IP Law Daily, SUPREME COURT NEWS: Supreme Court declines to hear three IP cases, (Jun 17, 2025)

By Steven Melendez

The High Court denied certiorari to a copyright case, a trademark matter, and a patent law dispute.

As the Supreme Court’s 2024 term nears its close, the Court Monday turned aside three petitions for certiorari in intellectual property cases, including one case each seeking clarification of copyright, trademark, and patent law.

Copyright discovery rule. The Court declined to hear the petition in RADesign, Inc. v. Michael Grecco Productions, Inc., Dkt No. 24-1137, letting stand a ruling by the U.S. Court of Appeals for the Second Circuit allowing a photographer's copyright infringement case against a shoe designer to proceed.

The appellate court vacated a lower court's decision to dismiss a suit brought by Michael Grecco Productions (MGP) against shoe designer Ruthie Davis and her businesses, rejecting a "sophisticated plaintiff" exception to the discovery rule that determines when the Copyright Act's three-year statute of limitation on infringement claims takes effect.

MGP, owned by photographer Michael Grecco, had sued Davis for allegedly using Grecco's copyrighted photos of model Amber Rose on Davis's website and social media without permission. The alleged infringement began in August 2017, and the suit was filed in October 2021. The U.S. District Court for the Southern District of New York dismissed the case, ruling it was filed too late under the statute of limitations.

The district court held that because MGP was a "sophisticated plaintiff" who touted its sophistication in detecting—and suing over—copyright infringement, it should have discovered the alleged infringement within three years of when it began. But the appeals court held that under the discovery rule, the statute of limitations begins when a plaintiff discovers or should have discovered infringement operates the same for all parties, regardless of sophistication.

The appeals court did find that Davis and her companies could still raise timeliness as an affirmative defense, arguing but would need to plead and prove the complaint was untimely.

Davis and her companies had asked the Supreme Court to definitively address the validity and scope of the discovery rule, arguing that the Copyright Act says a lawsuit cannot be brought "unless it is commenced within three years after the claim accrued." It's well-settled that "a right accrues when it comes into existence," and appellate circuit courts have given "no good explanation" for adopting the discovery rule, Davis argued in her certiorari petition.

Lanham Act laches. The Court also declined to grant certiorari in Jem Accessories, Inc. v. Harman International Industries, Inc., Dkt. No. 24-1011. Jem Accessories had petitioned the court to resolve questions of whether federal courts may look to state statutes of limitations to create presumptions of laches under federal trademark law and whether they may apply laches to bar all relief for recent and continuing wrongs under the Lanham Act.

Jem had filed a trademark infringement lawsuit against Harman in the Southern District of New York over the sale of Bluetooth speakers under the mark "XTREME." That suit was dismissed for improper joinder, and Harman filed its own suit against Jem in the Central District of California, where Jem filed counterclaims. The California federal court granted summary judgment to Harman finding Jem's claims barred by laches.

District courts in some circuits look to analogous state law statutes of limitations in determining whether a presumption of laches applies, and the U.S. Court of Appeals for the Ninth Circuit held that the district court appropriately looked to its forum state of California's four-year statute of limitations rather than New York's six-year statute of limitations.

Jem had argued that the Supreme Court needed to resolve the issue, since the Second, Third, Fourth, Sixth, Seventh, Ninth, and Eleventh Circuits all look to analogous state laws to determine a presumption of laches, while the First, Fifth, and Eighth Circuits do not use that method. That means that the burden of proof and effective number of years to file suit depend on what state a federal suit is filed. Jem also had argued the Ninth Circuit's approach of applying laches against even recent and continuing infringement was unjust, especially when the nature of infringement continues to evolve.

Doctrine of equivalents evidentiary standards. The Supreme Court also declined to hear the petition in NexStep, Inc. v. Comcast Cable Communications, LLC., Dkt. No. 24-113.

In that case, tech startup NexStep sued Comcast for allegedly infringing a patent that covers a method of initiating technical support for home electronics through “a single action performed by a user.” NexStep alleged Comcast infringed both literally and under the doctrine of equivalents through a troubleshooting feature in its My Account App that let customers launch technical support through a short series of button presses.

In a trial, a NexStep expert gave technical demonstrations to the jury, arguing that though the allegedly infringing Comcast app used multiple button presses, it was functionally equivalent to the patent's "single action." The jury rejected a direct infringement claim but found Comcast liable under the doctrine of equivalents, but Comcast moved to set aside the verdict, saying that NexStep hadn't met the evidentiary standard of Federal Circuit precedent requiring “particularized testimony and linking argument" connecting each claim limitation to the allegedly infringing product.

The district court agreed, setting aside the verdict. A divided Federal Circuit panel upheld that ruling, saying the doctrine of equivalents requires particularized evidence of why differences between the product and the patent are insubstantial, even for relatively simple technology. Circuit Judge Jimmie Reyna dissented in part, saying the doctrine of equivalents allows for more flexible, fact-based inquiry, and that the majority ruling risked undermining the role of the jury, requiring a formalized set of "linking arguments" even in straightforward cases.

NexStep asked the Supreme Court to resolve the matter, arguing that the Federal Circuit approach was in conflict with Supreme Court precedent that emphasized a flexible, fact-based approach to the doctrine of equivalents. The current standard risks taking decision-making away from the jury based on formal rules and is part of a growing pattern by the Federal Circuit of eroding the doctrine of equivalents, the company argued.

The Cases are Dkt. Nos. 24-768, 24-1011, and 24-1137.

Attorneys: Zachary D. Tripp (Gotshal & Manges LLP) for RADesign, Inc. Vincent Gregory Levy (Holwell Shuster & Goldberg, LLP) for Michael Grecco Productions, Inc. Morris E. Cohen (Goldberg Cohen LLP) for Jem Accessories, Inc. Mary Declan Hallerman (Snell & Wilmer L.L.P.) for Harman International Industries, Inc. Daniel N. Lerman (Kramer Levin Naftalis & Frankel LLP) for NexStep, Inc. Thomas Glenn Saunders (Wilmer Cutler Pickering Hale and Dorr LLP) for Comcast Cable Communications, LLC.

Companies: RADesign, Inc.; Michael Grecco Productions, Inc; Jem Accessories, Inc.; Harman International Industries, Inc.; NexStep, Inc.; Comcast Cable Communications, LLC

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