Posts in US Supreme Court

The U.S. Supreme Court today denied a petition that asked it to consider whether the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) “construction of petitioner’s patent claim was unforeseeable and unjustifiable under the circuit’s prior decisions,” thereby constituting a judicial taking of property in violation of the Fifth Amendment’s Takings Clause. The petition was an appeal from the CAFC’s April decision affirming a district court’s judgment that AT&T Mobility LLC did not infringe an inventor’s wireless communications technology patent but also holding that AT&T had forfeited its chance to prove the patent invalid on appeal.

The U.S. Patent and Trademark Office (USPTO) responded last week to a petition for certiorari that is asking the Supreme Court to overturn a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that said appellate review of whether the Patent Trial and Appeal Board’s (PTAB’s) discretionary denial rules for inter partes review (IPR) are “arbitrary and capricious” is precluded by Section 314(d) of the patent statute.

Just a few weeks after Google waived its right to respond, the Supreme Court denied a petition challenging a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that held a Texas district court erred in ruling against the search engine and tech behemoth. The U.S. District Court for the Eastern District of Texas found the inventors of a method for protecting computers from malware—Alfonso Cioffi and Allen Rozman (the patent is now assigned to Melanie, Megan and Morgan Rozman)—had proven that Google’s Chrome web browser infringed their reissue patents RE43,500, RE43,528, and RE43,529 and that the claims were not invalid. After a first time at the Federal Circuit in which the case was remanded to the district court, a jury awarded Cioffi, et. al. $20 million in past damages and the district court in post-trial review rejected Google’s “original patent defense.”

The U.S. Supreme Court on Monday denied certiorari to HIP, Inc. in a case that asked the Court to review the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) standard for determining joint inventorship. The petition, filed in August, asked the Court to resolve what it called “an indisputable conflict between the express language of Section 116(a) of Title 35, informed by the legislative history of its 1984 amendments, and requirements the Federal Circuit has imposed on the joint inventions statute since the 1984 amendments.”

Oral arguments were held yesterday in Vidal v. Elster, with most observers concluding that the justices are unlikely to grant trademark applicant Steve Elster’s bid to register the mark TRUMP TOO SMALL for t-shirts. Unlike the Court’s recent prominent trademark decisions in Matal v. Tam and Iancu v. Brunetti, there seemed to be little controversy on the part of the justices in Vidal v. Elster over whether the First Amendment is implicated here. Below is a roundup of comments from trademark practitioners on what they thought stood out during the oral arguments.

The U.S. Supreme Court heard oral argument this morning in Vidal v. Elster, the latest in a line of recent cases probing the intersection of the First Amendment and trademark law, following 2017’s Matal v. Tam, 2019’s Iancu v. Brunetti, and this year’s Jack Daniel’s v. VIP Products.  As in Tam and Brunetti, the Justices are being asked in Elster to review the constitutionality of a restriction on federal trademark registrations—this time, the prohibition under Section 1052(c) of the Lanham Act on the registration of living persons’ names without their consent, sometimes called the “Name Clause.”

Yesterday, Google waived its right to respond to a petition for writ of certiorari to the U.S. Supreme Court filed by the inventors of a method for protecting computers from malware. The inventors, Alfonso Cioffi and Allen Rozman (the patent is now assigned to Melanie, Megan and Morgan Rozman), are appealing a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that reversed a district court ruling and $20 million verdict for the inventors. The CAFC held that the Texas district court erred in ruling that four claims across the three patents were not invalid and agreed with Google’s argument that the claims were invalid under the “original patent requirement” because they contained reissue claims not disclosed in the original patent.

The U.S. Supreme Court on Monday denied certiorari to review a February ruling of the U.S. Court of Appeals for the Federal Circuit (CAFC) that held claims of ChromaDex, Inc.’s patent on an isolated form of vitamin B3 are directed to unpatentable subject matter under Section 101. The CAFC affirmed the Delaware district court’s grant of summary judgment for Elysium Health that the relevant claims of U.S. Patent No. 8,197,807, titled “Nicotinamide riboside kinase compositions and methods for using the same,” were invalid under Section 101 as being directed to a natural phenomenon, specifically, “compositions comprising isolated [NR], a naturally occurring vitamin present in cow milk.”

The U.S. Supreme Court on Friday added another case to its docket that challenges the Chevron Doctrine, a decades-old principle instructing lower courts to defer to federal agencies’ interpretations of ambiguous laws. The Court said it will hear Relentless, Inc. v. Dept. of Commerce in tandem with an almost identical appeal brought by Rhode Island herring fishers. Mark your bingo card if you had “Rhode Island herring fishers.”

On October 10, the U.S. Supreme Court issued an order list showing it had denied the petition for writ of certiorari filed in Personalized Media Communication, LLC v. Apple Inc. In denying the appeal, SCOTUS leaves in place a divided Federal Circuit ruling that improperly expanded prosecution laches doctrine according to Personalized Media (PMC). The cert denial also passes on the question of whether prosecution laches remains a valid defense to patent infringement in light of the Supreme Court’s 2017 ruling in SCA Hygiene Products v. First Quality Baby Products.

The U.S. Supreme Court on Tuesday denied a petition asking the justices to weigh in on whether the Lanham Act prohibits “the unauthorized use of a celebrity’s persona advertising third party brands with logos in a commercial motion picture as a trademark infringement?” The case stems from a suit brought by the partner of Christopher Jones, an actor in the 1960s, who was referenced in the film Once Upon a Time . . . in Hollywood (the film), written and directed by Quentin Tarantino. Jones starred in the television series, The Legend of Jesse James, and movies including 3 in the Attic and Wild in the Streets.

Recently, members of the Senate Judiciary Committee’s Subcommittee on Intellectual Property released a draft of the ‘‘Patent Eligibility Restoration Act of 2023” (“PERA”) for the purpose of addressing the judicially-created exceptions to patent eligibility plaguing the country. Among the Senate’s findings are that patent eligibility jurisprudence requires significant clarification, the judicial exceptions are rendering an increasing number of inventions ineligible for patent protection, and Alice/Mayo is confusing and inconsistent. None of this is surprising. Alice/Mayo has been a resounding failure. However, of particular importance, the Senate bill has declared “All judicial exceptions to patent eligibility are eliminated.”

The Supreme Court decided Amgen Inc. v. Sanofi on May 18, 2023, nearly nine years after its decision in Alice Corp. v. CLS Bank Int’l, 573 U.S. 208 (2014). Amgen was concerned with the enablement statute of the patent law, 35 U.S.C. § 112. In comparison, Alice was concerned with the eligibility statute of the patent law, 35 U.S.C. § 101, and has been highly criticized for creating a mess of patent eligibility. At first glance, these cases are distinguishable from one another, since they deal with different aspects of the patent laws. However, statutory interpretation and analysis should be the same in both instances.

The U.S. Supreme Court today denied the petition for certiorari brought by CareDX, Inc. in May asking it to review a 2022 decision holding certain claims of its patents directed to detection levels of donor cell-free DNA (cfDNA) in the blood of an organ transplant patient patent ineligible. Justice Bret Kavanaugh would have granted the petition, according to the Order List.

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.”