Amicus Briefs

Helsinn Healthcare S.A. v. Teva Pharms. (Supreme Court Case 17-1229)

On behalf of Intellectual Property Owners Association, Leason Ellis briefed whether in enacting the America Invents Act (AIA), Congress changed the scope of the “on-sale” bar to patentability.  IPO advocated that: 1) proper application of the post-AIA on-sale bar is critically important to all industries and fields of technology; 2) the post-AIA on-sale bar provision should be interpreted to exclude secret sales; 3) excluding secret sales is consistent with Congress’ intent for the AIA to harmonize U.S. patent laws with other countries and; 4) the Federal Circuit decision is inconsistent with other interpretations of the on-sale bar.  Leason Ellis attorneys involved included Robert Isackson, Matthew Kaufman, and Lauren Sabol.

Return Mail, Inc. v. United States Postal Service, et al. (Supreme Court Case 17-1594)

On behalf of New York Intellectual Property Law Assocation, Leason Ellis briefed whether the government is a “person” who may petition to institute patent review proceedings under the AIA (America Invents Act) before the PTAB (Patent Trial and Appeal Board) of the U.S. Patent and Trademark Office PTAB review proceedings under the AIA.  Filed in support of neither party, NYIPLA advocated that “person” is used in the Patent Act to have different meanings, sometimes including government entities, and sometimes excluding them, and because the enabling language of the AIA provisions regarding who can petition for inter partes, post-grant, and covered business method patent reviews and derivation proceedings, the Court needs to evaluate the meaning of “person” for each provision in its context, such that the government may be a person for inter partes review but may not be a “person” for a covered business method review.  NYIPLA also urged the Court not to make broad pronouncements about whether “person” includes or excludes the government, and further to issue only a narrow holding on the scope of “person” under AIA § 18(a)(1)(B) and, if at all, under 35 U.S.C. §§ 311(a) and 321(a).  Leason Ellis attorney involved Robert Isackson.

MIssion Product Holdings, Inc. v. Tempnology, LLC (Supreme Court Case 17-1657)

On behalf of New York Intellectual Property Association, Leason Ellis briefed whether, under §365 of the Bankruptcy Code, when a trademark owner licensor declares bankruptcy and rejects a trademark license agreement – which “constitutes a breach of such contract,” 11 U.S.C. §365(g) – terminates rights of the trademark licensee that would survive the licensor’s breach under applicable non-bankruptcy law. Filed in support of Petitioner, NYIPLA argued that the circuit split on this question should be resolved such that the well-established rules of statutory construction require that the rejection of an executory trademark licensing agreement under Section 365(g) does not result in its termination. As a result, notwithstanding the rejection, the licensee should be allowed to continue to use the licensed trademarks post-rejection. NYIPLA argued that this result does not raise any quality control concerns because a trademark owner is under an obligation to monitor and police the use of the trademark independent of any contractual provision to do so. Leason Ellis attorneys involved included Marty Schwimmer, Christina Sauerborn, and Robert Isackson.

Russell Brammer v. Violent Hues Productions, Ltd. (4th Cir. No. 18-1763)

On behalf of New York Intellectual Property Association, Leason Ellis briefed the issue, in a copyright case, of the proper scope of fair use of a photo used without permission on a third-party website.  The district court found that it was fair use to use a photograph of a neighborhood for “informational” purposes, i.e., providing information about the appearance of the neighborhood.  Filed in support of neither party, NYIPLA advocated against an overly broad interpretation of the fair-use doctrine for published works.  Specifically, the brief pointed out a number of errors in the the district court’s fair use factor analysis, including conflating motivation with purpose to find the work transformative and ignoring whether the asserted purpose actually justified defendant’s taking, improperly considering the importance of defendant’s good faith in its analysis, and mischaracterizing expressive images as “facts.”  Leason Ellis attorneys involved include Marty Schwimmer, Lauren Emerson, Robert Isackson.

Syngenta Crop protection, llc v. willowood, llc (fed. Cir. Case 18-1614)

On behalf of New York Intellectual Property Association, Leason Ellis briefed two issues, one related to patent infringement under 35 U.S.C. 271(g) and the other addressing whether the Federal Insecticide Fungicide and Rodenticide Act (“FIFRA”) precludes copyright protection for the required elements of pesticide labels as against the labels of me-too-registrants. Filed in support of neither party, NYIPLA advocated first, with respect to patent infringement, that it was improper for the district court to extend the divided-infringement holding of Akamai Techs., Inc., v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc) (per curiam) to the 271(g) context, and second, with respect to the copyright issue, that it was error for the district court to hold that FIFRA was intended to enact a per se rule precluding copyright infringement for FIFRA-compliant labels.  More specifically, NYIPLA argued that neither the district court nor the parties applied Pom Wonderful v. Coca-Cola, 134 S. Ct. 2228 (2014), which sets forth a method for resolving perceived conflicts between federal statutes, and indicated that both FIFRA and the Copyright Act can coexist.  We used some really creative graphics to support the copyright argument.  Leason Ellis attorneys involved include Mel Garner, Marty Schwimmer, and Robert Isackson.