Seven IP Cases Slated on Supreme Court Oral Argument Calendar

The oral argument schedule for the Supreme Court over the next few months is heavy on intellectual property cases.

The Court will hear oral argument as follows: on February 26, in two cases on granting (Octane Fitness) and reviewing (Highmark) attorneys’ fee awards; on March 31, in a case (Alice Corp.) on patent eligibility of system and computer-implemented method claims; on April 21, in a case (POM Wonderful) on claims under Section 43 of the Lanham Act challenging labels regulated by the Food and Drug Administration; on April 22, in a case (Aereo) on whether a provider of broadcast television programming over the Internet violates a copyright owner’s public performance right; on April 28, in a case (Nautilus) on the proper standard for finding indefiniteness invalidity for patents; and on April 30, in a case (Limelight) on joint liability for method claim infringement where all of the claimed steps are performed but not by a single entity.

Highmark Inc. v. Allcare Health Management Sys., U.S., No. 12-1163; oral argument 2/26/2014.

A Federal Circuit panel decided 2-1 that the determination of a district court that infringement litigation was objectively baseless (as the first prong in finding that attorneys’ fees are due under Section 285) is subject to de novo review on appeal. In an opinion written by Judge Dyk, the court held that an “objectively baseless” determination paralleled the “objective determination of recklessness” for finding willful infringement, and concluded that it is best decided by a judge as a question of law subject to de novo review, citing Bard Peripheral Vascular, Inc. v. W.L. Gore & Assoc., 682 F.3d 1003 (2012).

Supreme Court question presented: Whether a district court’s exceptional-case finding under 35  U.S.C. §285, based on its judgment that the suit is objectively baseless, is entitled to deference.


Octane Fitness, LLC v. Icon Health and Fitness, Inc., U.S., No. 12-1163; oral argument 2/26/2014.

A Federal Circuit panel in a non-precedential opinion rejected a request to modify its two-part standard for finding an “exceptional case” for awarding attorneys’ fees under Section 285 (objectively baseless claim and subjective bad faith) to substitute “objectively unreasonable” for “objectively baseless.” It turned away the argument that the patent owner took unreasonable claim construction positions.

Supreme Court question presented: Does the Federal Circuit’s two-part test for determining whether a case is “exceptional” under 35 U.S.C. § 285 improperly appropriate a district court’s discretionary authority to award attorney fees to prevailing accused infringers?


Alice Corp. Pty., Ltd. v. CLS Bank International, U.S., No. 13-298; oral argument 3/31/2014.

In a short 58-word per curiam order, the en banc Federal Circuit announced the 7-3 affirmance of district court decision that method and system claims are ineligible for patent protection, and the 5-5 affirmance the decision that system claims are ineligible for patent protection. Six separate opinions (totaling 127 pages) were issued by judges stating their agreement or disagreement with the result in the appeal. The patent was directed to a computerized trading platform for exchanging obligations in which a trusted third party settles obligations between a first and second party so as to eliminate “settlement risk.”

Supreme Court question presented: Whether claims to computer-implemented inventions – including claims to systems and machines, processes, and items of manufacture – are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court.



POM Wonderful LLC v. The Coca-Cola Company, U.S., No. 12-761; oral argument 4/21/2014.

The Ninth Circuit affirmed a summary judgment for Coca-Cola that POM’s Lanham Act challenge to Coca-Cola’s “Pomegranate Blueberry” name was barred by the Food Drug and Cosmetic Act. Although Section 43(a) of the Lanham Act, 15 U.S.C. 1125(a), authorizes actions for use of a false or misleading description or representation “in connection with any goods,” the Court pointed out that the FDCA comprehensively regulates food and beverage labeling. See 21 U.S.C. §§ 343(a)(1) and 343(f). It also held that POM’s state law claims were preempted.

Supreme Court question presented: Whether the court of appeals erred in holding that a private party cannot bring a Lanham Act claim challenging a product label regulated under the Food, Drug, and Cosmetic Act.


American Broadcasting Companies, Inc. v. Aereo, Inc., U.S., No. 13-461; oral argument 4/22/2014.

The Second Circuit denied en banc review of a panel decision that the online streaming of television programs to individual subscribers is not an infringing public performance. The panel held 2-1 that the defendant creates and transmits a unique copy of each program for each individual subscriber, and that it therefore does not stream “to the public.”

Supreme Court question presented: Does a company “publicly perform” a copyrighted television program when it retransmits a broadcast of that program to thousands of paid subscribers over the Internet?


Nautilus, Inc., v. Biosig Instruments, Inc., U.S., No. 13-369; oral argument 4/28/2014.

The Federal Circuit reversed a district court decision that a patent claim to a heart rate monitor was invalid for indefiniteness as a matter of law because of its use of the claim term “spaced relationship” in describing the positioning of two electrodes with respect to each other. The Court held that this claim term was not one that is “insolubly ambiguous” when the intrinsic evidence is considered from the perspective of a person of skill in the art. It considered the functionality of the claimed monitor, as described in the specification, as did the USPTO when the claim was under reexamination. “[T]he claims provide inherent parameters sufficient for a skilled artisan to understand the bounds of ‘spaced relationship.’” Judge Schall concurred in the result but would have used a more narrow analysis, explaining that he would not have used the functional limitation to address the definiteness issue.

Supreme Court question presented: Does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not “insoluble” by a court—defeat the statutory requirement of particular and distinct patent claiming? Does the presumption of validity dilute the requirement of particular and distinct patent claiming?


Limelight Networks, Inc. v. Akamai Technologies, Inc., U.S., No. 12-786; oral argument 4/30/2014

The en banc Federal Circuit, by a 6-5 vote, abandoned the single-entity rule for finding induced infringement of a process claim where all of the claim steps are performed collectively but by multiple parties rather than by a single entity alone. Although it acknowledged the importance of a direct infringement predicate for finding inducement, the majority sidestepped the question of how the issue of divided infringement is to be analyzed where direct infringement alone is alleged. “To be clear, we hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity.”

Supreme Court question presented: Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a).


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