U.S. Supreme Court decisions
A unanimous Supreme Court reversed the Federal Circuit and ended Amarin’s induced infringement suit against Hikma’s skinny-label generic of Vascepa, holding that anodyne marketing references to the branded drug do not plausibly allege that a generic maker actively encouraged infringing uses.
The Supreme Court denied certiorari in CareDx v. Natera, leaving intact the Third Circuit’s ruling that proof of actual consumer deception is required to support Lanham Act damages even when advertising is deliberately and literally false.
The Supreme Court denied certiorari in Rideshare Displays’ challenge to the Federal Circuit’s invalidation of vehicle identification system patents under Section 101, where the court also declined to follow the USPTO’s own eligibility guidelines.
The Supreme Court denied certiorari in CAO Lighting’s challenge arguing that the Federal Circuit’s one-line Rule 36 affirmances of PTAB decisions violate the statutory mandate for judicial ‘opinions’ under Loper Bright principles.
The Supreme Court denied certiorari in USAA v. PNC Bank, leaving intact the Federal Circuit’s ruling that mobile check deposit patents are unpatentable abstract ideas under Section 101, effectively killing $222.8 million in jury verdicts.
The Supreme Court denied certiorari in USAA’s challenge to the Federal Circuit’s invalidation of mobile check deposit patents under Alice, leaving the abstract-idea framework unchanged despite broad industry support for review.
The Supreme Court denied certiorari in EscapeX IP v. Google, leaving in place a Federal Circuit decision affirming over $250,000 in attorney-fee sanctions against a patent plaintiff that pursued a ‘frivolous’ infringement suit against YouTube Music.
The Supreme Court left standing a Ninth Circuit ruling that Walmart was not directly liable for copyright infringement in product photographs uploaded by a third-party drop-ship vendor, declining to resolve a circuit split over the volitional conduct test for online platform copyright liability.
The Supreme Court denied certiorari in CPC Patent Technologies’s challenge to the Federal Circuit’s use of Rule 36 summary affirmances without written opinions in patent appeals, leaving the controversial practice intact.
The Supreme Court denied certiorari in a DNA-sequencing patent malpractice case that highlights a structural problem in patent law: inventors can be bound by litigation outcomes through claim preclusion while courts simultaneously hold that no attorney-client duty was owed to them.
The Supreme Court declined to review a Federal Circuit decision holding that a consumer and law professor lacked statutory standing to challenge the registration of RAPUNZEL as a trademark for dolls, leaving in place a strict rule requiring trademark challengers to show a direct commercial injury.
The Supreme Court unanimously reversed a billion-dollar verdict against Cox Communications and held that an internet service provider is contributorily liable for user copyright infringement only when it induces the infringement or sells a service tailored to infringement. Mere knowledge that subscribers are infringing is not enough.
The Supreme Court unanimously held that an award of “defendant’s profits” under the Lanham Act is limited to the profits of the named defendant entity and may not include profits of legally separate affiliated companies, unless those affiliates are alter egos or otherwise liable.
The Supreme Court held that the Lanham Act’s restriction on registering marks that include a living person’s name without their consent is a content-based but viewpoint-neutral restriction that does not violate the First Amendment.
The Supreme Court held 6–3 that a copyright plaintiff who timely files under the discovery rule may recover damages for infringing acts occurring more than three years before filing, rejecting the argument that a separate three-year damages lookback window limits recovery.
The Supreme Court held that the Lanham Act’s trademark infringement provisions apply only to infringing use in commerce that occurs within the United States; foreign conduct is not actionable even if infringing products ultimately enter the U.S. market.
The Supreme Court held that when a defendant uses an allegedly parodic mark as a source identifier — as an actual trademark — the Rogers test for expressive works does not apply, and the ordinary likelihood-of-confusion analysis governs, with parody as a relevant but not dispositive factor.
The Supreme Court held 7-2 that the Andy Warhol Foundation’s commercial licensing of Warhol’s silkscreen portrait of Prince — based on a photograph by Lynn Goldsmith — was not fair use, because the commercial licensing purpose closely tracked the photographer’s own licensing market and the transformation was insufficient to override the significant commercial harm.
The Supreme Court held 6-3 that a copyright owner’s failure to know that a single registration application could not cover both published and unpublished works did not necessarily constitute a ‘knowing’ inaccuracy that voids the registration — allowing courts to overlook good-faith mistakes in copyright registration applications under 17 U.S.C. § 411(b).
The Supreme Court held 5-4 that assignor estoppel — the doctrine preventing a patent inventor who has assigned their patent from later claiming the patent is invalid — remains a valid doctrine, but only applies when there is a direct conflict between the invalidity position and what the inventor warranted in making the assignment.
The Supreme Court held 5-4 that the appointment of Administrative Patent Judges without Senate confirmation violated the Appointments Clause — but remedied the violation by making APJ decisions reviewable by the USPTO Director, rather than striking down the entire IPR system.
The Supreme Court held 6-2 that Google’s copying of approximately 11,500 lines of Java API declaring code to build the Android mobile operating system was fair use — holding that the declaring code’s function as an interoperability interface, combined with Google’s transformative use in a new computing environment, justified the copying.
The Supreme Court held that combining a generic word with “.com” does not automatically make the resulting term generic; whether a term is generic depends on consumer perception, and “Booking.com” is not generic for hotel reservation services.
The Supreme Court held 5–4 that Georgia’s officially adopted annotated code — including annotations prepared under legislative supervision — is not copyrightable under the government edicts doctrine, because works created by government officials exercising legislative or judicial authority belong to the public.
The Supreme Court held unanimously that a plaintiff in a trademark infringement case may recover the defendant’s profits under 15 U.S.C. §1117(a) without proving that the infringement was willful.
The Supreme Court held 7-2 that § 314(d)’s bar on judicial review of IPR institution decisions extends to determinations about the § 315(b) one-year time bar — meaning courts cannot review whether the PTAB incorrectly concluded that a petition was timely filed within the statutory one-year period after service of a complaint alleging infringement.
The Supreme Court unanimously held that Congress lacked constitutional authority to abrogate state sovereign immunity for copyright infringement under the Copyright Remedy Clarification Act, leaving rights holders without a federal damages remedy when states infringe their copyrights.
The Supreme Court unanimously held that the American Rule prevents the USPTO from recovering its attorney’s fees from unsuccessful applicants in § 145 civil actions, even though the statute requires applicants to pay “all expenses” of the proceeding.
The Supreme Court held that the Lanham Act’s prohibition on registering marks that are immoral or scandalous constitutes an unconstitutional viewpoint-based restriction on speech under the First Amendment.
The Supreme Court held that the federal government is not a ‘person’ eligible to petition for inter partes review, post-grant review, or covered business method review under the America Invents Act.
The Supreme Court held that the Copyright Act’s authorization of “full costs” under § 505 covers only the six categories of costs specified in the general federal costs statute — not additional litigation expenses like expert witnesses, e-discovery, and jury consultants.
The Supreme Court unanimously held that copyright registration “occurs” when the Copyright Office registers a claim — not when the applicant files — meaning copyright holders must wait for the Office to act before they can sue for infringement.
The Supreme Court held that the AIA preserved pre-AIA law on the ‘on sale’ bar: a confidential commercial sale of an invention more than one year before the patent application triggers the bar, even if the invention’s details remain secret.
The Supreme Court held that a patent holder can recover lost foreign profits as damages when a domestic act of infringement under § 271(f) caused those foreign profits to be lost.
The Supreme Court held 5-4 that when the USPTO institutes an inter partes review, it must adjudicate every claim challenged in the petition — rejecting the PTO’s practice of instituting IPR on only some of the challenged claims and leaving other claims unreviewable.
The Supreme Court held 7-2 that inter partes review does not violate Article III or the Seventh Amendment — because patents are public franchises granted by the government, which may reclaim or modify them through an executive agency proceeding without a jury trial, upholding the America Invents Act’s most powerful patent challenge mechanism.
The Supreme Court unanimously held that the Lanham Act’s prohibition on registering ‘disparaging’ trademarks violates the First Amendment — invalidating the PTO’s refusal to register THE SLANTS for an Asian-American band and establishing that trademark registration is a government benefit program subject to First Amendment viewpoint neutrality requirements.
The Supreme Court held 7-1 that authorized patent sales both domestically and abroad exhaust all U.S. patent rights in the sold item — eliminating Lexmark’s attempt to use conditional patent licenses to control post-sale use and the Federal Circuit’s rule allowing foreign sales to preserve domestic patent rights.
The Supreme Court held that the patent venue statute, § 1400(b), is the sole provision governing where patent suits may be filed, and that a corporation ‘resides’ only in its state of incorporation for patent venue purposes.
The Supreme Court held 6–2 that surface designs on cheerleading uniforms are copyrightable, establishing a new two-part separability test: a design element is protectable if it can be perceived as a work of art separate from the useful article, and would qualify for copyright protection if imagined independently.
The Supreme Court held 7-1 that laches cannot be used as a defense to patent infringement that occurred within the six-year statute of limitations — extending Petrella v. Metro-Goldwyn-Mayer (copyright) to patent law and eliminating a long-standing Federal Circuit precedent that had allowed laches to bar infringement suits brought years after the patent holder learned of the infringement.
The Supreme Court held that supplying a single component of a multi-component patented invention from the United States does not trigger liability under § 271(f)(1), which requires supplying ‘all or a substantial portion’ of the components.
The Supreme Court held that in design patent infringement, the infringer’s profits need not be calculated based on the entire end product; courts must identify the relevant ‘article of manufacture’ to which the design was applied.
The Supreme Court unanimously upheld the Patent Trial and Appeal Board’s use of the ‘broadest reasonable interpretation’ standard for claim construction in inter partes review proceedings — validating the PTO’s approach over patent holders’ objections that IPR should use the narrower claim construction applied in district court litigation.
The Supreme Court unanimously held that courts awarding attorney fees under the Copyright Act must give substantial weight to the objective reasonableness of the losing party’s litigation position, while retaining discretion to weigh all other relevant factors.
The Supreme Court unanimously overruled the Federal Circuit’s Seagate objective-recklessness test for willful patent infringement and enhanced damages under § 284 — holding that courts have broad discretion to award enhanced damages in egregious cases of deliberate or wanton infringement, without requiring proof of an objectively reasonable defense.
The Supreme Court reaffirmed the Brulotte rule that agreements requiring patent royalty payments beyond a patent’s expiration date are unenforceable as a matter of law.
The Supreme Court held 6-2 that a defendant’s good-faith belief that a patent is invalid is not a defense to induced infringement liability under § 271(b) — distinguishing between validity and infringement and holding that invalidity must be raised as a defense, not as a shield against the knowledge element of inducement.
The Supreme Court held that TTAB likelihood-of-confusion decisions on trademark registration can preclude relitigation of the same issue in a federal court infringement suit when the usages adjudicated are materially the same.
The Supreme Court held that appellate courts must apply clear-error review to subsidiary factual findings underlying patent claim construction, while legal conclusions remain subject to de novo review.