intellectual property

Abitron Austria GmbH v. Hetronic International, Inc.

Issues

Does the Lanham Act apply extraterritorially to trademark infringement by a foreign entity’s conduct outside of the United States, including those foreign commercial activities that never took place in the United States or confused U.S. consumers?

This case asks the Supreme Court to determine whether the Lanham Act (“the Act”), a federal trademark law, applies extraterritorially to trademark infringement outside the United States by a foreign entity. Abitron argues that the Act does not apply to foreign sales, because such an extensive reading of the Act’s scope is not supported by statutory interpretation or case law. Hetronic counters that both the Act’s language and the Court’s precedent about Congress and the Act’s expansive power leaves no doubt about its extraterritorial reach. The outcome of this case has heavy implications for the territoriality principle in international law and the rights and remedies of U.S. trademark owners.

Questions as Framed for the Court by the Parties

Whether the U.S. Court of Appeals for the 10th Circuit erred in applying the Lanham Act, which provides civil remedies for infringement of U.S. trademarks, extraterritorially to Abitron Austria GmbH’s foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers.

In the 1980s, a German engineer developed radio control products and established a German company, Hetronic Steuersysteme GmbH, which was the predecessor of one of the parties in this case, Abitron Austria GmbH, et al. (“Abitron”). Brief for Petitioners, Abitron Austria GmbH, et al. at 8. The German engineer later established Hetronic International, Inc.

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Alice Corporation Pty. Ltd. v. CLS Bank International

Issues

Are claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—patent-eligible subject matter?

Alice Corporation was granted patents on several processes and systems relating to the use of computer software to facilitate securities trading and reduce risks of parties not fulfilling contractual obligations. CLS Bank developed software for its own use in similar transactions. CLS brought an action for declaratory judgment, asserting that Alice’s patents were subject-matter ineligible because they did no more than recite abstract ideas regarding fundamental economic concepts. Alice counterclaimed, asserting that CLS infringed Alice’s patents. The district court found the Alice patents invalid, but the Federal Circuit reversed, holding that Alice’s patents fell within the “abstract ideas” exception to the generally broad policy of patent eligibility. Alice argues that the abstract ideas exception is meant to be read narrowly and apply to fundamental truths such as facts of nature. CLS counters that Alice’s patents merely cover fundamental economic concepts and that these should fall within the exception. At issue is a basic question about the scope of patent-eligible subject matter, and the breadth of the abstract ideas exception. The Court’s decision could fundamentally alter the scope of what is patentable.  The decision may encourage innovation in the software and other industries by rewarding those who expend resources to bring about a useful product to the public.

Questions as Framed for the Court by the Parties

Whether claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court? 

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Facts

In securities trading, when two parties agree to a trade there is often a time lapse between when the parties enter into the agreement and when the actual trade is performed. See CLS Bank Int’l v. Alice Corp., 717 F.3d 1269, 1274 (Fed Cir. 2013).

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Allen v. Cooper

Issues

Did Congress have the power under Article I of the Constitution or Section 5 of the Fourteenth Amendment to pass the Copyright Remedy Clarification Act, which abrogated State’s sovereign immunity from violating federal copyright law?

This case asks the Supreme Court to determine whether Congress has the power to revoke States’ sovereign immunity from federal copyright infringement under the Copyright Remedy Clarification Act (“CRCA”). Frederick Allen, a videographer, and his video production company argue that the CRCA is a valid exercise of Congress’s enforcement power under the Intellectual Property Clause (“Clause”) of the Constitution. Allen and his company also argue that the CRCA is valid because it enforces his due process rights under Section 5 of the Fourteenth Amendment. Roy Cooper, the governor of North Carolina, argues that the CRCA is unconstitutional and that Congress’s Section 5 power to abrogate state sovereign immunity does not apply in this case. The outcome of this case has important implications for copyright holders and copyright enforcement, as well as for determining the extent of Congress’ power to abrogate state sovereign immunity.

Questions as Framed for the Court by the Parties

Whether Congress validly abrogated state sovereign immunity via the Copyright Remedy Clarification Act in providing remedies for authors of original expression whose federal copyrights are infringed by states.

The Queen Anne’s Revenge is a former French merchant vessel that was captured by the pirate Edward Teach, more commonly known as Blackbeard, in 1717. Allen v. Cooper at 343. Teach abandoned the Revenge in 1718 when it ran aground off the coast of Beaufort, North Carolina.  Id.

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Already, LLC v. Nike, Inc.

Nike, Inc., sued Already, LLC d/b/a Yums, for selling shoes that allegedly infringed on Nike’s trademark covering the Air Force 1 shoe line. Yums counterclaimed to cancel Nike’s trademark. Shortly after Yums’s counterclaim, Nike dropped its claim and promised Yums that Nike would not assert its trademark against any of Yums’s current or previous products. The district court dismissed Yums’s counterclaim and the court of appeals affirmed the dismissal. Yums argues that a controversy remains after Nike’s promise not to sue because Nike’s trademark continues to hinder Yums’s ability to compete in the athletic footwear business. Nike argues that a court cannot hear a trademark claim without a controversy, and that Nike’s promise not to sue eliminated any controversy involving the Air Force 1 trademark. The Supreme Court’s decision here may determine whether intellectual property owners can drop infringement actions without having to defend counterclaims challenging their intellectual property rights. This decision may have a significant impact on intellectual property litigation and on the risks associated with commencing an infringement action.

Questions as Framed for the Court by the Parties

Whether a federal district court is divested of Article III jurisdiction over a party's challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party's then-existing commercial activities?

Issue

Does a federal district court lose jurisdiction over a trademark cancellation claim after the trademark holder terminates any infringement actions and promises not to assert its trademark against the party seeking the trademark’s cancellation?

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American Broadcasting Companies, Inc. v. Aereo, Inc.

Issues

Does a company “publicly perform” a television program when it retransmits broadcasts of that program to thousands of paid subscribers over the Internet?

Aereo is a company that offers subscribers the ability to watch and record local broadcast television over the internet for a monthly fee. Aereo retransmits the programming without a license and without paying a fee to copyright holders. ABC and other television broadcasters sued Aereo for copyright infringement and moved for a preliminary injection. The district court and Second Circuit denied the plaintiffs’ motion because the plaintiffs failed to demonstrate a likelihood of prevailing on the merits in their infringement action. The Supreme Court will decide whether a company that retransmits programming to paid subscribers without obtaining the owner’s permission violates the Copyright Act. The Court’s decision could upend the traditional business model of broadcast television and will affect the relationship between technological innovation and content distribution.

Questions as Framed for the Court by the Parties

A copyright holder possesses the exclusive right “to perform the copyrighted work publicly.” 17 U.S.C. §106(4). In the Copyright Act of 1976, Congress defined the phrase “[t]o perform ... ‘publicly’” to include, among other things, “to transmit or otherwise communicate a performance or display of the work ... to the public, by means of any device or process, whether the members of the public capable of receiving the performance or display receive it in the same place or in separate places and at the same time or at different times.” Id. §101. Congress enacted that provision with the express intent to bring within the scope of the public-performance right services that retransmit over-the-air television broadcasts to the public. Respondent Aereo offers just such a service. Aereo captures over-the-air television broadcasts and, without obtaining authorization from or compensating anyone, retransmits that programming to tens of thousands of members of the public over the Internet for a profit. According to the Second Circuit, because Aereo sends each of its subscribers an individualized transmission of a performance from a unique copy of each copyrighted program, it is not transmitting performances “to the public,” but rather is engaged in tens of thousands of "private" performances to paying strangers.

The question presented is:

Whether a company “publicly performs” a copyrighted television program when it retransmits a broadcast of that program to thousands of paid subscribers over the Internet.

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Facts

Respondent Aereo allows its subscribers to watch and record locally-broadcast television programs over the internet for a monthly fee. See WNET v. Aereo, Inc.,712 F.3d 676, 680. Aereo provides the functionality of a television, a Digital Video Recorder (“DVR”), and a slingbox.

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Amgen Inc. v. Sanofi

Issues

Should the enablement requirement of a patent claim focus on whether the disclosures simply enable skilled people in the field to “make and use” the claimed invention or whether the disclosures accurately enable the “full scope” of the invention – all variations of the invention that fall within the patent claim’s description of the invention; and, would a relatively easy trial-and-error procedure equate to undue experimentation?

This case asks the Supreme Court to clarify whether Amgen’s disclosure of common techniques – a trial-and-error procedure and amino acid substitution technique – is sufficient to satisfy the enablement requirement for Amgen’s patent claim over all antibodies that bind to PSK9 protein and block PSK9 protein’s ability to bind to LDL receptors. Amgen argues that the focus of the enablement standard should be on whether the disclosure leads people to “make and use” the claimed invention and that common techniques do not amount to undue experimentation. Sanofi counters that the disclosures should be specific for broad patent claims and that Amgen’s trial-and-error techniques amount to undue experimentation. This case has significant implications on future innovation in the pharmaceutical industry and the patent law system.

Questions as Framed for the Court by the Parties

Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, or whether it must instead enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial “time and effort.” 

Heart disease and cholesterol named elevated low-density lipoprotein (“LDL”) are correlated. Amgen Inc. v. Sanofi, Aventisub LLC. at 1082. When cholesterol is in the blood stream, the LDL receptors remove LDL cholesterol. Id. And the degradation of LDL receptor is regulated by an enzyme named proprotein convertase subtilisin/kexin type 9 (“PCSK9”). Id. at 1082–83.

Acknowledgments

The authors would like to thank Professor Oskar Liivak for his guidance and insights into this case.

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Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith

Issues

Does a work of art that visually resembles its copyrighted source material, but conveys a different meaning, constitute fair use? Is a court permitted to consider meaning when evaluating copyright infringement claims?

This case asks the Supreme Court to determine whether a work of art that visually resembles its source material but transforms its meaning constitutes fair use under copyright law. The Andy Warhol Foundation for the Visual Arts (AWF) argues that several screenprints created by Andy Warhol, which derive from an original photograph by Lynn Goldsmith, are transformative and constitute fair use because they portray a significantly different message than Goldsmith’s original photograph. Goldsmith argues that since her photograph is recognizable in Warhol’s prints and the works share the same purpose, the prints are not fair use but rather infringe her copyright in her photo. The outcome of this case carries implications for copyright holders’ economic incentives, marginalized artists’ commercial prospects, and creative expression.

Questions as Framed for the Court by the Parties

Whether a work of art is “transformative” when it conveys a different meaning or message from its source material (as the Supreme Court, U.S. Court of Appeals for the 9th Circuit, and other courts of appeals have held), or whether a court is forbidden from considering the meaning of the accused work where it “recognizably deriv[es] from” its source material (as the U.S. Court of Appeals for the 2nd Circuit has held).

In 1981, Lynn Goldsmith, a prominent celebrity portrait photographer, took a photograph of the musician Prince. Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith at 33. Goldsmith holds a copyright in the photo. Id.

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Commil USA, LLC v. Cisco Systems, Inc.

Issues

Is a defendant’s reasonable, good-faith belief that a patent is invalid a viable defense to patent infringement by inducement under 35 U.S.C. § 271(b)?

The Supreme Court will determine whether a defendant with a good-faith belief that a patent is invalid can be found liable for induced infringement. Commil argues that a good-faith belief defense of a patent’s invalidity is irrelevant to the intent requirement to establish infringement by inducement under § 271(b). In opposition, Cisco argues that a good-faith belief defense of a patent’s invalidity is crucial to determining culpability and thus, relevant in establishing infringement by inducement. The ruling in this case will impact the scope of a patent owner’s rights and the availability of a new defense to patent infringement by inducement. Additionally, the decision in this case could have important consequences for the sale and marketing of generic-drug counterparts. 

Questions as Framed for the Court by the Parties

Commil holds a patent teaching a method to implement short-range wireless networks. At trial, the jury returned a verdict that Commil's patent was valid, that Cisco directly infringed but did not induce infringement, and awarded damages. Because Cisco's counsel invoked stereotypes about Commil's Jewish owner and inventors during trial, the district court found the verdict "inconsistent with substantial justice" and ordered a new trial on inducement and damages only. At the second trial, the jury returned a verdict that Cisco induced infringement and awarded damages. The Federal Circuit reversed and remanded for a third trial on two grounds. First, although Commil's patent is valid, the Federal Circuit held that Cisco's "good faith belief” that the patent was invalid is a defense to induced infringement. Second, although Cisco had actual knowledge of Commil's patent, the Federal Circuit held that this Court's opinion in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011) rendered erroneous and prejudicial the jury instruction based on DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006). 

Did the Federal Circuit err in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b)?

Petitioner Commil USA, LLC (“Commil”) owns a patent, U.S. Patent No. 6,430,395 (“the ’395 patent”), relating to wireless local area networks (“WLANs”).

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