1. Supreme Court IP-Related Cert Petition Round-Up:

Petitions granted:

  • Star Athletica LLC v. Varsity Brands Inc.On May 2, 2016, the Supreme Court granted Star Athletica’s petition for writ of certiorari and agreed to hear the following question presented in connection with the Sixth Circuit’s August 2015 opinion (en banc rehearing denied in October 2015) that cheerleader uniforms can be copyrighted: “What is the appropriate test to determine when a feature of a useful article is protectable under § 101 of the Copyright Act?”
  • SCA Hygiene Products v. First Quality Baby ProductsOn May 2, 2016, the Supreme Court granted SCA Hygiene Products’ petition for writ of certiorari and agreed to review the following question presented: “Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act’s six-year statutory limitations period, 35 U.S.C. § 286.” The Court will review the September 2015 en banc Federal Circuit ruling (affirming an earlier panel decision) that laches is a valid defense to patent infringement lawsuits. In so holding, the Federal Circuit had distinguished the 2014 U.S. Supreme Court case of Petrella v. Metro-Goldwyn-Mayer, Inc., which held that laches is not a defense to a suit for damages under the Copyright Act. Petitions denied:
  • Multi-Time Machine v. Amazon.ComOn February 29, 2016, the Supreme Court denied Multi-Time Machine’s petition for certiorari, leaving in place the October 2015 Ninth Circuit opinion which held there was no likelihood of confusion, and therefore no trademark infringement, when Amazon offers consumers searching for trade-marked products (in this case watches) search results for other similar clearly-labeled non-trademarked products. Update to coverage of this case Manatt’s December 2015 newsletter under “Eye on the Courts: IP Roundup.”

New Petitions Filed (see also our article in this newsletter entitled “Supreme Court Asked to Weigh In on “Disparaging” Trademarks Issue”):

  • Ariosa Diagnostics v. Sequenom, Inc.: On March 21, 2016, Sequenom filed a petition for writ of certiorari asking the Supreme Court to review the following question presented: “Whether a novel method is patent-eligible where: (1) a researcher is the first to discover a natural phenomenon; (2) that unique knowledge motivates him to apply a new combination of known techniques to that discovery; and (3) he thereby achieves a previously impossible result without preempting other uses of the discovery?” Sequenom is appealing from a December 2, 2015 en banc decision of the Federal Circuit that denied rehearing of its controversial panel decision on June 12, 2015 which had relied on the test established in the Supreme Court’s decision in Mayo to hold that a newly-developed non-invasive diagnostic method for fetal testing via the mother’s blood was not patentable under Section 101 of the Patent Act because it “begins and ends with a natural phenomenon.” Sequenom argued in its cert petition that the Federal Circuit “dangerously overextended” the Supreme Court’s Mayo decision. Cert decision pending.
  • Versata Development Group, Inc. v. SAP America, Inc. and SAP AGOn March 11, 2016, Versata filed a petition for writ of certiorari asking the Supreme Court to review the following questions presented concerning the scope of the PTAB’s CBM review:
    • whether the phrases “covered business method patent” and “financial product or service” encompass any patent claim that is incidental to or complementary to a financial activity and relates to monetary matters;
    • whether the Federal Circuit’s standard for identifying patents falling within the “technological inventions” exception departs from statutory text by looking to whether the patent is valid, as opposed to whether it is “technological”;
    • whether a software-related invention that improves the performance of computer operations is patent-eligible subject matter; and
    • whether, as will be decided in Cuozzo Speed Technologies, LLC v. Lee, No. 15-446, the PTAB should give claim terms their broadest reasonable construction in post-grant adjudicatory proceedings, or should instead give them their best construction.

Cert petition pending.

2. In Brief—Other Interesting Cases and Items of Note

  • Cisco Systems, Inc. v. Arista Networks, Inc.: On April 11, 2016, the ITC announced that it would review the ALJ’s February 2016 ruling that Arista infringed Cisco’s networking patents. The ITC identified numerous grounds for review (some held confidential), including whether (1) three of Cisco’s patent claims are unpatentable subject matter under Section 101 in light of the Supreme Court’s Alice decision and (2) whether laches is available as a defense to a Section 337 investigation.
  • Estate of Robert Graham, et al. v Sotheby’s, Inc.: On April 11, 2016, a Central District of California judge ruled that the federal copyright laws—including specifically, the first sale doctrine under the Copyright Act—preempt the operation of California’s California Resale Royalty Act, which requires auction houses and other resellers of fine art to pay royalties to the artists of the works being sold.
  • “Stairway to Heaven” copyright infringement litigation: On April 8, 2016, a Central District of California judge ruled that that lawyers for the trustee of late Spirit guitarist Randy Wolfe had shown enough evidence to support a case that “Stairway to Heaven” copies music from the Spirit song “Taurus,” clearing the way for a copyright infringement jury trial.
  • Belmora LLC v. Bayer Consumer Care AG: On March 23, 2016, the Fourth Circuit vacated the district court’s decision and held that the “plain language” of Section 43(a) of the Lanham Act does not require use of a trademark in U.S. commerce in order to bring a claim for false advertising and false association. The Court additionally found that Section 14(3) of the Lanham Act, which creates a cause of action for cancellation of a registered trademark, also does not require that the plaintiff use its own mark in U.S. commerce as a condition precedent to bringing a cancellation action.
  • Dryer et al. v. National Football LeagueOn February 26, 2016, the Eighth Circuit upheld the Minnesota district court’s dismissal of summary judgment in favor of the NFL in a putative class action right of publicity case that had been brought by former NFL players in connection with the NFL’s use of footage containing their names and likenesses in training and other NFL-related copyrighted film productions. The Eighth Circuit affirmed the district court’s conclusion that the Copyright Act preempted the former players’ right of publicity claims because the NFL held valid copyrights in the NFL film productions, which were deemed non-commercial speech, and the claims asserted rights identical to those protected by copyright law.
  • University of Alabama v. Houndstooth Mafia Enterprises: On February 23, 2016, a Northern District of Alabama judge ordered the TTAB to comply with his order to vacate the TTAB’s 2013 ruling that the University of Alabama (UA) held no copyright in the houndstooth checked pattern. The TTAB vacated their ruling on March 6, 2016 after a three-year legal battle. The judge’s February 23, 2016 order to the TTAB followed a consent judgment in favor of UA and included a provision requiring the TTAB to vacate its 2013 ruling against UA. In June 2015, the TTAB denied UA’s motion for vacatur, ruling that decisions to vacate were in the TTAB’s discretion and, absent a showing of error, could not be subject to settlement agreements between the parties. The judge’s February 23, 2016 order threatened contempt because the motion for vacatur was filed in connection with a judicial mandate (the consent judgment) and not the settlement agreement. More than three dozen influential law professors have filed requests urging the DOJ to appeal the order on the grounds that it forced the TTAB to vacate a precedential ruling without cause.