Posts Tagged: "US Supreme Court"

Reflections on Denial of Cert in Athena Diagnostics

I was at the JP Morgan Healthcare Conference when I learned a week ago that the Supreme Court of the United States (SCOTUS) had denied Athena Diagnostic’s Petition for Certiorari. I was shocked. We feel the same when as a child we discover there is no Santa Claus—a trusted institution is not as represented. SCOTUS ignored a recommendation from the U.S. Solicitor General in the strongly worded Vanda opinion that the Court’s opinions had veered away from Congress’ law; a desperate plea from the U.S. Court of Appeals for the Federal Circuit that it needed better guidance and thinks the law is on the wrong path; 11 thoughtful amicus briefs; and Athena’s petition. The Court was also referred to my law review article with Anthony Prosser “Unconstitutional Application of 35 U.S.C. 101 by the U.S. Supreme Court” based on almost a year of legal research. During the month after final briefing in Athena and after the U.S. Solicitor’s opinion, we saw a significant uptick in downloads of our article (cited in the amicus brief to the Court I co-authored with Meredith Addy of AddyHart on behalf of Freenome and New Cures for Cancers)—over 30 downloads during the holiday season and prior to the Court’s conference on January 10, when most IP practitioners are otherwise distracted, providing an unconfirmable assumption that the Court was reading it. All to no avail.

Google v. Oracle: An Expansive Fair Use Defense Deters Investment In Original Content

Google v. Oracle America, a case pending before the United States Supreme Court, is a seemingly never-ending battle, since 2010, between two Silicon Valley behemoths. But now that battle may finally be nearing its conclusion. On January 7, the first of the amicus briefs were filed, signaling that both sides are marshaling their arguments for one final push toward the…

Supreme Court Poised to Reverse CAFC Trademark Decision on Willfulness as Prerequisite for Profits Award

On Tuesday, the Supreme Court heard oral arguments in Romag Fasteners v. Fossil, Inc., Fossil Stores, I. Inc., Macy’s Inc, and Macy’s Retail Holdings, Inc. to decide whether a successful trademark plaintiff must establish that infringement was willful as a hard prerequisite to an award of the infringer’s profits, rather than being just one of multiple factors to be weighed when determining entitlement to a profits award. Under the latter scheme, profits may be awardable even if the infringement was not willful. Taking the Justices’ comments at face value, it seems likely that Romag will prevail and profits may be disgorged for less-than willful infringement.

Lucky Brand Oral Arguments: SCOTUS Likely to Reverse Second Circuit Claim Preclusion Rule

On the morning of Monday, January 13, the U.S. Supreme Court heard oral arguments in Lucky Brand Dungarees Inc. v. Marcel Fashion Group Inc. The case asks the High Court to decide “whether, when a plaintiff asserts new claims, federal preclusion principles can bar a defendant from raising defenses that were not actually litigated and resolved in any prior case between the parties.” While the case originally involved allegations of trademark infringement, oral arguments indicated that the Justices of the Supreme Court will issue a decision with far-reaching implications on the question of what constitutes a single cause of action.

The Supreme Court is More Interested in Being Right Than Shedding Light on 101

Yesterday was a dark day for patent eligibility in America. The United States Supreme Court denied certiorari in five more petitions relating to patent eligibility challenges. Based on our count, this brings the total number of patent eligibility petitions denied by the Supreme Court to at least 48, since the Court issued its controversial, if not catastrophic, decision in Alice Corporation vs. CLS Bank, 134 S.Ct. 2347 (2014). Obviously, the Supreme Court is perfectly comfortable with the status quo as it pertains to the law of patent eligibility. This reality evokes myriad emotions, ranging from despair to outrage to resentment to cynicism to exasperation and finally to a begrudging acceptance. Even with Justice Gorsuch hiring clerks with an intellectual property background – an extreme rarity at the Supreme Court – there seems to be no willingness or desire to clean up the mess this Court created when it ignored the doctrine of stare decisis, several generations of well-established law, and the 1952 Patent Act itself, which had been interpreted by the Supreme Court based on the explicit language of 35 U.S.C. 101 and the legislative history to make “anything under the sun that is made by man” patent eligible. Diamond v. Chakrabarty, 447 U.S. 303 (1980) (citing S. Rep. No. 1979, 82d Cong., 2d Sess., 5 (1952); H. R. Rep. No. 1923, 82d Cong., 2d Sess., 6 (1952)).