Patent law is always evolving, and the U.S. Supreme Court is currently considering several cases that could change how patents are handled in the future. These cases touch on important topics like software patents, pharmaceutical regulations, and how patent disputes are decided.
If you have a relevant patent matter that you would like to discuss with an expert patent attorney, you can book a free consultation with Schell IP.
1. Patent Eligibility and Software Patents
Case: Plotagraph, Inc. v. Lightricks Ltd.
Issue: What kinds of software can be patented?
Why It Matters: This case is about whether certain types of software inventions can be patented, specifically those related to digital animation technology. The Supreme Court’s decision could make it easier or harder for companies to get patents on software inventions. Right now, many software patents are being rejected because they are considered “abstract ideas” under a rule from a previous case (Alice Corp. v. CLS Bank). If the Court changes this rule, it could open the door for more software patents, which would be a big deal for tech companies and innovators working on things like artificial intelligence and blockchain.
Analysis: A patent is a special right that lets you stop others from making or using your invention for a certain number of years. But not everything can be patented—some things are too “abstract,” like an idea without enough details. This case will help decide if certain kinds of computer programs can be protected by patents.
2. Hatch-Waxman Pharmaceutical Issues
Case: Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC
Issue: How long can drug companies keep their exclusive rights to sell new drugs before generic versions can be sold?
Why It Matters: This case deals with the Hatch-Waxman Act, a law that helps balance the rights of brand-name drug companies with those of generic drug makers. Brand-name companies often try to extend their patents so they can keep selling their drugs without competition from cheaper generics for as long as possible. This case could change how long these companies can delay competition from generics, which would impact drug prices and availability for consumers.
Analysis: When a company invents a new medicine, they get a patent so only they can sell it for a while. After that time is up, other companies can make cheaper versions called generics. This case will decide how long the first company gets to sell their medicine before others can join in.
3. Federal Circuit’s Use of Rule 36 Summary Affirmances
Case: Arthrex, Inc. v. Smith & Nephew, Inc.
Issue: Should courts have to explain their decisions in patent cases?
Why It Matters: The Federal Circuit (a special court that handles patent appeals) sometimes uses Rule 36, which allows them to decide cases without giving any explanation or written opinion—this is called a “summary affirmance.” Many people think this practice makes it hard to understand why certain decisions were made, which creates confusion for future cases and for people trying to protect their inventions.
Analysis: When two sides argue about a patent in court, one side usually wins and the other loses. Normally, the court explains why they made their decision so everyone understands what happened and why—but sometimes they don’t give an explanation at all! This case will decide if courts should always explain their decisions.
4. On-Sale Bar Implications Post-AIA
Case: Celanese International Corp. v. ITC
Issue: Can you still get a patent if you secretly sell your invention before filing for the patent?
Why It Matters: The on-sale bar rule says that if you sell your invention more than one year before applying for a patent, you can’t get a patent on it later. However, there’s confusion about whether this rule applies when the sale is secret or involves products made using secret processes (like manufacturing methods). This case will help clarify whether these types of sales count against getting a patent under the updated rules from the America Invents Act (AIA).
Analysis: If you invent something and sell it before filing for a patent, you might lose your chance to get one later—unless the sale was secret or involved something hidden like how you made it! This case will help decide if secret sales count.
5. ITC Domestic Industry Requirements
Case: Roku Inc. v. ITC
Issue: What counts as enough U.S.-based activity to enforce patent rights against imports?
Why It Matters: The International Trade Commission (ITC) helps protect U.S.-based businesses by blocking foreign products that infringe on U.S. patents from being imported into the country under Section 337 of the Tariff Act. However, to win at the ITC, companies must show they have invested enough in U.S.-based activities (like manufacturing or research) related to the patented technology—this is called meeting the domestic industry requirement.
Roku argues that investments in unpatented software shouldn’t count toward this requirement when seeking exclusion orders (blocking imports). If Roku wins, it could become harder for companies to use ITC protections unless they have significant U.S.-based operations related directly to their patents.
Analysis: If someone in another country makes something that copies your invention and tries to sell it in the U.S., you might want to stop them from bringing it here—but first, you have to show that your company does enough work related to your invention in the U.S.! This case will decide what kinds of work count.
Conclusion
These five cases cover important issues that will affect not just inventors but entire industries—from tech startups working on cutting-edge software to pharmaceutical giants trying to protect their drugs from generic competition. The outcomes could change how easy it is to get patents, how long drug companies can keep exclusive rights, and how courts handle patent disputes.
Each decision has far-reaching consequences for innovation, business strategy, and consumer access to technology and medicine.
If you have any specific patent legal issues that you would like to discuss with an expert patent attorney, contact the team at Schell IP.
For more information on these cases:
Here are the links to the relevant cases discussed:
- Patent Eligibility and Software Patents
Case: Plotagraph, Inc. v. Lightricks Ltd.
Justia Summary - Hatch-Waxman Pharmaceutical Issues
Case: Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC
SCOTUSblog link - Federal Circuit’s Use of Rule 36 Summary Affirmances
Case: Arthrex, Inc. v. Smith & Nephew, Inc.
SCOTUSblog link - On-Sale Bar Implications Post-AIA
Case: Celanese International Corp. v. ITC
Federal Circuit Blog Summary - ITC Domestic Industry Requirements
Case: Roku Inc. v. ITC
CHIP Law Group Summary
JDSupra Summary
Sources
[1] Federal Circuit Affirms Loss for Roku in ITC Case – CHIP LAW GROUP https://www.chiplawgroup.com/federal-circuit-affirms-loss-for-roku-in-itc-case/
[2] [PDF] ROKU, INC. v. ITC – U.S. Court of Appeals for the Federal Circuit https://cafc.uscourts.gov/opinions-orders/22-1386.OPINION.1-19-2024_2255688.pdf
[3] Roku, Inc. v. International Trade Commission – The Power of Words … https://www.jdsupra.com/legalnews/roku-inc-v-international-trade-4423087/
[4] ITC Patent Jurisdiction: Roku’s Petition and Contreras’ Critique https://patentlyo.com/patent/2024/08/jurisdiction-petition-contreras.html
[5] High Court Petition Increases Scrutiny on Import Ban Requirement https://news.bloomberglaw.com/ip-law/high-court-petition-increases-scrutiny-on-import-ban-requirement
[6] Roku Asks Supreme Court to Clarify ITC Power in Patent Disputes https://news.bloomberglaw.com/ip-law/roku-asks-supreme-court-to-clarify-itc-power-in-patent-disputes
