Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights:
- an article and a blog post discussing potential impact of the Supreme Court’s grant of certiorari in a trademark case decided by the Federal Circuit;
- a blog post highlighting “five tips for IPR practice” in light of the Federal Circuit’s ruling in a precedential case regarding inter partes review; and
- an article about the impact on attorney fee motions after the Federal Circuit’s decision in a patent case dealing with attorney fees and non-taxable costs under 35 U.S.C. § 285.
Monica Talley authored an article for Bloomberg Law about the potential impact of the Supreme Court granting certiorari in Vidal v. Elster, a trademark case decided by the Federal Circuit. Talley believes this “case differs significantly from those recently before the court that invalidated Lanham Act prohibitions on registration of disparaging marks (Matal v. Tam) and marks that are scandalous or immoral (Iancu v. Brunetti).” She highlights how “[m]any brand owners are understandably concerned that a complete overturn, or even significant narrowing, of Section 2(c) [of the Lanham Act] would appear contrary to the purpose and intent of the . . . act in refusing to recognize that living persons may have valuable rights in their own names.”
Dennis Crouch wrote a blog post on PatentlyO also highlighting Vidal v. Elster. In the post, he remarks how “[s]everal prominent scholars have argued that the PTO could prevent the registration of political commentary marks under the ‘failure to function’ doctrine.” He notes how the “argument is that political commentary marks are not perceived by the public as source indicators, but, rather, as political commentary.”
Ashley N. Moore wrote a blog post for IPWatchdog highlighting “five tips for IPR practice” in light of the Federal Circuit’s ruling in Medtronic, Inc. v. Teleflex Innovations S.A.R.L. regarding inter partes review. Moore notes, among other tips, how “arguments of a combination’s inoperability are alive and well, and IPR practitioners should employ these arguments where appropriate.” She also recommends “parties challenging a final written decision must provide a detailed description of all matters that the [Patent Trial and Appeal Board] allegedly overlooked or misapprehended.”
Jeremy Edwards authored an article for Law360 about the impact of the Federal Circuit’s decision in OneSubsea IP UK Ltd. v. FMC Technologies Inc., a patent case dealing with attorney fees and non-taxable costs under 35 U.S.C. § 285. He suggests “persuading the district court to your side on an attorney fee motion is essentially your only shot.” He notes how the “decision is highly discretionary, so do not expect rigorous scrutiny from the Federal Circuit.”