Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to granted cases, a merits brief and an amicus brief were filed in Vidal v. Elster, a trademark case concerning the First Amendment. With respect to petitions, three new petitions were filed with the Court in two patent cases addressing eligibility and prosecution laches respectively and in a takings case. Additionally, waivers of right to respond were filed in the patent case addressing prosecution laches and in a pro se case, and a supplemental brief was filed with the Court in a patent case addressing eligibility. Finally, three amicus briefs were filed in a patent case addressing judicial review of determinations whether to institute inter partes review proceedings. Here are the details.
In Vidal v. Elster, Elster submitted his merits brief. In this case, the Supreme Court is considering whether the U.S. Patent and Trademark Office’s “refusal to register a mark under Section 1052(c) [of the Lanham Act] violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.” In his brief, Elster argues that, because “no one would ever consent to the registration of speech that insults them, Section 1052(c) effectively precludes the registration of all marks that disparage or criticize living people.” According to Elster, the government “concedes that the right of publicity does not trump Elster’s First Amendment right to express his political message on T-shirts.” Elster asserts more broadly that “[n]o legitimate governmental interest justifies the law’s content- and speaker-based regulation of speech.” Thus, Elster argues, this clause is “unconstitutional as applied here.”
Additionally, in the same case, the Foundation for Individual Rights and Expression filed an amicus brief. In its brief, the Foundation asserts that “favoring positive rather than negative messages about a named person is Section 1052(c)’s only meaningful function.” Thus, according to the Foundation, “Section 1052(c) . . . does precisely what th[e] [Supreme] Court has held a trademark-registration bar may not.” Further, the Foundation contends, Section 1052(c) “confers heightened protection against criticism on those with the greatest capacity to respond—precisely the opposite of the usual First Amendment rule.”
Three new petitions were filed with the Court.
In ChromaDex, Inc. v. Elysium Health, Inc., a patent case, the Court was asked to review the following question:
- “Whether the two-step Alice/Mayo framework governs the eligibility of patents allegedly directed to natural phenomena.”
In Personalized Media Communication, LLC v. Apple Inc., another patent case, the petitioner presented the following questions for review:
- “Whether prosecution laches can be based on an applicant’s prosecution of a patent application in compliance with the PTO’s docket-management decisions.”
- “Whether the doctrine of prosecution laches, as articulated by the Federal Circuit, is a valid patent-infringement defense in light of SCA Hygiene.”
In Salazar v. AT&T Mobility LLC, a takings case, Salazar presented the following question:
- “Where the Federal Circuit Panel’s construction of petitioner’s patent claim was unforeseeable and unjustifiable under the circuit’s prior decisions, disrupting petitioner’s legitimate investment-backed expectations and rendering his and similarly situated patent owners’ patents worthless, does the Panel’s precedential opinion constitute a judicial taking of property in violation of the Fifth Amendment’s Takings Clause?”
Waivers of Right to Respond
Apple Inc. waived its right to respond to the petition in Personalized Media Communication, LLC v. Apple Inc., the patent case already mentioned addressing prosecution laches.
- “Does the Supreme Court’s holding of Amgen v. Sanofi, 598 U.S. ____ (2023) demonstrate that Article III courts have erroneously conflated patent eligibility under Title 35 U.S.C. § 101 with the enablement requirement of Title 35 U.S.C. § 112(a) given that every exception to patent eligibility created by the courts relies on O’Reilly v. Morse, 15 How 62 (1853), which Amgen describes as relating to enablement?”
- “Does the Supreme Court’s holding of Amgen v. Sanofi demonstrate Petitioner Killian’s assertion that the exceptions created by Article III courts of Title 35 U.S.C. § 101 exceed the constitutional authority of the courts?”
In this brief, moreover, Killian asserts “Amgen v. Sanofi . . . makes clear that Article III courts have no authority to add or subtract from the requirements of Title 35 of the United States Code.” Killian argues “the authority relied upon by Article III courts” to assert this ability is “directed to the enablement requirement of Title 35 U.S.C. § 112(a) rather than patent eligibility under Title 35 U.S.C. § 101.” Killian maintains that this misdirection has caused these courts to “turn issues of fact into issues of law,” which allows judges to “routinely ignore evidence and any inconvenient scientific principle to come to conclusions having no basis in truth.”
Three amicus briefs were filed in Intel Corp. v. Vidal, a patent case requesting the Court consider “whether 35 U.S.C. § 314(d), which bars judicial review of ‘[t]he determination . . . whether to institute an inter partes review,’ applies even when no institution decision is challenged to preclude review of PTO rules setting standards governing institution decisions.” All of the amicus briefs support the petitioners: