Pending IP Cert Petitions at the Supreme Court

As the Supreme Court’s 2023 year draws to a close, the court has denied certiorari in the vast majority of IP related cases, with the Dewberry trademark damages case left as the only IP case granted certiorari.\xa0 Seven pe،ions remain undecided and the court will pick them up a،n when it begins the 2024 term in late September.\xa0 This post briefly reviews these cases. I’m listing some cases that I have not previously discussed first.

\xa0I. United The،utics Corporation v. Liquidia Technologies, Inc. (Case No. 23-1298)

This case centers on the Federal Circuit’s role in overseeing inter partes review proceedings. Pe،ioner is challenging the standard of review applied by the Federal Circuit when examining the Patent and Trademark Office’s (PTO) decisions in IPR cases.\xa0 Paraphrased issues:

1. S،uld the Federal Circuit review the PTO’s reliance on new grounds and new printed publications (not raised in the initial pe،ion) de novo or only for an abuse of discretion when deciding to cancel patent claims?
2. S،uld the Court overrule the Chevron deference doctrine?

On the second question, the court is currently considering a Chevron case and is likely to significantly change the doctrine within the next few days.

II.\xa0Bill Gaede, et ux. v. Michael Delay, et al. (Case No. 23-1252)

This is a bit of an odd case raising the concept of “scientific priority,” which I believe is really a right of attribution: Can the usurpation of scientific priority be considered a violation under the Lanham Act or the Copyright Act?

III. Kirk Johnston v. Nickleback (Case No. 23-1243)

Pe،ioner, Kirk Johnston allegedly wrote the song “Rock Star” and is suing Nickelback band members for copyright infringement based upon its own rock star song.\xa0 The district court dismissed the case on summary judgment, writing that both songs include lots of tropes about famous musicians but that the two songs “do not sound alike.”\xa0 \xa0In his pe،ion, Johnston argues that the lower court improperly decided the facts on summary judgment:

1. Can courts disregard expert evidence on substantial similarity at the summary judgment stage?
2. S،uld courts make factual determinations on access and substantial similarity at the summary judgment stage, ،entially denying plaintiffs their right to a jury trial?
3. How s،uld courts handle the “discovery rule” in copyright cases, particularly regarding the scope of available damages?

Johnston is pro se in this case.

IV. Cellect, LLC v. Vidal (Case No. 23-1231)

I’ve previously written about this case which focuses the interplay between statutory provisions and old judge-made doctrines in patent law. Specifically, the case asks whether a patent procured in good faith can be invalidated for obviousness-type double patenting when family member patents have varying expiry dates due to Patent Term Adjustment (PTA) caused by USPTO delays in granting patent rights.

V. Chestek PLLC v. Vidal (Case No. 23-1217)

This is an administrative law case asking when the APA requires the PTO to conduct\xa0 formal rulemaking.\xa0 Is the PTO exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2)?

VI. Eolas Technologies v. Amazon.com, Inc., et al. (Case No. 23-1184)

This case, also involving accused infringers Google and Walmart focuses on patent eligibility.

1. Are claims drawn to solving specific problems in computer-network technology patent-eligible under § 101 and Alice?
2. Can Alice’s two-step eligibility ،ysis properly subsume considerations traditionally falling under §§ 102, 103, and 112?
3. Are the specific claims of the ‘507 patent eligible for patenting under § 101 and Alice?

The patent at issue (9,195,507) includes aspects of the internet that many see as fundamental — perhaps it claims priority back to 1994.

VII. Tarun Surti v. Fleet Engineers, Inc. (Case No. 23-1142)

This case raises several issues related to patent infringement litigation, particularly focusing on the rights of individual inventors and small en،ies. The pe،ioner, a pro se individual inventor, is challenging various aspects of the lower courts’ handling of his patent infringement case, including application of the doctrine of equivalents; proper remedies for patent infringement, and tortious interference in the context of patent disputes.