IP Law Bulletin

In Commil USA, LLC v. Cisco Systems, Inc. (No. 13-896, May 26, 2015), the United States Supreme Court held that a good faith belief in the invalidity of a patent is not a shield to liability for active inducement of infringement. In so holding, the Court eliminated a defense which the Federal Circuit established just two years ago. Justice Kennedy, writing for the majority in this 6-2 decision, however, made clear that the removal of this quiver from an alleged infringer’s arsenal of defenses is not an endorsement of patent trolls.

On April 13, 2015, the U.S. Food and Drug Administration (FDA) announced the availability of the Center for Diseases and Radiological Health’s (CDRH) final guidance document entitled “Expedited Access for Premarket Approval and De Novo Medical Devices Intended for Unmet Medical Need for Life Threatening or Irreversibly Debilitating Diseases or Conditions.” This 44-page final guidance outlines the FDA’s new Expedited Access Pathway (EAP) program for select medical devices that demonstrate the potential to address life-threatening or irreversibly debilitating, unmet medical needs. The FDA stated that the EAP program will “… help patients have more timely access to these medical devices by expediting their development, assessment and review, while preserving FDA’s statutory standard for PMA approval (reasonable assurance of safety and effectiveness) and the statutory standards for granting de novo requests.”

Nutter’s series on building a brand began with the selection of a mark and the process of formally protecting it via trademark registration. At this point in the series, the mark is registered and ready for use and investment to elevate it into a brand. Moving from a mere “mark” to a lauded “brand” takes us into the realm of marketing, as most of what makes a mark into a brand is the result of marketing investment around the mark. However, there are still many legal considerations to keep in mind as you begin using your mark and building it into your brand.

The Patent Trial and Appeal Board (the Board) at the U.S. Patent and Trademark Office (USPTO) recently issued a decision interpreting the estoppel provisions of 35 U.S.C. §315(e)(1) in inter partes review (IPR) proceedings. See Dell Inc. v. Electronics and Telecommunications Research Institute, IPR2015-00549 (PTAB, Paper 10, March 26, 2015).

The decision is one of only a handful of institution decisions that have been designated as “representative” by the Board. Under the Board’s standard operating procedures, the “representative” designation is used to bring a decision to the attention of the public from among the numerous “routine” decisions issued by the Board.

The United States is one of the few countries that requires a showing of use for extension of trademark protection. Accordingly, questions concerning how “use” can be established are important to both domestic clients and international clients filing trademarks in the United States. Traditionally the United States Patent and Trademark Office (USPTO) interpreted the use requirement flexibly, allowing most specimens submitted to the USPTO to constitute use. However, until recently, U.S. courts had not settled on what is sufficient to establish trademark use, at least with respect to service marks.