Pending IP Cert Petitions at the Supreme Court

As the Supreme Court’s 2023 year draws to a close, the court has denied certiorari in the vast majority of IP related cases, with the Dewberry trademark damages case left as the only IP case granted certiorari.  Seven petitions remain undecided and the court will pick them up again when it begins the 2024 term in late September.  This post briefly reviews these cases. I’m listing some cases that I have not previously discussed first.

 I. United Therapeutics Corporation v. Liquidia Technologies, Inc. (Case No. 23-1298)

This case centers on the Federal Circuit’s role in overseeing inter partes review proceedings. Petitioner is challenging the standard of review applied by the Federal Circuit when examining the Patent and Trademark Office’s (PTO) decisions in IPR cases.  Paraphrased issues:

  1. Should the Federal Circuit review the PTO’s reliance on new grounds and new printed publications (not raised in the initial petition) de novo or only for an abuse of discretion when deciding to cancel patent claims?
  2. Should the Court overrule the Chevron deference doctrine?

On the second question, the court is currently considering a Chevron case and is likely to significantly change the doctrine within the next few days.

II. Bill Gaede, et ux. v. Michael Delay, et al. (Case No. 23-1252)

This is a bit of an odd case raising the concept of “scientific priority,” which I believe is really a right of attribution: Can the usurpation of scientific priority be considered a violation under the Lanham Act or the Copyright Act?

The Gaedes claimed that the defendants (Michael Delay, Anastasia Bendebury, and Biospintronics, LLC) had misappropriated their ideas and theories, attempting to assert copyright protection over these ideas and alleging unfair competition under the Lanham Act. Specifically, the Gaedes contended that Bill Gaede was the originator of certain theories and ideas, and that the defendants were wrongfully presenting these ideas as their own in services they sell on the internet.

The Ninth Circuit affirmed the lower court’s dismissal; holding that the Gaedes were trying to protect ideas, which are not copyrightable and that the unfair competition claim was not viable based on the Supreme Court’s interpretation in Dastar Corp. v. Twentieth Century Fox Film Corp.

III. Kirk Johnston v. Nickleback (Case No. 23-1243)

Petitioner, Kirk Johnston allegedly wrote the song “Rock Star” and is suing Nickelback band members for copyright infringement based upon its own rock star song.  The district court dismissed the case on summary judgment, writing that both songs include lots of tropes about famous musicians but that the two songs “do not sound alike.”   In his petition, Johnston argues that the lower court improperly decided the facts on summary judgment:

1. Can courts disregard expert evidence on substantial similarity at the summary judgment stage?
2. Should courts make factual determinations on access and substantial similarity at the summary judgment stage, potentially denying plaintiffs their right to a jury trial?
3. How should courts handle the “discovery rule” in copyright cases, particularly regarding the scope of available damages?

Johnston is pro se in this case.

IV. Cellect, LLC v. Vidal (Case No. 23-1231)

I’ve previously written about this case which focuses the interplay between statutory provisions and old judge-made doctrines in patent law. Specifically, the case asks whether a patent procured in good faith can be invalidated for obviousness-type double patenting when family member patents have varying expiry dates due to Patent Term Adjustment (PTA) caused by USPTO delays in granting patent rights.

V. Chestek PLLC v. Vidal (Case No. 23-1217)

This is an administrative law case asking when the APA requires the PTO to conduct  formal rulemaking.  Is the PTO exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2)?

VI. Eolas Technologies v., Inc., et al. (Case No. 23-1184)

This case, also involving accused infringers Google and Walmart focuses on patent eligibility.

  1. Are claims drawn to solving specific problems in computer-network technology patent-eligible under § 101 and Alice?
  2. Can Alice’s two-step eligibility analysis properly subsume considerations traditionally falling under §§ 102, 103, and 112?
  3. Are the specific claims of the ‘507 patent eligible for patenting under § 101 and Alice?

The patent at issue (9,195,507) includes aspects of the internet that many see as fundamental — perhaps it claims priority back to 1994.

VII. Tarun Surti v. Fleet Engineers, Inc. (Case No. 23-1142)

This case raises several issues related to patent infringement litigation, particularly focusing on the rights of individual inventors and small entities. The petitioner, a pro se individual inventor, is challenging various aspects of the lower courts’ handling of his patent infringement case, including application of the doctrine of equivalents; proper remedies for patent infringement, and tortious interference in the context of patent disputes.

52 thoughts on “Pending IP Cert Petitions at the Supreme Court

  1. 11

    “Eolas Technologies v., Inc., et al. (Case No. 23-1184)”
    The Supreme Court will NEVER revisit 101. A dog doesn’t enter a den that it’s fouled. The refusal to reconsider or clarify the the rancid jurisprudence of section 101 is an admission of just how broken it is. So broken they know it can’t be fixed, which is why they avoid it. Thomas saw how badly he munged the law of section 101 and just had to put apply his wrecking skill to the Second Amendment. Every Justice has strengths and weaknesses, but Thomas should not be handed the pen for any kind of decision with expansive effect. He’s clueless about how law works down in the trenches.

  2. 10

    Chevron was completely overrated. It basically gave a get out of (appellate) jail free card to judges who wanted to side with an agency, because any judge who didn’t want to side with the agency would not find the needed ambiguity to even get to Chevron.

    Today’s ins ane ruling on the 6 year statue of limitations, OTH, is going to cause a huge judicial problem, will probably be overturned or even Congress may have to step in. Imagine a ruling so bad that we actually have to govern our way out of it…

    1. 10.1

      You seem shocked.


    2. 10.2

      Martin, your comments about the law are becoming less ridiculous.

      1. 10.2.1

        A broken (analog) clock is correct twice a day.

        Let’s not get all that excited – he still refuses to understand the important features of the terrain.


          Billy doing that Billy thing again.

          As a reminder, the last Billy recognized an “important feature” it was green and growing out of the side of his scrotum.


            Your choice of references reflect your mind (or lack thereof).

  3. 9

    “And yet Roberts also tried to forestall a flood of challenges to past rulings rooted in Chevron, adding that courts require “special justification” to overrule these thousands and thousands of decisions. It would require immense naivety to believe that hard-right lower courts will abide by this passing suggestion.”

    What a sh-tshow.

    1. 9.1

      More Malcolm “Ends Justify the Means” mindset and meltdown at a t001 of the Administrative State being de-powered.

    1. 8.1

      I heard, long live the king!

      Congress will need to either enshrine it how they want it in law, or take on doing their jobs properly in the first place.

      Could be some chaos in the meantime.

      1. 8.1.1

        “long live the king!” Yea — had the same thought 6, but couldn’t come with a reasonable basis for how / why it applied here. 🙂

        “doing their jobs properly in the first place.”

        A post-debate chuckle for the weekend!

        ( … and speaking of the debate — it’s still early, but should Biden repeat his mumbling, bumbling performance in the 2nd debate, he’s toast.)


          “A post-debate chuckle for the weekend!”

          Many chuckles were had! I’m so glad we beat medicare!

          Apparently Biden is resisting, though his funders are drying up.


            Through CNBC, Clinton and Obama pulling damage control duty and gaslighting people, trying to calm them down and tell them the situation is really not that bad:

            link to


                Total silence…

                (Rest of comment caught in George Carlin filter)


            Wait! — is that a “we’ll never lose track of him again” ankle monitor Biden’s wearing?!

            Looks like one of these:

            link to

            “Apparently Biden is resisting”

            . . . or does he just need to use the bathroom?


  4. 7

    I suspect this will be big for the USPTO.

    The question in this case was whether to overrule the court’s 1984 decision in Chevron v. Natural Resources Defense Council, holding that courts should defer to an agency’s reasonable interpretation of an ambiguous statute. As I mentioned, the court today does overrule Chevron.

    1. 7.1

      It is, indeed, a big deal, but it will not be all that big a deal for the USPTO. The USPTO did not get Chevron deference before, so eliminating Chevron deference does not really change anything for the USPTO. Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1550 (Fed. Cir. 1996)

      1. 7.1.1

        the USPTO was entitled to some Chevron deference with regard to procedural matters, see link to Today’s Loper Bright Enterprises is good news for all of us (except those anti-patent posters here who are ostensibly pro-patent). The USPTO will get slapped if they try to overstep their grounds again even for procedural rules. I’m thinking this may be a nail in the coffin for the terminal disclaimer rules (which I am still currently worried about).


          Yes, patent leather, I agree.


          Yeah, Greg is flat-out wrong. The PTO previously got Chevron deference when it was applicable. For example, see Tafas v. Doll:

          The next question is the level of deference to be given to USPTO rules that are within the scope of the USPTO’s delegated authority, i.e., procedural rules promulgated under § 2(b)(2) or § 132(b). Our precedent is clear that the Chevron framework is applicable to review of these rules. See, e.g., Cooper Techs., 536 F.3d at 1337; Bender, 490 F.3d at 1368; Lacavera, 441 F.3d at 1383; Stevens, 366 F.3d at 1333; Ethicon, Inc. v. Quigg, 849 F.2d 1422, 1425 (Fed.Cir.1988). Thus, on review of a procedural rule that has been issued by the USPTO, we will give Chevron deference to the USPTO’s interpretation of statutory provisions that relate to the exercise of delegated authority. See Cooper Techs., 536 F.3d at 1337 (“Because the Patent Office is specifically charged with administering statutory provisions relating to `the conduct of proceedings in the Office,’ 35 U.S.C. § 2(a)(2)(A), we give Chevron deference to its interpretations of those provisions.”).


            Fair enough. You are correct that the PTO used to get Chevron deference on some things. I expect that the PTO will still win cases challenging RCE fees, or typeface requirements, or the like, even in a world without Chevron. Those sorts of challenges are still going to be brought under the APA, where the standard for setting aside agency action is the very deferential “arbitrary and capricious.”

            My point was that they never got deference on questions of substantive patent law, so they cannot lose now what they never had before.


              “Importantly, the Supreme Court in Cuozzo Speed Techs. v. Com. for Intell. Prop., 579 U.S. 261 (2016) provided the patent office with Chevron deference for its determinations regarding AIA trials, including issues such as its approach to claim construction.”

              link to


            Do you believe the terminal disclaimer rule, if it were promulgated, should get Chevron deference, if that still existed?


              Substantive, and thus ultra vires.

              If promulgated, will be challenged and will be eliminated (can you say Tafas II?)


              I agree with what Anon said. Just hope that Judge Dyk is not on the panel that catches the case.


          Chevron or no Chevron, they are still allowed to establish regulations governing the conduct of proceedings before the Office, to the extent those regulations are not inconsistent with law.


          [T]his may be a nail in the coffin for the terminal disclaimer rules

          From your lips to God’s own ears, although I expect that rule would have failed even in a landscape in which Chevron were still controlling law.




          “The USPTO will get slapped if they try to overstep their grounds again even for procedural rules.”


          Just because the agency doesn’t get deference doesn’t mean they don’t get to argue their interpretation and rely on inherent executive authority.

  5. 6

    “The U.S. Patent and Trademark Office (USPTO) issued a draft Request for Comments (RFC) today seeking public feedback “on the current state of the experimental use exception jurisprudence and whether legislative action should be considered to enact a statutory experimental use exception.” ”
    In earlier discussions of this issue when one prior case raised it, I noted that this issue rarely arises in litigation simply because a true experimental user is not producing any, or enough, infringement damage to the patent owner to be worth the cost of suing, or justify an injunction. However, I suspect some universities would like more clarity.

  6. 5

    “the court is currently considering a Chevron case and is likely to significantly change the doctrine within the next few days.”

    While Chevron cuts both ways when it comes to protecting innovations with patents, it should help clip the wings of anti-patent, unfit, should-step-down-or-be-removed directors like Vidal.

    Who is rapidly turning the PTO into the PDO: Patents Decimated Office.

    Where patents, patent applications, and American innovations go be stolen by others including China . . . or to die.

    1. 5.1


      You know that Vidal will go work for Google and magically be worth $30 million dollars in five years.

      1. 5.1.1

        Based Videl, tho to hear her tell it her two boys are wildly more successful than she is iirc. Maybe she’ll catch up.

    2. 5.2

      People used to call it the No Patents or Trademarks Office.

  7. 4

    I don’t understand why you say “perhaps” Eolas claims priority back to 1994. This is the priority claim:

    “This application is a continuation and claims the benefit of U.S. application Ser. No. 11/593,258 filed Nov. 2, 2006, which is a continuation and claims the benefit of U.S. application Ser. No. 10/217,955 filed Aug. 9, 2002, now U.S. Pat. No. 7,559,985 which is a continuation and claims the benefit of U.S. application Ser. No. 09/075,359 filed May 8, 1998, now abandoned, which is a continuation and claims the benefit of U.S. application Ser. No. 08/324,443 filed Oct. 17, 1994, now U.S. Pat. No. 5,838,906, the disclosures of which are all hereby incorporated by reference.”

    What is unclear about the claim to priority back to 1994?

    1. 4.1

      The blog is mostly written by AI now. I still skim out of habit, but only habit.

      1. 4.1.1

        > The blog is mostly written by AI now.

        dcl, I too have suspected this.

    2. 4.2

      Perhaps the originally filed application does not support the current claims. I don’t see a CIP in the priority chain, but that doesn’t automatically mean the specification from the first filed application is identical to the most recently filed one. A claim to priority to the 1994 application does not automatically mean its a valid claim.

  8. 3

    Why do people hate Nickelback so much? They’re a little after my time but the only other musician/musical group that I hear spoken about with such vitriol is Morrissey.

    Off-topic: Anyone aware of any case law where an Examiner tried to use an intermediary form in a manufacturing process as anticipating a claimed product (in its final form). I’ve got a design application and the Examiner is citing a reference where the figures disclose something similar (but not substantially similar) to the claimed design. However, the final product in the reference looks nothing like the claimed design. I’m arguing that the intermediary form is not an “article of manufacture” since it is only an intermediary form and not the final form so the ordinary observer would not be in the position to even purchase the claimed design thinking it was the intermediary step in the manufacturing process.
    I hate it when Design Examiners get creative.

    1. 3.1

      IDK. I don’t listen to their music, but Coldplay is infinitely less appealing to me.

      1. 3.1.1

        Get some taste bros

        link to

        Anyway, how happy are you guys after it was confirmed JOVER after last night’s debate?




          Interesting song 6. I’d go with this ground-breaking classic from 1968 (yea; I’m that, gulp, old):

          link to

          Because of it’s length, full version was only ever played on late-night FM. AM stations chopped it to you-know-where so they could insert all those irritating ads . . .


            I vote for Pro Say.


              Aw, shucks. You make me blush. 🙂


            A pretty good one bro

    2. 3.2

      My understanding (I like them so I have to reach out for a reason) is that they are “bubble-gummy” without actually being bubblegummy.

      Catchy rock landing between hard rock and soft rock.

    3. 3.3

      As for design examiners, you do seem to hog the “creative” ones.

  9. 2

    I guess we should be happy with the bones we get tossed sometimes. SCOTUS ruled against the SEC star chamber today. 6-3. Three votes for tyranny of the three powers combined.

  10. 1

    Haven’t we all wanted to sue Nickelback at one point or another? But there’s a guy who had the guts to actually do it.

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