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Posts tagged "Supreme Court"

Supreme Court Rules That Government is Not a "Person" Under the America Invents Act

Federal law has allowed for third party requests for reexamination of an issued patent on the basis on prior art since the 1980s. Under the America Invents Act of 2011 (AIA), three review processes replaced what was then known as "inter partes reexamination." These three review proceedings enable a "person" other than the patent owner to challenge the validity of a patent post-issuance: (1) "inter partes review," §311; (2) "post-grant review," §321; and (3) "covered-business-method review" (CBM review). As an alternative to or in connection with a patent litigation, an interested third party, an accused infringer, or any "person," can request one of these types of reviews.

SCOTUS Landmark Trademark Licensing Decision: Mission Product Holdings, Inc. v. Tempnology, LLC, NKA Old Cold LLC No. 17-1657

Has "the most significant unresolved legal issue in trademark licensing" finally found some closure? Circuit courts have long been split over whether bankrupt trademark owners could revoke a license and on what the effect is, generally, of a rejection of an executory contract. On Monday May 20th, 2019 the U.S. Supreme Court ruled that defunct brand owners (as debtors in Chapter 11) cannot use bankruptcy law to unilaterally revoke (reject) a trademark license agreement. The court held that bankruptcy "rejection" of an executory contract trademark license (a contract that neither party has finished performing) under Section 365 was akin to a breach of contract outside of bankruptcy. Per Justice Kagan: "A rejection (of any executory contract) breaches a contract but does not rescind it." The licensee should not lose its right to use the debtor's trademark under license. [Kagan] "Such an act cannot rescind rights that the contract previously granted." Read here for the entire SCOTUS decision in Mission Product Holdings, Inc. vs. Tempnology, LLC.