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In Limelight v. Akamai, the Supreme Court unanimously overturned the Federal Circuit’s rule on induced patent infringement. The Court reaffirmed the requirement that induced infringement cannot occur without direct infringement. In the case of method patents, there is no direct infringement unless all the steps of the patent are carried out by a single actor. While the Court did not address the merits of the Federal Circuit’s single-actor rule, the Federal Circuit will have the opportunity to revisit it on remand.
We also discuss the Supreme Court’s new standard for indefiniteness articulated in Nautilus v. Biosig. In this case, the Court reversed the Federal Circuit’s “insolubly ambiguous” standard and held that a patent is invalid for indefiniteness if its claims, viewed in light of the patent’s specification and prosecution history, fail to inform those skilled in the art of the scope of the invention with reasonable certainty.
Additionally, we discuss how to record federally registered trademarks at the U.S. Customs & Border Protection (CBP). When a trademark is recorded, the CBP is able to prevent the importation of goods that infringe on that trademark. The CBP also can impose fines and request the U.S. Attorney’s Office to criminally prosecute counterfeiters. As a result, the CBP can be an important ally in protecting federally registered trademarks.
Finally, we discuss an emerging national trademark dispute regarding the chant used to cheer the U.S. Men’s Soccer Team during the FIFA World Cup. With at least four entities asserting ownership rights, it is unclear who will reap the benefits of this popular chant.

Supreme Court Overrules Federal Circuit in Limelight v. Akamai
On June 2, 2014 the Supreme Court unanimously overruled the Federal Circuit’s expansion of the inducement doctrine in Limelight Networks v. Akamai Technologies. The Court held that a defendant can only be liable for inducement under 35 U.S.C. § 217(b) if there is direct infringement under § 271(a).
The Court reiterated that in the case of method patents, patent rights extend only to the claimed combination of steps. Therefore, there is no direct patent infringement unless all the steps are carried out by a single actor. The Court declined to address the merits of the Federal Circuit’s single-actor rule, which states that a single party must perform all the steps of the claimed method, either personally or through another entity under its direct control. The Court also held that conduct that would be infringing in altered circumstances cannot be the basis of liability for inducement.
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Limelight Networks v. Akamai Technologies

Supreme Court Gives Guidance on Indefiniteness in Nautilus, Inc. v. Biosig Instruments, Inc.
On June 2, 2014, the U.S. Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc. addressed how much imprecision can be tolerated on the question of patent indefiniteness under § 112. In a unanimous opinion, the Court overruled the Federal Circuit’s “insolubly ambiguous” standard and held that a patent is invalid for indefiniteness if its claims, viewed in light of the patent’s specification and prosecution history, fail to inform those skilled in the art about the scope of the invention with reasonable certainty.
The Court held that the Federal Circuit’s “insolubly ambiguous” standard does not balance the competing policies of allowing a certain amount of ambiguity in a claim and requiring enough definiteness to inform the public as to what has been patented. The Court’s standard will present new challenges in dealing with definiteness issues, including how to determine when an admittedly ambiguous claim should be invalid as indefinite and how much outside evidence will be considered when applying the new standard.
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Nautilus, Inc. v. Biosig Instruments, Inc.

Recording Trademarks at U.S. Customs & Border Protection (CBP)
After obtaining a federal registration at the United States Patent and Trademark Office (USPTO), a trademark owner is eligible to record the trademark registration at the U.S. Customs & Border Protection (CBP), a bureau of the department of Homeland Security which inspects foreign goods before authorizing them to enter the country. After a trademark is recorded, the CBP is able to prevent the importation of goods that infringe on that trademark.
This “recordation” process is a relatively inexpensive way to combat infringement and ensure the protection of a trademark’s integrity. Federally registered copyrights and trade names are also eligible for CBP protection.
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Recording Trademarks at the CBP

Trademark Dispute Over U.S. Soccer Team Chant “I BELIEVE THAT WE WILL WIN,” the chant for U.S. Men’s National Soccer Team during the FIFA World Cup in Brazil, is now the focus of a national trademark dispute. With at least three schools and one company asserting ownership rights to the slogan, it is unclear who will reap the benefits of this popular chant.
In October 2011, a clothing shop associated with San Diego State University (SDSU) filed a federal trademark application for the phrase “I BELIEVE THAT WE WILL WIN.” After almost three years, the USPTO finally published for opposition on July 22, 2014. However, the Naval Academy and Utah State University (USU) may have grounds to oppose the mark base on prior use. The United States Soccer Federation also plans to oppose the mark. Furthermore, last month Dormie Capital, LLC filed an intent to use (ITU) application for the mark “I BELIEVE, I BELIEVE THAT, I BELIEVE THAT WE, I BELIEVE THAT WE WILL WIN!” If SDSU does not obtain the registration for its mark, it will remain an open question as to who will own the chant heard around the world.
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Trademark Dispute Over U.S. Soccer Team Chant

Tsircou Newsletter – August 2014

Please feel free to contact us if you would like additional information. We look forward to assisting you with your intellectual-property matters.
Sincerely,

Kyriacos Tsircou
Tsircou Law, P.C.