The U.S. Supreme Court issued several key decisions involving intellectual property in its recently concluded October 2016 Term. From offensive trademarks to design patent, it was a landmark year for patent, trademark, and copyright decisions.

We provided in-depth coverage of many of the Supreme Court’s IP decisions on this website as well as the Constitutional Law Reporter. In case you missed any of our articles, below is a brief summary of several important cases:

Impression Products, Inc. v. Lexmark International, Inc.

In clarifying the patent exhaustion doctrine, the justices held that a patent holder’s decision to sell a product exhausts all of its patent rights in that item, regardless of any restrictions it purports to impose. The Court further found that an authorized sale exhausts all rights under the Patent Act regardless whether the product is sold inside or outside of the United States.

TC Heartland v. Kraft Foods

The Court held that patent infringement lawsuits must be filed where the defendant is incorporated. Reversing U.S. Court of Appeals for the Federal Circuit, the Court concluded that “a domestic corporation ‘resides’ only in its state of incorporation for purposes of the patent venue statute.” 

Matal v. Tam

The Court struck down the Lanham Act’s prohibition of registering disparaging trademarks with the U.S. Patent and Trademark Office, concluding that the ban was unconstitutional under the First Amendment.

Sandoz Inc. v. Amgen Inc.

The Court unanimously held that Section 262(l)(2)(A) of the Biologics Price Competition and Innovation Act of 2009 is not enforceable by injunction under federal law. However, it remanded the case to the Federal Circuit with instructions to determine whether a state-law injunction may be available. Reversing the Federal Circuit, the Court further held an applicant may provide notice of commercial marketing of a biosimilar under Section 262(l)(8)(A) prior to obtaining licensure from the U.S. Food and Drug Administration.

Samsung Electronics Co. v. Apple

In addressing how to calculate damages in design patent infringement cases, the Court held that the Samsung could be liable for only those profits associated with the infringing components of the cell phone rather than the whole device. According to the unanimous Court, the relevant “article of manufacture” for determining damages award is not limited to the end product sold to the consumer, but may also be only a component of that product. The justices remanded the case back to the Federal Circuit to develop a test for determining whether the profits should apply to a product as a whole or its individual components. The Federal Circuit further delegated the task to the district court.

Star Athletica, LLC v. Varsity Brands

The Court held that the design of a cheerleading uniform is eligible for copyright protection. In so ruling, it established a two-part test to determine separability: “if the feature (1) can be perceived as a two- or three-dimensional work of art separate from the useful article and (2) would qualify as a protectable pictorial, graphic, or sculptural work either on its own or in some other medium if imagined separately from the useful article.” 

SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC

The Court held that the equitable doctrine of “laches” does not bar a claim for patent infringement brought within the Patent Act's six-year statutory limitations period.

Life Technologies Corporation v. Promega Corporation

The Court interpreted 35 U.S.C.§ 271(f)(1), which states it is an act of patent infringement to "suppl[y] or from the United States all or a substantial portion of the components of a patented invention, …in such manner as to actively induce the combination of such components outside the United States." It held that patent infringement does not occur when a product is made abroad and all components but a single commodity article are also supplied from overseas.

Do you have any questions? Would you like to discuss the decisions further? If so, please contact me, Fred Zemel, at 201-806-3364.