Justia Intellectual Property Opinion SummariesArticles Posted in US Supreme Court
Thryv, Inc. v. Click-To-Call Technologies, LP
Inter partes review (IPR) permits a patent challenger to ask the U.S. Patent and Trademark Office to reconsider the validity of earlier granted patent claims. If a request comes more than a year after a patent infringement lawsuit against the requesting party, IPR “may not be instituted,” 35 U.S.C. 315(b). The agency’s determination of whether to institute IPR is “final and nonappealable” under section 314(d). Thryv sought IPR of Click-to-Call’s patent. The Patent Trial and Appeal Board rejected Click-to-Call’s argument that the suit was untimely, instituted review, and canceled 13 of the patent’s claims as obvious or lacking novelty. Treating the Board’s application of section 315(b) as judicially reviewable, the Federal Circuit concluded that the petition was untimely and vacated the Board’s decision. The Supreme Court vacated. Section 314(d) precludes judicial review of the agency’s application of section 315(b)’s time prescription. A challenge based on section 315(b) constitutes an appeal of the agency’s decision “to institute” an IPR. Allowing section 315(b) appeals would unwind agency proceedings determining patentability and leave bad patents enforceable. Section 314(d)’s text does not limit the review bar to section 314(a)’s question of whether the petitioner has a reasonable likelihood of prevailing. Click-to-Call’s contention is, essentially, that the agency should have refused to institute IPR. View "Thryv, Inc. v. Click-To-Call Technologies, LP" on Justia Law
Allen v. Cooper
In 1996, Intersal, a marine salvage company, discovered the shipwreck of the Queen Anne’s Revenge off the North Carolina coast. North Carolina, the shipwreck’s legal owner, contracted with Intersal to conduct recovery. Intersal hired videographer Allen to document the efforts. Allen recorded the recovery for years. He registered copyrights in all of his works. When North Carolina published some of Allen’s videos and photos online, Allen sued for copyright infringement, arguing that the Copyright Remedy Clarification Act of 1990 (CRCA, 17 U.S.C. 511(a)) removed the states’ sovereign immunity in copyright infringement cases. The Supreme Court affirmed the Fourth Circuit, ruling in favor of North Carolina. Congress lacked the authority to abrogate the states’ immunity from copyright infringement suits in the CRCA. A federal court may not hear a suit brought by any person against a nonconsenting state unless Congress has enacted “unequivocal statutory language” abrogating the states’ immunity from suit and some constitutional provision allows Congress to have thus encroached on the states’ sovereignty. Under existing precedent, neither the Intellectual Property Clause, Art. I, section 8, cl. 8, nor Section 5 of the Fourteenth Amendment, which authorizes Congress to “enforce” the commands of the Due Process Clause, provides that authority. View "Allen v. Cooper" on Justia Law
Peter v. NantKwest, Inc.
The Patent Act provides two methods for challenging an adverse decision by the Patent and Trademark Office (PTO): direct appeal to the Federal Circuit, 35 U.S.C. 141, or a new civil action against the PTO Director in the Eastern District of Virginia, section 145. Under section 145, the applicant must pay “[a]ll the expenses of the proceedings.” NantKwest filed a section 145 civil action after its patent application was denied. The Federal Circuit affirmed summary judgment in favor of the PTO, which moved for reimbursement of expenses, including the pro-rata salaries of PTO attorneys and a paralegal who worked on the case. The Federal Circuit and the Supreme Court affirmed the denial of the motion, concluding that the statutory language referencing expenses was not sufficient to rebut the “American Rule” presumption that parties are responsible for their own attorney’s fees. Reading section 145 to permit an unsuccessful government agency to recover attorney’s fees from a prevailing party “would be a radical departure from longstanding fee-shifting principles adhered to in a wide range of contexts.” The phrase “expenses of the proceeding” would not have been commonly understood to include attorney’s fees at the time section 145 was enacted. The appearance of “expenses” and “attorney’s fees” together across various statutes indicates that Congress understands the terms as distinct and not inclusive of each other. View "Peter v. NantKwest, Inc." on Justia Law
Iancu v. Brunetti
Brunetti sought federal registration of the trademark FUCT. The Patent and Trademark Office denied his application under a Lanham Act provision that prohibits registration of trademarks that consist of or comprise "immoral[ ] or scandalous matter,” 15 U.S.C. 1052(a). The Supreme Court affirmed the Federal Circuit in holding that the provision violates the First Amendment. The Court noted that it previously invalidated the Act’s ban on registering marks that “disparage” any “person[ ], living or dead.” The “immoral or scandalous” bar similarly discriminates on the basis of viewpoint. Expressive material is “immoral” when it is “inconsistent with rectitude, purity, or good morals”; “wicked”; or “vicious”; the Act permits registration of marks that champion society’s sense of rectitude and morality, but not marks that denigrate those concepts. Material is “scandalous” when it “giv[es] offense to the conscience or moral feelings”; “excite[s] reprobation”; or “call[s] out condemnation”; the Act allows registration of marks when their messages accord with, but not when their messages defy, society’s sense of decency or propriety. The statute, on its face, distinguishes between ideas aligned with conventional moral standards and those hostile to them. The Court rejected an argument that the statute is susceptible of a limiting construction. The “immoral or scandalous” bar does not draw the line at lewd, sexually explicit, or profane marks. Nor does it refer only to marks whose “mode of expression,” independent of viewpoint, is particularly offensive. To cut the statute off where the government urges would not interpret the statute Congress enacted, but fashion a new one. View "Iancu v. Brunetti" on Justia Law
Return Mail, Inc. v. United States Postal Service
The Leahy-Smith America Invents Act (AIA) of 2011 created the Patent Trial and Appeal Board, 35 U.S.C. 6(c), which conducts administrative review proceedings that enable a “person” to challenge the validity of a patent post-issuance: “inter partes review,” “post-grant review,” and “covered-business-method review” (CBM review). The Board either confirms or cancels the patent claims. Any dissatisfied party may then seek judicial review in the Federal Circuit. A patent can also be reexamined either in federal court during a defense to an infringement suit or in an ex parte reexamination by the Patent Office. USPS introduced an enhanced service to process undeliverable mail, which Return Mail asserted infringed its patent. USPS petitioned for ex parte reexamination. The Patent Office confirmed the patent’s validity. Return Mail then sued, seeking compensation for the unauthorized use of its invention. USPS petitioned for CBM review. The Patent Board concluded that the subject matter of Return Mail’s claims was ineligible to be patented. The Federal Circuit affirmed. The Supreme Court reversed. The government is not a “person” capable of instituting AIA review proceedings. Absent an express definition of “person” in the patent statutes, the Court applied a longstanding interpretive presumption that "person" does not include the sovereign, citing common usage, and the Dictionary Act. There are many references to “person[s]” in the Patent Act and the AIA: Sometimes “person” plainly includes or excludes the government, but sometimes it might be read either way. The mere existence of some government-inclusive references and the government's ability to obtain a patent do not overcome the presumption that the government is not a “person” eligible to petition for AIA review. Congress may have had good reason to authorize the government to initiate a hands-off ex parte reexamination but not to become a party to the AIA’s full-blown adversarial proceeding. View "Return Mail, Inc. v. United States Postal Service" on Justia Law
Mission Product Holdings, Inc. v. Tempnology, LLC
Tempnology licensed Mission to use Tempnology’s trademarks in connection with the distribution of clothing. Tempnology filed for Chapter 11 bankruptcy and sought to reject its agreement with Mission as an “executory contract” under 11 U.S.C. 365, which provides that rejection “constitutes a breach of such contract.” The Bankruptcy Court approved Tempnology’s rejection, holding that the rejection terminated Mission’s rights to use Tempnology’s trademarks. The Bankruptcy Appellate Panel reversed, holding that rejection does not terminate rights that would survive a breach of contract outside bankruptcy. The First Circuit reinstated the Bankruptcy Court’s decision. The Supreme Court reversed, first holding that the case is not moot. Mission presented a plausible claim for damages, sufficient to preserve a live controversy. A debtor’s rejection of an executory contract under Bankruptcy Code Section 365 has the same effect as a breach of that contract outside bankruptcy and cannot rescind rights that the contract previously granted. A licensor’s breach cannot revoke continuing rights given under a contract (assuming no special contract term or state law) outside of bankruptcy; the same result follows from rejection in bankruptcy. Section 365 reflects the general bankruptcy rule that the estate cannot possess anything more than the debtor did outside bankruptcy. The distinctive features of trademarks do not mandate a different result. In delineating the burdens a debtor may and may not escape, Section 365’s edict that rejection is breach expresses a more complex set of aims than facilitating reorganization. View "Mission Product Holdings, Inc. v. Tempnology, LLC" on Justia Law
Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC
Fourth Estate, a news organization that licensed works to Wall-Street.com, a news website. sued Wall-Street for copyright infringement of articles that Wall-Street failed to remove from its website after canceling the license agreement. Fourth Estate had applied to register the articles with the Copyright Office, but the Register had not acted on those applications. No civil infringement action “shall be instituted until . . . registration of the copyright claim has been made,” 17 U.S.C. 411(a). The Eleventh Circuit and a unanimous Supreme Court affirmed the dismissal of the suit. Registration occurs, and a copyright claimant may commence an infringement suit, upon registration; a copyright owner can then recover for infringement that occurred both before and after registration. In limited circumstances, copyright owners may file suit before undertaking registration. For example, an owner who is preparing to distribute a work that is vulnerable to predistribution infringement—e.g., a movie or musical composition—may apply for preregistration; an owner may also sue for infringement of a live broadcast before registration. The Court rejected Fourth Estate’s “application approach” argument that registration occurs when a copyright owner submits a proper application. In 1976 revisions to the Copyright Act, Congress both reaffirmed that registration must precede an infringement suit. The Act safeguards copyright owners by vesting them with exclusive rights upon creation of their works and prohibiting infringement from that point forward. To recover for such infringement, copyright owners must apply for registration and await the Register’s decision. An administrative lag in processing applications does not allow revision of section 411(a)’s congressionally-composed text. View "Fourth Estate Public Benefit Corp. v. Wall-Street.com, LLC" on Justia Law
Rimini Street, Inc. v. Oracle USA, Inc.
A jury awarded Oracle damages after finding that Rimini had infringed Oracle copyrights. The court awarded Oracle fees and costs, including $12.8 million for litigation expenses such as expert witnesses, e-discovery, and jury consulting. The Ninth Circuit affirmed, acknowledging that the award covered expenses not included within the six categories of costs identified in 28 U.S.C. 1821 and 1920, and citing the Copyright Act, which gives district courts discretion to award “full costs” to a party in copyright litigation, 17 U.S.C. 505. A unanimous Supreme Court reversed in part. The term “full costs” in the Copyright Act means costs specified in the general costs statute (sections 1821 and 1920), which defines what the term “costs” encompasses in subject-specific federal statutes such as section 505. Courts may not award litigation expenses that are not specified in sections 1821 and 1920 absent explicit authority. The Copyright Act does not explicitly authorize the award of litigation expenses beyond the six categories; the six categories do not authorize an award for expenses such as expert witness fees, e-discovery expenses, and jury consultant fees. Oracle has not shown that the phrase “full costs” had an established legal meaning that covered more than the full amount of the costs listed in the applicable costs schedule. View "Rimini Street, Inc. v. Oracle USA, Inc." on Justia Law
Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc.
Helsinn makes a treatment for chemotherapy-induced nausea using the chemical palonosetron. While developing that product, Helsinn granted another company the right to market a 0.25 mg dose of palonosetron in the United States; that company was required to keep proprietary information confidential. Nearly two years later, in 2003, Helsinn filed a provisional patent application covering a 0.25 mg dose of palonosetron. Helsinn filed four patent applications that claimed priority to the 2003 date. Helsinn’s fourth application, filed in 2013 (the 219 patent), is covered by the Leahy-Smith America Invents Act (AIA). In 2011, Teva sought approval to market a generic 0.25 mg palonosetron product. Helsinn sued for infringement. Teva countered that the 219 patent was invalid under the “on sale” provision of the AIA, which precludes a person from obtaining a patent on an invention that was “in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention,” 35 U.S.C. 102(a)(1), arguing the 0.25 mg dose was “on sale” more than one year before Helsinn filed the 2003 application. The Federal Circuit held, and the Supreme Court unanimously agreed, that the sale was publicly disclosed, regardless of whether the details of the invention were publicly disclosed in the agreements. A commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” under section 102(a). The patent statute in force immediately before the AIA included an on-sale bar. Supreme Court and Federal Circuit precedent interpreting that provision indicated that a sale or offer of sale need not make an invention available to the public to constitute invalidating prior art. The Court applied the presumption that when Congress reenacted the “on sale” language in the AIA, it adopted earlier judicial constructions. View "Helsinn Healthcare S. A. v. Teva Pharmaceuticals USA, Inc." on Justia Law
WesternGeco LLC v. ION Geophysical Corp.
WesternGeco owns patents for a system used to survey the ocean floor. ION sold a competing system, built from components manufactured in the U.S., then shipped abroad for assembly into a system indistinguishable from WesternGeco’s. WesternGeco sued for patent infringement, 35 U.S.C. 271(f)(1) and (f)(2). The jury awarded WesternGeco royalties and lost profits under section 284. The Supreme Court reversed the Federal Circuit, holding that WesternGeco’s award for lost profits was a permissible domestic application of section 284 of the Patent Act, not an impermissible extraterritorial application of section 271. To determine whether the case involves a domestic application of the statute, courts must identify the statute’s "focus” and ask whether the conduct relevant to that focus occurred in U.S. territory. If so, the case involves a permissible domestic application of the statute. When determining the statute’s focus, the provision at issue must be assessed in concert with other provisions. Section 284, the general damages provision, focuses on “the infringement.” The “overriding purpose” is “complete compensation” for infringements. Section 271 identifies several ways that a patent can be infringed; to determine section 284’s focus in a given case, the type of infringement must be identified. Section 271(f)(2) was the basis for WesternGeco’s claim and damages. That provision regulates the domestic act of “suppl[ying] in or from the United States,” and vindicates domestic interests, The focus of section 284 in a case involving infringement under section 271(f)(2) is the act of exporting components from the U.S., so the relevant conduct occurred in the U.S. Damages are not the statutory focus but are merely the means by which the statute remedies infringements. The overseas events giving rise to the lost-profit damages here were merely incidental to the infringement. View "WesternGeco LLC v. ION Geophysical Corp." on Justia Law