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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 violates 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 pending 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.

 

Patents:

·         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.

Copyright:

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

o    Fourth Estate Public Benefit Corporation v. Wall-Street.com, 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.

Trademarks:

·         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 support a 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. Amazon.com, Inc., No. 16-1549.​