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By Tony Dutra
The U.S. Supreme Court resolved 67 petitions for writ of certiorari on intellectual property issues during the 2012 term that ended in June, issuing written decisions in six of them.
In six additional cases, the court granted the cert petition, vacated an appellate court decision, and remanded (GVR) for reconsideration in light of one of the cases with a written opinion.
The high court denied review of 53 of the cases appealed--14 in which a copyright issue was the principle question presented, 37 patent, and two trademark.
Two IP cases are set for review when the high court reconvenes in October, and the court has called for the views of the solicitor general (CVSG) in three others.
The court's first conference to discuss fully briefed cert petitions will be held Sept. 30, with seven intellectual property cases scheduled for discussion that day--five on patent law, and one each on trademarks and right of publicity.
Seven other petitions on IP-related issues had been filed by the end of June, with briefing scheduled for completion during the summer.
Overall, just under half of the court's 78 opinions had unanimous approval by the justices, so the court's unanimous vote in four of the six IP cases was not unusual.
The first arose from a trademark issue, and then four patent cases surrounded the Kirtsaeng copyright-related opinion. In order of publication date, the six opinions were as follows:
• In the 9-0 Jan. 9 ruling in Already L.L.C. d/b/a Yums v. Nike Inc., No. 11-982, 105 U.S.P.Q.2d 1169 (2013) (07 PTD, 1/10/13), the court held that a rights holder's covenant not to sue, delivered after the rights holder had haled a defendant to federal court for trademark infringement, deprives a court of Article III jurisdiction over the defendant's counterclaim seeking cancellation of the underlying mark.
• Gunn v. Minton, 133 S. Ct. 1059, 105 U.S.P.Q.2d 1665 (2013) (35 PTD, 2/21/13), held that the grant of exclusive federal jurisdiction over patent lawsuits does not prevent state courts from hearing malpractice claims against patent attorneys. Two of the GVRs were remanded in light of the unanimous Gunn decision.
• The 6-3 decision in Kirtsaeng v. John Wiley & Sons Inc., 133 S. Ct. 1351, 106 U.S.P.Q.2d 1001 (2013) (54 PTD, 3/20/13), held that the first sale doctrine applies to copies of a copyrighted work lawfully made abroad. Two of the GVRs were remanded in light of Kirtsaeng.
• Seeds harvested from one crop were “additional copies” of Monsanto Co.'s patented invention and thus were not subject to the patent exhaustion doctrine, according to the court's unanimous decision in Bowman v. Monsanto Co., 133 S. Ct. 1761, 106 U.S.P.Q.2d 1593 (2013) (93 PTD, 5/14/13).
• The case that was most controversial but was nevertheless a unanimous ruling was Association for Molecular Pathology v. Myriad Genetics Inc., No. 12-398, 106 U.S.P.Q.2d 1972 (2013) (115 PTD, 6/14/13). The court ruled that isolated DNA is not patent eligible but that “synthetic” DNA such as complementary DNA is.
• The high court's vote was 5-3 in Federal Trade Commission v. Actavis Inc., No. 12-416, 106 U.S.P.Q.2d 1953 (2013)(117 PTD, 6/18/13). The court held that “pay for delay” deals are not presumptively unlawful, but even a “scope of the patent” limit does not immunize a deal from antitrust law. Two of the GVRs were remanded in light of Actavis.
The high court voted 5-3 or 5-4 in 23 cases in its 2012 term. In 16 of those cases, Justice Anthony M. Kennedy either joined the four liberals--Justices Ruth Bader Ginsburg, Stephen G. Breyer, Sonia M. Sotomayor, and Elena Kagan--or the conservative members--Chief Justice John G. Roberts Jr. and Justices Antonin Scalia, Clarence Thomas, and Samuel A. Alito.
With the exception of the Actavis decision, the high court once again did not show that ideological split in its IP-related decisions.
Breyer wrote the Kirtsaeng opinion, but fellow liberal Ginsburg wrote the dissent.
Roberts wrote Gunn and Already. Bowman was written by Kagan and Myriad by Thomas, with Scalia concurring in the latter only to say he could not sign on to the court's explanation of the DNA science.
In Actavis, though, Kennedy joined the court's four liberal members, with three conservatives in the minority and Alito recused, in a case that arguably pitted drug companies against consumers. Breyer wrote the court's opinion and Roberts wrote the dissent.
No other pattern in the high court's decisions is evident.
The patent community often comments that the Supreme Court has a particular concern about decisions by the U.S. Court of Appeals for the Federal Circuit, but the results this year on that point were mixed.
Only two of the six opinions were in cases appealing Federal Circuit decisions. The court's opinion in Bowman was upheld and its opinion in Myriad was reversed.
However, the Supreme Court's decision in the Gunn case, which came out of Texas state court, was a repudiation of the Federal Circuit's jurisprudence related to federal jurisdiction over patent attorney malpractice cases. The two cases remanded for reconsideration in light of Gunn were instances where the Federal Circuit's decision was to take on a patent malpractice appeal. After the remands, the court rejected its jurisdiction over each case. USPPS Ltd. v. Avery Dennison Corp., No. 2011-1525 (Fed. Cir., transferred May 16, 2013); Byrne v. Wood Herron & Evans L.L.P., No. 2011-1012 (Fed. Cir., remanded May 17, 2013).
The Second Circuit was reversed in the Kirtsaeng case and upheld in the Already v. Nike case.
The 11th Circuit was reversed in Actavis. That case represented a circuit split with the Third Circuit's opinion in In re K-Dur Antitrust Litigation, 686 F.3d 197, 103 U.S.P.Q.2d 1497 (3d Cir. 2012) (137 PTD, 7/18/12). The two GVRs in light of Actavis were challenges to the K-Dur decision.
The Third Circuit's view--the “scope-of-the-patent” standard--echoed that of the Federal Circuit in 2008 in In re Ciprofloxacin Hydrochloride Antitrust Litigation, 544 F.3d 1323, 88 U.S.P.Q.2d 1801 (Fed. Cir. 2008) (201 PTD, 10/17/08).
The high court has already granted two cert petitions for its upcoming term beginning in October:
• Medtronic Inc. v. Boston Scientific Corp., No. 12-1128 (U.S., review granted May 20, 2013) (98 PTD, 5/21/13), involves the burden of proof in a declaratory judgment action brought by a licensee of patented technology. The petitioner's brief is due July 26.
A second petition appealing the appellate court result in that case will await the Supreme Court's decision. Mirowski Family Ventures L.L.C. v. Medtronic Inc., No. 12-1116 (U.S., review soughtMarch 14, 2013) (60 PTD, 3/28/13).
• False advertising is at issue in Lexmark International Inc. v. Static Control Components Inc., No. 12-873 (U.S., review granted June 3, 2013) (107 PTD, 6/4/13). The question presented is whether a party must be a direct competitor in order to have standing to bring a false advertising claim under the Lanham Act. The petitioner's brief is due Aug. 16.
The court called for the views of the government in three cases with briefs due--there is no time limit--from the Office of the Solicitor General:
• The longest outstanding CVSG is in a trademark case, Pom Wonderful L.L.C. v. Coca-Cola Co., No. 12-761 (U.S., gov't views requested March 25, 2013) (60 PTD, 3/28/13). The case appeals the Ninth Circuit's holding that a private party cannot bring a Lanham Act claim challenging a product label regulated under the Food, Drug, and Cosmetic Act. 679 F.3d 1170, 102 U.S.P.Q.2d 1781 (9th Cir. 2012) (99 PTD, 5/23/12).
• Sony Computer Entertainment America L.L.C. v. 1st Media L.L.C., No. 12-1086 (U.S., gov't views requested May 13, 2013) (93 PTD, 5/14/13), asks the Supreme Court to determine whether the Federal Circuit's inequitable conduct test is too rigid, preventing consideration of the circumstances, and precluding equitable remedies. This essentially challenges the 6-5 decision in Therasense Inc. v. Becton Dickinson & Co., 649 F.3d 1276, 99 U.S.P.Q.2d 1065 (Fed. Cir. 2011) (104 PTD, 5/31/11).
• Two petitions question the 6-5 decision by the Federal Circuit regarding infringement when more than one party performs the steps of a patented method. Limelight Networks Inc. v. Akamai Technologies Inc., No. 12-786, and Akamai Technologies Inc. v. Limelight Networks Inc., No. 12-960 (U.S., gov't views requested June 24, 2013). The appeals court's views of both joint direct infringement and infringement under an inducement theory are questioned. Akamai Technologies Inc. v. Limelight Networks Inc., 692 F.3d 1301, 104 U.S.P.Q.2d 1799 (Fed. Cir. 2012)(173 PTD, 9/7/12).
There are several other decisions of the Federal Circuit that could generate interest from the high court. A dissent was filed in 16 precedential decisions since mid-April, suggesting that more cert petitions are likely in the next couple of months.
Most notably, the court was divided in two cases when it was sitting en banc. CLS Bank International v. Alice Corp. Pty. Ltd., No. 2011-1301, 106 U.S.P.Q.2d 1696 (Fed. Cir. 2013) (92 PTD, 5/13/13); and Robert Bosch L.L.C. v. Pylon Manufacturing Corp., No. 2011-1363, 107 U.S.P.Q.2d 1113 (Fed. Cir. 2013) (116 PTD, 6/17/13).
Cert petitions on software patent eligibility and jurisdiction over interlocutory appeals, respectively, are expected in those two cases.
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