News & Publications

On June 29, 2021, the U.S. Supreme Court ruled to keep the doctrine of assignor estoppel, but with limits on its application. This ruling is consistent with the amicus brief filed by AIPLA on March 1, 2021.

On June 21, 2021, the U.S. Supreme Court reversed and vacated the Federal Circuit decision, dividing 5-4 on the judgment in United States v. Arthrex, Inc. In this majority opinion, the Supreme Court held that the unreviewable authority wielded by Administrative Patent Judges (APJs) during inter partes review is constitutionally incompatible with their appointment by the Secretary of Commerce to an inferior office.

On June 15, 2021, AIPLA submitted a letter to the Honorable Richard J. Durbin and the Honorable Charles L. Grassley, Chair and Ranking Member, respectively, of the Committee on the Judiciary. This letter supported the nomination of Tiffany P. Cunningham, President Biden's nominee for Circuit Judge on the United States Court of Appeals for the Federal Circuit. AIPLA wrote that Ms. Cunningham’s background and professional experience demonstrate that she is qualified to serve in that position, and that she would make an excellent addition to the Federal Circuit.

On June 11, 2021, the United States Court of Appeals for the Second Circuit vacated a Final Order of the Federal Trade Commission (FTC), finding that 1-800 Contact’s “typical trademark settlement agreements” did not unreasonably restrain trade in violation the Section 5 of the FTC Act given the lack of direct evidence of an anticompetitive effect and the strong procompetitive justification of protecting 1-800 Contract’s trademarks. The Court of Appeals also found that it did not have sufficient experience with the type of conduct at issue to permit the abbreviated antitrust analysis favored by the Commission, applying a full-blown rule of reason analysis instead. The Court remanded the case to the Commission with instructions to dismiss it.

Last June, the Association wrote an open letter to the AIPLA community in response to the killing of George Floyd and others. This March, we again published a statement to condemn acts of violence against the Asian American and Pacific Islander community. It is therefore with a profound sense of frustration and sadness that we must again address acts of hate.

On May 24, 2021, AIPLA submitted comments to the Director for the Office of Enrollment and Discipline at the U.S. Patent and Trademark Office (USPTO) regarding the proposed administrative updates to the General Requirements Bulletin (GRB). The comments made were in support of the proposal to add the common Category B categories to Category A to reflect current and anticipated patenting activity, and of the proposal to amend Category B, Options 2 and 4, to permit a combination of courses that need not be sequential. AIPLA also advised considering the addition of degrees matching emerging technical fields on a regular basis and supports the inclusion of master’s and doctoral degrees as acceptable under the requirements of Category A.

AIPLA echoes the significant concerns shared by many other intellectual property entities about the Administration’s decision to support the World Trade Organization (WTO)’s proposed waiver of IP protections for COVID-19 vaccines. AIPLA continues to support the widespread distribution of vaccines, medicines, and other measures necessary to meet the challenges of COVID-19, however, we are concerned that the waiver approach is unlikely to lead to the desired result of widespread access to high-quality vaccines produced by qualified manufacturers and will negatively impact further innovation. AIPLA believes this decision has the potential to set an unfortunate precedent going forward.

On April 26, 2021, AIPLA submitted comments to the U.S. Copyright Office on Notification of Inquiry regarding Copyright Alternative in Small-Claims Enforcement (“CASE”) Act Regulations. As a general matter, AIPLA believes that it is important to keep the procedures as straight forward and accessible as possible to ensure this will be a new, simple, and low-cost process to resolve small copyright claims. AIPLA encourages the Copyright Claims Board to publish standardized forms and instructions. Additionally, AIPLA is in favor of providing a Second Notice through the U.S. Postal Service. For ease of delivery, AIPLA is in favor of a Designated Agent directory. Online submission of opt-out notices should be encouraged, but a paper option is also recommended. To strike an appropriate balance of discovery, AIPLA recommends that the CCB require a standardized, initial disclosure of relevant information.

On April 5, 2021, the US Supreme Court overturned Oracle’s copyright win over Google, holding that Google’s use of Oracle’s programming code from the Java SE Application Programming Interface (API) in their Android platform was a fair use and did not violate copyright laws. The Court determined that Google’s use of only the code that was needed to allow programmers to work in a new and transformative program was a fair use of that material. Writing for a 6-2 majority, Justice Breyer declined to address the first question on copyrightability and instead resolved the case focusing on the question of fair use by referencing the four guiding factors in the Copyright Act’s fair use provision. Justice Thomas filed a dissenting opinion that the ruling bypasses the question of whether the software code is protected by the Copyright Act. AIPLA filed an amicus brief in this case on January 13, 2020.

On March 30, 2021, AIPLA, along with IPO, LES USA and Canada, and the NY IP Law Association, submitted a letter to the Office of the US Trade Representative to express support for the United States’ opposition to the TRIPS waiver proposal being discussed at the World Trade Organization (WTO). The letter points out that the TRIPS waiver proposal would waive a variety of IP rights related “to prevention, containment or treatment” of COVID-19. The proposal incorrectly portrays IP as a barrier, but it is expressed, to the contrary, that IP protection enhances developments. The letter states that there are no known examples where IP has been used to limit access to COVID-related technology ‒ rather innovator companies have partnered and shared IP to create tools to address the pandemic. Should the proposed TRIPS waiver be implemented, it is noted that it would have an immediate chilling effect on continued research and necessary collaboration.