On October 4, a panel of professors at Penn Law discussed six possible patent law cases for the U.S. Supreme Court’s (SCOTUS) upcoming term.
The event, titled “Preview of Patent Cases Before the Supreme Court, October 2017 Term,” was co-hosted by Penn Law and Center for Technology, Innovation and Competition (CTIC) and held in Silverman Hall at the Law School. The panel consisted of intellectual property rights specialists Professor Cynthia Dahl and Professor R. Polk Wagner. The diverse cases covered topics such as international infringement, statutory interpretation, the inter partes review (IPR) system, and software patents.
Wagner started the panel by talking about two upcoming Supreme Court cases, Oil States Energy Service v. Greene Energy Group and SAS Institute Inc v Matal. In Oil States v. Greene Energy, the Supreme Court will rule on whether IPR, a type of patent review by the judicial branch, is unconstitutional because it negates private property rights.
Wagner predicted that the Court would rule in favor of the respondent, Greene Energy Group, due to a 2016 precedent in MCM Portfolio LLC v. Hewlett-Packard Company. Still, he noted that it was strange that the Supreme Court would take on another IPR case so soon.
“I just can’t imagine they would strike down this entire regulatory regime that there have been billions of dollars and thousands of federal employees established in,” Wagner said. “However, what makes me nervous is why on Earth did they take on this case? They denied the MCM Portfolio…and didn’t seem like they had much interest in it.”
Regarding SAS Institute Inc v Matal, which deals with whether the U.S. Patent and Trademark Office’s Patent Trial and Appeal Board (PTAB) can issue written decisions on select rather than all claims filed by the petitioner, Wagner predicted the Court would also uphold the federal circuit’s decision in favor of the respondent, Matal. The outcome of this case will affect the future of statutory interpretation methodology, Wagner said, though he noted that this was a “fairly thin issue for SCOTUS review.”
Professor Dahl followed Wagner with a discussion on four cases that were still pending certiorari from the Supreme Court but remained of high interest to patent law watchers — WesternGeco LLC v. ION Geophysical Corp, Samsung Electronics Co. v. Apple, Unwired Planet LLC v. Google Inc., and Openet Telcom Inc v. Amdocs Limited.
Two cases, WesternGeco LLC v. ION Geophysical Corp and Openet Telcom Inc v. Amdocs Limited, interestingly brought up issues that the Supreme Court already recently ruled. In WesternGeco v. ION, the petitioner’s claim of patent infringement when elements of a product are combined overseas was addressed just last term in Life Technologies Corp. v. Promega Corp. Similarly, Openet Telcom v. Amdocs follows a 2014 Alice Corp. v. CLS Bank Internationalruling, in which the Supreme Court struck down the patentability of electronic “abstract ideas.”
Dahl said that, if taken, the case could have implications for software patent eligibility, as the federal circuit had produced a rare pro-software decision for it. However, due to the narrow petition question and the Alice precedent, this may not happen.
“I’m not sure that this is the right case they would pick to actually look at patent eligibility and software patent eligibility,” Dahl said. “They just ruled Alice in 2014, so I’m not sure if enough time has passed for them to really make…this issue a compelling issue. Perhaps it might be nice to get some guidance on software patent eligibility.”