On December 2, 2016, the Supreme Court granted certiorari in a case regarding the scope of patent exhaustion, including whether foreign sales exhaust U.S. patent rights and if post-sale restrictions on patented items are permissible. Impression Products, Inc. v. Lexmark International, Inc., 15-1189. The Court’s resolution of this case may have important implications for global commerce and secondary markets of patented products.
On March 21, 2016, the Supreme Court granted certiorari in Samsung v. Apple, No. 15-777, on the issue of damages for infringement of a design patent. Samsung Elecs. Co. v. Apple Inc., 136 S. Ct. 1453 (U.S. 2016). Specifically, the Court granted the petition for a writ of certiorari limited to the question of “Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?” 35 U.S.C. § 289 provides for an “[a]dditional remedy for infringement of design patent” wherein “[w]hoever during the term of a patent for a design, without license of the owner, (1) applies the patented design, or any colorable imitation thereof, to any article of manufacture for the purpose of sale, or (2) sells or exposes for sale any article of manufacture to which such design or colorable imitation has been applied shall be liable to the owner to the extent of his total profit.”
On Monday, March 21, 2016, Sequenom, Inc. filed a petition for writ of certiorari in Sequenom, Inc. v. Ariosa Diagnostics, Inc., et al., No. 14-1139 (Fed. Cir. June 12, 2015). The question posed to the Supreme Court centers around the patentability of diagnostic claims applied to newly-discovered natural phenomena.
The claimed work dates back to 1996, when two doctors discovered paternal cell-free fetal DNA (cffDNA) in maternal blood serum and plasma. With that discovery, the doctors developed a method of testing fetal DNA to determine, among other things, the risk of certain birth defects in a manner far less invasive than conventional techniques, which required DNA samples to be taken directly from the fetus or placenta. The doctors obtained U.S. Patent No. 6,258,540 covering the methods.
The U.S. Supreme Court denied New Millennium Sports, S.L.U.’s (New Millennium) writ to review the Federal Circuit’s holding overturning a decision by the Trademark Trial and Appeal Board (TTAB). New Millennium is a Spanish company that owns a trademark with an animal paw print element and the word “KELME” in connection with sports clothing. In 2009, Jack Wolfskin Ausrustung Fur Draussen GmbH & Co. KGAA (Jack Wolfskin) applied for a trademark with a paw print design in connection with clothing. New Millennium filed an opposition against Jack Wolfskin in 2010.
The U.S. Supreme Court denied Alps South’s writ to review the Federal Circuit’s decision that the company lacked standing to assert its patent covering prosthetic liners against The Ohio Willow Wood Company. The district court initially found that the patent was valid and willfully infringed, and denied Ohio Willow’s motion to dismiss for lack of standing. On appeal, Ohio Willow argued that Alps South did not possess all substantial rights to the asserted patent. Alps South obtained the asserted patent via a license agreement in which the original licensor retained the rights to make and sell products outside the field of prosthetic liners. Because the license agreement had a field-of-use restriction and Alps South did not join the original assignee as a co-plaintiff, Ohio Willow argued that Alps South lacked standing to sue.
The U.S. Supreme Court has decided to review the claim construction standard used by the Patent Trial and Appeal Board (PTAB) in AIA reviews In 2013, the PTAB invalidated a Cuozzo Speed Technologies patent through an inter partes review. Cuozzo appealed the decision to the Federal Circuit, which affirmed the PTAB’s use of the broadest reasonable interpretation standard for claim construction in an AIA review. Cuozzo is now asking the Supreme Court to review the use of the PTAB’s claim construction standard and to use the same standard used in district court patent cases. The PTAB construes claims broadly while district courts use a narrower standard. The PTAB’s standard, Cuozzo asserts, results in too many patent claims being invalidated. Cuozzo contends construing patent claims with their broadest reasonable interpretation allows more prior art to be used against the challenged claims increasing the chance the patent claim will be invalidated.
The U.S. Supreme Court denied software developer’s SpeedTrack writ to overturn the Federal Circuit’s application of the recently revived, 100+ year old Kessler doctrine. Speedtrack lost an initial case against Walmart where the accused product was found not to infringe Speedtrack’s patent. The Federal Circuit affirmed a decision of the district court that SpeedTrack was barred under the Kessler doctrine from bringing a second lawsuit against Office Depot because the accused Office Depot product was “essentially the same” as the Walmart product that was found to be non-infringing.