The US Supreme Court & Intellectual Property Law

This year the US Supreme Court decided a litany of intellectual property cases.

As to patents, the Supreme Court reviewed the Court of Appeals’ en banc decision in Click-to-Call vs. Ingenio. In Click-to-Call, the Federal Circuit decided that some time bars, under §315(b) for inter partes reviews, may be reviewable on appeal despite §314(d)’s language against appellate review of institution decisions. The Federal Circuit reasoned that prior lawsuits, which were dismissed without prejudice did not toll the one-year-from-complaint-receipt time limit under §315(b). The Supreme Court, however, reversed this holding, finding that the issue of time bar was “closely related” to an institution decision under Cuozzo; thus, §315(b) time bars should not be reviewed. Thryv v. Click-to-Call Technologies, Case No.: 18-916 (April 20, 2020).

A few years ago, the US Supreme Court articulated a test for determining whether an institution-related question is reviewable. Cuozzo. In Cuozzo, the Court indicated that reviewability was inversely related to institution. “[O]ur interpretation [on reviewability] applies where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the application and interpretation of statutes related to the Patent Office’s decision to initiate inter partes review.”

In Thryv, Justice Ginsberg writing for the Court reasoned that the issue of timeliness of the petition was very closely related to institution. Due to the integral nexus between the time bar and institution, Congress likely intended §314(d)’s provision against review to apply. The Court concluded this by assessing the plain language of §314(d) and §315(b). Section 314 creates a general rule against appeals, which on its face encompasses any decisions made essential to institution. The language of §315 instructs us under which circumstances institution is appropriate.

"Section 315(b)’s time limitation is integral to, indeed a condition on, institution. After all, §315(b) sets forth a circumstance in which ‘[a]n inter partes review may not be instituted.’…

Because §315(b) expressly governs institution and nothing more, a contention that a petition fails under §315(b) is a contention that the agency should have refused ‘to institute an inter partes review.’"

pp7-8 (emphasis given).

Interestingly, Justice Ginsberg brought up an additional practical consideration concerning the anti-review clause of §314. Its purposes are to reduce waste and litigious activity where litigants are unlikely to succeed on the merits anyway. Think about it, where intuition is denied (and review is sought) the petitioner is only seeking to continue their patentability gripes despite not demonstrating a likelihood of invalidating at least one claim under §314(a). Arguably, if one cannot meet this di minimus standard for institution, appeals are less likely to result in a final written decision—by the same body that denied institution—that invalidates all relevant claims. Likewise, where institution is granted and review is sought by the patent owner, relevant claims have been found unpatentable by the Board, as was the case here. Undoing the Board’s institution for time bar makes little practical sense where the Board has already opined that the patent is “bad” according to substantive patent law.

As to copyrights, Georgia et al. v. Public.Resource.Org involved a free online legal library that provided reproduced legal documents for public access. Case No.: 18-1150 (April 27, 2020). Public Resource Organization (or PRO), a non-profit, provided free reproductions of annotations to Georgia statutes. While under the government edicts doctrine copyright protection generally does not apply to government work product like judicial opinions or statutes, the question in this case was whether the exception to government authored works also extends to annotations?

The answer is yes. Annotations officially approved by a state legislature and having the force of law are ineligible for copyright protection.

"Rather than attempting to catalog the materials that constitute “the law,” the doctrine bars the officials responsible for creating the law from being considered the “author[s]” of “whatever work they perform in their capacity” as lawmakers.[] Because these officials are generally empowered to make and interpret law, their “whole work” is deemed part of the “authentic exposition and interpretation of the law” and must be “free for publication to all.” []

If judges, acting as judges, cannot be “authors” because of their authority to make and interpret the law, it follows that legislators, acting as legislators, cannot be either."

p8 (Chief Justice Roberts).

This decision has significant implications for legal commentators like Lexis/Westlaw. As was the case here, Lexis, contracted with the Georgia legislature to write the annotations. Apart from the fees for composing the annotations, the “authors” at Lexis would be more excited about leveraging their copyrights to the annotations by offering them for sale to the legal community. But, as discussed, Lexis cannot hold a copyright in government works and annotations officially adopted by the state constitute the same. Still, the Court made a distinction between the useful headnotes, syllabi and tables of contents from Lexis/Westlaw that we all typically enjoy; because these materials have no authority to speak with the force of law they cannot be considered government works.

In addition to extending governmental exclusion from copyright ownership, the Court also confirmed a state’s sovereign immunity under the Eleventh Amendment from copyright suit. Allen et al. v. North Carolina et al., Case No.: 18-877 (March 23, 2020). So, not only can states not own copyrights, they are unlikely to be liable for copyright infringement. Allen v. NC involved the state’s repetitive republication of a famous shipwreck’s photos. The Copyright Act includes a provision against state immunity. However, at the turn of the Century, the Supreme Court held that a similar provision under the Patent Code was unconstitutional. To remove sovereign immunity from the states, Congress must show a clear intent to do so and that doing so is allowable under the constitution. Here, congressional intent was clear based upon the plain language of the statute, but Congress’ actions were not constitutionally supported. Congress’ general duty to promote intellectual property interests under Article I, 8:8 did not provide adequate support given the Court’s 1999 precedent regarding the patent statute (Florida Prepaid). The 14th Amendment’s entitlement to due process can allow Congress to remove sovereign immunity but only where doing so passes a means-end test: “[t]here must be a congruence and proportionality between the injury to be prevented or remedied and the means adopted to that end.” quoting Boerne. Under SCOTUS precedent, the injury must be the result of more than mere negligence and have been done intentionally or recklessly; moreover, there must be some sort of pattern or substantial evidence to support the need for an unconditional removal of the immunity. Here, there was an absence of sufficient evidence to support the Copyright Act’s stout removal of state immunity. The expert report only included a dozen infringement examples by states, seven court cases and the expert admitted that infringement by states was “not widespread.” Accordingly, the Copyright Code’s blanket immunity alteration (a relatively broad, indiscriminate means), was out of proportion with the scant documented harms it sought to end via a 14th Amendment due process clause supersession of the 11th Amendment.

As to trademarks, the Court answered in the negative the question of whether willfulness is necessary to gorge profits from an infringer under the Lanham Act. Romag Fasteners v. Fossil et al., Case No.: 18-1233 (April 23, 2020). First, the Court examined the plain language of 15 USC §1125(a), which does not explicitly require a showing of willfulness to “recover [a] defendant’s profits.” Contradictorily, Congress did require willfulness in other sections of the Code, e.g., for recovery of treble damages, attorney’s fees or increases on the cap for damages, under §1117(b)&(c). Congress not including a willfulness clause in §1125(a) but doing so elsewhere suggests that it did not intend to make willfulness a requirement for compensation. Even when considering that traditional principles of equity on profits recovery require proof of intent—which alone would not necessarily overrule the mentioned-elsewhere-but-not-here canon against construction for inclusion [insert Latin 😊]—said equitable principles do not appear to have been endorsed by congress in §1125(a). E.g., while other sections of the Lanham Act clearly reference principles of equity, like laches and estoppel, §1125(a) does not refer to equitable principles at all. Finally, while legal precedent appears to find the mens rea of a bad actor relevant to infringement recovery, it is not clear that establishing intent is necessary for reparations.

Further, the Court decided US PTO v. Booking.com, holding that the use of an otherwise generic term with a suffix indicating Internet domain registration like “.com” could render the term non-generic. Case No.: 19-46 (June 30, 2020). Marks are required to have a certain degree of distinctiveness (and lack genericness). In the past, marks like “Goodyear Rubber Company” have been denied registration reasoning that the addition of the word “company” did not transform the generic reference to Goodyear rubber (made using the known Goodyear process) into a distinctive term. Justice Ginsberg distinguished Goodyear by first indicating that consumer confusion was very improbable in this case. E.g., users of Travelocity.com were very unlikely to confuse that website with Booking.com. Moreover, website domain registration is different than an incorporation designation, like company, in that only one registrant in the world wide web can own the domain at one time, thus consumers understand that websites are entity specific. Since the Lanham Act is primarily concerned with protecting consumers as to accuracy of the source of a good and websites are universally source specific, the addition of a domain suffix can allow the mark to sufficiently inform consumers as to source so as to be eligible for registration.