Posts Tagged: "US Supreme Court"

As predicted following oral arguments, the U.S. Supreme Court today ruled that Marcel Fashion Groups, Inc. cannot preclude Lucky Brand Dungarees, Inc. from raising new defenses under federal preclusion principles, but left open the possibility that it may be appropriate to apply claim preclusion to defenses in certain circumstances. The opinion was authored by Justice Sotomayor. The Second Circuit decision was ultimately reversed and the case remanded, continuing the long battle between the two brands.

The U.S. Supreme Court heard oral arguments in United States Patent and Trademark Office, et al., v. Booking.com B.V., (Case No. 19-46) yesterday, in the High Court’s first ever telephonic hearing. The United States Patent and Trademark Office (USPTO) urged the Supreme 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. The Respondent, Booking.com, argued that the primary significance test, rather than the Federal Circuit’s precedent in Goodyear Co. v. Goodyear Rubber Co., holds the answer to the question of how to distinguish between descriptive and generic names, and under the primary significance test, BOOKING.COM is a registerable trademark.

When did it become necessary to triangulate the news in order to figure out what was really happening in the world? Many media outlets have significantly slowed down with respect to reporting on the news and are increasingly ramping up on opinion and conjecture in its place. Why that happened isn’t terribly difficult to understand, and it is likely going to only get worse. Once upon a time there were few sources of information, with only several TV channels and a small handful of national newspapers were competing for eyeballs. The rise of the 24/7 news cycle brought on by a proliferation of cable news stations with timeslots to fill changed the dynamic. The widespread adoption of Internet technologies and the World Wide Web also made it possible for people to get news throughout the day on their own terms, again making it less necessary for those seeking news and information to go to one of the chosen few industry leading sources. Today, many get news from myriad online sources, social media platforms, YouTube videos and more. There is so much information available, it is almost easy to mistake the information that is available as news.

In Part I of this series we examined the mathematics exception to patentability and the historical underpinnings of its justification. In Part II, we will continue to examine the case history around patenting of mathematic principles.

On Monday, the U.S. Supreme Court ruled in Georgia et al. v. Public.Resource.Org., Inc. that a state code revision commission cannot claim copyright protection over annotated state code. The ruling upheld the U.S. Court of Appeals for the Eleventh Circuit’s 2018 decision in Code Revision Commission v. Public.Resource.Org, Inc., which reversed-in-part, vacated-in-part and remanded a lower court’s ruling in a copyright infringement case involving an annotated version of Georgia’s official state code. The decision was not a shock, but could have serious implications going forward. Here is what some members of the copyright bar had to say.

Yesterday, the U.S. Supreme Court affirmed the U.S. Court of Appeals for the Eleventh Circuit’s decision that a state code revision commission cannot claim copyright protection over annotated state code in Georgia et al. v. Public.Resource.Org., Inc. The Court dove into the judicially created “edicts doctrine,” which has not really been explored since the 1800s. The “original works” in question were supplementary annotations accompanying the statutes in Georgia’s Official Code, known as the Official Code of Georgia Annotated (“OCGA”). These annotations and summaries of judicial decisions were owned by Georgia’s Code Revision Commission (“Commission”), although they were originally authored by a division of the LexisNexis Group under a “work made for hire” contract.

Amid the crush of patent-eligibility case law, see 35 U.S.C. §101, patent lawyers and even courts can lose sight of the key principles and precedents that serve as the foundation of the eligibility analysis. Or they may not have appreciated in the first place the underlying bases for these §101 cases and whether, for example, those cases accord with precedents they cite from decades before. In any event, this article addresses these foundational Supreme Court precedents for §101 and the Mayo-Alice ineligibility regime that dominates the patent landscape today. In particular, we trace the Court’s precedents from nearly 50 years ago, with an emphasis on key cases separated by some 30 years but tied together by the Court’s representation that it has faithfully followed (and not overruled) any such precedent. After analyzing the precedent in this light, with due emphasis on the Supreme Court’s decisions in Diamond v. Diehr, 450 U.S. 175 (1981) and Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 132 S.Ct. 1289 (2012), the article briefly examines the U.S. Patent and Trademark Office’s 2019 Patent Eligibility Guidance on §101—the Article II branch’s response to the §101 sea change wrought by the Article III courts. Finally, based on these authorities, the article offers a mix of points and observations for patent litigators and judges to consider as they continue to shape §101’s eligibility law.

The mathematics exception for subject matter eligibility is overbroad because it was improperly justified under the premise that mathematics is like a law of nature. This is absurd because mathematics is everywhere, and excepting mathematics means excepting virtually everything. Recent court decisions declare that “[m]athematical calculations and formulas are not patent eligible,” SAP Am., Inc. v. InvestPic, LLC, 898 F.3d 1161 (2018)(“SAP AM.”), based on older decisions, such as Parker v. Flook, 437 U.S. 584 (1978) (“Flook”) and Gottschalk v. Benson, 409 U.S. 63 (1972) (“Benson”).

The USPTO’s Update on Subject Matter Eligibility of October 2019 (“OCT2019 PEG”) states, “The 2019 PEG defines ‘mathematical concepts’ as mathematical relationships, mathematical formulas or equations, and mathematical calculations,” and “where a formula or equation is written in text format that should also be considered as falling within this grouping.” This means that one can have a mathematical concept without even writing any mathematics. The USPTO can assert this illogical and absurd statement because the justification for the underlying mathematical exception itself is also illogical and absurd.

In his second foray into intellectual property law this week, Supreme Court Justice Neil Gorsuch delivered the opinion for a unanimous Court today in Romag Fasteners v. Fossil Group Inc., reversing the Federal Circuit’s August 2017 decision and holding that willful infringement is only one consideration for awarding an infringer’s profits, and that 15 U.S.C. Section 1117(a) of does not articulate a willfulness prerequisite. Most attorneys who weighed in for IPWatchdog welcomed the decision as providing clarity and being pro-IP. Here is what they had to say.

Circuits have long split over whether willfulness is required before a trademark infringer’s profits may be awarded. Section 1117(a) of the Lanham Act allows an award of profits “subject to principles of equity.” In Romag v. Fossil, the jury awarded Fossil’s $6.7 million in profits to Romag to deter infringement, even though the jury found only 1% of those profits were attributable to the infringement. However, because the jury found Fossil infringed “in callous disregard” but not willfully, the Federal Circuit refused to allow the award of Fossil’s profits. The Supreme Court disagreed, reversing the Federal Circuit in today’s decision. Instead, “mental state” or “mens rea” is only a consideration for an award of the infringer’s profits, albeit an “important” or “highly important” consideration. The Court gave nodding mention to the substantial competing policy-based arguments submitted by both parties and amicus briefing and fleshed out further at oral argument. But ultimately, the decision stuck closely to the statutory language, finding Section 1117(a) could not support the weight of a willfulness prerequisite.

In an energetic dissent in Thryv, Inc. v. Click-to-Call Tech., LP, 590 U.S. __ (Apr. 20, 2020), U.S. Supreme Court Justice Neil Gorsuch provides a compelling defense of patent rights, and he champions a patent owner’s ability to obtain judicial review of certain threshold administrative decisions from the Patent Trial and Appeal Board (PTAB). But while Justice Gorsuch’s insightful analysis is receiving accolades from many in the patent community, it failed to garner any support among his Supreme Court colleagues, save for one, Justice Sotomayor.

Yesterday, the United States Supreme Court ruled that the Director of the United States Patent and Trademark Office (USPTO), by and through his designees, the Patent Trial and Appeal Board (PTAB), has the unchallengeable authority to institute inter partes review (IPR) proceedings even when they are brought outside the statute of limitations. Thus, the PTAB is now the most important patent court in the United States. This begs an important question that Congress must soon wrestle with regarding access to the PTAB. We have been told over and over again just how essential the PTAB is to the patent system. How necessary the PTAB is with respect to rooting out bad patents that never should have issued. And, honestly, the PTAB has been very, very good at killing patent claims and patents. But there is a fundamental unfairness at the PTAB. If the PTAB is so important, why are the fees so high? If the PTAB plays such a vital role in correcting the egregious mistakes of patent examiners (of which there are apparently many given the number of valuable patents that die upon review), why should only those patents that are owned by independent inventors, universities, start-ups and research and development companies be the targets? What about the truly ridiculous, idiotic patents that are issued to large entities?

Yesterday’s Supreme Court decision in Thryv, Inc. v. Click-to-Call Technologies was in some ways unsurprising, but has generated buzz among the patent community all the same. Many pointed to Justice Gorsuch’s dissent as being particularly poignant, and perhaps indicative of what issues will be front and center in other pending petitions at the Court, such as Arthrex v. Smith & Nephew. IPWatchdog Founder and CEO Gene Quinn said yesterday that, with the Thryv decision, “the Supreme Court sets hundreds of years of fundamental procedural law on its head…. No challenge is proper, and if the PTAB wants to institute outside the statutory time period there is nothing anyone can do.” Here is what some other members of the patent bar had to say.

In an opinion authored by Justice Ginsburg, the Supreme Court ruled today that Section 314 (d) of the U.S. Patent Act, which bars judicial review of Patent Trial and Appeal Board (PTAB) decisions to institute inter partes review (IPR), should preclude appeals of PTAB institution decisions, even where the appeal is based on Section 315(b)’s one-year time-bar for institution. “Congress designed inter partes review to weed out bad patent claims efficiently,” wrote the Court in today’s decision. “Allowing §315(b) appeals, however, would unwind agency proceedings determining patentability and leave bad patents enforceable.” Despite Click-to-Call’s argument that the bar on appeals under Section 314(d) is limited to the agency’s threshold determination under §314(a) of the question whether the petitioner has a reasonable likelihood of prevailing, the Court explained that Cuozzo Speed Technologies, LLC v. Lee “is fatal to that interpretation.”

Three amici have weighed in supporting Chrimar Systems, Inc.’s petition for certiorari to the U.S. Supreme Court and urging the High Court to clarify the law and undo the harm they say has been caused by the Federal Circuit’s application of the so-called Fresenius/ Simmons preclusion principle. On March 10, Chrimar Systems, Inc. filed a petition for a writ of certiorari with the High Court in Chrimar Systems v. ALE USA, Inc. asking the Court to weigh in on when a patent judgment becomes final. Chrimar is specifically asking the Court to answer: “1. Whether the Federal Circuit may apply a finality standard for patent cases that conflicts with the standard applied by [the Supreme Court] and all other circuit courts in nonpatent cases, and 2. Whether a final judgment of liability and damages that has been affirmed on appeal may be reversed based on the decision of an administrative agency, merely because an appeal having nothing to do with liability, damages or the proper calculation of the ongoing royalty rate is pending.”