As we approach the end of 2016, it’s a good time to look ahead to the cases that may have a significant impact on patent law in the coming year. Here is a preview of some of the important patent decisions on the Supreme Court’s docket for 2017.
Over the last 15 years, the Federal Circuit has continued to expand the scope of the extraterritorial effect of U.S. patent law. This case appears to follow suit.
The issue in Life Technologies
revolves around a patented genetic testing kit being used in the United Kingdom. Life Tech manufactured the kit with five necessary components, with one component consisting of a commodity enzyme exported from the U.S.
The Supreme Court will decide whether the supplying of that single commodity component from the US constitutes a “substantial portion of the components” of the kit, satisfying the statutory test under 35 U.S.C. 271(f)(1) and exposing Life Tech to liability for all worldwide sales.
Oral arguments were held December 2, 2016.
At issue in Impression v. Lexmark is the scope of the “patent exhaustion doctrine,” also known as the “first sale doctrine.” The patent exhaustion doctrine holds that an initial authorized sale of a patented item terminates all patent rights to that item.
The Court will tackle two issues: (1) whether a conditional sale, where title is transferred to patented article with restrictions on item’s use or resale, avoids the application of the first sale doctrine, permitting the enforcement of the restrictions through patent law’s infringement remedy, and (2) whether, in light of Kirtsaeng v. John Wiley & Sons, Inc.,
the common law doctrine barring restraints on alienation, which serves as the basis for patent exhaustion, makes no geographical distinctions— that an authorized sale of a patented article outside the U.S. exhausts the U.S. patent rights in that article.
Petition for writ of certiorari has been granted.
The laches doctrine and its application to patent infringement damages is at issue in this case. The question presented is whether the Supreme Court’s decision in Petrella v. Metro-Goldwyn-Mayer
should be extended from copyright law to patent law, allowing laches to remain a defense to legal relief in a patent infringement suit.
The lower court ruled en banc
that laches may bar a claim for patent infringement accruing within the Patent Act’s six-year statutory limitations period under 35 U.S.C. §286— many expect this ruling to be reversed based on the Court’s ruling in Petrella
Oral arguments were held November 1, 2016.