Review of IP cases at the Supreme Court

Though there are not nearly as many IP cases before the U.S. Supreme Court as last year, those the Court will decide could have a significant impact on how patents are challenged (and invalidated) at the Patent Appeal and Trial Board of the USPTO.

Petitions for which the Court has granted review:

• Oil States Energy Services LLC v. Greene’s Energy Group LLC

Question: Whether inter partes review (IPR) of a granted patent, as established in the American Invents Act, violates Article III of the Constitution by extinguishing private property rights without providing for a right to a trial by jury.

Summary: IPR proceedings, conducted at the USPTO, have become a mainstay of patent validity challenges. Oil States argues that patents are private property rights that can be revoked only by an Article III court, as provided by the Constitution. The USPTO, on the other hand, is an agency created by the executive branch and maintains that Congress has the power to delegate “public rights” for adjudication in a federal agency. Because “patent rights are public rights,” the USPTO argues that the agency’s powers are consistent with those provided in the Constitution.

The case is set for argument November 27, 2017.

• SAS Institute Inc. v. Matal

Question: Whether the Patent Trial and Appeal Board can issue a final written decision with respect to the patentability of only some patent claims challenged by the petitioner.

Summary: Read plainly, the PTAB is compelled by statute to issue a final decision on “any patent claim challenged by the petitioner,” even if a trial is not instituted for all of them. The USPTO argued that the agency is granted rulemaking authority by the America Invents Act to efficiently resolve PTAB proceedings. The USPTO cites the Federal Circuit’s decision in Synopsys, Inc. v. Mentor Graphics Corp, which held that there was no statutory requirement that the Board address in its final decision every claim raised by a petition.

SAS Institute Inc. v. Matal is set for argument November 27, 2017.

Pending certiorari petitions in which the Court has asked the U.S. solicitor general to file a brief:

• WesternGeco LLC v. Ion Geophysical Corp.

Question: Whether damages due to the lost profits from infringing combinations occurring outside of the United States are unavailable to the patent owner in patent infringement cases.

Summary: Initially, WesternGeco was awarded $93 million in lost profits damages for Ion’s overseas combination of parts for underwater oil and gas exploration. However, the Federal Circuit asserted that because Ion’s combining of the parts into the infringing system took place overseas, the court did not have jurisdiction to award such damages. WesternGeco asserts that Congress passed 35 U.S.C. § 271(f) for this very reason; that statute provides that anyone who supplies components from the United States to be combined outside of the United States that would infringe a patent “if such combination occurred within the United States, shall be liable as an infringer.”

• Samsung Electronics Co. Ltd. v. Apple Inc.

Question: Whether (1) a court is required to hold a patent as obvious under 35 U.S.C. § 103 where the patent makes “at most a trivial advance over technologies well-known to a person of skill in the art,” (2) the court should require more than “some connection” between an infringing feature and the asserted irreparable harm to support issuance of an injunction for a patent infringement, and (3) evidence is required that the accused product meets all elements of the relevant claim to support a judgment of patent infringement.

Summary: For each question above, Samsung maintains that the Federal Circuit is going against established precedent in ruling in favor of a $120 million jury verdict that Samsung infringed Apple’s patents. Further, Samsung charges that the Federal Circuit has not only made it “virtually impossible” to prove that a patent is invalid but made it much easier for the patent owner to obtain an injunction. Samsung says that affirming the injunction goes against the Supreme Court’s decision in eBay Inc. v. MercExchange, L.L.C.

Samsung Electronics Co. Ltd. v. Apple Inc. is case number 16-1102.

Other pending certiorari petitions:

• Google Inc. v. Unwired Planet LLC and PNC Bank NA v. Secure Axcess LLC (related to the covered business method review program)
• Openet Telecom Inc. v. Amdocs (Israel) Ltd. (revisiting “abstract ideas” as decided by Alice)
• Elliott v. Google Inc. (whether “Google” has become too generic to be protected by trademark law)
• Louis Vuitton Malletier SA v. My Other Bag Inc. (limits of the parody defense in trademark litigation)