Posts in US Supreme Court

The U.S. Supreme Court has agreed to hear, on March 1, 2021, whether administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are “inferior” officers properly appointed under the Appointments Clause of the U.S. Constitution (U.S. Const., art. II, § 2, cl. 2), and, if not, whether the “fix” by the Federal Circuit in Arthrex v. Smith & Nephew, 941 F.3d 1320 (Fed. Cir. 2019) worked. On February 25, 2021, the New York Intellectual Property Law Association (NYIPLA), will be presenting a special webinar titled “Getting Ready for Arthrex Oral Arguments,” which will summarize the issues presented and include presentations by representative amici on their respective positions.

The Alliance of U.S. Startups & Inventors for Jobs has filed an amicus brief supporting American Axle & Manufacturing, Inc.’s petition for certiorari with the U.S. Supreme Court, claiming that many feel that “the U.S. patent system appears to be on life support”. The brief generally argues: The panel majority decision fails to comply with eligibility precedents established by the Court and Federal Rule of Civil Procedure Rule 56 (Rule 56); and Investments in technology startups in American has been declining for more than a decade.

Inventor advocacy group US Inventor has filed an amicus brief in support of a petition to the U.S. Supreme Court asking the justices to clarify “[w]hether the Federal Circuit’s “heavy presumption” line of cases or its “holistic” line should govern claim construction. The petition was filed in December by Akeva, LLC, owner of a portfolio of athletic footwear patents, and is an appeal from a July 2020 nonprecedential Federal Circuit decision, Akeva, LLC v. Nike, Inc. In that case, the Federal Circuit upheld a district court’s grant of summary judgment of noninfringement to a number of defendants—including Asics, Nike, adidas America, Inc., New Balance Athletic Shoe, Inc., and Puma North America, Inc.—finding in part that the district court had “correctly construed the claim term ‘rear sole secured’ to exclude conventional fixed rear soles.”

As we thankfully see 2020 fading into the rear-view mirror and all look forward to a hopefully much better 2021, we want to take a moment to reflect on what the past year brought us and how the stage is set for another very fluid and consequential year for intellectual property policy. In times like these, it is clear that leadership matters more than ever. During some of the most challenging times our country has faced, there were a number of places where we saw strong leadership result in tangible progress. This year has already shown us a dramatic first few days. Beyond the tragic events in the U.S. Capitol, we saw the somewhat unexpected shift of power in the Senate to Democratic control based on the election of both Rev. Raphael Warnock and John Ossoff in Georgia. It is clear that the new Congress and the new Biden Administration will face huge challenges before we approach anything close to “normal” in any sense. That said, when it comes to IP, what can we expect?

On Friday, the U.S. Supreme Court granted a petition for certiorari filed by Minerva Surgical, Inc. asking the Court to clarify questions around the doctrine of assignor estoppel. Specifically, the petition presents the question “whether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.”

Eleven amicus briefs were docketed during the last two business days of 2020 in United States v. Arthrex, Inc., et al., which is scheduled for oral argument on March 1, 2021. Several of the briefs were filed by independent inventors, who implored the Court to acknowledge the stories of entrepreneurs and small inventors who have been adversely impacted by the Patent Trial and Appeal Board (PTAB), in part because Administrative Patent Judges (APJs) are presently unaccountable.

American Axle & Manufacturing, Inc. filed a petition for certiorari with the U.S. Supreme Court on December 28, 2020, asking it to review the Federal Circuit’s July 31, 2020 modified judgment and October 2019 panel opinion in a closely-watched Section 101 patent eligibility case involving driveshaft automotive technology. The Federal Circuit has been sharply divided by the issues presented, leading Judge Moore to refer to the original panel’s analysis as “validity goulash” and to state that the “majority’s Nothing More test, like the great American work The Raven from which it is surely borrowing, will, as in the poem, lead to insanity.”

This year saw its fair share of high profile trademark cases: the Second Circuit vacated Tiffany & Co.’s $25 million summary judgment win against Costco Wholesale Corp. in a dispute over Costco’s use of the word “Tiffany” to identify a specific type of six-prong diamond ring setting in Tiffany and Co. v. Costco Wholesale Corp., 971 F.3d 74 (2d Cir. 2020);* the District Court for the Southern District of New York held that the First Amendment protects the use of Humvees in the acclaimed video game Call of Duty from claims of trademark infringement and dilution, and unfair competition in AM General LLC v. Activision Blizzard, Inc., 450 F. Supp. 3d 467 (S.D.N.Y. 2020).; and the District Court for the Western District of Texas refused to grant a “Brizzy” hard seltzer brand a preliminary injunction against Molson Coors over a competing “Vizzy” product because both names were based on the common descriptive term fizzy in Future Proof Brands, LLC v. Molson Coors Beverage, 2020 WL 3578327 (W.D. Tex. Mar. 24, 2020), aff’d, 2020 WL 7064607 (5th Cir. Dec. 3, 2020). But among all of the cases, a select few stand out as ones that have shaped trademark law and are already having an impact that may last for years to come.

On November 17, 2020, in SIPCO LLP v. Emerson Electric Co., No. 2018-1635, slip op. (Fed. Cir. Nov. 17, 2020), the Court of Appeals for the Federal Circuit extended the reasoning of the Supreme Court in Thryv, Inc. v. Click-to-Call Technologies, LP, 140 S. Ct. 1367 (2020) barring appeal of decisions to institute inter partes review (IPR) under 35 U.S.C. § 314(d), and held that decisions made by the Patent Trial and Appeal Board (PTAB) to institute proceedings for covered business methods (CBMs) are not subject to appeal under 35 U.S.C. § 324(e). While the CBM transitional program of the America Invents Act (AIA) expired on September 16, 2020, the statutes applied when instituting and conducting review under the program were those of post-grant review (PGR) (under § 18(a)(1) of the AIA), and so the effect of the Federal Circuit’s decision in SIPCO is likely to be much more far-reaching.

On December 2, eComp Consultants (eComp) filed an amicus brief urging the U.S. Supreme Court to find Administrative Patent Judges (APJs) of the Patent Trial and Appeal Board (PTAB) in U.S. v. Arthrex, Inc., Nos. 19-1434/-1452/-1458. In its brief, eComp argues that the U.S. Supreme Court should reverse the decision of the Federal Circuit and confirm that APJs of the PTAB are merely inferior officers of the United States who were, therefore, constitutionally appointed. eComp’s Amicus Brief clarifies the errors in the Federal Circuit’s decision. 

On November 25, the Federal Reserve Bank of Atlanta (Bank of Atlanta) filed a brief in opposition in response to a petition for a writ of certiorari filed by Bozeman Financial LLC (Bozeman) with the U.S. Supreme Court on September 8. Bozeman’s petition followed a decision of the U.S. Court of Appeals for the Federal Circuit (CAFC), which affirmed a decision of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) holding that the PTAB correctly determined claims 21–24 of U.S. Patent No. 6,754,640 (’640 patent) and claims 1-20 of U.S. Patent 8,768,840 (’840 patent), both owned by Bozeman Financial LLC (Bozeman), to be directed to patent ineligible subject matter under 35 U.S.C. § 101. In reaching the decision, the CAFC first determined the appellees, all 12 of the United States Federal Reserve Banks, were considered “persons” under the America Invents Act (AIA) and, therefore, eligible to petition for post-issuance review under the AIA. In its brief in opposition, the Bank of Atlanta asserted that the CAFC “correctly concluded that the Reserve Banks should not be viewed as part of the sovereign for purposes of the AIA’s post-grant review provisions” and that the Supreme Court’s review is not warranted.

In Van Buren v. United States, argued December 1, the Supreme Court has a chance to address how the Computer Fraud and Abuse Act applies when a defendant is authorized to access and obtain information from a computer but subsequently uses this information for a purpose that is not permitted. The outcome of this case is important to every company that has computer data and will provide guidance on how best to protect that data.

On November 17 the Federal Circuit affirmed a determination of the PTAB that claims were obvious in view of the prior art in an appeal that was returned to the CAFC on remand from the U.S. Supreme Court. In particular, the CAFC concluded that, according to the recent Supreme Court decision in Thryv, Inc. v. Click-to-Call Technologies, LP, “§ 324(e) prohibits judicial review of SIPCO’s challenge because it is nothing more than a contention that the agency should have refused to institute [covered business method] CBM review.”

Recent news reports about choreographer JaQuel Knight’s efforts to copyright some of his iconic dance routines, such as Beyoncé’s “Single Ladies,” are a reminder that such works face steep hurdles when it comes to qualifying for protection. From ballet to breakdance and Swan Lake to Saturday Night Fever, dance is part of every culture—and a surprisingly frequent source of intellectual property conflict. While works of dance clearly are eligible for copyright protection under Section 102(a)(4) of the Copyright Act, determining which dances meet the standard—and which have two left feet—has been tricky and has resulted in a number of high-profile disputes in recent years. However, a recent U.S. Supreme Court ruling in an unrelated copyright dispute may provide important guidance in subsequent dance-related copyright litigation.

On November 16, the U.S. Supreme Court denied petitions for certiorari in two cases from the Federal Circuit: IYM Technologies LLC v. RPX Corporation and Advanced Micro Devices, Inc. and WhitServe LLC v. Donuts Inc. IYM asked the Supreme Court to grant review “to determine whether the Arthrex decision applies to all appeals that were pending when [the Arthrex decision] issued.” In the WhitServe petition, WhitServe asserted that a determination of patent ineligibility “necessitates impermissible fact-weighing at the pleading stage and eviscerates the statutory presumption of validity.”