Supreme Court Patent Law Outlook 2022

by Dennis Crouch

For the first time since 2008, the Supreme Court’s October 2021 term will come to a close without any patent decisions.  I have included a chart below, but should note that there is some debate around the edges about what constitutes a “patent decision.” Here is my list: SCTPatentCases.

In addition, the Court has also not granted writ of certiorari in any pending cases. Thus, it is entirely possible that the October 2022 term will come and go without any patent decisions.  The only IP centric case that has been granted certiorari is Andy Warhol Foundation for the Visual Arts, Inc. v. Goldsmith, reviewing a Second Circuit copyright decision on the issue of transformative fair use.

Still, there are a number of important pending petitions that could also be transformative in the patent law construct, including four cases with outstanding calls for the views of the Solicitor General (CVSG).  I have divided the pending cases into three general categories:

Patentability:

  • Eligibility under Section 101American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891 (CVSG requested May 3, 2021); Also, Universal Secure Registry LLC v. Apple Inc., et al., No. 21-1056; Interactive Wearables, LLC v. Polar Electro Oy, et al., No. 21-1281.; and Ameranth, Inc. v. Olo, Inc., No. 21-1228.
  • Scope and Procedure for the Enablement Requirement: Amgen Inc., et al. v. Sanofi, et al., No. 21-757 (CVSG requested April 18, 2022);

Infringement and Damages:

  • Do Enhanced Damages Require “Egregious Behavior”Cisco Systems, Inc. v. SRI International, Inc., No. 21-1267.

Procedure:

  • Prior art in Inter Partes Review: Baxter Corporation Englewood v. Becton, Dickinson and Company, No. 21-819 (use of expert testimony to fill gaps in the prior art).
  • Using Claim Construction to Undermine Jury DecisionsOlaf Sööt Design, LLC v. Daktronics, Inc., et al., No. 21-438 (CVSG requested October 4, 2021).
  • Appellate Standing for IPR Challenger & LicenseeApple Inc. v. Qualcomm Incorporated, No. 21-746 (CVSG requested February 22, 2022); also Apple Inc. v. Qualcomm Incorporated, No. 21-1327.
  • Res Judicata and the Patent-Specific Kessler DoctrinePersonalWeb Technologies, LLC v. Patreon, Inc., et al., No. 20-1394 (CVSG submitted, agreeding that Federal Circuit erred, but suggesting that this is not an appropriate case).

Most of these petitions will be decided by the end of June 2022, although the cases awaiting Gov’t amicus brief will likely be delayed until the Fall 2022.

19 thoughts on “Supreme Court Patent Law Outlook 2022

  1. 6

    Totally off-topic, but there were three mandamus decisions for the WD Tex today. Apple won a transfer to the ND Cal, but Canon lost two petitions for transfer to EDNY.

  2. 5

    Totally off-topic, but I have noticed a substantial uptick lately in voluntary dismissals of CAFC appeals, especially appeals from the PTO. Anyone know what is behind that?

    1. 5.1

      No idea, but isn’t pre-appeal settlements the usual reason for voluntary dismissals of CAFC appeals?

      1. 5.1.1

        I assume so, but that does not really answer the question, it just moves it off one degree. What accounts for the recent uptick in pre-appeal settlements?

  3. 4

    For the first time since 2008, the Supreme Court’s October 2021 term will come to a close without any patent decisions.

    Thank heaven for that. I—for one—would be perfectly content if the 2022, 2023, 2024, & 2025 terms were equally barren of patent cases. No good comes from the SCOTUS taking an interest in patent law.

    1. 4.1

      Recent Supreme Court terms have been an object lesson in why “may you live in interesting times” is a phrase regarded as a curse.

  4. 3

    I’m rooting for SCOTUS to take Cisco v. SRI and answer “No. In fact, enhanced damages should be the norm after the defendant has been put on notice of the patent”

    While admittedly not likely, it would be an elegant solution to the “efficient infringer” mess created by SCOTUS’s previous decisions.

    1. 3.1

      Wouldn’t that take a sea-change in the anti-patent view of the Court?

      (Mind you, I too would applaud an anti-Efficient Infringer mindset)

      1. 3.1.1

        It’s unlikely to get cert from this court.

        The case would be a bit awkward for SCOTUS b/c they claim to be pro-textualism / pro-traditional cannons of statutory construction, and the basic argument here is pretty simple i.e., 285 is limited to exceptional cases, 284 contains no such language, thus 284 enhanced damages ‘should’ be more broadly available.

        1. 3.1.1.1

          I hear you and concur.

  5. 2

    The 2010 to 2020 “hump” in Sup. Ct. patent cases can be at least partially attributed to disputes relating to the major new patent law changes of the AIA, which should be about over by now.

    1. 2.1

      Not seeing this point either, Paul.

      Which aspect of the AIA did you have in mind as being “partially attributable?”

  6. 1

    So what is the delay in getting the solicitor general’s brief in American Axle?

    I have to admit, I kinda expect the SCt to affirm AA, and throw even more muck into 101.

    1. 1.1

      I would think “the delay in getting the Solicitor General’s brief in American Axle” would be waiting for the views of the finally-installed new PTO Director?

      1. 1.1.1

        Why was the SG brief in PersonalWeb filed on April 8th?

        1. 1.1.1.1

          The SG’s office decided to file it without the support of the PTO.

        2. 1.1.1.2

          Was it because that PersonalWeb case issue, unlike American Axle, would not impact the PTO, and the Solicitor is suggesting that that case is not an appropriate case for the Supremes to take?

          1. 1.1.1.2.1

            In Samsung v. Apple from a few years ago, there appeared to be no impact on the PTO. Nevertheless, the PTO signed on to the brief.

            link to justice.gov

            link to justice.gov

      2. 1.1.2

        The DOJ proceeded without the USPTO having that person in place.

        Not seeing the restraint you suggest be a hallmark of the Biden administration.

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