12 May IP Litigation Quarterly Update | Miller Canfield
Introducing the IP Litigation Quarterly Update, a quarterly newsletter summarizing noteworthy and interesting opinions related to intellectual property law.
In this first edition covering the first quarter of 2020, the Supreme Court decided whether Congress had the authority to revoke state immunity from copyright infringement and declined to revisit what constitutes patentable subject matter under 35 U.S.C. § 101 and its Alice decision. The Federal Circuit discussed permissible considerations in obviousness determinations, took an in-depth look at inequitable conduct during patent prosecution, debated deference to opinions of the Precedential Opinion Panel at the Patent Trial and Appeal Board, and more.
Supreme Court of the United States: Opinions
Congress lacks authority to abrogate state sovereign immunity from copyright infringement suits. Allen v. Cooper, No. 18-877
In a 9-0 decision, the Supreme Court held that Congress lacked authority to revoke state immunity from copyright infringement suits under the Copyright Remedy Clarification Act of 1990 (“CRCA”). Frederick Allen spent nearly a decade documenting the recovery of a shipwreck off the North Carolina coast. North Carolina subsequently published Allen’s videos and photographs online. Allen sued for copyright infringement, and North Carolina moved to dismiss the suit based on state sovereign immunity. Allen countered that the suit was proper because Congress abrogated state sovereign immunity for copyright infringement lawsuits under the CRCA, and under Congress was permitted to abrogate state sovereign immunity under the Intellectual Property Clause in Article I of the Constitution.
The Supreme Court disagreed with Allen’s arguments based on its decision in Florida Prepaid Postsecondary Ed. Expense Bd. v. College Savings Bank, 527 U.S. 627 (1999). In Florida Prepaid, the Supreme Court held that Congress was precluded from using its Article I powers to circumvent limits of sovereign immunity in similar patent infringement lawsuits. Under the same reasoning, the Supreme Court held that Article I does not grant Congress the power to abrogate state sovereign immunity from copyright infringement lawsuits.
Supreme Court of the United States: Certiorari Grants and Denials
Supreme Court continues trend of denying petitions for certiorari on questions regarding patent eligible subject matter.
The Supreme Court continued its trend of denying certiorari for cases involving patent eligibility under 35 U.S.C. § 101.† Dating back to the Alice decision in 2014, the Supreme Court has denied nearly 50 petitions for certiorari requesting clarification of Section 101. The appropriate analysis for questions involving patent-eligible subject matter remains the two-step test articulated by the Supreme Court in Alice and Mayo. See Alice Corp. Pty. Ltd. v. CLS Bank Intern., 573 U.S. 208 (2014); Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012).
† See, e.g., HP Inc. v. Steven E. Berkheimer; Hikma Pharmaceuticals v. Vanda Pharmaceuticals; Power Analytics Corp. v. Operation Technology, Inc.; Garmin USA, Inc. v. Cellspin Soft, Inc.; Athena Diagnostics, Inc. v. Mayo Collaborative.
Supreme Court declines to address whether state sovereign immunity applies at the Patent Trial and Appeal Board. Regents of the University of Minnesota v. LSI Corporation, No. 19-337
The Supreme Court declined to address whether state sovereign immunity applies at the Patent Trial and Appeal Board. The University of Minnesota’s petition followed a June 2019 decision in which the Federal Circuit held that the University is not protected by state sovereign immunity from inter partes review petitions filed against its patents.
Supreme Court declines to address Federal Circuit’s extensive use of Rule 36 to issue one-line judgments. Straight Path IP Group, LLC v. Apple Inc., No. 19-253
The Supreme Court declined to address the Federal Circuit’s extensive use of Rule 36(e) to issue brief, one-line judgments. Rule 36(e) of the Federal Circuit’s Rules of Practice allows the Circuit to “enter a judgment of affirmance without opinion” when the opinion has no precedential value and the judgment “has been entered without an error of law.” Straight Path argued that the one-line judgments frequently issued by the Federal Circuit under Rule 36(e) violate the Fifth Amendment.
Federal Circuit: Infringement and Invalidity
General knowledge can be used to supply missing claim limitations in an obviousness determination. Philips v. Google & Microsoft, No. 2019-1177 (Fed. Cir. Jan. 30, 2020) (Precedential Opinion)
In 2016, Microsoft and Google challenged Phillips’ U.S. Patent No. 7,529,806 (“the ‘806 patent”) in an inter partes review (“IPR”). The PTAB found that claims 1-11 were obvious in light of two pieces of prior art. On appeal, Phillips argued that the Board impermissibly relied upon “general knowledge” to supply a missing claim limitation because 35 U.S.C. § 311(b) limits prior art in IPRs to patents or printed publications. In its decision, the Federal Circuit explained that Phillips’ argument ignored a critical component of the 35 U.S.C. § 103 obviousness inquiry—whether “the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art.” (Emphasis added). General knowledge, therefore, is not considered prior art but instead corresponds to the person having ordinary skill in the art.
The Federal Circuit also distinguished its seemingly contradictory holding in Arendi S.A.R.L. v. Apple et al., 832 F.3d 1355, 1361 (Fed. Cir. 2016) where the Court cautioned against invoking common sense “to supply a limitation admittedly missing from the prior art.” The Federal Circuit clarified that in Arendi the Board relied on nothing more than “conclusory statements and unspecific expert testimony” in its finding of obviousness. However, here, the Board instead relied on corroborated, expert evidence describing the general knowledge of a skilled artisan. Use of general knowledge to supply a missing claim limitation of the ‘806 patent was therefore permissible, and the Board’s decision was affirmed.
Inherent properties can be used to support an obviousness determination. Hospira Inc. v. Fresenius Kabi USA, LLC, No. 2019-1329 (Fed. Cir. Jan 9, 2020) (Precedential…