Posts in US Supreme Court

Inventor and User Organizations Tell SCOTUS to ‘Confine’ Chevron So USPTO Can’t Escape Rulemaking Process

One of the many amici who have filed briefs in a Supreme Court case asking the Court to overrule its precedent in Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc. told the justices last week that the United States Patent and Trademark Office (USPTO) is abusing the so-called Chevron doctrine “to bypass the procedures that ensure that the agency considers the public interest.” The “Chevron doctrine” says courts should defer to administrative agencies’ interpretation of the statutes delegated to them. In the 1984 ruling in Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., the Supreme Court held that a court “may not substitute its own construction of a statutory provision for a reasonable interpretation made by [the agency charged with administering the statute],” where the statute is ambiguous.

Chew on This: What the Bad Spaniels Trademark Decision Means for Free Expression and the Metaverse

In Jack Daniel’s Properties, Inc. v. VIP Products LLC, a unanimous Supreme Court sided with Jack Daniel’s and sent dog toy maker VIP Products scurrying away with its tail between its legs. The decision held that VIP’s commercial use of a dog toy, designed to look like a bottle of Jack Daniel’s whiskey, complete with droll variations on Jack Daniel’s trademarks, is not entitled to First Amendment protections for artistic expression under the “Rogers test.” Rogers v. Grimaldi, 875 F. 2d 994, 999 (2d Cir. 1989). Instead, it is subject to the Lanham Act’s likelihood-of-confusion test to determine if consumers would be likely to confuse VIP’s dog toy with Jack Daniel’s, no matter how parodic. While the justices felt that artistic expression versus trademark use was cut and dried in this instance, that is not always the case in litigation focused on NFTs and the Metaverse.

Amicus Brief in Killian SCOTUS Case Urges Textualist Interpretation of Section 101

On July 17, inventor advocacy organization US Inventor and conservative interest group Eagle Forum Education and Legal Defense Fund filed a joint amicus brief at the U.S. Supreme Court urging the nation’s highest court to grant the petition for writ of certiorari filed in Killian v. Vidal. US Inventor and Eagle Forum ELDF’s brief is the latest call upon SCOTUS to address the “dire consequences” flowing from the dramatic expansion to judicial exceptions to patent eligibility under 35 U.S.C. § 101.

Fishermen Ask SCOTUS to Scrap Chevron

A group of herring fishermen have filed their opening brief with the U.S. Supreme Court in a case that asks the Court to overturn its “Chevron doctrine,” which says courts should defer to administrative agencies’ interpretation of the statutes delegated to them. In the 1984 ruling in Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., the Supreme Court held that a court “may not substitute its own construction of a statutory provision for a reasonable interpretation made by [the agency charged with administering the statute],” where the statute is ambiguous.

Michel Says He’s Confident Latest Eligibility Bill Will Curb Judicial Expansion of Section 101

On the evening of July 5, inventor advocacy group US Inventor hosted a webinar to discuss the Patent Eligibility Restoration Act (PERA) recently introduced into the U.S. Senate by Senators Thom Tillis (R-NC) and Chris Coons (D-DE). The featured guest speaker was Retired U.S. Court of Appeals for the Federal Circuit Chief Judge Paul Michel, who has been involved in the development of PERA’s draft legislative text and has personally supported PERA as an important step in “reviv[ing] the faltering U.S. innovation system” by abrogating the series of U.S. Supreme Court rulings that greatly expanded judicial exceptions to patent eligibility under 35 U.S.C. § 101.

Jack Daniel’s v. VIP: A Comparative Analysis of the U.S. and Brazilian Approaches to Trademarks and Free Speech

On June 8, the United States Supreme Court handed down a surprisingly decisive ruling on trademark law and its relationship with First Amendment rights. The Court found that free speech rights did not protect a manufacturer of dog toys, which mimicked a bottle of Jack Daniels, against an action for trademark infringement. The case has provoked widespread discussion among IP lawyers across the world regarding similar cases in other jurisdictions.

SCOTUS Says Lanham Act Does Not Reach Extraterritorial Infringement

The U.S. Supreme Court (SCOTUS) ruled today in Abitron Austria v. Hetronic International that Sections 1114(1)(a) and 1125(a)(1) of the Lanham Act are not extraterritorial in nature and that “‘use in commerce’ provides the dividing line between foreign and domestic applications of these provisions.” The decision of the U.S. Court of Appeals for the Tenth Circuit, which upheld a $96 million damages award for Hetronic, was thus vacated and remanded. Justice Alito authored the opinion for the Court and Justices Jackson and Sotomayor each filed concurring opinions—though Sotomayor’s concurrence reads more like a dissent.  

SCOTUS Issues Denials in IP Cases

The U.S. Supreme Court denied the petitions for certiorari in a number of IP cases today, including three the U.S. Solicitor General had recommended rejecting. In Genius v. Google, ML Genius Holdings (Genius) attempted to sue Google for posting song lyrics from its website in Google search results. Genius’s petition asked the High Court to answer the question of whether the Copyright Act’s preemption clause allows a business “to invoke traditional state-law contract remedies to enforce a promise not to copy and use its content?”

After Amgen: What SCOTUS Said—and Didn’t Say—About Enabling a Claim’s Full Scope

The Supreme Court’s reasoning in Amgen v. Sanofi upholds the Federal Circuit’s longstanding requirement to enable the full scope of a claimed invention. Since the Patent Act of 1790, patent law has required describing inventions with such clarity and specificity as to enable one skilled in the art to make and use the claimed invention. Moreover, the Court has consistently held that a patent fails to satisfy the enablement requirement if a person having ordinary skill must engage in undue experimentation to practice the claimed invention. The Federal Circuit has gone a step further, requiring that patents enable the full scope of a claimed invention. Amgen is a ratification of this aspect of the Federal Circuit’s enablement jurisprudence.

SCOTUS Says Retrials are Appropriate Remedy in Improper Venue Cases

The U.S. Supreme Court today delivered a ruling that flows from a trade secrets theft case, holding that “the Constitution permits the retrial of a defendant following a trial in an improper venue conducted before a jury drawn from the wrong district.” The underlying case involves a software engineer, Timothy Smith, who stole trade secrets from StrikeLines, a company that uses proprietary technology to identify private, artificial reefs that individuals construct to attract fish and then sells the coordinates. Smith, an avid fisherman, was angered by this approach as he felt StrikeLines was profiting off of the work of private citizens. He therefore figured out how to obtain StrikeLines’ data and announced on social media that he was willing to share it.

Jack Daniel’s Gets Last Laugh for Now in SCOTUS’ Ruling in ‘Bad Spaniels’ Case

The U.S. Supreme Court held today in Jack Daniel’s Properties v. VIP Products that the Rogers test, used to “protect First Amendment interests in the trademark context,” is not relevant “when an alleged infringer uses a trademark as a designation of source for the infringer’s own goods.” The Court therefore vacated the U.S. Court of Appeals for the Ninth Circuit’s ruling that said VIP’s dog toy mimicking a Jack Daniel’s whiskey bottle was an expressive work entitled to First Amendment protection. Justice Kagan authored the unanimous opinion for the Court, while Justice Sotomayor, joined by Justice Alito, and Justice Gorsuch, joined by Justices Thomas and Barrett, each filed concurring opinions.

Warhol’s Ghost in the Machine: What Warhol v. Goldsmith Means for Generative AI

On May 18, 2023, the U.S. Supreme Court answered an exceedingly narrow question of copyright law with potentially sweeping impact: did the purpose and character of Andy Warhol’s below ‘Orange Prince’ work—as used on a 2016 Condé Nast magazine cover—support fair use of Lynn Goldsmith’s photograph of famed musician Prince Rogers Nelson a/k/a Prince?  In a 7-2 decision, the Court found that it does not, calling into question nearly 30 years of fair use jurisprudence, arguably narrowing the scope of that doctrine, and potentially threatening disciplines that rely on it, e.g., appropriation art. The decision is also sure to impact generative artificial intelligence (“AI”), an emerging technology that is also likely to rely heavily on fair use.

High Court to Take on Vidal’s TRUMP TOO SMALL Trademark Petition

The U.S. Supreme Court today granted a petition brought by U.S. Patent and Trademark Office (USPTO) Director Katherine Vidal that asks, “whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.” The case was decided by the U.S. Court of Appeals for the Federal Circuit (CAFC) in February of last year, and the full court denied a request for panel rehearing or rehearing en banc in August. The February CAFC decision held the Office’s application of Section 2(c) of the Lanham Act to reject the mark 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.”

SCOTUS Requests Response in CareDx Eligibility Petition Following Michel/ Duffy Brief

Last week, retired U.S. Court of Appeals for the Federal Circuit (CAFC) Chief Judge Paul Michel and law professor John F. Duffy filed an amicus brief with the U.S. Supreme Court in support of CareDx, Inc. and the Board of Trustees of the Leland Stanford Junior University. The company and university are asking the Supreme Court to review a 2022 decision invalidating claims of its patents directed to detection levels of donor cell-free DNA (cfDNA) in the blood of an organ transplant patient. In the amicus brief, Michel and Duffy wrote, “this case concerns [us] because it represents a continuing trend of uncertainty and inconsistency in patent-eligibility jurisprudence…The outcome undermines the innovation promoting goals of U.S. patent law.”

Solicitor General Tells SCOTUS to Reject Apple’s Bid to Skirt IPR Estoppel

The U.S. Solicitor General recommended Tuesday that the United States Supreme Court deny Apple, Inc.’s petition asking the Court to clarify the proper application of estoppel in inter partes review (IPR) proceedings. The case stems from a February, 2022, decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in which the court issued a mixed precedential decision that affirmed, vacated, and remanded in part a decision by the U.S. District Court for the Central District of California. That ruling related to a patent infringement suit filed by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively “Broadcom) and Apple Inc. concerning Caltech’s U.S. Patent 7,116,710 (‘710 patent), U.S. Patent 7,421,032 (‘032 patent), and U.S. Patent 7,916,781 (‘781 patent).