December 19, 2014
While the recent patent case Alice Corp. Pty. Ltd. v. CLS Bank International et al., 134 S. Ct. 2347 (2014), is generating notice, that attention is usually from patent prosecutors, not general counsel with limited experience in patent law. The Supreme Court cases attorneys at corporations probably should know involve ways of mitigating the cost of suits brought by patent holders. Such cases include Highmark Inc. v. Allcare Health Management Systems Inc., 134 S. Ct. 1744 (2014), and Octane Fitness LLC v. Icon Health & Fitness Inc., 134 S. Ct. 1749 (2014), both of which involve awarding attorney fees for successfully fending off patent infringement litigation. Because any corporation can be the target of a patent infringement suit, corporate counsel should know the standards and means of keeping the costs at a minimum for defending such suits. With these two cases, the Supreme Court clarified court standards for weighing whether a suit was “exceptional” for the purpose of awarding attorney fees. Such an award following the successful defense also deters future suits against a company.
Two trademark cases are currently being reviewed by the high court. Of these two, the high court’s evaluation of the 8th Circuit’s ruling in B&B Hardware Inc. v. Hargis Industries Inc. et al., 716 F.3d 1020 (8th Cir. 2013), will probably have the most influence on trademark law. In that case, the petitioner challenges the differing standards used to measure whether a likelihood of confusion exists between two marks. The USPTO’s Trademark Trial and Appeal Board applies the U.S. Court of Appeals for the Federal Circuit’s 13-factor test, established in In re E.I. du Pont de Nemours & Co., 476 F.2d 1357 (C.C.P.A. 1973). Each of the 11 remaining circuits applies a different test made up of various factors, such as whether a mark is famous or the degree of care used by consumers. In B&B Hardware, the appeals court could not consider the TTAB’s likelihood of confusion ruling, and the two courts ruled differently. The high court will soon decide if differing likelihood-of-confusion tests are necessary.
In the area of copyright law, Google’s recent request to overturn the Federal Circuit’s decision in Oracle Am. v. Google Inc., 750 F.3d 1339 (Fed. Cir. 2014), could have a tremendous impact if the Supreme Court agrees to hear it. In October Google filed a petition for certiorari arguing that if the Federal Circuit’s decision to allow copyright protection for application programming interfaces stands, software developers would be unfairly restrained. Those developers seeking to build upon APIs will have to negotiate a license before they can experiment with developing new software that could benefit the public. Google’s argument is based on the theory that certain operations are excluded from copyright protection even if they have a minimal aspect of creativity. Any corporation that develops software or uses software, which is just about every organization, could be affected if the Supreme Court weighs in on this debate.