Review of Recent IP Supreme Court Cases

1. IP Supreme Court Cases
(and OT2016 Preview)
July 21, 2015

2. In re Cuozzo Speed Techs.
• The IPR institution decision is “final and
nonappealable,” pursuant to statute § 314.
– Possible Exception: “[W]e emphasize that our
interpretation applies where the grounds for attacking
the decision to institute inter partes review consist of
questions that are closely tied to the application and
interpretation of statutes related to the Patent Office’s
decision to initiate inter partes review… This means
that we need not, and do not, decide the precise effect
of §314(d) on appeals that implicate constitutional
questions, that depend on other less closely related
statutes, or that present other questions of
interpretation that reach, in terms of scope and impact,
well beyond ‘this section.’”
• Broadest reasonable interpretation is a
reasonable exercise of rulemaking authority.

3. Styker v. Zimmer; Halo v. Pulse
• CAFC In re Seagate Test:
– Clear and convincing, objectively high likelihood of inf.,
risk known or so obvious should have been known,
mixed standard of review.
• HELD: Seagate not consistent with § 284.
• Statute says “may.” Discretion to court, but
“[d]iscretion is not whim.” 180 years of precedent
establish enhanced damages are a sanction for
“egregious” infringement behavior.
• The focus is subjective willfulness at time of
infringement, not litigation-induced
opinion/defense.
• Preponderance of evidence, reviewed for abuse
of discretion.

4. John Wiley & Sons v. Kirtsaeng
• Recall Kirtsaeng I (US 2013): foreign sales
triggered © first sale (exhaustion) doctrine.
Issue now was fee award to defendants.
• HELD: district court should give substantial
weight to objective reasonableness of losing
party’s position, while accounting for other
relevant circumstances.
• BUT: No presumption of no fees if a
reasonable position is found. That goes too far
in restricting judge analysis/discretion.

5. October Term 2015—Other Outcomes I
• Cert. denied in Sequenom v. Ariosa
– Cell-free fetal DNA tests were conventional technique
applied to natural phenomenon, ineligible under Mayo
• Cert. denied in Shukh v. Seagate
– Case challenged CAFC “automatic assignment” rule in
inventor agreements.
• Cert. denied in Limelight v. Akamai
– Direct infringement can be divided if steps of method
are “attributable” to single entity.
• Cert. denied in Authors Guild v. Google
– Google Books is fair use
• Cert. denials relating to claim construction (both
court and PTAB), abstract ideas, misc. other
issues.

6. October Term 2015—Other Outcomes II
• GVR in light of Stryker/Halo.
– Innovention Toys v. MGA
– WesternGeco LLC v. ION Geophysical
• GVR in light of Cuozzo.
– Click-To-Call Techs v. Oracle Corp.
• GVR in light of Commil (2015)
– Medtronic v. NuVasive, intent issue for inducement

7. October Term 2016—Granted Petitions I
• Samsung v. Apple
– “Whether, where a design patent is applied to
only a component of a product, an award of
infringer’s profits should be limited to those
profits attributable to the component.”
• Life Technologies v. Promega
– “Whether the Federal Circuit erred in holding
that supplying a single, commodity component
of a multi-component invention from the United
States is an infringing act under 35 U.S.C.§
271(f)(1), exposing the manufacturer to liability
for all worldwide sales.”

8. October Term 2016—Granted Petitions II
• Star Athletica v. Varsity Brands
– “What is the appropriate test to determine
when a feature of a useful article is protectable
under section 101 of the Copyright Act.”
• SCA Hygiene Products v. First Quality
Baby Products
– “Whether and to what extent the defense of
laches may bar a claim for patent infringement
brought within the Patent Act’s six-year
statutory limitations period, 35 U.S.C. § 286.”
– CAFC has distinguished recent © “Raging Bull”
decision (Petrella)

9. October Term 2016—Pending Petitions I
• Impression Products v. Lexmark
– whether conditional sale triggers patent
exhaustion; whether foreign sale triggers patent
exhaustion (a la Kirtsaeng in ©).
• MCM Portfolio v. HP; Cooper v. Lee
– (1) Whether inter partes review (IPR) violates
Article III of the Constitution; and (2) whether IPR
violates the Seventh Amendment to the
Constitution.
• Medinol v. Cordis (laches a la SCA Hygiene)
• Sandoz v. Amgen
– Timing of marketing notice for biologics

10. October Term 2016—Pending Petitions II
• Lee v. Tam; Pro-Football, Inc. v. Blackhorse
– Whether the disparagement provision of the Lanham
Act, 15 U.S.C. 1052(a), which provides that no
trademark shall be refused registration on account of
its nature unless, inter alia, it “[c]onsists of . . . matter
which may disparage . . . persons, living or dead,
institutions, beliefs, or national symbols, or bring them
into contempt, or disrepute” is facially invalid under the
Free Speech Clause of the First Amendment.
• NCAA v. O’Bannon
– (2) whether the First Amendment protects a speaker
against a state-law right-of-publicity claim based on the
realistic portrayal of a person in an expressive work
(here, a student-athlete in a college-sports videogame)