Supreme Court expands FOIA trade secret protections

In Food Marketing Institute v. Argus Leader Media, the Court resolved a circuit court split interpreting when the Government may withhold confidential or trade secret information from Freedom of Information Act (FOIA) requests.  Previously, a company had to demonstrate “substantial competitive harm” for their information to be protected under FOIA Exemption 4.  Now a company need only show the information “customarily and actually treated as private by its owner and provided to the Government under an assurance of privacy.”  While the decision offers greater protections to companies providing information to the Government, it will limit information available through FOIA requests.  Overturning decades of precedent, Justice Gorsuch wrote that the earlier National Parks decision is a “relic from a ‘bygone era of statutory construction.’”

Prohibition on immoral or scandalous trademarks violates First Amendment

The Supreme Court held in Iancu v. Brunetti that the Lanham Act’s prohibition on registration of immoral or scandalous trademarks violates  the First Amendment.  The USPTO had denied registration of “FUCT” in connection with artist and entrepreneur Erik Brunetti’s clothing line.  Following the Court’s recent Matal v. Tam decision invalidating the prohibition on registration of disparaging trademarks, the Court held that the “immoral or scandalous” prohibition is also unconstitutional because it also discriminates on the basis of viewpoint.  In a concurring opinion, Justice Alito notes that the decision “does not prevent Congress from adopting a more carefully focused statute that precludes the registration of marks containing vulgar terms….”

USPS – not a person

In Return Mail, Inc. v. U.S. Postal Service, the Supreme Court held that the U.S. Government is not a “person” that can institute AIA review proceedings.  Return Mail had sued the U.S. Postal Service (USPS) for infringement of U.S. Patent No. 6,826,548.  In response, the USPS petitioned the United States Patent and Trademark Office (USPTO) to review the ‘548 patent, the claims of which were subsequently cancelled by the USPTO, and the cancellation affirmed by the Federal Circuit.  The Supreme Court granted certiorari, reversed the lower courts, and determined that a federal agency is not a “person” eligible of petitioning for AIA review.  In response to the Government’s arguments in favor of eligibility, Justice Sotomayor wrote for the Court: “None Delivers.”

USITC almost addresses public interest inquiry

As part of a global dispute, Qualcomm sought an exclusion order at the U.S. International Trade Commission (ITC) barring Apple from importing certain products having Intel processors.  Last fall, an Administrative Law Judge (ALJ) found Apple to have infringed one claim of a Qualcomm patent.  But, the ALJ recommended against an exclusion order on the basis of public interest. Had the ITC affirmed the ALJ’s recommendation, it would have been the first time in over 30 years that the ITC denied an exclusion order on the basis of public interest.  In its Final Determination, however, the ITC dodged the public-interest issue altogether and instead held Qualcomm’s patent invalid.  See Certain Mobile Electronic Devices and Radio Frequency and Process Components Thereof.

On-Sale Bar not changed by AIA

In an unanimous decision today, the Supreme Court held in Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc. that the America Invents Act did not change the on-sale bar as it applies to confidential sales – “a commercial sale to a third party who is required to keep the invention confidential may place the invention ‘on sale’ under the AIA.” Simply put, a confidential sale more than one year before a patent application is filed can invalidate the patent.

Patent Eligibility – No Dice

The Federal Circuit held in In re Marco Guldenaar Holding B.V. that claims for a dice game were ineligible for patent protection.  The court affirmed rejection of claims “directed to the abstract idea of ‘rules for playing a dice game,’ which fell within the realm of ‘methods of organizing human activities.’”  Although the claimed dice had non-conventional markings, the court concluded that such markings simply constitute “printed matter” that falls outside the scope of patent eligibility under 35 U.S.C. § 101.

Surnames can be registered as trademarks if …

Names are not always the best option for a trademark – it can be difficult to prove the name has acquired distinctiveness as a trademark.  For example, some of L.L. Bean’s wordmarks were in use 35 and 57 years before they were registered.  However, in Bruce Schlafly v. St. Louis Brewery the Federal Circuit did acknowledge that “[n]o law or precedent suggests that surnames cannot be registered as trademarks if they have acquired distinctiveness in trademark use.”  But it’s not easy – the St. Louis Brewery was able to register SCHLAFLY – with sales of 75 million beers, media coverage in the Washington Post and Wall Street Journal, and more than 25 years of continuous use.

Design Patents – One 2D drawing may support multiple 3D embodiments

The USPTO routinely rejected design applications having two-dimensional views that could be interpreted by examiners as covering different three-dimensional embodiments.  This likely changes with In re Maatita.  The Federal Circuit recently held “… the fact that shoe bottoms can have three-dimensional aspects does not change the fact that their ornamental design is capable of being disclosed and judged from a two-dimensional … perspective.”