Weekly IP Takeaways

Prepared by Cislo & Thomas LLP Attorney Mark D. Nielsen, Ph.D.

1. In an opinion issued in the Trading Technologies case on April 18, the Federal Circuit, among other things, said that, “[Trading Technologies] argues that because non-precedential decisions of this court held that other TT patents were for technological inventions or claimed eligible subject matter, we should too. We are not bound by non-precedential decisions at all, much less ones to different patents, different specifications, or different claims. Each panel must evaluate the claims presented to it.” This position is something of a departure for the Federal Circuit in that a number of Federal Circuit opinions, as well as district court rulings, and Patent Office determinations have relied upon similarities to technology in prior cases to reach their conclusions. This approach of looking for similarities in technologies between a pending case and a prior case is not ideal, promotes analytical short-cuts, and can be unfair to litigants. If this statement from the Federal Circuit is indicative of a change in its approach to eligibility determinations, perhaps in light of movements afoot on Capitol Hill to pass updated eligibility legislation, it would be welcome.

2. The Eleventh Circuit Court of Appeals recently issued an opinion holding that a trademark infringement claim in which a plaintiff seeks an accounting and disgorgement of the defendant’s profits is an equitable remedy for which a jury trial is not granted as a matter of right. The Court rejected the argument that the accounting and disgorgement were a proxy for the plaintiff’s actual damages, which would have made the issue a legal issue (not an issue in equity) for which a jury trial is a right, in part, because the plaintiff had disclaimed actual damages to avoid a partial summary judgment motion on actual damages by the defendant. One take home here is that when bringing a trademark infringement claim, unless there are actual damages truly in play, it may be difficult to secure a jury trial, at least in the Eleventh Circuit.

3. The Ninth Circuit reversed and remanded a copyright infringement verdict in which willful infringement was found. A jury instruction that allowed for a finding of willful infringement under a “should have known” standard was rejected as erroneous (which it was), and the Ninth Circuit remanded the case to the trial Court. The opinion is here. State of mind determinations in copyright cases can be highly relevant to the amount of a statutory damages award. This author trusts that there was some authority to support a “should have known” jury instruction, but it is rather surprising that the opposing litigant or the court did not pick up on this attempt to lower the standard for willful copyright infringement to a mere negligence standard. The standard for many years has been one of reckless or intentional. “Should have known” has not been the standard under most authorities. Nice try.