Posts Tagged: "SCOTUS"

Industry Commenters Say Minerva Ruling is a Win for Employee Mobility

Yesterday, the U.S. Supreme Court ruled 5-4 in Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC that the doctrine of assignor estoppel”—which bars the assignor of a patent from later attacking the patent’s validity—“is well grounded in centuries-old fairness principles…[but] applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” Most expected the Court to rule along those lines following oral argument earlier this year, but the split decision, which included two separate dissents, could signal this Court’s future interest in patent cases. Commenters below also said that the ruling will result in the doctrine of assignor estoppel being applied much less frequently and in much narrower circumstances, and that it will almost certainly never be applied in employee agreement situations going forward. Here is what some stakeholders had to say.

Minerva v. Hologic: SCOTUS Retains but Limits Assignor Estoppel Doctrine, Criticizing CAFC Approach

The U.S. Supreme Court ruled 5-4 this morning in Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC that the doctrine of assignor estoppel”—which bars the assignor of a patent from later attacking the patent’s validity—“is well grounded in centuries-old fairness principles…[but] applies only when the assignor’s claim of invalidity contradicts explicit or implicit representations he made in assigning the patent.” Thus, while the Court rejected Minerva’s request that the doctrine be abandoned, the judgment of the U.S. Court of Appeals for the Federal Circuit (CAFC) was vacated and the case remanded to address “whether Hologic’s new claim is materially broader” than the ones that were assigned.

Arthrex Aftermath: How the Landmark Supreme Court Decision Drives the PTAB’s Future

A working definition of inertia is the tendency of a body to maintain its state of rest or uniform motion unless acted upon by an external force. As it did in Oil States (S.C. 2018), inertia appears to have played a role in the Supreme Court’s decision in the United States v. Arthrex, in which the central dispute was the remedy to address the unconstitutional appointment of administrative patent judges (APJs). Possible remedies included vacating hundreds or thousands of prior final decisions by unconstitutionally appointed APJs, requiring all APJs to be confirmed by the Senate and then rehear previously-decided reviews, finding the entire statutory structure unconstitutional and handing invalidity/unpatentability determinations back to Article III Courts, removing employment protections for APJs (as the Federal Circuit did), or adding a layer of review so that inferior officers had appropriate responsibility under the Appointments Clause. Faced with these possibilities, the Supreme Court’s holding maintains the inertia of the Patent Trial and Appeal Board (PTAB) and again solidifies its role in patent litigation today.

Supreme Court to NCAA: You are Not Immune from Antitrust Laws

On June 21, the U.S. Supreme Court issued a unanimous ruling in National Collegiate Athletic Association v. Alston (Alston) in which the nation’s highest court affirmed an injunction entered by the Northern District of California prohibiting the NCAA from restricting education-related benefits that member schools can extend to student-athletes. Consolidated by the Supreme Court last December with related proceedings in American Athletic Conference v. Alston, this decision brings a close to the latest chapter in the ongoing skirmish between NCAA member schools and their student-athletes seeking a larger cut of revenues earned by colleges and NCAA athletic associations.

Industry Reacts to the Supreme Court’s Arthrex Ruling: Chaos Averted – or Just Delayed?

The Supreme Court issued a split 5-4 decision earlier today, in which a plurality of the Court agreed with the U.S. Court of Appeals for the Federal Circuit (CAFC) that the structure of the Patent Trial and Appeal Board (PTAB) under the America Invents Act (AIA) has resulted in Administrative Patent Judges (APJs) being unconstitutionally appointed principal officers, but took a different approach than the CAFC to fixing the problem. Some were surprised by the conservative Court’s choice to sever the statute and ultimately hand the United States Patent and Trademark Office (USPTO) Director—a political appointee—power to review final decisions, though it was not surprising that they attempted to fashion a solution that would preserve the PTAB and inter partes review (IPR) system. Justice Gorsuch, in his partial dissent, said that he would have identified the constitutional violation, explained his reasoning, and simply “set aside” the PTAB decision at issue. Instead, said Gorsuch, “Effectively, the Court subtracts statutory powers from one set of executive officials and adds them to another.”

While the decision is not likely to have any immediate impact, it does raise questions about implications down the line, including how the USPTO and its new Director will address the ruling. Below, industry stakeholders consider what the Court did (and did not do) and provide their take on this highly anticipated holding.

In Arthrex Ruling, SCOTUS Says Director Review of Decisions, Not Power to Remove APJs, is What Matters

The Supreme Court has issued its ruling in Arthrex v. Smith & Nephew, taking a different approach to curing the statute than did the U.S. Court of Appeals for the Federal Circuit (CAFC) in 2019, and ultimately vacating and remanding the case back to the Acting Director of the U.S. Patent and Trademark Office (USPTO). While the CAFC held that the statute could be severed and rendered constitutional by making Patent Trial and Appeal Board (PTAB) Administrative Patent Judges (APJs) removeable at will, the Supreme Court said that remedy was not sufficient. The Court said: “[R]egardless whether the Government is correct that at-will removal by the Secretary would cure the constitutional problem, review by the Director better reflects the structure of supervision within the PTO and the nature of APJs’ duties.”

iLife Ties Its Patent Eligibility Fate to American Axle at Supreme Court

iLife Technologies last week petitioned the U.S. Supreme Court to hear its appeal of a January 2021 U.S. Court of Appeals for the Federal Circuit decision upholding a district court’s finding of patent ineligibility for claim 1 of iLife’s U.S. Patent No. 6,864,796. Claim 1 of the ‘796 patent “is directed to a motion detection system that evaluates relative movement of a body based on both dynamic acceleration (e.g., vibration, body movement) and static acceleration (i.e., the position of a body relative to earth).” iLife had accused Nintendoof infringing the patent through sales of products such as Wii Sports, Wii Sports Resort, Wii Club Sports and Mario Kart 8.

CAFC Remands Walker Process Antitrust Issue to Fifth Circuit under Xitronex I Precedent

On June 10, the U.S. Court of Appeals for the Federal Circuit (CAFC) transferred Ronald Chandler et. al. v. Phoenix Services, LLC to the United States Court of Appeals for the Fifth Circuit due to lack of jurisdiction, since the case did not arise under the patent laws of the United States. The CAFC previously affirmed a holding that U.S. Patent No. 8,171,993 (‘993 patent) was unenforceable due to inequitable conduct because Heat On-The-Fly, the company that filed for the ‘993 patent, knowingly didn’t disclose prior uses of the process. The plaintiffs, Chandler Manufacturing and Supertherm Fluid Heating Services (collectively Chandler), alleged that the defendant, Phoenix Services, continued enforcement of the ‘933 patent on their website and that this conduct constituted an antitrust violation under Walker Process Equipment, Inc. v. Food Machinery & Chemical Corp., 382 U.S. 172 (1965), a 1965 Supreme Court decision that held that enforcement of a patent procured by fraud on the United States Patent and Trademark Office (USPTO) can be the basis for an antitrust claim.

Piercing Halo’s Haze at Year Five: Smoke Clearing on Enhanced Damages

On June 13, 2016, the Supreme Court decided Halo Elecs., Inc. v. Pulse Elecs., Inc., addressing standards for recovery of enhanced damages for patent infringement pursuant to Section 284 of the Patent Act, under which a “court may increase the damages up to three times the amount found or assessed.” In Halo, the Supreme Court rejected damages-related requirements imposed by In re Seagate Tech., LLC, a 2007 decision from the U.S. Court of Appeals for the Federal Circuit. With patentee litigants freed from what the Supreme Court called Seagate’s “inelastic constraints” in favor of a totality-of-circumstances approach, a consensus developed that Halo would facilitate recovery of enhanced damages. Statistics suggest alignment with that view.

SCOTUS Says Former Police Sergeant Did Not Violate CFAA, Snubbing Government’s Reading

The United States Supreme Court today ruled that a former police sergeant did not flout Section (a)(2) of the Computer Fraud and Abuse Act (CFAA) because that provision “does not cover those who…have improper motives for obtaining information that is otherwise available to them.” The opinion, authored by Justice Amy Coney Barrett, contradicts the U.S. government’s reading of the statute. Three justices dissented from the majority.

Supreme Court Grants Cert in Unicolors v. H&M to Consider Whether Section 411 Includes Intent-to-Defraud Requirement

On Tuesday, June 1, the U.S. Supreme Court granted a petition for writ of certiorari filed by fabric designer Unicolors seeking to challenge the U.S. Court of Appeals for the Ninth Circuit’s ruling last May that reversed a jury verdict finding Swedish multinational clothing firm Hennes & Mauritz (H&M) liable for copyright infringement. The district court eventually entered a judgment awarding more than $500,000 to Unicolors. The case will ask the nation’s highest court to decide whether the Ninth Circuit properly construed the language of 17 U.S.C. § 411 in determining that the district court was required to refer Unicolors’ copyright registration to the U.S. Copyright Office because it contained inaccurate information with no evidence that the inaccurate information contained any indicia of fraud or material error regarding the work covered by the copyright registration.

Federal Trade Commission Urges SCOTUS to Deny AbbVie Petition

On Wednesday, May 19, the response brief of the Federal Trade Commission (FTC) was filed with the U.S. Supreme Court in AbbVie v. FTC. The petition for writ of certiorari filed by AbbVie asks the nation’s highest court to decide whether lower courts erred in finding that AbbVie’s Hatch-Waxman district court litigation involving patents covering its AndroGel testosterone treatment met the sham litigation exception to Noerr-Pennington doctrine. The FTC’s brief urged the Supreme Court to deny AbbVie’s petition for writ, a decision that arguably could cast into doubt pharmaceutical firms’ ability to enforce their patent rights under decades-old legislation meant to balance the economic interests of innovative drug developers with the public interests served by generic drug makers.

Why SCOTUS’ Decision to Sidestep Copyrightability in Google v. Oracle is Problematic for Cases Involving Command Codes

On April 5, the U.S. Supreme Court held 6-2 that Google’s copying of 11,500 lines of code from the Java SE Application Programming Interface (API) in creating its Android operating system was a fair use. The ruling ends a decade-long battle between Google and fellow software giant Oracle, which purchased Java developer Sun Microsystems in 2010. It also overturns the Federal Circuit’s 2018 ruling in favor of Oracle, which could have led to a multi-billion dollar award against Google. Oracle Am., Inc. v. Google LLC, 886 F.3d 1179 (Fed. Cir. 2018). A recent decision from a district court in the Western District of Pennsylvania emphasizes the relevance of the Supreme Court decision in Google v. Oracle. While the case predates the Google decision, it brings up some important issues that were sidestepped in the opinion itself but were raised in the arguments presented in briefs and oral arguments for the Google case.

‘Holding States Accountable for Copyright Piracy’: White Paper Says Allen v. Cooper Has Put Creators and Copyright in Jeopardy

Last week, the Regulatory Transparency Project of the Federalist Society released a paper titled “Holding States Accountable for Copyright Piracy.” The paper was authored by Alden Abbott, Kevin Madigan, Adam Mossoff, Kristen Osenga, and Zvi Rosen and noted that the U.S. Supreme Court has recognized that “copyright is the engine of free expression that supplies the economic incentive to create and disseminate ideas.” However, citing Allen v. Cooper, the paper explained that a recent Supreme Court decision has jeopardized the U.S. copyright system by “severely limiting” the ability of creators and copyright owners to hold states accountable for infringement by holding that states can escape accountability for intentional acts of infringement by invoking the doctrine of sovereign immunity. The paper further emphasized the injustice that Allen has brought forth, since current law allows states to claim the benefits of copyright protection for their own works and works transferred to them, while escaping liability when they infringe the copyrights of others. Solutions were proposed to level the playing field, including Congress enacting a law validly abrogating state sovereign immunity and waiving sovereign immunity for states acting as market participants.

High Court is Poised to Un-Muddy the Section 101 Waters Nearly Seven Years After Alice

Could the United States Supreme Court once again weigh in on Section 101 subject-matter eligibility? With the Court having asked for the views of the Solicitor General yesterday, it seems increasingly likely. Late in 2020, patentee American Axle & Manufacturing, Inc. (American Axle) petitioned the Supreme Court for writ of certiorari, arguing that the Federal Circuit is “at a loss as to how to uniformly apply § 101.” Pet. for Writ of Certiorari at 3 (Dec. 28, 2020). Organizations such as the New York Intellectual Property Law Association, the New York City Bar Association, and the Chicago Patent Attorneys organization have all submitted amicus briefs supporting American Axle’s ask. On March 1, former USPTO Director David Kappos, former Federal Circuit Chief Judge Paul Michel, and Senator Thom Tillis from North Carolina also jointly filed an amicus brief, arguing that the “disparate and inconsistent application” of the current Section 101 jurisprudence has led to “an unpredictable and unstable” patent system. Br. in Support of Am. Axle’s Pet. for Writ of Certiorari at 5 (Mar. 12, 2021).