Posts in US Supreme Court

Assessing the Arguments: Practitioners Predict Likely Loss for TRUMP TOO SMALL Applicant

Oral arguments were held yesterday in Vidal v. Elster, with most observers concluding that the justices are unlikely to grant trademark applicant Steve Elster’s bid to register the mark TRUMP TOO SMALL for t-shirts. Unlike the Court’s recent prominent trademark decisions in Matal v. Tam and Iancu v. Brunetti, there seemed to be little controversy on the part of the justices in Vidal v. Elster over whether the First Amendment is implicated here. Below is a roundup of comments from trademark practitioners on what they thought stood out during the oral arguments.

Justices Skeptical that Refusal to Register TRUMP TOO SMALL Violates the First Amendment

The U.S. Supreme Court heard oral argument this morning in Vidal v. Elster, the latest in a line of recent cases probing the intersection of the First Amendment and trademark law, following 2017’s Matal v. Tam, 2019’s Iancu v. Brunetti, and this year’s Jack Daniel’s v. VIP Products.  As in Tam and Brunetti, the Justices are being asked in Elster to review the constitutionality of a restriction on federal trademark registrations—this time, the prohibition under Section 1052(c) of the Lanham Act on the registration of living persons’ names without their consent, sometimes called the “Name Clause.”

Google Won’t Reply to SCOTUS Petition Seeking Review of CAFC’s ‘Original Patent’ Standard for Reissue

Yesterday, Google waived its right to respond to a petition for writ of certiorari to the U.S. Supreme Court filed by the inventors of a method for protecting computers from malware. The inventors, Alfonso Cioffi and Allen Rozman (the patent is now assigned to Melanie, Megan and Morgan Rozman), are appealing a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that reversed a district court ruling and $20 million verdict for the inventors. The CAFC held that the Texas district court erred in ruling that four claims across the three patents were not invalid and agreed with Google’s argument that the claims were invalid under the “original patent requirement” because they contained reissue claims not disclosed in the original patent.

SCOTUS Passes on Petition to Reconsider Eligibility of Isolated Vitamin B3 Claims

The U.S. Supreme Court on Monday denied certiorari to review a February ruling of the U.S. Court of Appeals for the Federal Circuit (CAFC) that held claims of ChromaDex, Inc.’s patent on an isolated form of vitamin B3 are directed to unpatentable subject matter under Section 101. The CAFC affirmed the Delaware district court’s grant of summary judgment for Elysium Health that the relevant claims of U.S. Patent No. 8,197,807, titled “Nicotinamide riboside kinase compositions and methods for using the same,” were invalid under Section 101 as being directed to a natural phenomenon, specifically, “compositions comprising isolated [NR], a naturally occurring vitamin present in cow milk.”

Is the Food and Drug Administration Killing Chevron Deference?

The U.S. Supreme Court on Friday added another case to its docket that challenges the Chevron Doctrine, a decades-old principle instructing lower courts to defer to federal agencies’ interpretations of ambiguous laws. The Court said it will hear Relentless, Inc. v. Dept. of Commerce in tandem with an almost identical appeal brought by Rhode Island herring fishers. Mark your bingo card if you had “Rhode Island herring fishers.”

SCOTUS Refuses Personalized Media Communication’s Bid to Untangle Prosecution Laches Confusion

On October 10, the U.S. Supreme Court issued an order list showing it had denied the petition for writ of certiorari filed in Personalized Media Communication, LLC v. Apple Inc. In denying the appeal, SCOTUS leaves in place a divided Federal Circuit ruling that improperly expanded prosecution laches doctrine according to Personalized Media (PMC). The cert denial also passes on the question of whether prosecution laches remains a valid defense to patent infringement in light of the Supreme Court’s 2017 ruling in SCA Hygiene Products v. First Quality Baby Products.

SCOTUS Won’t Rule on Whether Lanham Act Applies to Celebrity Personas

The U.S. Supreme Court on Tuesday denied a petition asking the justices to weigh in on whether the Lanham Act prohibits “the unauthorized use of a celebrity’s persona advertising third party brands with logos in a commercial motion picture as a trademark infringement?” The case stems from a suit brought by the partner of Christopher Jones, an actor in the 1960s, who was referenced in the film Once Upon a Time . . . in Hollywood (the film), written and directed by Quentin Tarantino. Jones starred in the television series, The Legend of Jesse James, and movies including 3 in the Attic and Wild in the Streets.

Is the Supreme Court Going to Declare the Patent Eligibility Restoration Act Unconstitutional?

Recently, members of the Senate Judiciary Committee’s Subcommittee on Intellectual Property released a draft of the ‘‘Patent Eligibility Restoration Act of 2023” (“PERA”) for the purpose of addressing the judicially-created exceptions to patent eligibility plaguing the country. Among the Senate’s findings are that patent eligibility jurisprudence requires significant clarification, the judicial exceptions are rendering an increasing number of inventions ineligible for patent protection, and Alice/Mayo is confusing and inconsistent. None of this is surprising. Alice/Mayo has been a resounding failure. However, of particular importance, the Senate bill has declared “All judicial exceptions to patent eligibility are eliminated.”

Amgen is the Answer to Alice

The Supreme Court decided Amgen Inc. v. Sanofi on May 18, 2023, nearly nine years after its decision in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). Amgen was concerned with the enablement statute of the patent law, 35 U.S.C. § 112. In comparison, Alice was concerned with the eligibility statute of the patent law, 35 U.S.C. § 101, and has been highly criticized for creating a mess of patent eligibility. At first glance, these cases are distinguishable from one another, since they deal with different aspects of the patent laws. However, statutory interpretation and analysis should be the same in both instances.

Supreme Court Rejects Latest Bid to Clarify Patent Eligibility

The U.S. Supreme Court today denied the petition for certiorari brought by CareDX, Inc. in May asking it to review a 2022 decision holding certain claims of its patents directed to detection levels of donor cell-free DNA (cfDNA) in the blood of an organ transplant patient patent ineligible. Justice Bret Kavanaugh would have granted the petition, according to the Order List.

TRUMP TOO SMALL Amici Weigh in as High Court Readies for Another Trademark Fight

Amici have submitted briefs and a response has been filed in recent weeks with respect to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s petition to the U.S. Supreme Court for review of a decision that said the USPTO was wrong to reject a trademark application for the mark TRUMP TOO SMALL. The February decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) held the Office’s application of Section 2(c) of the Lanham Act to reject TRUMP TOO SMALL was unconstitutional. Specifically, the CAFC panel held that “applying section 2(c) to bar registration of [Steve] Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.”

Best Practices for Conquering the Enablement Requirement After Amgen

The Supreme Court’s decision in Amgen Inc. v. Sanofi, 143 S. Ct. 1243, 1248 (2023), found that antibody claims defined by their binding and blocking function lacked enablement…. The Supreme Court’s decision relied highly on the unpredictability of the art—scientists cannot always predict how substitutions of even single amino acids will affect the binding and/or blocking function of an antibody. The disclosed methods of identifying species within the scope of the claim were little more than “trial and error.”… The consensus seems to be that Amgen generally forecloses broad genus claims in the biotechnology field. The remaining questions are: Are patent applicants limited to claiming species (e., sequence listings)? What steps may a patent applicant take to obtain broader coverage?

CAFC’s Joint Inventorship Analysis Challenged in SCOTUS Petition

HIP, Inc. recently filed a petition for writ of certiorari with the U.S. Supreme Court asking the Justices to review a May 2023 U.S. Court of Appeals for the Federal Circuit (CAFC) decision holding an inventor’s contribution to a patent for methods of pre-cooking bacon and meat pieces did not satisfy the joint inventorship test because the contribution was “insignificant in quality.”

A Comment on In re Cellect: The Patent Bar Must Push for Eliminating ODP Altogether, Not Interpreting it More Favorably

In an IPWatchDog post of September 6, 2022, Anthony Prosser and I traced the history of the doctrine of “Non-Statutory Judicially Created Obviousness-Type Double Patenting” (ODP). We confirmed (as its name indicates) that no Congressional statute has ever codified this doctrine. It is ultra vires because Congress has the sole right to create patent law…. In the Cellect decision issued yesterday, the Federal Circuit stretches the word “disclaimer” in Section154(b)(2)(B) beyond credibility as justification for the ODP doctrine itself and assumes that is what Congress was talking about without actually saying it (stating with agreement that “The Board also reasoned that terminal disclaimers arise almost exclusively in situations to overcome ODP rejections, and so Congress, by addressing terminal disclaimers in §154, effectively addresses ODP”).

Recapping the Recently Completed Supreme Court Term: IP Decisions, Denials and Deferrals

The recently-concluded term of the U.S. Supreme Court featured four intellectual property decisions: one patent case, two trademark cases, and one copyright case. Three of the four opinions were unanimous, citing fundamental and time-honored precedents for support. The only dissent involved a copyright dispute centering on Andy Warhol’s use of a third-party photograph of Prince in his work. That case resulted in a highly charged debate between Justices Sotomayor and Kagan as to whether Warhol’s copying constituted transformative fair use.