SCOTUS Patent Judgements
Supreme Court of the United States has decided following cases under Patent Law (Authorized by the U.S. Constitution, Title 35 of the United States Code) since its establishment on September 24, 1789 pursuant to Article III of the United States Constitution 1787.| Citation | Case Title & Transcript | Issue/s Involved | Held by SCOTUS |
|---|---|---|---|
| No. 19–1434 June 21, 2021 | United States v. Arthrex Inc. ET AL | Whether the authority of Administrative Patent Judges (APJs) to issue decisions on behalf of the Executive Branch is consistent with the Appointments Clause of the Constitution. APJs conduct adversarial proceedings for challenging the validity of an existing patent before the Patent Trial and Appeal Board (PTAB). During such proceedings, the PTAB sits in panels of at least three of its members, who are predominantly APJs. 35 U. S. C. §§6(a) | The judgment is vacated, and the case is remanded. The Appointments Clause provides that only the President, with the advice and consent of the Senate, can appoint principal officers. With respect to inferior officers, the Clause permits Congress to vest appointment power “in the President alone, in the Courts of Law, or in the Heads of Departments.” |
| No. 18–916 April 20, 2020 | Thryv, Inc., Fka Dex Media, Inc. V. Click-Tocall Technologies, Lp, Et Al. | Whether a challenge based on §315(b) ranks as an appeal of the agency’s decision “to institute an inter parties review. | Section 314(d) precludes judicial review of the agency’s application of §315(b)’s time prescription |
| No. 17–1594 June 10, 2019 | Return Mail, Inc. V. United States Postal Service Et Al. | The question presented in this case is whether a federal agency is a “person” able to seek such review under the statute. | We conclude that it is not. |
| No. 17–1229 January 22, 2019 | Helsinn Healthcare S. A. V. Teva Pharmaceuticals Usa, Inc., Et Al. | Whether, under the AIA, an inventor’s sale of an invention to a third party who is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention. | A commercial sale to a third party who is required to keep the invention confidential may place the invention “on sale” under §102(a). The patent statute in force immediately before the AIA included an on-sale bar. |
| No. 16–712 June 22, 2018 | Westerngeco Llc V. Ion Geophysical Corp | Lost Profit | WesternGeco’s award for lost profits was a permissible domestic application of §284 of the Patent Act |
| No. 16–969 April 24, 2018 | Sas Institute Inc. V. Iancu, Director, United States Patent And Trademark Office, Et Al | Inter parties review | When the Patent Office institutes an inter partes review, it must decide the patentability of all of the claims the petitioner has challenged |
| No. 16–712 April 24, 2018 | Oil States Energy Services, Llc V. Greene’s Energy Group, Llc, Et Al. | Inter parties review | Inter parties review does not violate Article III |
| No. 15–1039 June 12, 2017 | Sandoz Inc. V. Amgen Inc. Et Al | Section 262(l)(2)(A) | Section 262(l)(2)(A) is not enforceable by injunction under federal law, but the Federal Circuit on remand should determine whether a state-law injunction is available. An applicant may provide notice under §262(l)(8)(A) prior to obtaining licensure. |
| 581 U. S. 2017 15-1189 May 30, 2017 | Impression Products, Inc. V. Lexmark International, Inc. | This case presents two questions about the scope of the patent exhaustion doctrine: First, whether a patentee that sells an item under an express restriction on the purchaser’s right to reuse or resell the product may enforce that restriction through an infringement lawsuit. And second, whether a patentee exhausts its patent rights by selling its product outside the United States, where American patent laws do not apply. | "We conclude that a patentee’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions the patentee purports to impose or the location of the sale. A United States patent entitles the patent holder (the “patentee”), for a period of 20 years, to “exclude others from making, using, offering for sale, or selling [its] invention throughout the United States or importing the invention into the United States.” 35 U. S. C. §154(a). Whoever engages in one of these acts “without authority” from the patentee may face liability for patent infringement. §271(a). When a patentee sells one of its products, however, the patentee can no longer control that item through the patent laws—its patent rights are said to “exhaust.” The purchaser and all subsequent owners are free to use or resell the product just like any other item of personal property, without fear of an infringement lawsuit." |
| No. 16–341 May 22, 2017 | TC Heartland Llc V. Kraft Foods Group Brands Llc | Patent Infringement | As applied to domestic corporations, “reside[nce]” in §1400(b) refers only to the State of incorporation. |
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