IP Newsflash

Akin Gump published a client alert on the Supreme Court holding in Romag Fasteners Inc. v. Fossil Inc. et al. that a showing of willfulness is not required for a plaintiff to recover a defendant’s profits resulting from trademark infringement under 15 U.S.C. §1125(a). The decision settled a split in the circuits with respect to the requirement of a showing of willfulness in awarding profit damages to a trademark plaintiff. To read the full alert, please click here.

In Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., et al., Judge Stark ruled that the Supreme Court’s holding in WesternGeco LLC v. ION Geophysical Corp., 138 S.Ct. 2129 (2018)—allowing for recovery of lost profits from foreign sales for infringement under 35 U.S.C. § 271(f)(2)—can be applied to sales stemming from run-of-the-mill direct infringement under 35 U.S.C. § 271(a) and should not be limited to only those sales stemming from the specific form of indirect infringement at issue in WesternGeco.

The Federal Circuit ruled that when a defendant is incorporated in a state that has multiple judicial districts, the defendant will reside in only one of the districts for venue purposes under the patent venue statute, 28 U.S.C. § 1400(b). Under the residence prong, venue is proper where the defendant has its principal place of business or, if none, where the defendant has its registered office.

On December 2, 2016, the Supreme Court granted certiorari in a case regarding the scope of patent exhaustion, including whether foreign sales exhaust U.S. patent rights and if post-sale restrictions on patented items are permissible. Impression Products, Inc. v. Lexmark International, Inc., 15-1189. The Court’s resolution of this case may have important implications for global commerce and secondary markets of patented products.

On Monday, March 21, 2016, Sequenom, Inc. filed a petition for writ of certiorari in Sequenom, Inc. v. Ariosa Diagnostics, Inc., et al., No. 14-1139 (Fed. Cir. June 12, 2015). The question posed to the Supreme Court centers around the patentability of diagnostic claims applied to newly-discovered natural phenomena.

The claimed work dates back to 1996, when two doctors discovered paternal cell-free fetal DNA (cffDNA) in maternal blood serum and plasma. With that discovery, the doctors developed a method of testing fetal DNA to determine, among other things, the risk of certain birth defects in a manner far less invasive than conventional techniques, which required DNA samples to be taken directly from the fetus or placenta. The doctors obtained U.S. Patent No. 6,258,540 covering the methods.

The U.S. Supreme Court denied New Millennium Sports, S.L.U.’s (New Millennium) writ to review the Federal Circuit’s holding overturning a decision by the Trademark Trial and Appeal Board (TTAB). New Millennium is a Spanish company that owns a trademark with an animal paw print element and the word “KELME” in connection with sports clothing. In 2009, Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA (Jack Wolfskin) applied for a trademark with a paw print design in connection with clothing. New Millennium filed an opposition against Jack Wolfskin in 2010.

The U.S. Supreme Court denied Alps South’s writ to review the Federal Circuit’s decision that the company lacked standing to assert its patent covering prosthetic liners against The Ohio Willow Wood Company. The district court initially found that the patent was valid and willfully infringed, and denied Ohio Willow’s motion to dismiss for lack of standing. On appeal, Ohio Willow argued that Alps South did not possess all substantial rights to the asserted patent. Alps South obtained the asserted patent via a license agreement in which the original licensor retained the rights to make and sell products outside the field of prosthetic liners. Because the license agreement had a field-of-use restriction and Alps South did not join the original assignee as a co-plaintiff, Ohio Willow argued that Alps South lacked standing to sue.

The U.S. Supreme Court denied New Millennium Sports, S.L.U.’s (New Millennium) writ to review the Federal Circuit’s holding overturning a decision by the Trademark Trial and Appeal Board (TTAB). New Millennium is a Spanish company that owns a trademark with an animal paw print element and the word “KELME” in connection with sports clothing. In 2009, Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA (Jack Wolfskin) applied for a trademark with a paw print design in connection with clothing. New Millennium filed an opposition against Jack Wolfskin in 2010.