The Supreme Court of the United States (SCOTUS) and the US Court of Appeals for the Federal Circuit (CAFC) have had a busy month as far as intellectual property cases are concerned. Today on IPcopy we have a handy overview courtesy of Wolf, Greenfield & Sacks, P.C. of what’s been baking the noodle of SCOTUS and CAFC recently. So in reverse date order here we go….

1) US Supreme Court case ABC v. Aereo (handed down 25 June 2014)

This fairly fact-specific and limited ruling makes it clear that a party capturing broadcast signals and retransmitting them online must obtain a license from the content owners.  It protects the rights of broadcasters to control their content and negotiate with service providers who may want to retransmit the broadcasters’ content online or elsewise.  There are already companies working to do this, and it is probably just a matter of time before companies similar to Aereo are operating on a large scale with the broadcasters’ blessings.

2) US Supreme Court case Alice Corporation Pty. Ltd. v. CLS Bank International (handed down June 19, 2014)

The unanimous decision is another incremental guidepost in the U.S. Supreme Court’s jurisprudence concerning patent eligibility. The decision is not the death knell for software patents as some were predicting. The Supreme Court clarified that abstract ideas are not limited to mathematical algorithms and preexisting fundamental truths, but also include fundamental economic practices, and implementing such abstract ideas using conventional techniques on a general purpose computer, with nothing more, is patent ineligible.

Disputes will now most likely revolve around the determination of whether or not a particular claim to a computer-implemented invention is directed to an abstract idea. Such disputes will occur not only in the courts, but are also likely in post grant proceedings and during patent prosecution at the U.S. Patent and Trademark office.

A full briefing from Wolf Greenfield on the Alice Corp v CLS Bank case can also be found here.

3) US Supreme Court case Pom Wonderful LLC v. The Coca-Cola Co (handed down June 12, 2014)

This ruling shows that the Federal Food, Drug, and Cosmetic Act (FDCA) and the Lanham Act are complementary, which means that a party in full compliance with the regulatory scheme established by the FDCA may still be sued by third parties for misleading advertising or labelling.  This opens the door to more litigation between competitors who believe a particular product misleads consumers to their detriment.  This should be good for consumers who now have both the FDA and private actors working to prevent deceptive marketing and labelling.

4) Federal Circuit case Consumer Watchdog v. Wisconsin Alumni Research Foundation (handed down 4 June 2014)

Background: US Court of Appeals for Federal Circuit (on June 4) dismissed an appeal by a consumer group aimed at invalidating a patent for human embryonic stem cells, finding the organization doesn’t have standing to bring the issue to court.

The Federal Circuit’s decision isn’t surprising in light of the focus on the standing issue during oral argument and the Federal Circuit’s subsequent invitation to the USPTO to submit a brief outlining the government’s position. (The PTO responded with a brief concluding that Consumer Watchdog lacked Article III standing to pursue the appeal.)

The Federal Circuit presumably will apply the same rule to inter partes review (IPR), post-grant review, and even opposition and cancellation proceedings involving the Trademark Trial and Appeal Board (TTAB). If so, it will be important for parties considering IPRs and other administrative proceedings to consider this issue (i.e., whether or not they will be able to appeal) in advance.

One unresolved question is whether future appellants challenging USPTO decisions will be able to establish standing simply by alleging that it is a “prospective” competitor and/or otherwise considering entering the relevant field and thereby facing the risk of an infringement suit. The Federal Circuit emphasized that Consumer Watchdog had not made any such allegation.

In the arguably analogous context of declaratory judgment cases, a plaintiff seeking to challenge a patent must make sufficient allegations of “immediacy and reality.” For example, a plan to launch a new product 5 years down the line typically will not justify a DJ suit.

However, the Federal Circuit’s decision implies that a somewhat more flexible standard may be appropriate in the context of the right to appeal an adverse USPTO determination. The USPTO’s amicus brief suggested something similar.

5) US Supreme Court case Nautilus v. Biosig Instruments (handed down June 2, 2014)

The decision will undoubtedly change how judges structure indefiniteness opinions. However, the impact on the underlying merits may be limited. The ‘reasonable notice’ standard announced today is something that the patentee itself had proposed. The accused infringer had sought a stricter standard, under which a claim would be indefinite whenever different readers could plausibly have different understandings. On remand, the Federal Circuit will likely stress the Supreme Court’s refusal to go that far. The decision may also make trial courts more favorably disposed toward expert testimony and by extension less likely to resolve indefiniteness challenges early in cases.

6) US Supreme Court case Limelight Networks v. Akamai Technologies (Decision handed down 2 June 2014)

Attorneys and their clients may spend significant time trying to divine if the Supreme Court is sending a message to the Federal Circuit or debating the proper interpretation of the statute, but the law is now clear. To prove induced infringement, there must be direct infringement by a single actor. For defendants, this may avoid a finding of infringement where this standard is not met. More importantly, the decision encourages patent attorneys and their clients to have clear, carefully crafted method claims where all recited steps are performed by a single economically important actor or potential competitor. A full briefing from Wolf Greenfield on this case can also be found here.

Wolf, Greenfield & Sacks, P.C.  26 June 2014