Report On The U.S. Supreme Court's Busy Intellectual Property Docket

January 1, 2015

In January 2015, the Supreme Court of the United States (SCOTUS) decided two cases involving who decides issues in Intellectual Property cases.

Teva Pharmaceuticals USA Inc. et al. v. Sandoz Inc. et al.

The first case, Teva Pharmaceuticals USA Inc. et al. v. Sandoz Inc. et al. involved the standard of appellate review for patent claims construction. The Federal Circuit had reviewed the District Court’s factual findings on the de novo standard and invalidated several of Teva’s patents for a multiple sclerosis drug. In a 7-2 decision written by Justice Stephen Breyer, SCOTUS held that patent claims construction should be treated like any other factual findings by a trial court. Patent claims construction requires familiarity with specific scientific principles. Therefore, appeal of the factual findings should be reviewed on the clear error standard. Justice Breyer explained that the district court judge who presides over the case and listens to the entirety of the proceedings would be more familiar with the facts than an appeals judge who would have to rely on reading a transcript of the proceedings. The legal conclusions based on the facts, however, can still be reviewed de novo on appeal.

Hana Financial Inc. v. Hana Bank

The second case, Hana Financial Inc. v. Hana Bank, involved trademark tacking. Trademark tacking allows a trademark owner to slightly modify a trademark and maintain priority based on the original date of first use. The defendant had previously used the name “Hana Overseas Korean Club” before the plaintiff started using its trademark, “Hana Financial”. After plaintiff started using the Hana Financial trademark, the defendant started using “Hana Bank”. The defendant argued that it could claim priority over the plaintiff’s mark by tacking its revised trademark onto the original trademark. The plaintiff argued that only a judge and not a jury can decide the matter. In a unanimous decision written by Justice Sonya Sotomayor, SCOTUS held that tacking was a factual issue that could be decided by a jury. The plaintiff had argued that allowing a jury would reduce the predictability required for a functioning trademark system. Justice Sotomayor explained that in every area of the law, juries have been able to decide factual questions. The fact that different juries might come to a different conclusion has never stopped juries from deciding factual questions.

To discuss how these issues apply to your company contact:
Beverly A. Berneman (312)696-1221,

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