This week at the Supreme Court

by Dennis Crouch

Oral Argument set for October 7, 2020 in Google v. Oracle

  • (1) Whether copyright protection extends to software code and the organizational structure of a programming language; and
  • (2) Whether, as the jury found, the petitioner’s use of a software interface in the context of creating a new computer program constitutes fair use.
  • What is the role of the Jury in deciding fair use? (Raised by the Court)
  • What is the role of patents in the protection of a software code? (Raised by Crouch)

Certiorari Denied:

  • Following its first conference, the Supreme Court has denied certiorari in a number of patent cases.  In particular, the court has denied certiorari in all the patent cases ready-for-conference with the notable exception of the Arthrex cases focusing on appointments clause issues are still pending.
  • Still Pending: 
    • Constitutional challenge to Admin Patent Judges: United States v. Arthrex, Inc., No. 19-1434; Smith & Nephew, Inc. v. Arthrex, Inc., No. 19-1452; Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1458; Polaris Innovations Limited v. Kingston Technology Company, Inc., No. 19-1459.  These cases remain the most likely for certiorari. 
  • Denied:
    • Retroactive application of IPR to already applied-for patents: Arthrex, Inc. v. Smith & Nephew, Inc., No. 19-1204.
    • AIA Challenge: Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., No. 19-1451;
    • Divided Infringement and 271(g): Willowood, LLC v. Syngenta Crop Protection, LLC, No. 19-1147.
    • Federal vs State Law for Patent Licensing: Cheetah Omni LLC v. AT&T Services, Inc., No. 20-68.
    • Right to a Jury Trial on Specific Performance of FRAND license: TCL Communication Technology Holdings Limited v. Telefonaktiebolaget LM Ericsson, No. 19-1269.
    • Patent Eligibility: The Chamberlain Group, Inc. v. Techtronic Industries Co., No. 19-1299.; Thomas v. Iancu, No. 19-1435; Primbas v. Iancu, No. 19-1464; Morsa v. Iancu, No. 20-32.
    • Due Process Issues Regarding Sua Sponte Judicial Order: Ameranth, Inc., Petitioner v. Domino’s Pizza, LLC, No. 19-1351.
    • Appealing IPR Termination:BioDelivery Sciences International, Inc. v. Aquestive Therapeutics, Inc., fka MonoSol RX, LLC, No. 19-1381.
    • Power of PTO To Exclude Patent Attorney: Polidi v. Lee, No. 19-1430; Piccone v. United States Patent and Trademark Office, No. 19-8844.
    • Obviousness – Nexus for Secondary Indicia: SRAM, LLC v. FOX Factory, Inc., No. 20-158.

This Week’s Conference: 

  • Voiding a patent after a damage award: Phazzer Electronics, Inc. v. Taser International, Inc., No. 19-1378
  • Arthrex Appointments Issue: Essity Hygiene and Health AB v. Cascades Canada ULC, et al., No. 20-131; ESIP Series 2, LLC v. Puzhen Life USA, LLC, No. 20-228; Customedia Technologies, LLC v. Dish Network Corporation, et al., No. 20-135 (also eligibility question)
  • Trade Secret Inventorship Question and Federal Jurisdiction: Acer America Corporation, et al. v. Intellisoft, Ltd., (Bruce Bierman), No. 20-313.

Response Requested:

  • The “Respondent” has a right to file a response to a petition for writ of certiorari.  However, as a strategy (and money saving device), many repondents waive their right. In cases of interest, the Supreme Court will often request a response.  However, the request for response need only be requested by a single Justice. And, some of the justices have reportedly given authority to their law clerks to file the request.
  • Recent CFR’s
    • Are the Fed. Reserve Banks “People” or “the Government”: Bozeman Financial LLC v. Federal Reserve Bank of Atlanta, et al., No. 20-333
    • Reasonable Royalty and Apportionment: Cochlear Corporation, et al. v. Alfred E. Mann Foundation for Scientific Research, et al., No. 20-362
    • Notice and Damages: Arctic Cat Inc. v. Bombardier Recreational Products Inc., et al., No. 20-355


11 thoughts on “This week at the Supreme Court

  1. 5

    It’s obviously a scam if Top Court grants cert. on Arthrex when my case is the law of the case now at the CAFC
    with the precise question that swallows all the question proposed
    “Whether it was Congress intent that the panel members of both the Patent and Trademark Appeal Board consist of principle officers” (at least 2 out of 3 -one AJ app by the Sec. Commerce
    That is the question
    2001-2002 SB 320 as amended SA 2162 section 2-3 of 10 sections passed both houses but 2-3 went missing when reaching the president enacting HR 2215

  2. 3

    If Oracle wins, it will be interesting to see if it is ultimately a Pyrrhic victory as they stand accused by others of doing the same thing that Google did.

  3. 2

    The cert denial for the eligibility questions was just about the most predictable outcome ever. As I have said before, if they were not interested in taking Ariosa v Sequenom, they are just not interested in revisiting this issue.

    I do not like it, but the idea that there could be a §101 case whose outcome is so absurd and embarrassing that the SCotUS will feel obliged to take it is a dream. They are not bothered by the absurdity or by the untoward policy consequences. Do not look to the SCotUS for the resolution to this mess. The SCotUS exists to make bad patent law, not to fix it.

  4. 1

    What is the role of patents in the protection of a software code? (Raised by Crouch)

    Wrong question.

    At least, not the better question of how should different elements of IP law that are provided to protect different aspects of innovation be handled when an item has multiple aspects.

    Copyright – protects expression.
    Patents – protect utility.

    To ignore that software has both aspects (and thus may well earn protection under multiple different sections of law) is more than a bit disingenuous.

    1. 1.1

      I don’t think Dennis is ignoring that a particular piece of software code can be protected by multiple forms of IP. A particular piece of software functionality could theoretically be protected by copyright, patent, trade secret, trademark/trade dress, contractually-created rights, you name it.

      Dennis’ comment brings to mind the much more interesting issue of the historical relationship between copyrights and patents in the software era. The big rise of patent law in the 1990s as a means to protect software almost exactly coincided to issuance of decisions by federal appellate courts that largely eviscerated copyright law as a way to protect software functionality and graphical user interfaces. (One of the most famous being, of course, Apple. v. Microsoft, but there are several others.) The technology industry has now operated for more than 25 years under the assumption that higher level functionalities, like the ones at issue in Oracle/Google, were the purview of patent and not copyright law. The Oracle case upset those expectations. What’s even worse, if the Java functionality at issue in the case had been patented, those patents would have expired years ago. But if they remain eligible for copyright protection, they’ll have many more decades of protection.

      1. 1.1.1


        I will give you more credit than Crouch, per the historical dichotomy that you bring up (while also recognizing the point that I provided).

        What is interesting here is that the ‘anti-innovation-pundits’ have played off an alternating “that should be protected under the other thing” gambit while seeking to deny protection under ANY aspect of IP protection.

        We ALL would have been better off ALL ALONG had we (the Royal We) simply stood up for strong IP protection in each of the various aspects.

        That would have been the (only) consistent thing to have been done.

        Where are the academic pundits on that point?

      2. 1.1.2

        I don’t think Apple Computer, Inc. v. Microsoft Corporation, 35 F.3d 1435 (9th Cir. 1995), was as anti-software-copyright as that. Apple sought to stop Microsoft and Hewlett-Packard from using visual graphical user interface (GUI) elements that were similar to those in Apple’s Lisa and Macintosh operating systems. The court ruled that “Apple cannot get patent-like protection for the idea of a graphical user interface, or the idea of a desktop metaphor [under copyright law]..” Note the words “patent-like.” But underlying this decision was that that Mac’s GUIs were were heavily based on Xerox’s.


            It can be spun even simpler than that:

            Infringement is merely a business risk (not any type of affront to personal property); and all business risks (from the realm of contract law and the like) should be subject to “efficiency” considerations.

            This path leads (and quickly so) to the notion that Efficient Infringement is not only possible — but is the correct path to be being taken — regardless of any detrimental effects to innovation.

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