Posts in US Supreme Court

Greenberg Traurig and The Rader Group – which is headed by retired Chief Judge of the U.S. Court of Appeals for the Federal Circuit, Randall Rader – have submitted a petition for certiorari to the U.S. Supreme Court on behalf of Acer America Corp. asking the Court to review the CAFC’s precedential opinion in Intellisoft v. Acer. On April 3, the CAFC held that the United States District Court for the Northern District of California (the district court) erred in refusing to remand a case to California state court where removal to a district court was improper under 28 U.S.C. § 1441 and §1454. Despite Acer’s contentions, the CAFC found that Intellisoft’s trade secret misappropriation claim did not “necessarily” raise patent law issues that would result in district court original jurisdiction.

On June 2, the European Commission launched a far-reaching consultation as part of its examination of a forthcoming Digital Services Act (DSA), aimed at identifying areas where new rules at the European level might advance the interests of European societies. Part of that examination was specifically aimed at considering the application of ex ante regulation of dominant platforms. To this end, the impact assessment will examine different policy options for the effective ex ante regulatory framework that ensures that online platform ecosystems controlled by large online platforms that benefit from significant network effects remain fair and contestable, in particular in situations where such platforms may act as gatekeepers. I do not intend to address the framing of the consultation here, nor to discuss the potential relative merits and/or drawbacks of ex ante regulations in this area. Perhaps another day. For the moment, I just want to focus on Google’s fascinating response to this request for comments.

Headlining day two of IPWatchdog’s CON2020 was Retired U.S. Court of Appeals for the Federal Circuit (CAFC) Chief Judge Paul Michel, who offered attendees 12 “perspectives” on the present-day Federal Circuit to provide context for some of the Court’s current problems. Ultimately, said Michel, these problems need to be fixed via legislation, not the courts, and the key to speeding up that legislative process is for individuals and companies to become involved and proactively advocate for patent reform at the local level.

With its recent opinion in AAM, Inc. v. Neapco Holdings, LLC, No. 18-1763 (Fed. Cir. July 31, 2020), and a 6-6 stalemate by the court’s active judges on whether to take the case en banc, the Federal Circuit has now adopted—under the rubric of 35 U.S.C. §101—a formalized set of enablement-like requirements for patent claims. For a simple “threshold” eligibility test, section 101 has grown remarkably complex. Indeed, since the Supreme Court’s 2012 Mayo and 2014 Alice decisions re-cast patent eligibility into a “two-step framework,” the Section 101 test adjudges not just subject-matter eligibility and the three “limited” exceptions thereto, but also patentability or “inventive-concept” challenges predicated on comparisons to the prior art, see 35 U.S.C. §§ 102-103. And now the enablement-type requirements imposed by AAM v. Neapco.

On July 30, IP Watchdog Editor-in-Chief Eileen McDermott reported that, as part of its series on a 1990s copyright modernization bill known as the Digital Millennium Copyright Act, the Senate Subcommittee on Intellectual Property recently held a hearing relating to what is known as the fair use doctrine – an exemption to copyright law that has long confused innovators and consumers alike. Thankfully, the days of this ill-defined system, which breeds cronyism, not justice, may soon be numbered. As reported in IP Watchdog on August 4 by lawyer and professional lecturer Steven Tepp, the high court will hear Google v. Oracle, a landmark copyright case, in October. Legal experts have labeled it “the copyright case of the century,” and for good reason. Since the case revolves around fair use, it will allow the nine justices to provide judicial clarity over the doctrine the nation’s innovators have desperately needed for decades.   

At a time when small businesses are reeling, the Supreme Court decided to make life even more challenging for startups and mom and pop shops. The Court recently decided that a generic term combined with “.com” or “.net” could be registered as a federal trademark. If that sounds like no big deal to you, you have not thought it through. Based on the Court’s decision in United States Patent and Trademark Office et al. v. Booking.com, someone could register a trademark for autorepair.com. That would mean that Joe of Joe’s Auto Repair would have to get permission, and likely pay a licensing fee, to use the name Joe’s Auto Repair on his website and marketing materials. Multiply that by thousands of other generic business categories and the reality becomes clear.

On August 7, Techtronic Industries filed a brief in opposition to The Chamberlain Group’s petition to the U.S. Supreme Court asking for review of “whether the Federal Circuit improperly expanded § 101’s narrow implicit exceptions by failing to properly assess Chamberlain’s claims ‘as a whole.’” Techtronic’s brief asks the Court to deny the petition, and presents the following two questions in the case it is granted: “1) Whether the Federal Circuit, on the particular facts of this case, erred in analyzing the claims as a whole and 2) Whether Chamberlain forfeited and is estopped from making its current arguments about the scope and preemptive effect of its claims in view of its inconsistent arguments below.”

The 2012 Supreme Court decision in Mayo Collaborative Servs. v. Prometheus Labs changed the landscape for patenting diagnostic inventions in the United States. Patent eligibility/ineligibility in the United States stems from two sources: (1) 35 U.S.C. § 101, and (2) judicially-created exclusions, including laws of nature, natural phenomena, abstract ideas, and mental processes. In Mayo, the Supreme Court struck down method of treatment claims for being directed to a law of nature. While Mayo did not create this exclusion, it significantly expanded its applicability to diagnostic-based inventions. This paper explores Federal Circuit case law on patent eligibility of diagnostic-based inventions since the Mayo decision, as well as provides practical guidance on drafting diagnostic patent claims in light of these decisions.

Activity surrounding the requests for the Supreme Court’s review of the holdings in Arthrex v. Smith & Nephew I and Arthrex v. Smith & Nephew II continues to increase. As outlined in “A Guide to Arthrex: Activity Heats Up in Petitions Pending with Supreme Court”, four petitions for writs of certiorari have been filed:  U.S. v Arthrex, No. 19-1434, Smith & Nephew v. Arthrex, No. 19-1452, Arthrex v. Smith & Nephew, No. 19-1458, and Arthrex v. Smith & Nephew, No. 19-1204.  Now, three more amicus briefs have been filed by US Inventor, TiVo and Comcast, and on July 27, an additional consolidated petition for certiorari filed by the U.S. Government and USPTO Director Andrei Iancu asked the Court to review 39 Federal Circuit rulings affected by Arthrex.

In two months, the Supreme Court will hear the oral argument in the long-running Google v. Oracle software copyright case. At issue is the availability of copyright protection for computer programs and in particular the copyright protection of code in Oracle’s Java platform, which Google admits it copied for its Android operating system without obtaining a license. Google also claims its commercial use of that code in competition with Oracle is protected under copyright law’s fair use doctrine, but that is a subject for another day. If adopted by the Supreme Court, Google’s arguments would undermine the Constitutional purposes and specific Congressional intent in enacting the Copyright Act, and along with them the fundamental incentives for new creative expression in software, a building block of so many consumer and industrial products. To better understand how, it helps to start at the beginning: Apple’s groundbreaking release of the iPhone.

In Article 1, Section 8, Clause 8, of our Constitution, the founders were relatively specific. The founders give Congress power to secure “the exclusive Right” to “Authors and Inventors” in the “Writings and Discoveries”. Congress is given  specific direction on how to do it (i.e., “for Limited Times”), and why it should be done (i.e., “To promote the Progress of Science and useful Arts”). Unfortunately, the Leahy-Smith America Invents Act (AIA) of 2011 dramatically changed how the Executive branch implements the Constitutional prerogative.  The AIA transferred power constitutionally allocated to the judicial branch to the executive branch – specifically, to Administrative Patent Judges (APJs) in the USPTO. In the process of implementing the Patent Trial and Appeals Board (PTAB) on which the APJs sit, judicial independence, judicial ethics, rules of evidence, and other protections commonly afforded rights holders in disputes adjudicated by the federal judiciary were sacrificed in the name of expediency.

Some fictional characters are heroes; others are villains. Some mimic reality and others personify fantasy. And some appear in comic books and video games, while others in television shows and movies. Fictional characters epitomize the essence of creativity. And while copyright law is designed to encourage creative works, the law on character copyrights is in chaos. Every circuit to address this area of copyright law applies a different test. And some tests—like the Ninth Circuit’s—favor behemoth entertainment corporations over individual artists and independent companies. An objective, clear test that honors foundational principles of copyright law is needed. Robins Kaplan LLP petitioned for certiorari with the U.S. Supreme Court today on behalf of the Moodsters Company [link]. Moodsters Co. asks the Court to review the Ninth Circuit’s decision that dismissed its 89-page amended complaint and found the Moodsters characters uncopyrightable as a matter of law. The Supreme Court has never before addressed character copyrights.

The Supreme Court is currently considering several pleas to review the holding in Arthrex v. Smith & Nephew I and Arthrex v. Smith & Nephew II in the form of four petitions for writs of certiorari: U.S. v Arthrex, No. 19-1434, Smith & Nephew v. Arthrex, No. 19-1452, Arthrex v. Smith & Nephew, No. 19-1458, and Arthrex v. Smith & Nephew, No. 19-1204.  Recently, there has been an uptick in activity in the various cases, with Arthrex most recently filing response briefs in two cases and amicus brief filed by Askeladden LLC and the New York Intellectual Property Law Association (NYIPLA) in U.S. v Arthrex.

On July 29, Askeladden LLC filed an amicus brief in support of the U.S. Government’s combined petition for a writ of certiorari in U.S. v. Arthrex, Inc., No. 19-1434. In particular, Askeladden asks the Supreme Court to accept the petition and address the threshold question raised by the U.S. Government: whether, for purposes of the Appointments Clause, U.S. Const. art. II, § 2, Cl. 2, administrative patent judges (APJs) of the Patent Trial and Appeals Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) are “principal officers” who must be appointed by the President with the Senate’s advice and consent, or “inferior officers” whose appointment Congress has permissibly vested in a department head.