Posts in US Supreme Court

Another 101 Bites the Dust as High Court Denies Realtime Data Petition

The U.S. Supreme Court today denied a petition asking the High Court to clarify patent eligibility jurisprudence under Section 101 since its 2014 ruling in Alice Corp. Pty Ltd. v. CLS Bank Int’l. Realtime Data, LLC asked the Court specifically to address the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) August 2023 decision holding 211 of its patent claims ineligible as abstract.

SCOTUS Passes on Intel’s Bid to Overturn Fintiv

The U.S. Supreme Court today denied certiorari in Intel v. Vidal, a case that asked the Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) ruling concerning the Patent Trial and Appeal Board’s (PTAB’s) so-called Fintiv framework. The CAFC’s March 2023 decision said appellate review of whether the PTAB’s discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” was precluded by Section 314(d) of the patent statute.

What Lies Ahead: Here’s What IP Practitioners Will Be Watching in 2024

We are less than 24 hours out from 2024 and, after reflecting on what mattered in 2023 and other year-in-review recaps, it is now time once again to ponder what lies ahead. From exciting patent legislation to Supreme Court trademark and copyright cases that could have big implications, here is what the IPWatchdog community will be keeping on its radar in the new year. 

How U.S. Courts Ruled on Trademarks in 2023

This year has seen a bonanza of significant trademark decisions, including several high- profile decisions from the Supreme Court. Courts ruled on issues ranging from First Amendment and parody considerations to the extraterritorial reach of U.S. trademark law, yet in most cases returned to basic principles of trademark law to resolve the open issues. Below is a selection of a few of those significant cases from the previous year.

IP at the Top: What the Supreme Court’s 2023 IP Rulings Mean for Practice

In 2023, the U.S. Supreme Court decided four intellectual property cases. The cases touched all of the major fields of intellectual property—two cases interpreted the federal trademark act (Jack Daniel’s and Abitron), one case involved patent enablement (Amgen), and one case explicated the federal copyright statutes (Goldsmith). The decisions were split along party lines, with two cases finding in favor of intellectual property owners (Jack Daniel’s and Goldsmith) and two cases in favor of the accused infringers (Abitron and Amgen).

Justices Skip Bid to Review Case Questioning CAFC Reversal Practices

The U.S. Supreme Court yesterday denied a petition for writ of certiorari asking the Court to reconsider the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) June ruling that the petitioner said signals an expanding practice of reversing agency decisions in lieu of remand. In the CAFC’s decision, the court reversed a Patent Trial and Appeal Board (PTAB) judgment that affirmed patent claims in part due to the commercial success of MacNeil IP’s WeatherTech vehicle floor tray. The CAFC also affirmed a PTAB ruling that invalidated three claims of one of MacNeil’s patents in its battle with Yita LLC, a Seattle-based auto parts company.

Exploring the Misguided Notion that ‘Merely Doing It on A Computer’ Negates Eligibility

The U.S. Supreme Court’s Alice decision alleges that “…merely requiring generic computer implementation fails to transform that abstract idea into a patent-eligible invention.” And the Patent Eligibility Restoration Act (PERA) of 2023 alleges that “adding a non-essential reference to a computer by merely stating, ‘do it on a computer’ shall not establish such eligibility.” Clearly, it is assumed that “merely” doing something on a computer or “merely” saying “do it on a computer” is not a desirable thing in the eyes of some; a computer supposedly invalidates the inventive effort and “merely” doing something on a computer is undeserving of even consideration of a patent.

Second Circuit Upholds Injunction for Vans Based on Jack Daniel’s Ruling

The U.S. Court of Appeals for the Second Circuit today invoked the Supreme Court’s decision in Jack Daniel’s Properties v. VIP Products to affirm a district court’s finding that MSCHF Product Studio, Inc.’s shoe, the Wavy Baby Sneaker, likely infringed Vans, Inc.’s Old Skool shoe. The Second Circuit ultimately affirmed the district court’s grant of a preliminary injunction and temporary restraining order for Vans. The Wavy Baby Sneaker is made by MSCHF, a Brooklyn-based art collective that “has recently focused its artistic expression on ‘sneakerhead culture.,’” according to the Second Circuit opinion. Upon release of the Wavy Baby Sneaker, MSCHF’s co-Chief Creative Officer said in a statement: “’The Wavy Baby concept started with a Vans Old Skool sneaker’ because no other shoe embodies the dichotomies between ‘niche and mass taste, functional and trendy, utilitarian and frivolous’ as perfectly as the Old Skool.”

Laser Lessons: Has the Supreme Court Undermined Pioneering Laser Patents?

It seems likely that Amgen Inc. v. Sanofi 598 U.S. 594 (2023) will be one of the most significant, if not the most significant Supreme Court patent decision of 2023. Its holding that a claim to a genus of antibodies must be enabled to the full scope of species within that genus was emphatic and—coming from our highest court—about as final as stare decisis can guarantee. Forty years ago, I was knee deep in U.S. Patent and Trademark Office (USPTO) and court proceedings on behalf of laser pioneer, Gordon Gould. A 1983 decision in Gould’s favor by an appellate court effectively shut down efforts by the USPTO and laser manufacturers to derail Gould’s patent portfolio, ultimately leading to widespread licensing of Gould’s patents. But there was one point in that 1983 decision that might be viewed as inconsistent with Amgen’s holding.

SCOTUS Declines Solving Circuit Split on Awarding Avoided Costs in Trade Secret Cases

On November 20, the U.S. Supreme Court denied a petition for writ of certiorari filed in Tata Consultancy Services Ltd. v. Epic Systems Corp. The denial leaves in place an appellate court decision awarding $280 million for unjust enrichment and punitive damages in a trade secret misappropriation case where the plaintiff suffered no economic harm and the defendant gained no actual benefit from the misappropriated information.

Supreme Court Again Denies Inventor’s Bid to End Alice/Mayo

On Monday, the United States Supreme Court denied inventor Jeffrey Killian’s petition for a rehearing in his case asking the Court to provide clear guidance on – or else throw out – the Alice/Mayo test for patent eligibility. The Supreme Court denied Killian’s original petition in early October, but Killian filed a request for rehearing several weeks later. Killian first filed a petition for writ of certiorari to the Supreme Court in April, after the U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the Patent Trial and Appeal Board’s (PTAB)’s ruling rejecting claims of his U.S. Patent Application No. 14/450,042 under Section 101.

Justices Won’t Consider Whether CAFC’s Claim Construction Constitutes a Judicial Taking

The U.S. Supreme Court today denied a petition that asked it to consider whether the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) “construction of petitioner’s patent claim was unforeseeable and unjustifiable under the circuit’s prior decisions,” thereby constituting a judicial taking of property in violation of the Fifth Amendment’s Takings Clause. The petition was an appeal from the CAFC’s April decision affirming a district court’s judgment that AT&T Mobility LLC did not infringe an inventor’s wireless communications technology patent but also holding that AT&T had forfeited its chance to prove the patent invalid on appeal.

USPTO Tells SCOTUS to Skip Intel’s Challenge to Fintiv Framework

The U.S. Patent and Trademark Office (USPTO) responded last week to a petition for certiorari that is asking the Supreme Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that said appellate review of whether the Patent Trial and Appeal Board’s (PTAB’s) discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” is precluded by Section 314(d) of the patent statute.

Google Escapes $20 Million Judgment as SCOTUS Denies Petition on CAFC Reissue Standard

Just a few weeks after Google waived its right to respond, the Supreme Court denied a petition challenging a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that held a Texas district court erred in ruling against the search engine and tech behemoth. The U.S. District Court for the Eastern District of Texas found the inventors of a method for protecting computers from malware—Alfonso Cioffi and Allen Rozman (the patent is now assigned to Melanie, Megan and Morgan Rozman)—had proven that Google’s Chrome web browser infringed their reissue patents RE43,500, RE43,528, and RE43,529 and that the claims were not invalid. After a first time at the Federal Circuit in which the case was remanded to the district court, a jury awarded Cioffi, et. al. $20 million in past damages and the district court in post-trial review rejected Google’s “original patent defense.”

SCOTUS Declines to Consider Joint Inventorship Petition

The U.S. Supreme Court on Monday denied certiorari to HIP, Inc. in a case that asked the Court to review the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) standard for determining joint inventorship. The petition, filed in August, asked the Court to resolve what it called “an indisputable conflict between the express language of Section 116(a) of Title 35, informed by the legislative history of its 1984 amendments, and requirements the Federal Circuit has imposed on the joint inventions statute since the 1984 amendments.”