As a testament to the increasing value of intellectual property, the Supreme Court will tackle a significant number of IP cases this term. Out of the 48 cases currently on the Supreme Court’s docket for the October 2012 term, there are four key cases involving patents, copyrights, and trademarks.
While the number may still seem low to the casual observer, it reflects a growing rise in IP law cases before the Supreme Court. For example, ten years ago, the Court decided just 3 IP cases out of 73 opinions, according to SCOTUS Blog.
Below is a brief preview of the cases that will be decided this term:
Kirtsaeng v. John Wiley & Sons, Inc.: The Supreme Court will again tackle the legality of “gray-market” products manufactured overseas and resold in the U.S. The issue is that § 602(a)(1) of the Copyright Act prohibits the importation of a work "without the authority of the owner" of the copyright, while the first-sale doctrine allows the owner of a copy "lawfully made under this title" to sell or otherwise dispose of the copy without the copyright owner's permission. The specific question before the Court is how these provisions apply to textbooks that were made and legally acquired abroad and then imported into the United States to be resold.
Already, LLC v. Nike, Inc.: The Supreme Court will consider whether a federal district court is divested of Article III jurisdiction over a party's challenge to the validity of a federally registered trademark if the registrant promises not to assert its mark against the party's then-existing commercial activities. Federal Circuit precedent recognizes a patent holder’s right to divest a federal court of Article III jurisdiction over the defendant's request for a declaratory judgment of patent invalidity by promising not to file a lawsuit; however, the Ninth and Second Circuits are split on the issue.
Bowman v. Monsanto Co.: The Supreme Court will address the doctrine of patent exhaustion, which eliminates the right to control or prohibit the use of an invention after an authorized sale. In this case, the Federal Circuit refused to find exhaustion where a farmer used seeds purchased in an authorized sale for their natural and foreseeable purpose-namely, for planting. The question presented is: Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies?
Gunn v. Minton: The Supreme Court will consider how the "arising under" jurisdiction of the federal courts under 28 U.S.C. § 1338 applies to legal malpractice actions involving patents in light of a recent Federal Circuit decision. It found that state law legal malpractice claims against trial lawyers for their handling of underlying patent matters come within the exclusive jurisdiction of the federal courts.
We will be closely watching all of these cases. We invite you to check back for updates or contact us with any questions regarding how the decisions may impact you or your business.
At Sheldon Mak & Anderson, we recognize that innovation is your competitive edge - and it needs protection. As a nationally recognized and awarded full-service intellectual property firm with more than two decades of experience, we provide local, regional, national, and international legal services in the following areas: patents, trademarks, copyrights, trade secrets, IP litigation, international patent and trademark prosecution, licensing, alternative dispute resolution, and green technology.
Contact our knowledgeable intellectual property attorneys today TOLL FREE at 1-855-UR IDEAS (1-855-874-3327) or email us at tri@usip.com to find out how we can provide powerful protection for your unique ideas.
