Posts Tagged: "US Supreme Court"

The third annual IPWatchdog LIVE conference opened with panels examining global trends in IP policy and a review of U.S. Supreme Court case law, as well as the presentation of the third annual Paul Michel Award, which each year honors a respected industry leader and advocate for fairness in the IP community. On a panel that detailed some of the most recent U.S. Supreme Court’s IP decisions, retired U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Paul Michel described the arguably contradictory holdings in Google v. Oracle and Warhol v. Goldsmith as “useless” in terms of substantive guidance from the Court. “These two cases represent a failure on the part of the Supreme Court to provide meaningful guidance to users who need it now,” Michel said. Professor Llew Gibbons of the University of Toledo College of Law explained the holdings in each of the cases and concluded that “I couldn’t find a principled reason other than ‘we want to come out differently’” for the Court’s ruling in Warhol, considering the Google decision.

Amici have submitted briefs and a response has been filed in recent weeks with respect to U.S. Patent and Trademark Office (USPTO) Director Kathi Vidal’s petition to the U.S. Supreme Court for review of a decision that said the USPTO was wrong to reject a trademark application for the mark TRUMP TOO SMALL. The February decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) held the Office’s application of Section 2(c) of the Lanham Act to reject TRUMP TOO SMALL was unconstitutional. Specifically, the CAFC panel held that “applying section 2(c) to bar registration of [Steve] Elster’s mark unconstitutionally restricts free speech in violation of the First Amendment.”

The Supreme Court’s decision in Amgen Inc. v. Sanofi, 143 S. Ct. 1243, 1248 (2023), found that antibody claims defined by their binding and blocking function lacked enablement…. The Supreme Court’s decision relied highly on the unpredictability of the art—scientists cannot always predict how substitutions of even single amino acids will affect the binding and/or blocking function of an antibody. The disclosed methods of identifying species within the scope of the claim were little more than “trial and error.”… The consensus seems to be that Amgen generally forecloses broad genus claims in the biotechnology field. The remaining questions are: Are patent applicants limited to claiming species (e., sequence listings)? What steps may a patent applicant take to obtain broader coverage?

HIP, Inc. recently filed a petition for writ of certiorari with the U.S. Supreme Court asking the Justices to review a May 2023 U.S. Court of Appeals for the Federal Circuit (CAFC) decision holding an inventor’s contribution to a patent for methods of pre-cooking bacon and meat pieces did not satisfy the joint inventorship test because the contribution was “insignificant in quality.”

In an IPWatchDog post of September 6, 2022, Anthony Prosser and I traced the history of the doctrine of “Non-Statutory Judicially Created Obviousness-Type Double Patenting” (ODP). We confirmed (as its name indicates) that no Congressional statute has ever codified this doctrine. It is ultra vires because Congress has the sole right to create patent law…. In the Cellect decision issued yesterday, the Federal Circuit stretches the word “disclaimer” in Section154(b)(2)(B) beyond credibility as justification for the ODP doctrine itself and assumes that is what Congress was talking about without actually saying it (stating with agreement that “The Board also reasoned that terminal disclaimers arise almost exclusively in situations to overcome ODP rejections, and so Congress, by addressing terminal disclaimers in §154, effectively addresses ODP”).

The recently-concluded term of the U.S. Supreme Court featured four intellectual property decisions: one patent case, two trademark cases, and one copyright case. Three of the four opinions were unanimous, citing fundamental and time-honored precedents for support. The only dissent involved a copyright dispute centering on Andy Warhol’s use of a third-party photograph of Prince in his work. That case resulted in a highly charged debate between Justices Sotomayor and Kagan as to whether Warhol’s copying constituted transformative fair use.

One of the many amici who have filed briefs in a Supreme Court case asking the Court to overrule its precedent in Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc. told the justices last week that the United States Patent and Trademark Office (USPTO) is abusing the so-called Chevron doctrine “to bypass the procedures that ensure that the agency considers the public interest.” The “Chevron doctrine” says courts should defer to administrative agencies’ interpretation of the statutes delegated to them. In the 1984 ruling in Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., the Supreme Court held that a court “may not substitute its own construction of a statutory provision for a reasonable interpretation made by [the agency charged with administering the statute],” where the statute is ambiguous.

In Jack Daniel’s Properties, Inc. v. VIP Products LLC, a unanimous Supreme Court sided with Jack Daniel’s and sent dog toy maker VIP Products scurrying away with its tail between its legs. The decision held that VIP’s commercial use of a dog toy, designed to look like a bottle of Jack Daniel’s whiskey, complete with droll variations on Jack Daniel’s trademarks, is not entitled to First Amendment protections for artistic expression under the “Rogers test.” Rogers v. Grimaldi, 875 F. 2d 994, 999 (2d Cir. 1989). Instead, it is subject to the Lanham Act’s likelihood-of-confusion test to determine if consumers would be likely to confuse VIP’s dog toy with Jack Daniel’s, no matter how parodic. While the justices felt that artistic expression versus trademark use was cut and dried in this instance, that is not always the case in litigation focused on NFTs and the Metaverse.

On July 17, inventor advocacy organization US Inventor and conservative interest group Eagle Forum Education and Legal Defense Fund filed a joint amicus brief at the U.S. Supreme Court urging the nation’s highest court to grant the petition for writ of certiorari filed in Killian v. Vidal. US Inventor and Eagle Forum ELDF’s brief is the latest call upon SCOTUS to address the “dire consequences” flowing from the dramatic expansion to judicial exceptions to patent eligibility under 35 U.S.C. § 101.

A group of herring fishermen have filed their opening brief with the U.S. Supreme Court in a case that asks the Court to overturn its “Chevron doctrine,” which says courts should defer to administrative agencies’ interpretation of the statutes delegated to them. In the 1984 ruling in Chevron, U.S.A., Inc. v. Natural Resources Defense Council, Inc., the Supreme Court held that a court “may not substitute its own construction of a statutory provision for a reasonable interpretation made by [the agency charged with administering the statute],” where the statute is ambiguous.

On the evening of July 5, inventor advocacy group US Inventor hosted a webinar to discuss the Patent Eligibility Restoration Act (PERA) recently introduced into the U.S. Senate by Senators Thom Tillis (R-NC) and Chris Coons (D-DE). The featured guest speaker was Retired U.S. Court of Appeals for the Federal Circuit Chief Judge Paul Michel, who has been involved in the development of PERA’s draft legislative text and has personally supported PERA as an important step in “reviv[ing] the faltering U.S. innovation system” by abrogating the series of U.S. Supreme Court rulings that greatly expanded judicial exceptions to patent eligibility under 35 U.S.C. § 101.

On June 8, the United States Supreme Court handed down a surprisingly decisive ruling on trademark law and its relationship with First Amendment rights. The Court found that free speech rights did not protect a manufacturer of dog toys, which mimicked a bottle of Jack Daniels, against an action for trademark infringement. The case has provoked widespread discussion among IP lawyers across the world regarding similar cases in other jurisdictions.

The U.S. Supreme Court (SCOTUS) ruled today in Abitron Austria v. Hetronic International that Sections 1114(1)(a) and 1125(a)(1) of the Lanham Act are not extraterritorial in nature and that “‘use in commerce’ provides the dividing line between foreign and domestic applications of these provisions.” The decision of the U.S. Court of Appeals for the Tenth Circuit, which upheld a $96 million damages award for Hetronic, was thus vacated and remanded. Justice Alito authored the opinion for the Court and Justices Jackson and Sotomayor each filed concurring opinions—though Sotomayor’s concurrence reads more like a dissent.  

The U.S. Supreme Court denied the petitions for certiorari in a number of IP cases today, including three the U.S. Solicitor General had recommended rejecting. In Genius v. Google, ML Genius Holdings (Genius) attempted to sue Google for posting song lyrics from its website in Google search results. Genius’s petition asked the High Court to answer the question of whether the Copyright Act’s preemption clause allows a business “to invoke traditional state-law contract remedies to enforce a promise not to copy and use its content?”

The Supreme Court’s reasoning in Amgen v. Sanofi upholds the Federal Circuit’s longstanding requirement to enable the full scope of a claimed invention. Since the Patent Act of 1790, patent law has required describing inventions with such clarity and specificity as to enable one skilled in the art to make and use the claimed invention. Moreover, the Court has consistently held that a patent fails to satisfy the enablement requirement if a person having ordinary skill must engage in undue experimentation to practice the claimed invention. The Federal Circuit has gone a step further, requiring that patents enable the full scope of a claimed invention. Amgen is a ratification of this aspect of the Federal Circuit’s enablement jurisprudence.