1. The Supreme Court’s
Renewed Interest in IP
Ken Bass
April 2, 2007

2. Who is this guy?
• Clerk for Justice Hugo Black (1969 Term)
• Private Practice focusing on appellate cases
since 1970
• Joined SKGF in 2000
• Adjunct Professor of Appellate Practice at
Georgetown
• Past President American Academy of Appellate
Lawyers
• Involved in Supreme Court Patent cases
• Co-counsel in KSR v. Teleflex
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3. Looking Back at History
• The Supreme Court’s View of IP
law in the early 1970’s
– A technical, fairly arcane field
– A subject of “lesser importance”
– Judicial self-awareness of limitations
• The lack of regional consistency
• The “National Court of Appeal”
movement
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4. The Birth of the Federal Circuit
• The 1975 Conference on Appellate
Justice
• The “National Court of Appeals”
proposal meets resistance
• The focus shifts to a “specialized”
nationwide court for patent cases
• The birth of the CAFC in 1982
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5. The Supreme Court’s Initial Reaction
• Wait and See
• IP issues remained of secondary
public importance
• The Court’s membership had not
changed all that much
• The “Percolation” Policy
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6. The Picture Begins to Change
• Markman v. Westlaw Instruments
– April,1996
– 517 U.S. 370
– CAFC decision
• Judges, not juries, decide issues of claim
construction
– Supreme Court decision
• Agreed!
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7. An “Outlier” Contributes to Change
• Nelson v. Adams USA
– April, 2000
– 529 U.S. 460
– CAFC decision
• Attorney’s fees awarded against
individual who in fact controlled the
defendant corporation and was added as
a party after trial
– Supreme Court decision (unanimous)
• Improper to sanction someone not a party
at the trial and thus no sanctions can be
imposed
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8. The Pace of Change Quickens
• Festo v. Shoketsu
– May, 2002
– 535 U.S. 722
– The CAFC decision
• Any amendment forecloses DOE
– The Supreme Court decision
(unanimous)
• Flexibility restored
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9. The Pace of Change Quickens (cont.)
• Holmes v. Vornado
– June, 2002
– 535 U.S. 826
– The CAFC decision
• Per Curiam – the CAFC has appellate
jurisdiction over patent counterclaims
based on long-standing CAFC precedent
– The Supreme Court decision
(unanimous)
• No you don’t!
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10. The Growing “Tension”
• eBay v. MercExchange
– May, 2006
– 126 S. Ct. 1837
– The CAFC decision
• Final injunctions are almost automatic
once there is a finding of infringement and
validity
– The Supreme Court decision
• No presumption of issuance, the same
rules apply as in all civil litigation
• Two different thumbs on the scale
– Justice Kennedy
– The Chief Justice
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11. The Growing Tension (cont.)
• MedImmune v. Genentech
– January, 2007
– 127 S. Ct. 764
– The CAFC decision
• No Article III standing if a licensee in good
standing contests patent validity
– The Supreme Court decision
• There is an Article III case and
controversy (8-1 decision)
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12. • KSR v. Teleflex
– ???? 2007
– The CAFC decision
• Applied the well-established TSM test for
determining obviousness as a first hurdle
– The arguments at the Supreme Court
• Wide hostility to an absolute, first hurdle
approach
– What’s likely to emerge?
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13. What Does it All Mean?
• The Supreme Court has become
engaged – once again – in IP issues
• The Supreme Court is not “happy” with
the CAFC’s handling of patent issues
• The Supreme Court dislikes “bright-line”
rules
• The Supreme Court avoids giving clear
guidance on how patent cases should be
decided
• The Supreme Court recognizes the
central importance of IP in today’s “flat
world” economy
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