Posts Tagged: "SCOTUS"

Saul v. Carr: The SCOTUS Social Security Decision Patent Practitioners Should Read

On April 22, 2021, the United States Supreme Court issued a decision in Carr v. Saul, which dealt with a constitutional Appointments Clause challenge to Administrative Law Judges (ALJs) under the Social Security Administration (SSA). In particular, the issue in Carr was whether claimants for disability benefits had forfeited their Appointments Clause challenges by failing to raise those constitutional challenges before the agency. The Supreme Court has now ruled that the claimants’ challenges were not forfeited. The decision favoring the claimants was unanimous, although the Court was not quite unanimous on the legal bases for the ruling. The question to be addressed in this essay is what effect, if any, Carr has on practice before the United States Patent and Trademark Office (USPTO); and in particular, whether constitutional challenges must be raised before the agency lest those challenges be forfeited.

Assignor Estoppel: Can’t We Just Leave It To Congress? (Answer: Not Really)

On Wednesday, April 21, the U.S. Supreme Court heard oral arguments in Minerva Surgical, Inc. v. Hologic, Inc., which concerns the doctrine of assignor estoppel. Generally speaking, assignor estoppel prohibits the assignor of a patent from later attacking the patent’s validity in court. Minerva argues that assignor estoppel is an ill-conceived relic of a bygone era that the Court should discard or at least substantially limit. Hologic argues that the doctrine is a bedrock part of the common law—a background against which Congress has been legislating for over a century—that the Court should preserve in full.

Justices Lean Toward Limiting, Not Eliminating, Assignor Estoppel Doctrine in Minerva v. Hologic

The U.S. Supreme Court heard oral arguments today in Minerva Surgical, Inc. v. Hologic, Inc., Cytyc Surgical Products, LLC, which essentially asks the Court to decide whether the doctrine of “assignor estoppel”—which bars the assignor of a patent from later attacking the patent’s validity—should be scrapped, retained or limited. The Court’s questioning indicated that it seems uncomfortable with discarding the doctrine entirely, as Minerva would like.

NetSoc Appeals to SCOTUS, Claiming Improper Analysis of Social Network Patent Nixed Under 101

On April 5, NetSoc LLC filed a petition for a Writ of Certiorari to the Supreme Court of the United States (SCOTUS) after losing its appeal in the U.S. Court of Appeals for the Federal Circuit (CAFC), which found NetSoc’s patent was directed to patent-ineligible subject matter. NetSoc claims that U.S. Patent No. 9,978,107 (‘107 Patent), titled “Method and System for Establishing and Using a Social Network to Facilitate People in Life Issues,” was legally issued in 2003 contrary to the claim of respondents, Match Group LLC, Plenty of Fish Media and Humor Rainbow. NetSoc says that review is warranted to resolve four legal issues of importance,

The View from the Court’s 2 Live Crew: Examining the Thomas/Alito Dissent in Google v. Oracle

Most commentators agree that Google v. Oracle is the most important copyright decision of the last 25 years (since Campbell v. Acuff-Rose Music). But what if the Court got it wrong?  The Court has not always done well with issues of technology (the Sony v. Universal “Betamax” case being an exception), and the majority decision in Google v. Oracle appears to be more of the same. For many reasons, the powerful dissent from Justices Thomas and Alito may be the better opinion.

The Upshot of Google v. Oracle: An Absurd Ruling Will Lead to Absurd Results

For every action there is an equal and opposite reaction, or so states Newton’s third law of motion. It is safe to say that Newton never met an intellectual property lawyer, and he never had to deal with the whims and fancy of an arbitrary and capricious Supreme Court. Earlier this week, the Supreme Court issued its much-anticipated decision in Google v. Oracle, in which the Court ruled that Google’s intentional copying of 11,500 lines of computer code from Oracle was a fair use despite the fact that Google made many tens of billions of dollars in the process, and despite the fact that the record showed that Google consciously chose to copy, rather than independently create, because programmers were already familiar with the 11,500 lines of code they wanted to take.

Stakeholders Speak Out on Google v. Oracle

On Monday, the U.S. Supreme Court handed down a ruling that still has many in the intellectual property world reeling—and not just copyright practitioners. The Court found a way to both accept without examination the Federal Circuit’s holding that the declaring code copied by Google was copyrightable and to reverse the Federal Circuit’s ruling in favor of Oracle, explaining that Google met the fair use exception to copyright law. The Court did this in part by asserting that computer programs are different when it comes to copyright protection, and further from “the core of copyright” than other kinds of works.

License to Copy: Your Software Code Isn’t Safe After Google v. Oracle

In characteristic form, the Supreme Court has once again managed to blow it in another intellectual property case. This time, the Justices blessed Google’s copying of Oracle’s code and called it fair use despite the fact that Google copied that portion of the Sun Java API that allowed programmers to use the task-calling system that was most useful to programmers working on applications for mobile devices. In the infinite wisdom of the Supreme Court, the copying of this code was found transformative because Google only used it to circumvent the need to license Java from Oracle with respect to Android smartphones. Of course, that isn’t exactly how the Supreme Court characterized it, but make no mistake, that is what they decided.

Computer Programs are Different, Says SCOTUS in Landmark Ruling that Google’s Use of Oracle’s API Packages Was Fair

The U.S. Supreme Court this morning found Google’s use of Oracle’s Java application programming interface (“API packages”) a fair use as a matter of law, with Justices Thomas and Alito dissenting. The decision reverses a 2018 Federal Circuit ruling in favor of Oracle. Google appealed that decision to the Supreme Court in January 2019, and three attorneys made arguments to the High Court in October 2020: Thomas Goldstein of Goldstein & Russell argued for Google; Joshua Rosenkranz of Orrick argued for Oracle; and Deputy Solicitor General Malcolm Stuart argued on behalf of the U.S. Government. Although the justices’ questioning at that hearing seemed skeptical of Google’s arguments, it also revealed that the Court wanted to avoid upending industry practices in computer programming.

Balancing Innovation and Competition: Thomas Jefferson’s View of Obviousness for Mechanical Inventions

You cannot get a patent for an invention if it would have been obvious to a person of ordinary skill in the art at the time. This is as true today as it was at the founding of our nation. The reason for this rule is clear—the obviousness-bar is necessary to balance rewarding innovation with free and fair competition. The Supreme Court has observed, alluding to the Constitution’s authorization for federal patents, “[w]ere it otherwise, patents might stifle, rather than promote, the progress of useful arts.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 427 (2007). While we all agree that obvious inventions should not be patented, the devil is in the details on how to draw that line between the obvious and the nonobvious.

Professors Tell SCOTUS to Correct the CAFC’s ‘Profound Misunderstanding’ in American Axle Case

In one of six amicus briefs filed this week in American Axle & Manufacturing v. Neapco Holdings, LLC—the closely-watched Section 101 patent eligibility case involving driveshaft automotive technology—Professors Jeffrey Lefstin and Peter Menell told the U.S. Supreme Court that the Federal Circuit’s 6-6 split decision to deny en banc rehearing in the case “mischaracterized fundamental patent principles and case law on which the modern patent system is built.” The professors added that “current § 101 jurisprudence conflates patent eligibility with the substantive requirements set forth in § 103 and § 112 and is getting more confusing by the day” and that “there is no patent law doctrine more in need of clarification.”

Amici and Practitioners Attempt to Read the Arthrex Tea Leaves

Yesterday, the Supreme Court heard oral arguments in the most closely-watched patent case of the term, United States / Smith & Nephew v. Arthrex. IPWatchdog reached out to some of the amici in the case, as well as patent practitioners and other stakeholders, to get their take on how the hearing went and what the future holds for the Administrative Patent Judges (APJs) of the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB). Most agreed that it’s unlikely the Court will dismantle the PTAB altogether, but that they were clearly uncomfortable with the present structure. Below, our experts weigh in on some potential outcomes.

SCOTUS Dubs PTAB/APJ Structure a ‘Rare Bird’, Pushes for Workable Remedies in Arthrex Oral Arguments

The Justices of the U.S. Supreme Court today heard arguments in United States/ Smith & Nephew v. Arthrex, in which the Court will decide whether the administrative patent judges (APJs) of the Patent Trial and Appeal Board (PTAB) are “principal” or “inferior” officers of the United States, and—if they are principal officers—whether the Federal Circuit’s 2019 fix was sufficient to cure any Appointments Clause defect. The Court generally seemed extremely skeptical of the “unusual” powers APJs seem to have compared with other administrative agencies and pushed both sides to offer reasonable solutions.

Tillis, Michel, and Kappos File Amici Curiae in American Axle at Supreme Court

On Monday,, March 2, an Amici Curiae Brief in Support of the Petition by American Axle was filed by Senator Thom Tillis, Honorable Paul Michel and Honorable David Kappos. The three amici conclude that they are “all convinced that section 101 is gravely damaging our country’s ability to succeed in the race for global innovation leadership, and all convinced that the solution to the dilemma lies with the Court taking up the American Axle case.”

NYIPLA Tells SCOTUS to Scrap CAFC’s ‘Per Se’ Approach to Assignor Estoppel in Minerva v. Hologic

Minerva Surgical, Inc. petitioned the Supreme Court of the United States (SCOTUS) in September 2020 to consider the question “whether a defendant in a patent infringement action who assigned the patent, or is [next in line] with an assignor of the patent, may have a defense of invalidity heard on the merits.” The petition was granted in January and additional amici have recently weighed in, including the New York Intellectual Property Law Association (NYIPLA).