SCOTUS Denies Cert in IP Cases Covering JMOL Review Standard, Attorney’s Fees, DTSA Claims and More

Yesterday, the U.S. Supreme Court issued an order list denying several petitions for writ of certiorari involving intellectual property appeals. These cases include questions over attorney’s fees awards for parallel patent validity proceedings and following voluntary dismissals of copyright allegations. The Federal Circuit’s standard of appellate review and questions regarding the interpretations of the Defend Trade Secrets Act also evaded closer scrutiny by the Court.

Provisur Technologies v. Weber: CAFC’s Improper Factfinding Goes Unexamined

The patent infringement battle ongoing between food processing equipment rivals Provisur Technologies and Weber has spawned several rulings of law at the appellate level. In September 2022, the Federal Circuit reversed the Patent Trial and Appeal Board’s (PTAB) obviousness determination knocking out several Provisur patent claims covering food slicing equipment, ruling that the PTAB’s decision did not sufficiently explain its bases for its decision in violation of the Administrative Procedures Act (APA). Then last February, the CAFC again reversed the PTAB in a precedential decision holding that operating manuals qualified as a prior art printed publication despite limited distribution.

The Supreme Court’s Monday cert denials nixed Provisur’s most recent appeal from a Federal Circuit ruling last October that reversed the Western District of Missouri’s denial of judgment as a matter of law on noninfringement, overturning the jury verdict’s finding of willful infringement. Provisur’s petition for writ, filed last December, asked both whether the Federal Circuit improperly assumed the role of factfinder in applying its JMOL standard and overturning the jury’s verdict, and whether the appellate court’s reexamination of the jury’s factual findings and credibility determinations is permissible under the Seventh Amendment. Provisur’s petition argued that the Federal Circuit improperly disregarded and discounted the weight of evidence of Weber’s concealment, and improperly considered evidence outside of the record in determining that Provisur’s expert testimony was admitted in violation of 35 U.S.C. § 298.

DISH Network v. Dragon IP: Anti-PAE Petition Falls Upon Deaf Ears at SCOTUS

Dragon Intellectual Property has twice wound up at the Federal Circuit, the first time leading to an April 2020 ruling reversing the District of Delaware’s determination that DISH Network and other defendants were not prevailing parties for the purposes of 35 U.S.C. § 285. On remand, the Delaware district court granted attorney’s fees in part but declined to award fees for DISH Network’s invalidation of asserted patent claims through inter partes review (IPR) proceedings at the PTAB, as well as recovery of fees from Dragon IP’s counsel. Last May, the Federal Circuit affirmed the district court’s ruling, finding that DISH’s IPR proceedings were voluntary and that Section 285 did not speak explicitly as to counsel liability for attorney’s fees awards.

DISH Network filed its petition for writ this January asking whether the fee-shifting statute in Section 285 gives a district court discretion to award attorney’s fees in parallel proceedings, and whether those fees can be imposed on a party’s counsel through joint and several liability. DISH Network had argued that the Federal Circuit’s categorical bar against counsel liability created a circuit split on the issue, and that Supreme Court precedent had established a test for extending fee-shifting statutes to administrative proceedings. Some have criticized the Federal Circuit’s majority decision in this case, agreeing with dissenting U.S. District Judge Cathy Ann Bencivengo that DISH Network’s validity challenge in IPR was involuntary.

Hytera Communications v. Motorola Solutions: Extraterritoriality of DTSA Survives

“[T]his complex and sprawling case,” as the Seventh Circuit opined in its ruling last July, features copyright infringement and trade secret misappropriation claims filed by Motorola against Chinese state-owned rival Hytera over the latter’s alleged role in poaching Motorola employees and directing them to download thousands of documents related to Motorola’s digital mobile radio (DMR) technology. The Northern District of Illinois awarded $135.8 million in compensatory damages and $271.6 million for Motorola’s DTSA claim, which the Seventh Circuit affirmed after finding that the DTSA’s private right of action codified at 18 U.S.C. § 1836 applied to extraterritorial acts of misappropriation. Deciding the “question of first impression for our circuit, and as far as we can tell, for any circuit,” the Seventh Circuit found that the presumption against extraterritoriality was rebutted by 18 U.S.C. § 1837, which applies federal criminal penalties under the Economic Espionage Act to acts outside the U.S.

Hytera’s petition, filed in January, challenged the Seventh Circuit’s conclusion that Section 1837’s reference to “offenses” unambiguously encompasses civil wrongs. Arguing that Supreme Court precedent requires an explicit extraterritorial application not present in the DTSA, Hytera noted that the Seventh Circuit’s ruling leaves trade secrets as the only form of U.S. IP with global reach. Hytera also urged the Supreme Court to clarify the definition of Section 1837’s “offense” provision under the Court’s 2015 ruling in Kellogg Brown & Root v. U.S. ex rel. Carter.

STI v. MGMTL: Does Judge or Jury Decide Copyrightability of Computer Program?

In January, Strategic Technology Institute (STI) filed its petition for writ asking the Supreme Court to solve a circuit split as to the proper decisionmaker regarding the scope of copyrightability in computer programs. While the majority of circuit courts and Nimmer’s copyright treatise treat this determination as a question of law, the Fifth Circuit’s ruling last August found this a factual question appropriate for the jury. STI also reapplied its fair use defense, arguing no impact to MGMTL’s market as the only buyer was the U.S. government.

Rutstein v. Compulife Software: Is Webscraping an Improper Means Under DTSA?

Last August, the Eleventh Circuit decided Compulife Software v. Newman, affirming trade secret misappropriation findings against several defendants who used robotic webscraping techniques to generate comparative quotes from Compulife’s rival insurance premium quoting software. Binyomin Rutstein, one of the defendants in Newman, filed a petition for writ last November challenging the Eleventh Circuit’s determination that his webscraping publicly accessible data was analogous to hacking and seeking a bright-line rule that acquiring public data is not unlawful regardless of the acquisition means.

Property Matters USA v. Affordable Aerial Photography: No Prevailing Party in Voluntary Dismissal

Last December, Property Matters filed its petition for writ challenging the Eleventh Circuit’s ruling last July agreeing with the Southern District of Florida that a defendant is not a prevailing party under 17 U.S.C. § 505, the Copyright Act’s statute for shifting attorney’s fees, following a voluntary dismissal. Property Matters argued in its petition that the Eleventh Circuit’s categorical bar represents the minority view of a circuit split that considers the defendant the prevailing party when the plaintiff cannot refile its complaint, as was the case for Affordable Aerial Photography following the expiration of the statute of limitations for its claims.

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