1. IP Supreme Court Cases (and OT2016 Preview)
July 21, 2015

2. In re Cuozzo Speed Techs.
The IPR institution decision is “final and nonappealable,” pursuant to statute § 314.
Possible Exception: “[W]e emphasize that our interpretation applies where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review… This means that we need not, and do not, decide the precise effect of §314(d) on appeals that implicate constitutional questions, that depend on other less closely related statutes, or that present other questions of interpretation that reach, in terms of scope and impact, well beyond ‘this section.’”
Broadest reasonable interpretation is a reasonable exercise of rulemaking authority.

3. Styker v. Zimmer; Halo v. Pulse
CAFC In re Seagate Test:
Clear and convincing, objectively high likelihood of inf., risk known or so obvious should have been known, mixed standard of review.
HELD: Seagate not consistent with § 284.
Statute says “may.” Discretion to court, but “[d]iscretion is not whim.” 180 years of precedent establish enhanced damages are a sanction for “egregious” infringement behavior.
The focus is subjective willfulness at time of infringement, not litigation-induced opinion/defense.
Preponderance of evidence, reviewed for abuse of discretion.

4. John Wiley & Sons v. Kirtsaeng
Recall Kirtsaeng I (US 2013): foreign sales triggered © first sale (exhaustion) doctrine. Issue now was fee award to defendants.
HELD: district court should give substantial weight to objective reasonableness of losing party’s position, while accounting for other relevant circumstances.
BUT: No presumption of no fees if a reasonable position is found. That goes too far in restricting judge analysis/discretion.

5. October Term 2015—Other Outcomes I
Cert. denied in Sequenom v. Ariosa
Cell-free fetal DNA tests were conventional technique applied to natural phenomenon, ineligible under Mayo
Cert. denied in Shukh v. Seagate
Case challenged CAFC “automatic assignment” rule in inventor agreements.
Cert. denied in Limelight v. Akamai
Direct infringement can be divided if steps of method are “attributable” to single entity.
Cert. denied in Authors Guild v. Google
Google Books is fair use
Cert. denials relating to claim construction (both court and PTAB), abstract ideas, misc. other issues.

6. October Term 2015—Other Outcomes II
GVR in light of Stryker/Halo.
Innovention Toys v. MGA
WesternGeco LLC v. ION Geophysical
GVR in light of Cuozzo.
Click-To-Call Techs v. Oracle Corp.
GVR in light of Commil (2015)
Medtronic v. NuVasive, intent issue for inducement

7. October Term 2016—Granted Petitions I
Samsung v. Apple
“Whether, where a design patent is applied to only a component of a product, an award of infringer’s profits should be limited to those profits attributable to the component.”
Life Technologies v. Promega
“Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C.§ 271(f)(1), exposing the manufacturer to liability for all worldwide sales.”

8. October Term 2016—Granted Petitions II
Star Athletica v. Varsity Brands
“What is the appropriate test to determine when a feature of a useful article is protectable under section 101 of the Copyright Act.”
SCA Hygiene Products v. First Quality Baby Products
“Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act’s six-year statutory limitations period, 35 U.S.C. § 286.”
CAFC has distinguished recent © “Raging Bull” decision (Petrella)

9. October Term 2016—Pending Petitions I
Impression Products v. Lexmark
whether conditional sale triggers patent exhaustion; whether foreign sale triggers patent exhaustion (a la Kirtsaeng in ©).
MCM Portfolio v. HP; Cooper v. Lee
(1) Whether inter partes review (IPR) violates Article III of the Constitution; and (2) whether IPR violates the Seventh Amendment to the Constitution.
Medinol v. Cordis (laches a la SCA Hygiene)
Sandoz v. Amgen
Timing of marketing notice for biologics

10. October Term 2016—Pending Petitions II
Lee v. Tam; Pro-Football, Inc. v. Blackhorse
Whether the disparagement provision of the Lanham Act, 15 U.S.C. 1052(a), which provides that no trademark shall be refused registration on account of its nature unless, inter alia, it “[c]onsists of matter which may disparage persons, living or dead, institutions, beliefs, or national symbols, or bring them into contempt, or disrepute” is facially invalid under the Free Speech Clause of the First Amendment.
NCAA v. O’Bannon
(2) whether the First Amendment protects a speaker against a state-law right-of-publicity claim based on the realistic portrayal of a person in an expressive work (here, a student-athlete in a college-sports videogame)