The Supreme Court held that the federal government is not a ‘person’ eligible to petition for inter partes review, post-grant review, or covered business method review under the America Invents Act.
The Supreme Court held that the Copyright Act’s authorization of “full costs” under § 505 covers only the six categories of costs specified in the general federal costs statute — not additional litigation expenses like expert witnesses, e-discovery, and jury consultants.
The Supreme Court unanimously held that copyright registration “occurs” when the Copyright Office registers a claim — not when the applicant files — meaning copyright holders must wait for the Office to act before they can sue for infringement.
The Supreme Court held that the AIA preserved pre-AIA law on the ‘on sale’ bar: a confidential commercial sale of an invention more than one year before the patent application triggers the bar, even if the invention’s details remain secret.
The Supreme Court held that a patent holder can recover lost foreign profits as damages when a domestic act of infringement under § 271(f) caused those foreign profits to be lost.
The Supreme Court held 7-2 that inter partes review does not violate Article III or the Seventh Amendment — because patents are public franchises granted by the government, which may reclaim or modify them through an executive agency proceeding without a jury trial, upholding the America Invents Act
The Supreme Court held 5-4 that when the USPTO institutes an inter partes review, it must adjudicate every claim challenged in the petition — rejecting the PTO’s practice of instituting IPR on only some of the challenged claims and leaving other claims unreviewable.
The Supreme Court unanimously held that the Lanham Act’s prohibition on registering ‘disparaging’ trademarks violates the First Amendment — invalidating the PTO’s refusal to register THE SLANTS for an Asian-American band and establishing that trademark registration is a gover
The Supreme Court held 7-1 that authorized patent sales both domestically and abroad exhaust all U.S. patent rights in the sold item — eliminating Lexmark’s attempt to use conditional patent licenses to control post-sale use and the Federal Circuit’s rule allowing foreign sales to preser
The Supreme Court held that the patent venue statute, § 1400(b), is the sole provision governing where patent suits may be filed, and that a corporation ‘resides’ only in its state of incorporation for patent venue purposes.