Posts Tagged: "justice breyer"

The chaos created by this forum shopping was exacerbated by differing views of what in these rulings by SCOTUS was holding, and what was simply dicta.  Together with the enactment of Bayh-Dole (which sought to alleviate the prior dismal record of commercialization of federally-sponsored research where the federal government retained the patent rights), Congress created the United States Court of Appeals for the Federal Circuit as the successor to the CCPA, as well as to supplant all other circuit courts as the arbiter of patent law jurisprudence, effective as of 1980.  Creation of the Federal Circuit was also at least an implicit (and more likely, explicit) warning to SCOTUS to tread carefully on patent law jurisprudence and to let the Federal Circuit do the heavy lifting without significant interference or meddling from the highest court in the land. For almost two decades, SCOTUS seemed to heed that warning, rarely interfering with Federal Circuit precedent… But beginning with the eBay case in 2006, SCOTUS started an almost relentless series of rulings which meddle with, chastise, and overturn longstanding Federal Circuit precedent, often using the rubric that the Federal Circuit’s ruling/precedent was “too rigid,” or “too inflexible.”

Last week, Chief Judge Stark issued a ruling from the District Court in Delaware that applies WesternGeco broadly to increase patent damages from foreign sales resulting from direct infringement.  Power Integrations, Inc. v. Fairchild Semiconductor International, Inc., Civil Action No. 04-1371-LPS (Slip Op., October 4, 2018).  This might occur where a patented product is made in the U.S., but sold abroad, or where the distribution channel for an infringing article includes warehousing in the U.S.  The Judge ruled that WesternGeco overruled the prior law limiting these damages to U.S. sales—now, foreign sales are subject to the full panoply of U.S. patent damages any time there is infringement in the U.S.  The Judge also certified this decision for interlocutory appeal, paving the way for the Federal Circuit to consider this development sooner rather than later.

In WesternGeco LLC v. ION Geophysical Corp., the U.S. Supreme Court held that patent owners may recover lost foreign profits under §271(f)(2) when the infringing party exports parts from the United States for assembly in foreign countries, so long as the relevant infringing conduct occurred in the United States.

Justice Gorsuch seems the most likely, based on his questions, to support the petitioner’s position that there is a constitutional infirmity surrounding IPR proceedings. Chief Justice Roberts also seemed to have substantial concerns with respect to IPR proceedings. Perhaps somewhat predictably, Justice Breyer and to a lesser extent Justices Sotomayor and Kagan, seemed through their questions to view IPR proceedings as just another opportunity for the Patent Office to make sure the correct determination has been reached at the time the patent was granted by the Patent Office. Justice Kennedy overall seemed more in line with the thinking of the liberals on the Court, Justice Ginsberg asked difficult questions and seemed difficult to predict how she might rule. Justice Thomas characteristically remained silent, although his judicial philosophy would be typically in line with Justice Gorsuch. Justice Alito asked only a few questions of the petitioner’s counsel, Allyson Ho, which focused on whether the Constitution requires a Patent Act and whether Congress could put limitations on the grant of “these monopolies.”

Equitable estoppel may be appropriate for the defendant in SCA v. First Quality since the plaintiff was silent for years after the defendant asserted invalidity (possibly fulfilling the misleading conduct through inaction and reliance on that conduct). But can equitable estoppel be relied upon as a defense against a dormant plaintiff in the example illustrated above? Below, we consider the two elements of equitable estoppel that replace the unreasonable delay element of laches: misleading conduct and reliance.

42 U.S.C. § 262(l) of the Biologics Price Competition and Innovation Act of 2009 (BPCIA) regulates “biosimilars,” biological products that are highly similar to FDA-approved biological products. Section 262(l) has two notification requirements that are important to this case… The second question addressed by the Court was whether the applicant must provide notice after the FDA licenses its biosimilar, or if it may provide notice before the FDA licenses its biosimilar. The Court concluded that an applicant might, but does not have to, provide notice to the manufacturer of the biologic before obtaining a license from the FDA.

The Supreme Court heard oral argument on the cloudy Wednesday morning of January 18, 2017. Although the Justices posed tough questions and intricate hypotheticals to both sides, the tone of each Justice’s questions and their individual jurisprudences indicate an even 4-4 split, with Justices Breyer, Ginsberg, Kagan, and Sotomayor favoring the USPTO, and Justices Alito, Kennedy, Thomas, and Chief Justice Roberts favoring Tam. Of course, oral argument is often shaky, at best, when predicting the outcome of a case, especially one with such potential for a drastic overhaul of a body of law… Although no one can know for certain the outcome of Lee v. Tam, one consequence that appears very likely is that, if the Court does rule in favor Tam, it would strike the entirety of Section 2(a), not just the portion prohibiting disparaging marks that forms the central issue of the case. John C. Connell, counsel for Tam, went so far as to call that result “inevitable” in response to Justice Ginsberg’s question on the topic.

Authors who are making a wage that is at or below the poverty line create a burdensome charge for readers? Well when you put it that way what Justice Breyer wrote just sounds stupid… There is a cost associated with discovering whether there are previous copyrights and securing permission to copy? Is Justice Breyer really suggesting that the grant of rights to copyright holders is too onerous for copycats and plagiarists to bear? What about this radical idea Justice Breyer – don’t copy what you didn’t create! If you cannot acquire the rights then just don’t copy, period… There is a reason judges, and in particular Justices of the Supreme Court, are not supposed to say more than is necessary to decide a case. Without consideration of a multitude of important issues seemingly innocuous statements can easily be absurd in the broader context, not to mention set bad precedent.

In Star Athletica Breyer laments that the majority is ignoring the statute, refers to copyrights as a monopoly, and explains that copyrights are a tax on consumers… These seemingly innocent comments demonstrate a breathtaking dishonesty, which is hardly a newsworthy conclusion, or even much of a revelation to anyone in the patent community. Still, over the past few days the drivel that has been sprinkled into Supreme Court opinions has been particularly nauseating. The ends justify the means for the Supreme Court. When it is convenient they defer to Congress and wax poetically about the importance of stare decisis, as they actually had the gall to do in Kimble v. Marvel Entertainment. When adhering to well-established rules and expectations of an entire industry is inconvenient, they create exceptions to statutes, ignore statutory schemes altogether, and overrule generations of well-established law.

The fact that laches cannot be used as a defense to a patent infringement action brought during the statute of limitations is most definitely a pro-patent decision. Presently patents are much weaker than they have been at any time over the last 36 years. But patent law has always swung like a pendulum, and this low point will not last forever. Thus, in the wake of the Supreme Court’s decision in SCA Hygiene, patent owners would do well to consider forgoing patent enforcement. Instead, allow infringement to accrue and then sue for infringement in several years when the law may be quite a bit more favorable. After all, patents can last for 20 years, the statute of limitations is six-years, and without a laches defense available to infringers you will be able to seek damages going back six years from whenever you choose to sue.

The resulting decisions reveal the Supreme Court’s holistic outlook as a generalist court concerned with broad legal consistency rather than fidelity to patent law’s underlying specialized and unique features moored in technology research, invention, and patenting processes. Unfortunately, as shown below, the adverse effects on patent rights due to the deviant patent doctrines arising out of the Court’s decisions far exceed the benefits of assimilation and conformity of the patent law with the general law… The dearth in understanding technologies and related invention processes and the lack of prior expertise in patent law pertains to Justices across the political spectrum. Patent law raises questions that have the potential to divide conservatives and liberals alike, as it pits principles of liberty and property against one another. For example, the pillars of the recent problematic jurisprudence on patent-eligibility were authored by liberal Justice Breyer (Mayo v. Prometheus) and by conservative Justice Thomas (Alice v CLS Bank).

Perhaps the most challenging to accept is the notion that a tribunal created with a specific purpose of invalidation can be impartial to both the petitioners and the defendants. The AIA tribunal stands in contrast to the Court system, as their inherent mission is not to evaluate, but to challenge, contest, and invalidate. In addition, a “winners and losers” system, allowing one party to outspend the other, or to create joinders to outnumber the other, remains very damaging to the inventors, investors and small businesses.

In last week’s Halo Elecs. v. Pulse Elecs. decision, the Supreme Court unanimously rejected the Federal Circuit’s Seagate standard for awarding enhanced damages in patent cases under Section 284, finding the Federal Circuit’s two-part test “impermissibly encumbers the statutory grant of discretion to district courts.” Slip Op. at 9. The Supreme Court’s decision, which vacated and remanded, means that the award of treble damage may very well be reinstated in that case, and reversals of enhanced patent damages rulings – both awards and denial – may become less common.

“This is obviously a victory for some who challenge a patent’s validity in IPR proceedings since broadly construed claims are more vulnerable to attack than narrowly construed claims” remarked Scott Daniels, partner at Westerman Hattori Daniels & Adrian, LLP. “Still, the great majority of IPR decisions do not turn on claim construction and for those cases Cuozzo simply makes no difference.”… Levy, who was similarly dead on accurate with his predictions, raises an important point that so many in the patent community who were rooting for Cuozzo failed to keep in mind. Those challenging the action of an agency face a substantial uphill battle when they seek a judicial determination overriding agency rulemaking and statutory implementation.