After the Senate's failure to move forward with Judge Garland's nomination to the Supreme Court, the conventional wisdom was that the Justices would shy away from politically sensitive cases that could lead to 4-4 splits, focusing instead on areas such as intellectual property in which cases tend to be unanimous. So far, that's spot on. The Court added a hot patent venue case to its docket this week, its seventh IP case for the Term so far. For those who have lost count, here's a quick round-up. You can also see my list of all Supreme Court patent cases back to 1952 here.
TC Heartland v. Kraft Food (cert granted Dec. 14): Does a change to the general federal venue statute affect the venue rule in patent cases? Most observers think this is the end of E.D. Tex.'s patent dominance—and perhaps the end of the incongruous Samsung ice-skating rink outside the Marshall, TX courthouse.
Impression v. Lexmark (cert granted Dec. 2): What's the rule for U.S. patent exhaustion after a "conditional sale" or after a sale abroad? I followed this case closely at the Federal Circuit, and I'll be posting more as the Supreme Court briefing comes in.
Lee v. Tam (to be argued Jan. 18): The USPTO denied registration of "The Slants" for an Asian-American rock band under the Lanham Act's bar on disparaging trademarks, and the Federal Circuit held that this provision is unconstitutional. SCOTUSblog will be starting an online symposium on Lee v. Tam this week.
LifeTech v. Promega (argued Dec. 6): Can supplying a single, commodity component be an infringing act under § 271(f)(1) leading to liability for all worldwide sales? The Federal Circuit said yes, but in his cert-stage brief, Prof. Tim Holbrook argued that "the Federal Circuit consistently fails to consider the presumption against extraterritoriality in interpreting the patent laws." Based on the argument, Prof. John Duffy predicts a reversal.
SCA Hygiene v. First Quality Baby Products (argued Nov. 1): When does laches bar a patent infringement claim brought within the 6-year statutory limitations period of 35 U.S.C. § 286? In Petrella v. MGM, the Supreme Court held that the equitable defense of laches (unreasonable delay) cannot bar copyright damages claims. After the SCA Hygiene argument, Prof. Ronald Mann seemed to think that this conclusion will be extended to patents as well.
Star Athletica v. Varsity Brands (argued Oct. 31): Does the useful article doctrine prevent copyright from being used against knockoff cheerleader uniforms? Briefs by IP profs Chris Buccafusco and Jeanne Fromer and by Mark McKenna, Mark Lemley, Chris Sprigman, and Rebecca Tushnet were discussed during the argument. After the argument, Prof. Ronald Mann noted that several Justices were concerned about "killing knockoffs" but was unsure whether they would converge on a single doctrinal explanation. (The argument also led to great headlines like: "Justice Breyer, the fashion maven, makes a colleague swoon.")
Samsung v. Apple (decided Dec. 6): In what is likely the most well known IP case this Term, as Michael Risch already noted, the Court held that the "article of manufacture" for design patent damages can be less than the end product sold to consumers—but left a lot of open questions for the Federal Circuit to work out.
This might not be all! There are also still plenty of other IP cases in the pipeline, such as Lenz v. UMC (the "dancing baby" DMCA case), for which the court called for the views of the Solicitor General on October 31, a case on nominative fair use in trademark law, and many others.
The likeliest addition to the docket is currently Amgen v. Sandoz, which the acting Solicitor General advised the Supreme Court to take. It would be the Court's first case on the Biosimilars Act (similar to the Hatch-Waxman Act, but for biologics rather than small-molecule drugs). In the fractured Federal Circuit panel decision below, Judges Lourie and Chen held that the Biosimilars "patent dance" is optional despite the mandatory-sounding "shall" language of the statute (over a dissent from Judge Newman), and Judges Lourie and Newman held that effective notice of commercial marketing (beginning an 180-day countdown) can only be given after the biosimilar has been approved for sale (over a dissent from Judge Chen, calling this an "extra-statutory exclusivity windfall").
