Posts in US Supreme Court

Rader’s Ruminations – Patent Eligibility, Part 1: The Judge-Made ‘Exceptions’ are Both Unnecessary and Misconstrued

In supreme irony, the U.S. Supreme Court lists the three exceptions to statutory patent eligibility in Chakrabarty, Diamond v. Chakrabarty, 447 U.S. 303 (1980) — the case most famous for the observation that Thomas Jefferson’s statutory language from the 1793 Act (still in place today) covers “anything under the sun made by man.” Id. at 309. While construing Jefferson’s “broad” statutory language in 35 U.S.C. 101 with “wide scope,” the Court noted: “The laws of nature, physical phenomena, and abstract ideas have been held not patentable.” Id. The Court tries to support this listing with a string citation to several cases — each standing for something different than an exception from statutory language. Still, to ensure clarity, the Court gives examples: “a new mineral discovered in the earth or a new plant found in the wild is not patentable subject matter.” Likewise, Einstein could not patent his celebrated law that E=mc2, nor could Newton have patented the law of gravity.”  Id. So far so good, but this classic example of the Court trying to sound informed and competent out of its comfort zone reemerges 30 years later to replace (and effectively overrule) the statutory rule that governed for over 200 years and remains in Title 35.

USPTO Issues Updated Obviousness Guidance Tracing 15 Years of Case Law Following KSR

On February 27, the U.S. Patent and Trademark Office (USPTO) published a notice in the Federal Register providing updated guidance for agency decision-makers on making proper determinations of obviousness under the U.S. Supreme Court’s 2007 ruling in KSR International Co. V. Teleflex Inc. While the USPTO’s examiner guidance doesn’t constitute substantive rulemaking, it traces 15 years of case law from the U.S. Court of Appeals for the Federal Circuit to clarify several areas of confusion stemming from the Supreme Court’s calls for a flexible approach to the obviousness analysis for patent validity.

Rader’s Ruminations: The Most Striking (and Embarrassing) Legal Mistake in Modern Patent Law

The most striking (and embarrassing) mistake of law in modern patent law history occurred in the case of eBay Inc. v. MercExchange, 347 U.S. 388 (2006). This mistake led to an alarmingly incorrect outcome and a monumental disruption of U.S. innovation policy…. The traditional and longstanding remedy for trespass on a patent property right is a permanent injunction. By making removal of an established infringer/trespasser optional in eBay, the Supreme Court vastly undercut and devalued every patent’s exclusive right. This erroneous outcome is a cataclysmic policy error, but that policy miscarriage is not itself the embarrassing error of law.

DIG, Dogs and Bad Wine: Justices Float Scrapping Warner Chappell to Consider Alternate Petition on ‘Discovery Accrual Rule’ for Copyright

Oral arguments took place today in Warner Chappell Music v. Nealy, a case that asks whether a copyright plaintiff can recover damages for acts that allegedly occurred more than three years before the filing of a lawsuit. The Justices repeatedly asked the parties involved whether they should dismiss the case as having been improvidently granted (DIG) in order to first grant and decide another pending case that directly addresses a technically peripheral, but seemingly crucial, question at issue in Warner Chappell, namely, whether the so-called discovery accrual rule applies to the Copyright Act’s statute of limitations for civil claims.  

Supreme Court Denies Five IP Petitions on Issues from IPR Joinder to Contributory Trademark Infringement

On February 20, the U.S. Supreme Court issued an order list that denied petitions for writ of certiorari filed in at least five intellectual property cases. While none of these cases induced large numbers of amici to ask the Court to grant cert, they do represent several current issues in IP law that remain unaddressed. From the use of joinder to evade time-bar limits in patent validity proceedings to the service of process required for a grant of preliminary injunction, the Court’s cert denials leave several open questions with which the patent and trademark community will likely grapple.

Law School Amici Urge SCOTUS to Grant Kroger Petition on Trademark Confusion and Resolve Circuit Conflict

Three law school faculty and students filed an amicus brief earlier this week urging the U.S. Supreme Court to reverse a trademark decision of the U.S. Court of Appeals for the Seventh Circuit regarding the legal standard for trademark confusion. The brief asks the Court to “end the contradiction and confusion” around the different approaches taken to the likelihood of confusion analysis by federal courts.