IP Bar Eyes Patent Eligibility for Next Supreme Court Term

What seemed like a quiet term from an intellectual property perspective finished with a flurry, as the US Supreme Court handed down a series of significant decisions in patent, copyright, and trademark cases in the last several weeks of May and June.

Patents and copyrights led the way, with the court issuing long-awaited decisions in Amgen v. Sanofi and Warhol v. Goldsmith on the same day. In the former, a unanimous court held that the disclosure in two Amgen patents didn’t adequately enable persons of ordinary skill to make and use the full scope of antibodies—“potentially millions”—claimed.

In keeping with its modern practice of eschewing bright-line rules, the court declined to adopt a clear test for enablement, emphasizing the fact-intensive nature of the inquiry into each case.

And in Warhol, the court took up the copyright doctrine of fair use, focusing on the first statutory factor: “the purpose and character of the use, including whether such use is of a commercial nature or is for nonprofit educational purpose.”

The court upheld a Second Circuit decision finding that the commercial nature of Andy Warhol’s silkscreen print of a photograph of Prince weighed against a finding of fair use—explaining that the “purpose and character” of a use isn’t measured by the subjective intent of the artist but by the objective nature of the use.

Trademarks then took center stage in the waning days of the term, as the court issued its decisions in Jack Daniel’s v. VIP Products and Abitron v. Hetronic. In Jack Daniel’s, the court looked at VIP Products’ “Bad Spaniels” novelty dog toys, holding that source-identifying mark usage does not get the benefit of the First Amendment–oriented Rogers test. Instead, the question is first and always whether a mark usage creates a likelihood of confusion.

And in its final IP decision of the term, the court considered the extraterritorial reach of US trademark law in Abitron. Carefully distinguishing its long-standing 1952 Steele decision, the court held that the Lanham Act isn’t extraterritorial in nature and that the question in each trademark case is thus whether the relevant conduct occurred in the US.

But the court didn’t explain how its framework would apply to situations in which an individual sells counterfeit goods immediately outside the US border with the clear intent that such goods be introduced into US commerce.

For each question the Supreme Court resolves, several questions remain unanswered, reserved for next term and beyond.

Already on the 2023–2024 docket is Vidal v. Elster, which (like the Bad Spaniels case this past term) asks the court to consider the interplay between the First Amendment and trademark law. In this case, however, the court must decide whether to resurrect Section 2(c) of the Lanham Act, on which the Trademark Office relied to deny registration of the mark “Trump Too Small” for its use of the name of a living person.

In the decision on review, the Federal Circuit held that the government does not have an “interest in restricting speech critical of government officials or public figures.” Of particular interest is how the court will address whether “Trump Too Small” is actually a designation of source or origin at all.

Perhaps more notable than what the court has taken up for the next term, however, is what the court elected not to … yet. Since the Federal Circuit’s 2007 decisions in Nuijten and Comiskey vaulted Section 101 out of obscurity, eyes have been on Congress and the Supreme Court to reinject certainty into the issue of patent subject-matter eligibility.

The court took several quick stabs at the topic in Bilski (2009), Mayo (2012), Myriad (2013), and Alice (2014), but applications of these decisions have led to further confusion in the Federal Circuit’s jurisprudence.

This past term, and much to the frustration of many, the court declined to grant cert in two closely watched cases: Interactive Wearables v. Polar Electro and Tropp v. Travel Sentry. But a petition remains outstanding in CareDX v. Natera (responses are currently due July 31), and even if not that case, there will surely be others, unless Senators Chris Coons and Thom Tillis manage to bring patent eligibility reform legislation to a vote in Congress first.

This article does not necessarily reflect the opinion of Bloomberg Industry Group, Inc., the publisher of Bloomberg Law and Bloomberg Tax, or its owners.

Author Information

Nicole Jantzi is a trial lawyer, registered patent attorney, and head of Fried Frank’s IP litigation practice.

Paul Schoenhard is partner at Fried Frank and a trial and appellate litigator who represents clients in every area of intellectual property.

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