U.S. Supreme Court decisions
The Supreme Court held 6–3 that Aereo’s service — which captured over-the-air broadcasts using thousands of tiny antennas and streamed them to individual subscribers — performed copyrighted works publicly and infringed broadcasters’ exclusive public performance right.
The Supreme Court held unanimously that software claims directed to the abstract idea of intermediated settlement, implemented on a generic computer, are patent-ineligible under §101, and articulated the two-step Alice/Mayo framework now universally applied to §101 analysis.
The Supreme Court held that competitors may bring Lanham Act false advertising claims challenging product labels even when those labels have been approved or regulated under the Food, Drug, and Cosmetic Act.
The Supreme Court held that patent claims are indefinite and invalid if they fail to inform a skilled artisan with reasonable certainty about the scope of the invention, rejecting the Federal Circuit’s overly lenient ‘insolubly ambiguous’ standard.
The Supreme Court held 6–3 that the equitable defense of laches cannot bar a copyright infringement claim for damages filed within the Copyright Act’s three-year statute of limitations.
The Supreme Court held that appellate courts must review §285 exceptional case determinations for abuse of discretion — not de novo — deferring to district courts that are best positioned to evaluate litigation conduct over the life of a case.
The Supreme Court held that §285 ‘exceptional case’ fee-shifting requires only that the case stands out from others in the substantive strength of a party’s position or the unreasonable manner of litigation, rejecting the Federal Circuit’s rigid Brooks Furniture two-prong test.
The Supreme Court held unanimously that in a licensee’s declaratory judgment action for non-infringement, the patentee bears the burden of proving infringement — the same burden as in an ordinary infringement suit.
The Supreme Court held that naturally occurring DNA segments are products of nature and not patent-eligible, but that synthetically created cDNA is patent-eligible because it does not exist in that form in nature.
The Supreme Court held unanimously that the patent exhaustion doctrine does not permit a farmer to reproduce patented self-replicating seeds; exhaustion covers only the authorized sale of the original seeds, not progeny crops grown from them.
The Supreme Court held 6-3 that the copyright first sale doctrine applies to copies manufactured abroad and first sold outside the United States — allowing parallel importation of foreign-made goods bearing copyrighted content without the copyright holder’s permission, and overruling the Ninth Circuit’s geographic limitation on the first sale doctrine.
The Supreme Court held that the Hatch-Waxman Act permits generic drug manufacturers to bring counterclaims to correct overbroad Orange Book use codes that improperly block FDA approval for non-patented uses of a drug.
The Supreme Court held unanimously that patent claims directed to natural correlations between drug metabolite levels and therapeutic efficacy are patent-ineligible laws of nature, even when combined with conventional application steps, and established the foundational two-step Mayo framework.
The Supreme Court held 6–2 that Congress acted within its Copyright Clause power when it restored copyright protection to millions of foreign works that had fallen into the public domain in the United States, and that doing so did not violate the First Amendment.
The Supreme Court held that the Bayh-Dole Act does not automatically transfer title to federally funded inventions to universities; a researcher’s prior contractual assignment to a private company defeated Stanford’s patent claim.
The Supreme Court held that induced patent infringement requires knowledge of the patent, and that the willful blindness doctrine — deliberately avoiding confirmation of a high-probability fact — satisfies that knowledge requirement.
The Supreme Court held that the machine-or-transformation test is a useful but not exclusive test for patent eligibility under §101, and affirmed rejection of Bilski’s risk-hedging claims as unpatentable abstract ideas.
The Supreme Court unanimously held that the Copyright Act’s registration requirement is a claim-processing rule, not a jurisdictional prerequisite — meaning courts can hear copyright cases even when registration has not occurred, if neither party objects.
The Supreme Court held that the doctrine of patent exhaustion applies to method patents and that an authorized sale of a product that substantially embodies a patented method exhausts the patent holder’s rights — foreclosing downstream infringement suits against purchasers.
The Supreme Court unanimously rejected the Federal Circuit’s rigid teaching-suggestion-motivation (TSM) test for patent obviousness, holding that courts must apply a flexible, expansive analysis that recognizes multiple reasons why a person of ordinary skill might combine known elements.
The Supreme Court held that Microsoft did not infringe AT&T’s speech processing patents under § 271(f) when it shipped master discs of Windows to foreign manufacturers who then copied and installed the software — because software code, standing alone, is not a ‘component’ that can be ‘supplied’ from the United States for purposes of foreign-combination liability.
The Supreme Court held that a patent licensee need not terminate or breach its license agreement before seeking a declaratory judgment that the underlying patent is invalid or not infringed — a licensee under an active license has standing to bring such a challenge.
The Supreme Court unanimously held that courts must apply the traditional four-factor equitable test when deciding whether to grant a permanent injunction in a patent case, rejecting both a categorical rule granting injunctions to prevailing patentees and a categorical rule against injunctions for non-practicing entities.
The Supreme Court unanimously held that a patent does not by itself establish market power for antitrust tying purposes; plaintiffs must prove market power directly through evidence of the relevant market.
The Supreme Court unanimously held that Grokster could be liable for copyright infringement by inducing its users to infringe — adopting an inducement theory of secondary copyright liability and holding that a distributor who promotes infringing use through affirmative acts of encouragement can be held liable regardless of whether the technology has substantial non-infringing uses.
The Supreme Court held that 35 U.S.C. § 271(e)(1)’s safe harbor exempts from patent infringement all uses of patented compounds that are reasonably related to generating information for an FDA submission, including preclinical studies that do not themselves produce data submitted to the FDA.
The Supreme Court held that a defendant asserting classic fair use in a trademark case bears no burden to negate likelihood of confusion, and some degree of consumer confusion may coexist with a lawful fair use.
The Supreme Court held that the Lanham Act’s false designation of origin provision applies to the physical source of goods, not to the communicative content of expressive works — so unaccredited copying of a public domain film does not violate the Act.
The Supreme Court held 7–2 that the Sonny Bono Copyright Term Extension Act, which added 20 years to existing and future copyright terms, does not violate the Copyright Clause’s “limited Times” requirement or the First Amendment.
The Supreme Court held that the Federal Trademark Dilution Act requires proof of actual dilution of the famous mark, not merely a likelihood of dilution — a standard Congress later reversed by enacting the Trademark Dilution Revision Act of 2006.
The Supreme Court rejected an absolute bar to claiming equivalents after a narrowing claim amendment, instead establishing a flexible presumption that the patentee surrendered equivalents within the amended scope — rebuttable on three specific grounds.
The Supreme Court held that the Federal Circuit lacks appellate jurisdiction over a case when patent law appears only in the defendant’s compulsory counterclaim and is absent from the plaintiff’s well-pleaded complaint.
The Supreme Court held that utility patents under 35 U.S.C. § 101 may be issued to protect plants, including sexually reproducing crops, and that such patents are not displaced by the narrower protections of the Plant Variety Protection Act.
The Supreme Court held that when a product feature was the subject of a utility patent, that prior art disclosure is strong evidence the feature is functional and therefore unprotectable as trade dress under the Lanham Act.
The Supreme Court held that when the Federal Circuit reviews USPTO factual findings, it must apply the Administrative Procedure Act’s ‘substantial evidence’ standard — not the stricter ‘clearly erroneous’ standard applied to district court fact findings — changing the appellate review framework for patent examination decisions.
The Supreme Court unanimously established a two-part test for the on-sale bar to patentability under § 102(b) — holding that an invention is ‘on sale’ before the critical date when it is (1) the subject of a commercial offer for sale and (2) ready for patenting, resolving a circuit split about whether reduction to practice is required.
The Supreme Court unanimously reaffirmed the doctrine of equivalents and held that prosecution history estoppel applies even to unexplained claim amendments — establishing that when a patent claim is narrowed during prosecution without explanation, courts should presume the amendment was made for a patentability reason, creating estoppel that bars the doctrine of equivalents for that limitation.
The Supreme Court unanimously held that the interpretation of patent claims is a question of law for the judge to decide — not a question of fact for the jury — fundamentally establishing that patent claim construction (the Markman hearing) is a judicial function and marking a turning point in how patent trials are structured.