MENU

Trademark Law

Lee v. Tam: “Disparaging” Trademarks & the First Amendment

Short video featuring John Shu
John Shu January 17, 2017

Can the Patent and Trademark Office (PTO) deny a trademark to a group with an offensive name - or does the First Amendment invalidate the provision of trademark law under which the denial was made?  Attorney and legal commentator John Shu explains the dispute between the PTO and an Asian-American rock band seeking to trademark the name “The Slants” in the case Lee v. Tam.  The Supreme Court will hear oral argument on January 18th.

Cuozzo Speed Technologies, LLC v. Lee - Post-Decision SCOTUScast

SCOTUScast 7-14-16 featuring Gregory Dolin
Gregory Dolin July 14, 2016

On June 20, 2016, the Supreme Court decided Cuozzo Speed Technologies, LLC v. Lee. In 2011, the America Invents Act created an expedited procedure, known as inter partes review, to provide a cost-effective alternative to litigation for resolving certain challenges to patent validity. The Patent Trial and Appeal Board, contained within the U.S. Patent and Trademark Office (PTO), hears these disputes rather than a federal district court. When construing patent claims, the Board applies a “broadest reasonable interpretation” standard rather than the “plain and ordinary meaning” standard typically applied by federal courts. 

Here, Cuozzo Speed Technologies, LLC. (Cuozzo) owns a speed limit indicator patent. Garmin International, Inc. (Garmin) petitioned the Board for inter partes review (IPR) of claims regarding the patent. The Board found that certain claims were unpatentable and denied Cuozzo’s request to replace those claims with several others. Cuozzo appealed the Board’s decision to the U.S. Court of Appeals for the Federal Circuit, which (1) held that it lacked authority to review the PTO’s decision to institute IPR, and (2) affirmed the Board’s final determination, finding no error in its application of the “broadest reasonable interpretation” standard.

There were two questions before the Supreme Court: (1) Whether the Federal Circuit erred in holding that the Board may, in IPR proceedings, construe claims according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the Federal Circuit erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the decision to institute the IPR proceeding is judicially unreviewable.

By a vote of 8-0 and 6-2, the Supreme Court affirmed the judgment of the Federal Circuit. Justice Breyer delivered the opinion of the Court, which held that the underlying statute precluded judicial review of the kind of claim at issue here, involving the PTO’s decision to institute IPR. The Court further concluded that the PTO was authorized to issue the regulation, setting forth the “broadest reasonable interpretation” standard. 

A unanimous Court joined Justice Breyer’s opinion with respect to Parts I and III. Chief Justice Roberts and Justices Kennedy, Thomas, Ginsburg, and Kagan joined the opinion with respect to Part II. Justice Thomas filed a concurring opinion. Justice Alito filed an opinion concurring in part and dissenting in part, in which Justice Sotomayor joined.

To discuss the case, we have Gregory Dolin, who is Assistant Professor of Law and Co-Director, Center for Medicine and Law at University of Baltimore School of Law.

The American IP System

Short video featuring Adam Mossoff
Adam Mossoff June 15, 2016

Adam Mossoff, Professor of Law at the Antonin Scalia Law School, George Mason University, gives a brief overview of the United States' intellectual property system. He discusses the United States' innovative manner of treating patents and trademarks as property rights. He also explains how the United States has influenced many modern countries' approaches.

Cuozzo Speed Technologies, LLC v. Lee - Post-Argument SCOTUScast

SCOTUScast 5-12-16 featuring Gregory Dolin
Gregory Dolin May 12, 2016

On April 25, 2016, the Supreme Court heard oral arguments in Cuozzo Speed Technologies, LLC v. Lee. In 2011 the America Invents Act created an expedited procedure, known as inter partes review, to provide a cost-effective alternative to litigation for resolving certain challenges to patent validity. The Patent Trial and Appeal Board, contained within the U.S. Patent and Trademark Office (PTO), hears these disputes rather than a federal district court. When construing patent claims, the Board applies a “broadest reasonable interpretation” standard rather than the “plain and ordinary meaning” standard typically applied by federal courts. 

Here, Cuozzo Speed Technologies, LLC. (Cuozzo) owns a speed limit indicator patent. Garmin International, Inc. (Garmin) petitioned the Board for inter partes review (IPR) of claims regarding the patent. The Board found that certain claims were unpatentable, and denied Cuozzo’s request to replace those claims with several others. Cuozzo appealed the Board’s decision to the U.S. Court of Appeals for the Federal Circuit, which (1) held that it lacked authority to review the PTO’s decision to institute IPR, and (2) affirmed the Board’s final determination, finding no error in its application of the “broadest reasonable interpretation” standard.

There are two questions before the Supreme Court: (1) Whether the Federal Circuit erred in holding that the Board may, in IPR proceedings, construe claims according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the Federal Circuit erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the decision to institute the IPR proceeding is judicially unreviewable.

To discuss the case, we have Gregory Dolin, who is Assistant Professor of Law and Co-Director, Center for Medicine and Law at University of Baltimore School of Law.

The Role of Congress and Executive Agencies in 21st Century IP Regimes - Event Audio/Video

2015 National Lawyers Convention
Sandra Aistars, John F. Duffy, David S. Olson, Arti K. Rai, Thomas B. Griffith November 19, 2015

The Constitution specifically vests power in Congress to grant authors and inventors exclusive rights in their writings and inventions. The first Congress passed laws setting forth the requirements and procedures for granting patents and copyrights. In these early days, copyrights were granted for registered works, and Thomas Jefferson himself examined patents as a member of President George Washington's cabinet. As IP laws developed, however, they gave substantial deference to both the Patent and Trademark Office (PTO), and the Copyright Office, on matters of reviewing, granting, limiting, and defining IP rights. These agencies have come to wield significant influence over the U.S. IP regime. Recently, and notwithstanding its delegations of power, Congress has been particularly active in passing new patent and copyright legislation. Sometimes Congress specifies how the law shall be interpreted and administered, and other times it delegates this to the relevant agencies, or to the courts. By considering specific examples, this panel will examine the role of Congress, Congressional delegation, and executive agencies in crafting and administering our modern intellectual property systems.

Intellectual Property: The Role of Congress and Executive Agencies in 21st Century IP Regimes
11:00 a.m. – 12:30 p.m.
State Room

  • Prof. Sandra Aistars, Clinical Professor, George Mason School of Law and Sr. Scholar and Director, Copyright Policy & Research, Center for the Protection of Intellectual Property
  • Prof. John F. Duffy, Samuel H. McCoy II Professor of Law, University of Virginia School of Law
  • Prof. David S. Olson, Associate Professor, Boston College Law School
  • Prof. Arti K. Rai, Elvin R. Latty Professor of Law and co-Director, Duke Law Center for Innovation Policy
  • Moderator: Hon. Thomas B. Griffith, U.S. Court of Appeals, D.C. Circuit

The Mayflower Hotel
Washington, DC