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Supreme Court 2017-2018 Term Faces Review Requests on Variety of IP Issues

The Supreme Court will open its 2017-2018 term on October 2, 2017, with requests to review a number of significant IP issues.  Already accepted for review is whether patent review by the Patent Trial and Appeal Board under the AIA constitutes a violation of the separation of powers doctrine and the Seventh Amendment right to a jury trial. Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712. Several petitions for review have raised the same issue.  


Below is a sampling of the patent, copyright and trademark issues that have been presented to the Court in recent petitions for certiorari.


·         Must the specification be considered in deciding Section 101 patent eligibility?

o    Synopsys, Inc., v. Mentor Graphics Corporation, No. 16-1288.

·         Does inter partes review under the AIA violate the separation of powers? [Oil States issue]

o    Celgard, LLC v. Matal, No. 16-1526.

o    Paice LLC, v. Ford Motor Company, Nos. 17-110, 17-111, 17-112, 17-113.

o    Affinity Labs of Texas, LLC, v. Samsung Electronics Co., Ltd., No. 17-116.

o    Arunachalam v. SAP America, Inc., No. 16-1442.

·         Must "known interchangeability" evidence be considered for Section 112(f) equivalence and doctrine of equivalence issues?

o    Tomita Technologies USA, LLC v. Nintendo Co., Ltd., No. 17-292.

·         Does the performance of one or more steps of a patented process by multiple independent entities constitute direct infringement under 35 U.S.C. 271(a)? [Akamai issue]

o    Voter Verified, Inc. v. Election Systems & Software LLC, No. 16-1505.


·         Does an infringement suit require an issued copyright or is a filed copyright application sufficient?

o    Fourth Estate Public Benefit Corporation v., LLC, No. 17A150.

·         Does vicarious liability require proof that plaintiff's work was the reason customers were drawn to defendant's business?

o    Perfect 10, Inc. v. Giganews, Inc., No. 17-320.

·         Does a copyright cause of action accrue from the date of injury or date of discovery?

o    Olenicoff v. Wakefield, No. 17-56.

·         Did Aereo eliminate "volitional conduct" as a prima facie element of a copyright infringement case against an ISP.

o    BWP Media USA, INc. v. T&S Software Associates, Inc., No. 17-122.


·         Is the balancing of likelihood of confusion factors a question of law or fact?

o    Kibler v. Hall, No. 16-1365.

·         Is the test for a parody use of a mark consistent with the trademark dilution statute?

o    Louis Vuitton Malletier, S.A. v. My Other Bag, Inc., No. 17-72.

·         Does failure to plead trademark rather than descriptive use require 12(b)(6) dismissal?

o    Kassa v. Detroit Metro Convention & Visitors Bureau, No. 16-1512.

·         Is an on-line provider liable for counterfeit sales by third party?

o    Hart v., Inc., No. 16-1549.​​​