Posts in US Supreme Court

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.

Two amicus briefs have now been filed in The Chamberlain Group’s bid to the Supreme Court 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.’” Former Federal Circuit Chief Judge Randall Rader has submitted a joint brief with Chargepoint, Inc.—which recently lost its own plea to the High Court to fix Section 101 law—and High 5 Games submitted a separate brief. Both are backing the petition and urging the Court to resolve the uncertainty around U.S. patent eligibility law once and for all, and sooner rather than later.

“We hold these truths to be self-evident, that all men are created equal, that they are endowed by their Creator with certain unalienable Rights, that among these are Life, Liberty and the pursuit of Happiness,” reads the preamble to the Declaration of Independence, a document authored by Thomas Jefferson, edited by Benjamin Franklin, and signed by some 56 Congressional delegates. Over the weekend, we celebrated the 244th anniversary of the signing of the Declaration of Independence, and in light of everything that has happened over the second quarter of 2020 it is perhaps a good time to reflect. So much of the second quarter of 2020 has been defined by two major events— the unnecessary and unacceptable killing of George Floyd and COVID-19. In the coming weeks and months there will be much written and debated by experts in the field of social justice, police reform and government relating to just about every aspect of the events relating to the death of Mr. Floyd. As those conversations ensue, and reforms are brought to bear, as more fully explained below, America should also take this opportunity to have a broader conversation about private property rights— real, personal and intangible.

On Tuesday, June 30, the U.S. Supreme Court affirmed the Fourth Circuit’s holding that BOOKING.COM is a protectable trademark. The U.S. Patent and Trademark Office (USPTO) had refused registration of Booking.com’s housemark, finding that the mark was generic—in other words, a term that consumers understand as primarily the common or class name for the underlying services. The specific issue before the Court was “[w]hether the addition by an online business of a generic top-level domain (“.com”) to an otherwise generic term can create a protectable trademark.” The Court ultimately sided with the popular online travel company Booking.com in an 8-1 decision, holding that “[a] term styled ‘generic.com’ is a generic name for a class of goods or services only if the term has that meaning to consumers.” The ruling paves the way for the registration of “generic.com” terms upon a showing of acquired distinctiveness—but obtaining such registrations will not be easy, or cheap.

The Supreme Court’s Bilski v. Kappos decision—which celebrated its 10th birthday this past weekend—still matters, even in the age of Mayo-Alice. For one thing, the case marked the end of the patent-eligibility peace. For another, Bilski stands for the well-known principle that the “machine-or-transformation” test offers a “useful and important clue” as to whether the process claimed by a patent will qualify as patent-eligible under 35 U.S.C. §101. And at the same time, it stands for the fact that the machine-or-transformation test has been far more trivia than principle, the case law not having applied or considered that Bilski “clue” much beyond the Bilski case itself.

On June 30, the U.S. Supreme Court denied certiorari to Chrimar Systems, Inc., thereby letting stand a decision of the United States Court of Appeals for the Federal Circuit and declining to consider the controversial issues of “when a judicial decision becomes binding on the parties, and whether a decree from a different branch of government can reverse an Article III court judgment.”

The U.S. Supreme Court has sided with Booking.com, ruling that a generic term paired with .com “is a generic name for a class of goods or services only if the term has that meaning to consumers.” The opinion was delivered by Justice Ginsburg and joined by eight members of the Court, with Justice Breyer dissenting and Justice Sotomayor filing a separate concurring opinion. In the Booking.com case, the U.S. Patent and Trademark Office (USPTO) was urging the High Court to reverse a judgment of the U.S. Court of Appeals for the Fourth Circuit that held BOOKING.COM to be a registrable trademark. But the Supreme Court ultimately found that the genericness analysis should turn on consumer perception, rather than a “per se rule” against trademark protection for a generic.com term.

Ten years ago today, the U.S. Supreme Court handed down what at the time was one of the most important patent decisions in decades. It signaled a new era in patent law—not least of all because Bilski seemed to jumpstart the Supremes’ interest in patent cases. On this milestone anniversary, it’s worth reminding ourselves how we ended up where we are today. In the years since Bilski, the Court has decided Mayo v. Prometheus, Myriad and Alice. If the decision in State Street can be said to have marked the onset of a golden era in the patentability of software and business method patents, the decision in Bilski marked the beginning of the end, and Alice was its death knell, with its introduction of a two-step test for eligibility. Indeed, the unpredictability of application of 101 extends throughout all practice areas.

The Federal Circuit has been criticized for creating categories of abstract ideas when applying Alice v. CLS’s two-prong framework and for refusing to define the contours of an abstract idea. Naturally, this causes uncertainty for those drafting patent claims. A typical view is that claims can be drafted by analogizing to them to the decisions. However, analogical reasoning has limited utility where the Federal Circuit continues to define new abstract ideas. This article argues that Alice’s definition of a patent-eligible claim is consistent with the Federal Circuit’s decisions and that this definition can be a useful analytical tool while drafting claims.

Since the Alice decision, the U.S. courts have adopted different views related to the role of the preemption test in eligibility analysis. While some courts have ruled that lack of preemption of abstract ideas does not make an invention patent-eligible [Ariosa Diagnostics Inc. v. Sequenom Inc.], others have not referred to it at all in their patent eligibility analysis. [Enfish LLC v. Microsoft Corp., 822 F.3d 1327] Contrary to those examples, recent cases from Federal Courts have used the preemption test as the primary guidance to decide patent eligibility. Inventive concepts enabled by new algorithms can be vital to the effective functioning of machine learning systems—enabling new capabilities, making systems faster or more energy efficient are examples of this. These inventions are likely to be the subject of patent applications. However, the preemption test adopted by U.S. courts may lead to certain types of machine learning algorithms being held ineligible subject matter.

As we concluded in Part I of this article, the courts are being called upon in The Chamberlain Group v. Techtronic Industries, Inc to respond to an emergency situation in which they must stop the Federal Circuit’s “directed-to” version of the Mayo-Alice test from expanding into, and negating, claims in every subject imaginable. As Chamberlain urges, the patent statute, whether in Section 101 or beyond, does not limit the universe of eligible claims to those where a court can dissect its claim elements into old or “conventional” ones and those that represent the claim’s “patentable advance.” On that point, too, the Patent Act and the Supreme Court have been in unison: You can’t do that.

The case of the “garage door opener,” The Chamberlain Group v. Techtronic Industries, Inc., has received its share of attention. Rightly so. The case, after all, spotlights not only the breadth of the Supreme Court’s Mayo-Alice test for assessing patent ineligibility under 35 U.S.C. §101; but also the Federal Circuit’s particular “directed to” definition for that test and the dissection of patent claims that has followed.
And it fairly asks, in a petition to the Supreme Court, that if a claim on a garage door opener is “directed to” an “abstract idea” and thus ineligible for patent protection—is any patent, or any technology, safe from the Mayo-Alice ineligibility test? Chamberlain says no. From the outset, its petition declares that its case therefore presents a “patent emergency,” one that the Supreme Court must review to stop the Mayo-Alice test—and the Federal Circuit’s “directed-to” version of it—from expanding into, and negating, claims in every subject imaginable.

On May 21, the U.S. Copyright Office published a report on Section 512 of Title 17 of the U.S. Code, which governs limitations on copyright liability to materials published online. Safe harbor provisions in Section 512, which were enacted as part of the Digital Millennium Copyright Act (DMCA), have allowed online service providers to operate tech platforms without facing liability for infringing content posted on those platforms. While the Copyright Office acknowledges that the careful balance intended to be struck by Section 512 has become unbalanced, to the detriment of rights holders, the report only recommends that Congress fine-tune certain aspects of Section 512 to restore this balance of competing interests.