No one has 20/20 vision when it comes to the future, but with several Supreme Court cases granted certiorari, the rulings could have substantial implications for the IP space this year.
SCOTUS and copyright
Google v Oracle, which has been in dispute since 2010, is one of the most significant IP cases that the court is expected to rule on in 2020. As previously covered by Managing IP, software companies have expressed concern that a ruling in Oracle’s favour will overturn common understanding of software copyright norms.
Michael Keyes, Seattle-based partner at Dorsey & Whitney, says that the case also has relevance for fair use, particularly because the US Court of Appeal for the Federal Circuit disagreed with the District Court on the facts of the case.
“A jury had spent all its time looking at the evidence, sizing it up, weighing the various factors and came to a conclusion. For an appellate court to step in and say ‘you got it wrong as a matter of law. You should have come out the exact opposite way’ – wow. That’s just remarkable.”
Keyes adds: “It seems like that’s going to be an issue that the court is going to get into, in terms of what is the appellate court’s role in assessing fair use, which is also going to be important guidance for us to have.”
The court is also likely to issue a ruling on Allen v Cooper, which examines whether Congress validly abrogated state sovereign immunity when passing the Copyright Remedy Clarification Act. If the court decides that Congress did not act validly, copyright owners will be unable to seek damages from a US state (in this case North Carolina) who has allegedly violated their copyright.
Another interesting Supreme Court case, Georgia v Public.Resource.Org, sees a US state as a plaintiff rather than a defendant. Georgia hired a division of LexisNexis Group to prepare the “Official Code of Georgia Annotated.” Public.Resource.Org, a California-based non-profit, published the annotated code on its website, a move that Georgia claimed violated its copyright.
Kim Jordahl, owner of Tennessee-based KSJLaw, says: “I agree with the position that the people who have the responsibility of complying with the law deserve to have access to law as annotated by the governing body that passed the law.”
“Access should not be restricted to people who can pay subscription prices.”
SCOTUS and trademarks
On January 14, the court will hear Romag Fasteners v Fossil. The case will examine whether wilful infringement is required for profit disgorgement in trademark cases.
“Disgorging an infringer’s profit is the easiest way to get money in trademark case,” explains Christian Liedtke, a California-based partner at Acuminis. “In order to get damages, the test is almost universally whether or not you have a lost sale, and proving definitively that you have lost a sale to the infringer is really difficult. So arguing damages is not as easy as arguing for disgorgement of the infringer’s profits,” Liedke says.
Another key trademark case, USPTO v Booking.com, is yet to be scheduled, but was granted certiorari in 2019.
The case assesses whether booking.com can be registered as a trademark. The USPTO claims that “booking” would by itself be a generic mark and that adding a “.com” is not enough to give the business trademark protection.
Liedtke says the Supreme Court justices are likely to come up with a resolution that is narrowly tailored to giving booking.com its mark, but also not allowing for others to “tag onto that bandwagon”.
SCOTUS and patents
The Supreme Court ruling in Thryv v Click-To-Call Technologies is also expected to affect the patent space.
A provision of the America Invents Act (35 U.8.C. § 314(d)), states that inter partes review (IPR) may not be instituted if the petition requesting an IPR is filed more than one year after the petitioner receives a complaint alleging infringement. Another provision, says that the “determination by the director whether to institute an [IPR] under this section shall be final and non-appealable”.
According to the Supreme Court docket, the Federal Circuit held that a “PTAB decision to institute an IPR after finding that the … time bar [of one year] did not apply was appealable”.
The Supreme Court case is expected to rule on this decision and determine “whether 35 U.8.C. § 314(d) permits appeal of the PTAB's decision to institute an [IPR] upon finding that [the one-year] time bar did not apply”.
Section 101
In the coming year, lawyers will also keep their eyes on Congress to see if the legislative branch passes any IP reforms.
One of the most significant potential changes involves patent subject matter eligibility. Recent Supreme Court decisions have introduced judicial exceptions to patent eligibility, which limit the subject matters that can be patented.
Many in the IP community disagree with these decisions and argue that they have created uncertainty in the market. To address this, Senators Thom Tillis and Chris Coons have introduced draft legislation stipulating that “provisions of section 101 shall be construed in favour of eligibility”. Congress held hearings in 2019 to address section 101.
Matthew Wagner, general counsel at PDC Brands, in Stamford, Connecticut, says that patent eligibility reforms are of interest to his company.
“We see that there are patents being applied for and granted on fairly limited ‘inventions’ which relate to techniques or beauty products that have been in existence for many, many years and decades, and parties asserting patent rights to which, upon examination, they’re not entitled,” says Wagner.
“That creates inefficiencies in the business because we have additional expense which we need to allocate towards new product development and defensive manoeuvres and the like.”
Still, many lawyers are sceptical that legislative change will actually happen this year.
“I wish that I could say that legislation is forthcoming, but from what I’ve seen and from colleagues that I’ve had this conversation with, not many people are hopeful that we’re going to see anything in 2020,” Jordahl says.
