re Bill of Lading, 695 F. Supp. 2d. 680 (S.D. Ohio 2010). I happened to be at the Federal Circuit the day this case was being argued and I thought from the questioning it was very difficult to see which way the panel was leaning.

The Court helped inform us what we needed to plead with regard it inequitable conduct in Exergen Corporation v. Wal-Mart Stores, Inc., 575 F.3d 1312 (Fed. Cir. 2009). You'll recall that this was the case where the court they told us we needed to plead the specific "who, what, when, where, and how of [any] material misrepresentation or omission."

Most courts appear to be taking the position that Form 18 type patent infringement pleadings are adequate only in those cases involving direct infringement of a simple device patent, but this is an area where practitioners and district courts alike could use some clear guidance.

Recent Federal Circuit Cases Have Perhaps Rendered Legislative Action
Limiting Damages Unnecessary

In Uniloc USA v. Microsoft Corp., 632 F.3d 1292 (Fed. Cir. 2011), the Court held that the 25% rule of thumb that many lower courts had used to determine what percentage of an infringer's profits should go to the patent owner was a fundamentally flawed tool.

In Inc. v. Lansa Inc., 594 F.3d 860 (Fed. Cir. 2010), the Court vacated an award because plaintiff's damages expert used licenses that bore no relationship to the claimed invention to establish a baseline royalty of 12.5%.

Lucent Technologies Inc. v. Gateway Inc., 580 F.3d 1301 (Fed. Cir. 2009), ruled that the jury's award lacked sufficient evidentiary support as to running royalty agreements to arrive at a lump-sum damages award.

In two other decisions Judge Rader, sitting with district courts, helped clarify the law as to the entire market value rule (Cornell v. Hewlett-Packard (N.D.N.Y. 2009)) and the role of the district courts as gatekeepers to exclude inappropriate expert testimony under Daubert (IP Innovation LLC v. Red Hat Inc. (E.D. Tex. 2010)).

Until all of these decisions were rendered, one of the most controversial parts of the patent reform effort was with respect to what were seen by many as excessive damage awards. These cases satisfied many who were leading the effort that the Federal Circuit was adequately addressing the damages issues and no legislative assistance was necessary.

So this is an area where the Federal Circuit has done a good job helping to clarify the law, and undoubtedly will be asked to apply the holdings of these cases in the future as additional big money jury awards work their way through the system.

Do Internet-related Inventions Constitute Patentable Subject Matter?

Ultramercial LLC v. Hulu, 2010-1544 (Fed. Cir., Sept. 15, 2011) overturned a district court's decision that invalidated the patent under section 101. In an opinion authored by Judge Rader, the court noted that many of the steps of the claimed Internet advertising invention required intricate and complex computer programming, with an extensive computer interface. So without holding that every use of an Internet website to practice such a method would be sufficient to satisfy section 101, the court found that claims here are patent-eligible.

In CyberSource Corp. v. Retail Decisions Inc., 2009-1358 (Fed. Cir. Aug. 16, 2011), a different panel of the court cited Bilski, stating that the application of purely human intelligence to the solution of practical problems is no more than a claim to a fundamental principle. Here the internet-related claims were held to be capable of being performed purely mentally, and therefore were found to be unpatentable under section 101. This was held to be true even if the claims are tied to computer hardware.

But when you read the Ultramercial and CyberSource opinions, it doesn't appear at least to me that the cases are so easily distinguishable. The CyberSource claims were construed to include a data structure or logical association that would require some programming. Granted that there was more complex programming going on in Ultramercial but it's really difficult right now for practitioners to know and advise our clients on how the court is going to rule.

In another recent case, in which the Federal Circuit panel was divided, Classen Immunotherapies Inc v. Biogen Idec (Fed. Cir., Aug. 31, 2011), Judge Newman and Judge Rader noted that section 101 should be a "coarse eligibility filter" that should rarely invalidate patents. In dissent, Judge Moore suggested that the majority's analysis was essentially a return to the "useful, concrete and tangible" test that the Bilski opinion rejected.

There are two other cases involving similar issues that were argued in the past few months. These are Fuzzysharp Technologies v. 3D and DealerTrack v. Huber, so watch for those.

So I think it's fair to say we are all looking for guidance on how to draft claims and how to argue our cases. This is an area of continuing challenge, and hopefully we'll get some guidance in the future.

Do Certain Health Care Technologies Constitute Patentable Subject Matter?

Mayo Collaborative Services v. Prometheus Laboratories Inc., (Petition for Cert accepted from Prometheus Laboratories Inc. v. Mayo Collaborative Services, 628 F.3d 1347 (Fed. Cir. 2010)). In this case the Federal Circuit has twice upheld patentability under section 101, both before and after Bilski. The issue as couched before the Supreme Court is whether section 101 is satisfied by a patent claim that covers observed correlations between blood tests and patient health. There have been many amicus briefs filed, including by the medical establishment, arguing that health care will be undermined if conventional medical applications of scientific observations of naturally-occurring bodily processes can be patented.

Association for Molecular Pathology v. U.S. Patent and Trademark Office (ACLU v. Myriad), 2010-1406 (Fed. Cir., July 29, 2011) In another divided panel, the court ruled that patents claiming isolated DNA are statutory subject matter under section 101. Based on Diamond v Chakrabarty, Judge Lourie held that isolated DNA has markedly different chemical characteristics compared to corresponding native DNA in the human body. This case is an extremely controversial one, with many amicus briefs being filed by ACLU on behalf of breast cancer patients and others. The Department of Justice even filed a brief, without PTO support. The DOJ brief at one point suggested a "magic microscope test" in which a composition would not be patent eligible if the microscope could focus in vivo and find the same DNA sequence as was claimed. I have not seen a petition for en banc hearing filed although a motion for reconsideration has already been denied. Petitions for cert. are likely in the case, but Myriad is attempting to destroy standing and thereby render the case moot.

So this health care area is another area where the law is developing and we'll have to watch to see how the Supreme Court handles these issues. Or perhaps we'll see more from the Federal Circuit if it hears the Myriad case en banc. The AIA's ban on patents directed to human organisms will likely add to the interesting and challenging issues being considered in the health care area.

Joint Liability for Direct Patent Infringement

En banc review currently underway in two similar cases. In Akamai Technologies, Inc. v. Limelight Networks, Inc., 2010-1291 (Fed. Cir.),a unanimous panel of the Federal Circuit had ruled that only an agency relationship or a contractual obligation can support a finding of joint infringement liability by two parties who together but not independently infringe the steps of a method claim.

McKesson Technologies, Inc. v. Epic Systems Corp., 2010-1291 (Fed. Cir.) holds a patent on a method of communication between health care providers and patients over the internet. The defendant Epic licenses software that allows health care providers to create personalized web pages for their patients. A majority of the panel found no joint infringement under section 271(a), requiring that for liability the health care provider must have direction or control over the patient's part in the infringement. The dissent accepted McKesson's argument that this decision, as well as the one in Akamai, contravenes ordinary principles of law involving concerted action.

So the Court's en banc rulings will help determine just how enforceable method claims are when direct infringement of a method claim requires actions by two different entities.

Registrability of Color Trademarks

One area that hasn't gotten much attention in the Federal Circuit of late is the use and registrability of colors as trademarks. Traditionally courts have been reluctant to grant trademark protection to colors, noting the so-called color depletion rule which will necessarily limit the number of colors available for particular products. But in its 1985 landmark ruling regarding Owens Corning's attempt to register the color pink for its insulation, the Federal Circuit held that the overall color of a product was not precluded from registration as a trademark. In re Owens-Corning Fiberglas Corp., 774 F. 2d. 1116 (Fed. Cir. 1985) In 1995, the Supreme Court resolved a split in the circuits and went along with the Federal Circuit, holding that a single color of a products is capable of being registered and protected as a trademark. Qualitex Co. v. Jacobson Prods. Co., 514 U.S.159 (1995).

I raise this issue today because of a ruling by the Southern District of New York in August of this year that Christian Louboutin should not be able to protect as a trademark the bright red soles used on its shoes. Christian Louboutin S.A. et al. v. Yves Saint Laurent America, Inc., 11 Civ. 2381 (S.D.N.Y., August 10, 2011). According to the court, it is inconceivable "that the Lanham Act could serve as the source of the broad spectrum of absurdities that would follow recognition of a trademark for the use of a single color for fashion items."

Louboutin had been able to register its trademark in the USPTO in 2008 and had moved for a preliminary injunction to stop Laurent from selling shoes with red soles. In addition to noting its federal trademark registration, Louboutin presented evidence that its shoes sell for as much as $1000 a pair and that the sell 240,000 pairs per year with annual revenues of well over $100 million dollars. Louboutin doesn't advertise their shoes but there are evidently they are best promoted on the red carpet at the Academy Awards and the Emmys. Sarah Jessica Parker and Jennifer Lopez wear them and, as I said, JLO actually released a song in 2009 about her Louboutins.

In any event, the preliminary injunction was denied, and court invited Laurent to file for summary judgment cancelling Louboutin's trademark. Given the money involved, the case will undoubtedly be appealed to the Second Circuit, so we will likely hear more about it. While the press and the attention that they shoes should prove helpful on appeal, the Owens Corning ad campaign using the Pink Panther and In the Pink certainly helped its cause before the Federal Circuit back in 1985. But the Owens Corning case was the easy one, much like the defendant in Global-Tech who kept from its patent attorney the fact that they had copied the patentee's design and therefore was held to be willfully blind. We'll undoubtedly see trademark registrations to colors that are refused by the TTAB come before the Federal Circuit that aren't as clear as the color pink for insulation, and it will be interesting to see how the Federal Circuit handles them.

Federal Circuit Addresses Professionalism in Two Recent Rulings

In two decisions in the past 6 months the court raised issues about the professionalism of the attorneys involved in the appeal.

Inventio AG v. ThyssenKrupp Elevator Americas Corp., no. 2010-1525 (Fed. Cir., June 15, 2011) Court denied a motion to strike a reply brief, noting the motion's "nasty tone" and that its filing borders on the type of frivolous and wasteful litigation tactics we have previously frowned upon.

Aventis Pharma S.A. v.Hospira Inc., 637 F.3d 1341 (Fed. Cir. 2011) Court characterized the improper use of a cross-appeal as an attempt to "game the system" in order to obtain the final word; and noting that counsel's refusal to withdraw the cross-appeal was particularly egregious even after opposing counsel pointed out how the cross-appeal was baseless.


It is difficult to think of a time when the Federal Circuit and the Supreme Court have been considering such interesting cases involving a number of different IP issues. Leahy-Smith adds to the mix, so the next couple of years will be a time to keep close tabs on the cases by both courts.