April 2, 2007 The Supreme Court’s Renewed Interest in IP Ken Bass
Nov 29, 2014
April 2, 2007
The Supreme Court’s Renewed Interest in IP
Ken Bass
Who is this guy?
• Clerk for Justice Hugo Black (1969 Term)• Private Practice focusing on appellate cases
since 1970• Joined SKGF in 2000 • Adjunct Professor of Appellate Practice at
Georgetown• Past President American Academy of Appellate
Lawyers• Involved in Supreme Court Patent cases• Co-counsel in KSR v. Teleflex
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Looking Back at History
• The Supreme Court’s View of IP law in the early 1970’s– A technical, fairly arcane field– A subject of “lesser importance”– Judicial self-awareness of limitations
• The lack of regional consistency• The “National Court of Appeal”
movement
The Birth of the Federal Circuit
• The 1975 Conference on Appellate Justice
• The “National Court of Appeals”proposal meets resistance
• The focus shifts to a “specialized”nationwide court for patent cases
• The birth of the CAFC in 1982
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The Supreme Court’s Initial Reaction
• Wait and See
• IP issues remained of secondary
public importance
• The Court’s membership had not
changed all that much
• The “Percolation” Policy
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The Picture Begins to Change
• Markman v. Westlaw Instruments– April,1996
– 517 U.S. 370
– CAFC decision• Judges, not juries, decide issues of claim
construction
– Supreme Court decision• Agreed!
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An “Outlier” Contributes to Change
• Nelson v. Adams USA– April, 2000– 529 U.S. 460 – CAFC decision
• Attorney’s fees awarded against individual who in fact controlled the defendant corporation and was added as a party after trial
– Supreme Court decision (unanimous)• Improper to sanction someone not a party
at the trial and thus no sanctions can be imposed
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The Pace of Change Quickens
• Festo v. Shoketsu– May, 2002
– 535 U.S. 722
– The CAFC decision• Any amendment forecloses DOE
– The Supreme Court decision (unanimous)
• Flexibility restored
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The Pace of Change Quickens (cont.)
• Holmes v. Vornado– June, 2002– 535 U.S. 826 – The CAFC decision
• Per Curiam – the CAFC has appellate jurisdiction over patent counterclaims based on long-standing CAFC precedent
– The Supreme Court decision (unanimous)
• No you don’t!
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The Growing “Tension”
• eBay v. MercExchange– May, 2006– 126 S. Ct. 1837– The CAFC decision
• Final injunctions are almost automatic once there is a finding of infringement and validity
– The Supreme Court decision• No presumption of issuance, the same
rules apply as in all civil litigation• Two different thumbs on the scale
– Justice Kennedy– The Chief Justice
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The Growing Tension (cont.)
• MedImmune v. Genentech– January, 2007– 127 S. Ct. 764– The CAFC decision
• No Article III standing if a licensee in good standing contests patent validity
– The Supreme Court decision• There is an Article III case and
controversy (8-1 decision)
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• KSR v. Teleflex– ???? 2007– The CAFC decision
• Applied the well-established TSM test for determining obviousness as a first hurdle
– The arguments at the Supreme Court• Wide hostility to an absolute, first hurdle
approach
– What’s likely to emerge?
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What Does it All Mean?
• The Supreme Court has become engaged – once again – in IP issues
• The Supreme Court is not “happy” with the CAFC’s handling of patent issues
• The Supreme Court dislikes “bright-line”rules
• The Supreme Court avoids giving clear guidance on how patent cases should be decided
• The Supreme Court recognizes the central importance of IP in today’s “flat world” economy