This week saw the final US Supreme Court intellectual property ruling of a busy term. As is often their way, the justices saved probably the most high-profile decision until last. The Court in Matal v Tam found the disparagement clause of the Lanham Act unconstitutional.
It was the eighth ruling handed down this Supreme Court term – which started in October and ends this month – with six patent cases, one copyright case and one trade mark case.
This week it rounded out its IP-related activity by denying cert to five cases, including the dancing baby case.
But the Court does not appear to be losing its appetite for IP cases. It had previously taken on two Patent Trial and Appeal Board appeals that have the potential to completely reshape the Board’s role.
The Court will assess the constitutionality of PTAB trials, after this month granting cert in Oil States Energy Services v Green’s Energy Group. And in May, the court granted cert in SAS Institute v Lee to consider whether the Board must issue a final decision on all challenged patent claims or if it can use its discretion to issue final decisions on only some claims brought in an IPR.
From the rulings handed down this term, Tam and TC Heartland are the two blockbuster cases. But there was plenty else that will impact IP practitioners, including the high court shaping law on biosimilars, copyright in cheerleading uniforms, design patents, laches in patent cases, exhaustion and much more.
Below is a summary of each case, with links to the Supreme Court ruling and Managing IP’s analysis of oral arguments and the decisions.
|Name||Date granted cert||Date argued||Date decided||Argued by (bold denotes which party the opinion was most favourable to)||Opinion delivered by||Holding|
|Samsung v Apple||Mar 21 2016||Oct 11 2016||Dec 6 2016||Kathleen Sullivan of Quinn Emanuel Urquhart & Sullivan for Samsung; Seth Waxman of WilmerHale for Apple||Sotomayor for a unanimous court||In the case of a multicomponent product, the relevant article of manufacture for arriving at a damages award under Section 289 of the Patent Act need not be the end product sold to the consumer but may be only a component of that product.|
|LifeTech v Promega||Jun 27 2016||Dec 6 2016||Feb 22 2017||Carter Phillips of Sidley Austin for Life Technologies; Seth Waxman of WilmerHale for Promega||Sotomayor; Kennedy, Ginsburg, Breyer, and Kagan joined; Thomas and Alito joined as to all but part II–C; Alito filed an opinion concurring in part and concurring in the judgment, in which Thomas joined. Roberts took no part.||The supply of a single component of a multicomponent invention for manufacture abroad does not give rise to §271(f)(1) liability|
|SCA Hygiene v First Quality Baby Products||May 2 2016||Nov 1 2016||Mar 21 2017||Martin Black of Dechert for SCA; Seth Waxman of WilmerHale for First Quality||Alito; Roberts, Kennedy, Thomas, Ginsburg, Sotomayor, and Kagan joined; Breyer filed a dissenting opinion.||Laches cannot be invoked as a defense against a claim for damages brought within §286’s 6-year limitations period|
|Star Athletica v Varsity Brands||May 1 2016||Oct 31 2016||Mar 22 2017||John Bursch of the American Law Institute for Star Athletica; William Jay of Goodwin Proctor for Varsity||Thomas; Roberts; Alito, Sotomayor, and Kagan joined. Ginsburg filed an opinion concurring in the judgment; Breyer filed a dissenting opinion, in which Kennedy joined.||A feature incorporated into the design of a useful article is eligible for copyright protection only if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work — either on its own or fixed in some other tangible medium of expression — if it were imagined separately from the useful article into which it is incorporated.|
|TC Heartland v Kraft Food||Dec 14 2016||Mar 27 2017||May 22 2017||James Dabney of Hughes Hubbard & Reed for TC Heartland; William Jay of Goodwin Proctor for Kraft||Thomas; all other members joined, except Gorsuch, who took no part.||The amendments to §1391 did not modify the meaning of §1400(b) as interpreted by Fourco. A domestic corporation “resides” only in its state of incorporation for purposes of the patent venue statute.|
|Impression v Lexmark ||Dec 2 2016||Mar 31 2017||May 30 2017||Andrew Pincus of Mayer Brown for Impression; Constantine Trela of Sidley Austin for Lexmark||Roberts; Kennedy, Thomas, Breyer, Alito, Sotomayor, and Kagan joined. Ginsburg filed an opinion concurring in part and dissenting in part. Gorsuch took no part.||A patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale.|
|Sandoz v Amgen||Jan 13 2017||Apr 26 2017||Jun 12 2017||Deanne Maynard of Morrison & Foerster for Sandoz; Seth Waxman of WilmerHale for Amgen||Thomas for a unanimous court. Breyer filed a concurring opinion.||An injunction is not available under federal law, but the court below will decide whether an injunction is available under state law. An applicant may provide notice before obtaining a license from the FDA for its biosimilar.|
|Matal v Tam ||Sept 29 2016||Jan 18 2017||Jun 19 2017||Malcolm Stewart of Department of Justice on behalf of the government; John Connell of Archer for Tam||Alito, with various Justices joining and concurring in part (see bottom of this article for full details)*||The disparagement clause of the Lanham Act is unconstitutional under the First Amendment's Free Speech Clause|
Samsung v Apple
Supreme Court December 6 ruling
Samsung v Apple: SCOTUS redefines article of manufacture
Samsung v Apple SCOTUS arguments: Tests proposed for "article of manufacture"
LifeTech v Promega
Supreme Court February 22 ruling
SCOTUS rules in Life Tech v Promega: One is not enough
Analysing Life Tech v Promega arguments at the US Supreme Court
SCA Hygiene v First Quality Baby Products
Supreme Court March 21 ruling
US Supreme Court rules no laches defence available in patent cases
Laches and patent law: SCA Hygiene v First Quality Baby Products SCOTUS arguments
Star Athletica v Varsity Brands
Supreme Court March 22 ruling
US Supreme Court finds cheerleading uniform designs copyright eligible
Star Athletica arguments: Will SCOTUS find a uniform test for useful articles?
TC Heartland v Kraft Food
Supreme Court May 22 ruling
SCOTUS limits patent venue in Heartland ruling
TC Heartland – initial reaction to “most significant patent law decision since Alice”
Predicting the future for the Eastern District of Texas after TC Heartland
What will become of patent reform legislation post-TC Heartland?
US Supreme Court revisits patent venue in TC Heartland v Kraft arguments
Impression v Lexmark
Supreme Court May 30 ruling
US Supreme Court overturns Federal Circuit patent exhaustion stance in Impression v Lexmark
Interview: Inside Impression Products’ win at the Supreme Court
Impression v Lexmark arguments analysis: When are patent rights exhausted?
Sandoz v Amgen
Supreme Court June 12 ruling
SCOTUS rules biosimilar applicants can provide notice before FDA approval
Is an injunction available in biosimilar cases under state law?
The patent dance takes the US Supreme Court floor in Sandoz v Amgen oral arguments
Matal v Tam
Supreme Court June 19 ruling
Disparagement clause offends First Amendment, says SCOTUS in Tam
US Supreme Court examines many angles in Slants oral arguments
*Alito with respects to Parts I, II and III-A; Roberts, Kennedy, Ginsburg, Breyer, Sotomayor and Kagan joined; Thomas joined except Part II; Alito delivered opinion with respects to Parts III-B, III-C and IV; Roberts, Thomas and Breyer joined; Kennedy concurred in part, joined by Sotomayor and Kagan; Thomas concurred in part. Gorsuch took not part.