Supreme Court Analytics on the Past Term
Professor Edward Lee, IIT Chicago-Kent College of Law
Professor David Schwartz, IIT Chicago-Kent College of Law
Small sample! 6
patent cases from Fed. Cir., 5 reversed and 1 affirmed; 2 reversals in © cases;
1 reversal/1 affirmance in Lanham Act cases.
Overall 73% reversal of all cases incl. non-IP. Fed. Cir. may be special
case b/c circuit splits aren’t an issue so they may be more likely to take
cases they’re going to reverse. Alice was affirmed, but it was of a 6-6
ruling that upheld the district court.
And when Lanham Act case was affirmed, the Court rejected the test used
by the circuit court.
All 6 patent cases and both Lanham Act cases were unanimous;
both © cases were 6-3. Overall, Court
was 66% unanimous including non-IP.
Voting alignments: Ginsburg-Sotomayor-Kagan were 100% in majority and
together; other axes were Roberts-Kennedy-Breyer and Scalia-Thomas-Alito. SG
participation: SG on winning side 7 times, not in Pom Wonderful. Except in Alice, respondent received more
questions in oral argument (or the same number); losing side always got more
questions.
Rise in IP cases over last few years. Bounces around over last 50 years, but in last decade there’s a relatively large increase from 2-3 year to high water mark of 10 and 6-7 a few years in a row. Growth especially in patent cases.
Q: why?
Schwartz: Patent law is more in the news, possibly. Justices
think the Fed. Cir. is getting it wrong.
Patent bar is more active in persuading Court that patents matter—cf.
Kappos’s statement about the importance of IP to the economy.
Preview of the Upcoming Term: Cert. petitions granted &
to watch, Supreme Court IP practice
Hana Financial, Inc. v. Hana Bank (Whether the court or the
jury determines if use of an older mark may be tacked to a newer one.)
B&B Hardware, Inc. v. Hargis Industries, Inc. (Whether
the Trademark Trial and Appeal Board's finding of a likelihood of confusion
precludes respondent from relitigating that issue in infringement litigation,
and, if not, what deference should the trial court give to the TTAB finding.)
Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc. (Whether a
district court's factual finding in support of its construction of a patent
claim term may be reviewed de novo, as the Federal Circuit requires—and as the
panel explicitly did in this case—or only for clear error, as Federal Rule of
Civil Procedure 52(a) requires.)
Moderator: Professor Christopher Schmidt, Director,
Institute on the Supreme Court of the United States (ISCOTUS), IIT Chicago-Kent
College of Law
Panelists: Thomas Saunders, Counsel to POM Wonderful,
Partner, WilmerHale LLP: Hana, TM tacking.
Priority of use is very important. Shouldn’t sacrifice rights from small
adjustments to TM over time. Very strict
doctrine—some changes lead to lost ability to tack rights to prior mark. Two marks should be “legal equivalents” for
tacking purposes. Question: who makes
the determination, the judge or the jury?
9th Cir. says circuits take different approaches to whether
confusion is an issue of law or fact; we think the same sort of issues come
into play w/tacking so we say it’s an issue of fact. Watch for: (1) Unlike IP cases without a
split, this has a classic split and is harder to predict. (2) Because of the likely confusion overlap,
there’s a question of whether the back door issue of this case is how likely
confusion should be treated. The way the case is being argued tends to delink
those standards. Emphasis on the
particular aspects of tacking that might distinguish it. (RT: But the Court in IP cases often goes
beyond what the parties argued, as occurred in Wal-Mart, for example.)
B&B v. Hargis: TTAB deference. Prevailing party in TTAB says you’ve had your
chance to litigate so we win likely confusion if you don’t stop use. 8th Circuit says no. One argument: if you give deference to
another circuit whose confusion test differs somewhat, why wouldn’t you defer
to the TTAB even if its confusion test differs somewhat as well? So again, SCt may take up the broader issue
of what the likely confusion standard is—whether all the circuits’ tests are
essentially directed to the same thing even if they differ in wording.
Professor Peter Menell, University of California Berkeley
School of Law: Teva v. Sandoz: very important case about case management. Markman
déjà vu. Fed. Cir. held to the idea that
it was a question of law, though SCt called it “mongrel,” and treated it as
subject to de novo review. This has been very controversial in the Fed.
Cir. Dct judges claim vehemently that
this usurps their power/ability to put together a record and learn the science and
tech. Resulted in very high reversal rate, at least initially; come down quite
a bit, but not because the Fed. Cir. is now finding the dct gets the right
answer but is rather losing interest.
Fed. Cir. is reviewing cases with mixed questions w/o much of a record,
because dcts fear writing anything down.
A black box. SCt will answer
whether this is a Q of law. Do dcts have
a special role in finding factual Qs?
Dcts often don’t have special insight into what PHOSITA was like at the
time of prosecution.
Strongest argument for affirmance: a lot of big tech companies don’t trust district judges and want second bite at apple. He thinks that there should be a reversal but there’s a political element. Comes down to whether SCt thinks EDTex or Fed. Cir. is the more renegade jurisdiction. He thinks: ultimate question is mixed question, and Fed. Cir. can always review that—if dct diverges from prosecution history, for example. But subsidiary questions like what a skilled worker would know are issues of fact. Issues are often not technical in a scientific sense but in a patent drafting sense, and the Fed. Cir. and SCt haven’t confronted that. If reversed, dramatic effects on claim construction procedure: leeway to do evidentiary hearings and build a record.
Domenic Perella, Counsel to Highmark Inc.; Partner, Hogan
Lovells LLP: Layman’s perspective on Teva.
Meaning of a document = generally a question of law. If that’s not actually what goes on for
people on the ground construing a patent, that’s important to educate the Court
on, and he thought the topside briefs did a good job—what happened below was
not legal interpretation but gathering of facts.
Mark Perry, Counsel to CLS Bank International, Partner,
Gibson Dunn LLP: SCt has shown interest in nuts and bolts of federal
procedure/practice, and all these cases are about proper allocation of
authority of stakeholders in IP: jury/court, agency/court, dct/appellate court.
Past Term: statute of limitations, discovery, tolling—Court has a renewed
interest in these issues.
Jameson Jones, Counsel to Static Control Components,
Partner, Bartlit Beck LLP: Ultimately Teva may not give a lot of guidance; it
could say that the facts are very narrow—could be limited to “is molecular
weight calculable in a number of different ways?” How broadly you go with inferences from facts
as legal ultimately will determine importance of case.
Menell: a lot of Markman
cases are about ordinary terms interpreted in the context of the claim;
scientists may read differently than we do, whereas they often agree on the
meaning of exotic terms. It may be true
that statutory/contract interpretations rarely involve that kind of dispute
over meaning of terms, but patents do.
Constantine Trela, Jr., Counsel to Alice Corp.; Partner,
Sidley Austin LLP: Meaning of a term to a practitioner at the time is a legal issue b/c it’s the ultimate
issue in the case. If so, Fed. Cir.’s
legal sails may not be much trimmed.
Menell: Ultimate Q is how you take what people think and
nest it w/in the patent claim and specification. That’s where you get the room
for Fed. Cir. to intervene. Battle of
experts is something dcts deal with all the time.
Q: why so many IP cases?
Menell: Court engaging in gap-filling exercises. If you look at reform proposals from 10 years
ago, the AIA only dealt with ½ the issues; the others were dealt with by the
SCt or the Fed. Cir. SCt had ignored
patents but has now engaged; feel a responsibility to this area of the law. The
beatings will continue until people behave/until the sense that the patent
system is out of control dissipates.
Patent office has really cut back in the last year; there’s still enough
mischief out there to see more patent cases.
Harder to see systematic source of cases for © and TM.
Perella: surges occur in many kinds of SCt cases—criminal,
etc. Then the ripples dissipate. Similar
here.
Perry: disagrees. We’re watching a transformation of the
economy into information-based, tech-based and the stakes are so high that an
area of the law that used to be the province of subject matter experts in small
regional firms is completely different now.
Multibillion-dollar cases being litigated w/huge downstream
consequences. Congress has written into law a guarantee of litigation almost
impossible to settle as part of Hatch-Waxman, so now it’s part of the business
model. Cellphones: at each other hammer
and tongs. So much economic incentive to
sue.
Saunders: you get lots of reversals of the Fed. Cir. but
with a vague standard, which puts authority back into the hands of the Fed. Cir.
which has to interpret the standard in the average case.
No comments:
Post a Comment