United States: Key SCOTUS Decisions In Tech – First Half 2017

Despite being short one justice for much of the year, the U.S. Supreme Court handed down multiple significant decisions this past term that can unsettle long-standing legal understandings in multiple technology fields. These rulings have involved everything from class actions to patents, trademarks and copyrights to the First Amendment. Fenwick's litigation group convened a working group to track these developments and unpack their potential impact on how tech and life sciences companies operate and do business.

The Supreme Court continued its streak of overturning established Federal Circuit law and overruled every patent decision that the Federal Circuit made. This included the Supreme Court's landmark ruling in TC Heartland that patent infringement lawsuits must be brought in the state where the defendant company is incorporated, which may effectively shut down lawsuits brought by non-practicing entities in the Eastern District of Texas.

Here is a round-up of articles that Fenwick lawyers prepared analyzing some of the Supreme Court's most relevant decisions this term and their potential impact on businesses. Please reach out to any of the authors with questions and concerns specific to your business.

First Amendment

Supreme Court Rocks the Trademark Office in "Slants" Case

Publications " June 20, 2017

By Armen N. Nercessian, Matthew B. Becker and Eric Ball

Reflecting the U.S. Supreme Court's willingness to strike down laws—even long-standing ones such as Section 2(a)'s disparagement bar—that discriminate based on viewpoint, the high court struck down the restriction on the registration of marks that "disparage" under Section 2(a) of the Lanham Act, 15 U.S.C. § 1052(a) in its ruling in Matal v. Tam (formerly Lee v. Tam).

Supreme Court Declares First Amendment Interest in Access to Social Networks

Publications " June 21, 2017

By Adi Kamdar,* Armen N. Nercessian and Tyler G. Newby

In Packingham v. North Carolina, one of the first cases to hint at the idea that access to online forums of expression is a protected right, the U.S. Supreme Court unanimously struck down a North Carolina criminal law that made it a felony for registered sex offenders to access social networking and other websites. The decision is a step toward guaranteeing a constitutional right under the First Amendment to access the internet.

*Adi Kamdar is a summer associate in Fenwick's litigation group.

Class Actions

Supreme Court Rejects Plaintiffs' Tactic for Appealing Class Certification Denials

Publications " June 13, 2017

By Rodger R. Cole, William L. Pierog and Molly Melcher

In its unanimous opinion in Microsoft Corp. v. Baker, the U.S. Supreme Court held that federal courts lack jurisdiction under 28 U.S.C. § 1291 to hear the appeal of an order denying class certification after plaintiffs voluntarily dismiss their claims with prejudice. The ruling will have a significant impact on lawsuits following a denial of class action certification.

Class Action Defendants Win Home Court Advantage in Supreme Court Ruling on Specific Jurisdiction in Bristol-Myers Case

Publications " June 26, 2017

By Tyler G. Newby and Reilly Stoler

In a decision that may be more significant for what it rejected than for what it held, the U.S. Supreme Court held in Bristol-Myers Squibb Co. v. Superior Court of California that neither the similarity of claims between in-state and out-of-state plaintiffs, nor the defendant's general contacts with a state can provide a basis for specific jurisdiction. Rather, the Court reaffirmed that "specific jurisdiction is confined to adjudication of issues deriving from, or connected with, the very controversy that establishes jurisdiction."

Patent

The Supreme Court Reverses Federal Circuit Ruling on Extraterritorial Patent Infringement

Publications " February 23, 2017

By Geoffrey Miller and Darren E. Donnelly

In an opinion that will likely give peace of mind to businesses shipping products from the U.S. abroad, a unanimous U.S. Supreme Court reversed the Federal Circuit in Life Technologies v. Promega, holding that a single component does not constitute a "substantial portion" of the components that can give rise to liability under 35 U.S.C. § 271(f). Patent applicants and licensors, on the other hand, will face added challenges to maintain the broadest protection available for inventions commercialized in other countries based on a U.S. component.

Supreme Court Extends Petrella Rule Barring Laches to Patent Context

Publications " March 27, 2017

By Armen N. Nercessian and Ewa M. Davison, Ph.D.

Overruling long-standing Federal Circuit precedent, the U.S. Supreme Court held that a patent defendant cannot invoke laches as a defense against damages where the infringement occurred within the six-year damages limitation period established by 35 U.S.C. § 286. What, if anything, remains of the laches defense in patent infringement cases?

Supreme Court Announces New Limits on Venue in Patent Cases, Blunting Key Troll Tool

Publications " May 23, 2017

By Michael J. Sacksteder and Athul Acharya

For nearly 30 years, patent plaintiffs have been able to bring infringement suits against most corporations almost anywhere in the United States. In its game-changing decision in TC Heartland LLC v. Kraft Food Group Brands LLC, the U.S. Supreme Court changed the dynamic simply by interpreting a single word in the patent venue statute. As a result, a corporation not organized under Texas law and without a "regular and established place of business" in the Eastern District is no longer amenable to suit there, raising the question of where will NPEs seek to assert their patents?

Supreme Court's Lexmark Decision Expands Scope of Patent Exhaustion Defense

Publications " June 2, 2017

By Charlene M. Morrow and Armen N. Nercessian

In Impression Products, Inc. v. Lexmark International, Inc., the U.S. Supreme Court reversed the Federal Circuit analysis concerning domestic and foreign sales, overturning more than two decades of precedent at the lower courts. Holding that "a patentee's decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale," the ruling has powerful implications for resellers and other patent defendants.

Copyright

Supreme Court Clarifies Copyright Eligibility for Useful Articles

Publications " March 23, 2017

By Jedediah Wakefield and William L. Pierog

In a ruling with implications for the fashion and apparel industries and beyond, the U.S. Supreme Court in Star Athletica v. Varsity Brands formulated a two-part test to determine when the design of a "useful article," such as the design of an article of clothing, qualifies as a "pictorial, graphic, [or] sculptural work" eligible for protection under the Copyright Act. The Court held that certain designs on cheerleader uniforms could be perceived as separate works of art and would qualify as independent graphic works if they were imagined separately from the uniform itself.

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