IP Law Daily, SUPREME COURT NEWS: As term opens, Court denies petitions on patent validity, USPTO’s rulemaking powers, (Oct 7, 2024)

By Thomas Long, J.D.

In its order list following the September 30 “long conference,” the Supreme Court turned away several requests for review in IP cases.

The first Monday in October brought the traditional start of the U.S. Supreme Court’s 2024 term, with the Court issuing no new grants of certiorari in its October 4 order list after its “long conference” held on Monday, September 30. The Court did, however, deny review in several IP cases. A few noteworthy cases are summarized below, followed by a list of other denials.

Patent-eligible subject matter. As it has done with several previous petitions on this topic, the Court turned away a request to clarify its two-prong “Alice” test for subject-matter eligibility under Section 101 of the Patent Act, 35 U.S.C. § 101. In Eolas Technologies Inc. v. Amazon.com, Inc., No. 23-1384, tech firm Eolas sought review of a decision of the U.S. Court of Appeals for the Federal Circuit holding that Amazon, Google, and Walmart were not liable for infringing an Eolas patent related to distributive computing because, in the court’s view, the patent claims were directed to the abstract idea of interacting with data elements on the Internet and did not embody a “technology-based solution” that would transform the patent’s claims into an inventive concept.

The petition for certiorari filed May 1, 2024, presented three questions:

1. Whether claims drawn to solving specific problems restricting the usefulness of an existing computer-network technology recite patent-eligible subject matter under 35 U.S.C. § 101 and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014).

2. Whether Alice’s two-step eligibility analysis under § 101 can properly subsume considerations of conventionality, functional claiming, and specificity of description—which traditionally fall under 35 U.S.C. §§ 102, 103, and 112.

3. Whether the claims of the ’507 patent are eligible for patenting under § 101 and Alice.

USPTO’s rulemaking power—domicile address requirement. The Court has declined to determine whether the USPTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2). The petitioner in Chestek PLLC v. Vidal, Dkt. No. 23-1217, challenged a regulation requiring that trademark applications include the address of each applicant’s domicile. This provision was added to the Rules of Practice in Trademark Cases during the course of the agency’s adoption of a requirement that foreign trademark applicants be represented by U.S. licensed counsel. The domestic address requirement was not included in the proposed rule initially published for public comment.

Petitioner Chestek PLLC applied to register the mark CHESTEK LEGAL in standard characters for legal services in International Class 45. The applicant provided a post office box number in Raleigh, North Carolina as its domicile address. The USPTO’s Examining Attorney indicated that in most cases, a post office box is not acceptable because it does not identify the location of applicant’s headquarters where the entity’s senior executives or officers ordinarily direct and control the entity’s activities. The Examining Attorney therefore required Applicant to provide its domicile street address or demonstrate that the listed address is, in fact, the applicant’s domicile. The Trademark Trial and Appeal Board denied the registration of the mark for failure to comply with the domicile address requirement. The Federal Circuit affirmed the Board’s decision, holding that the requirement was a procedural rule that did not require notice-and-comment rulemaking under the Administrative Procedure Act and finding that the USPTO provided a reasonable justification for the rule as part of a broader regulatory scheme.

The petition for certiorari, filed May 13, 2024, asked, “Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).”

The Solicitor General filed a respondent’s brief on behalf of USPTO Director Kathi Vidal urging the Court not to grant certiorari. According to the brief, the Federal Circuit correctly held that the domicile address rule was exempt from notice-and-comment requirements and that further review of the case was not warranted because there was no circuit split. Additionally, the brief points out that the USPTO sought public comment, although it was not obligated to do so.

Obviousness-type double patenting—terminal disclaimers. The Court has declined to review a decision of the Federal Circuit holding that the Patent Trial and Appeal Board did not err in deciding that four patents relating to image sensors were invalid for obviousness-type double patenting (ODP). Generally speaking, a patent is invalid for ODP if its claims are not patentably distinct from the claims of an earlier-expiring reference patent. According to the Federal Circuit, Congress intended that, when a terminal disclaimer has been entered in a patent subject to Patent Term Adjustment (PTA), no patent or claim may be extended beyond the disclaimed expiration date. PTA, pursuant to 35 U.S.C. § 154, extends the length of a patent term when the USPTO fails to take particular administrative actions within specified periods of time at various stages of patent examination.

The Federal Circuit held that the Board correctly decided that the question of whether or not a patent is unpatentable for ODP is determined based on the date of expiration of a patent that includes any duly granted PTA. In the Federal Circuit’s view, case law and the statutory language required that the ODP analysis must be performed on patents that have received PTA based on the expiration date including PTA. The Federal Circuit had previously held that ODP continued to apply when two patents that claimed the same invention had different expiration dates, including when the different expiration date was due to a grant of PTA. Because terminal disclaimers are almost always filed to overcome an ODP rejection, terminal disclaimers and ODP are inextricably intertwined, the court said.

In its petition for review in Cellect, LLC v. Vidal, No. 23-1231, filed May 20, 2024, the patent owner posed the following question: “Whether a patent procured in good faith can be invalidated on the ground that statutory Patent Term Adjustment, which requires lengthening a patent’s term to account for time lost to Patent and Trademark Office delays, can trigger a judge-made patent-invalidation doctrine.” The USPTO filed an amicus brief opposing the petition. According to the USPTO, the Federal Circuit was correct to conclude that Section 154 does not preclude ordinary application of the ODP doctrine. “To the contrary, Section 154’s language contemplates that the doctrine will apply in the same circumstances it otherwise would in the absence of PTA,” the brief states. The USPTO also argued that the question presented was not sufficiently important to warrant the Court’s intervention.

Other denials. The Court also denied certiorari in the following IP cases: Valeant v. Silbersher, No. 23-1093; Surti v. Fleet Engineers, Inc., No. 23-1142; Johnston v. Kroeger, No. 23-1243; Gaede v. Delay, No. 23-1252; Lopez v. MUFG Holding Corp., No. 23-1318; Quinones-Pimentel v. Cannon, No. 23-1343; Provisur Technologies, Inc. v. Weber, Inc., No. 23-1349; and Robinson v. Azod, No. 24-135.

Attorneys: John Bruce Campbell, Jr. (McKool Smith, PC) for Eolas Technologies Inc. Gabriel K. Bell (Latham and Watkins LLP) for Amazon.com, Inc. Andrew Michael Grossman (Baker & Hostetler LLP) for Chestek PLLC. Roy T. Englert Jr. (Kramer Levin Naftalis & Frankel LLP) for Cellect, LLC. Elizabeth B. Prelogar, U.S. Department of Justice, for Kathi Vidal.

Companies: Eolas Technologies Inc.; Amazon.com, Inc.; Chestek PLLC; Cellect, LLC

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