U.S. Supreme Court Declines to Consider Several Intellectual Property Cases

Washington, DC – On Monday, October 3, 2011, the U.S. Supreme Court opened its session and refused to review several appellate decisions in patent, trademark and copyright cases. These included the following cases:

Lockwood v. Sheppard, Mullin, Richter, & Hampton, LLP., U.S., No. 10-1339.

The Federal Circuit summarily affirmed a district court dismissal of a patent owner’s malicious prosecution suite against the patent attorney that requested the USPTO to reexamine his patents. The patent owner had alleged, among other things, that the law firm filed a sham reexamination request with misrepresentations of the prior art. The district court held that the state law claims were essentially allegations of fraud and bad faith before the USPTO, preempted by federal law under Buckman Co. v. Plaintiffs’ Legal Committee, 531 U.S. 341 (2001). The district court also found the claims over the 2003 reexamination request barred by the two-year statute of limitations.

ASCAP v. United States, U.S., No. 10-1337.

In this case, the Second Circuit affirmed summary judgment that downloading a musical work implicates the reproduction right, but not the public performance right, 627 F.3d 64 (2010). The decision arose in an action over music royalties brought by copyright attorneys for Yahoo and RealNetworks in New York district court. The Second Circuit held that the performance of a work requires that the work be “contemporaneously perceptible,” which may be the case for streamed music but is not the case for downloaded music.

While the Supreme Court decides to review relatively few intellectual property cases, one case they are considering in December 2011 involves the patentability of pharmaceutical processes. In Mayo v. Prometheus it has asked the parties to answer the following question:

“Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.”

Oral argument is set for December 7, 2011