Two points should be borne in mind when looking at the impact of US appellate rulings on what businesses plan to do with their patents.
For one thing, there are more Federal Circuit decisions on patents than there are Supreme Court rulings, and they reflect the thinking of judges that are closer to the pulse of intellectual property law and practice than the Supreme Court, which of necessity must be a generalist tribunal.
Secondly, Supreme Court decisions are very much public property in the sense that everyone is looking at them from way before the hearings, provoking a degree of analysis and discussion that either reaches a degree of consensus as to what the law means or which gives a strong indication in advance as to which alternative strategies any patent-intensive business (or its competitors) should be considering in the event of one of two or more predicted outcomes.
Federal Circuit decisions, in contrast, attract less attention and speculation, particularly from businesses and analysts based outside the US. This fact invites the suggestion that those who study them more closely are potentially in a position to benefit from an appreciation of their significance that does not instantly become common knowledge in the same way that Supreme Court rulings do.
For the record, the three cases picked out for consideration (and explained in greater detail on the IAM post) are as follows:
* Lexmark International Inc v Impression Products Inc (2016 WL 559042 (Fed Cir Feb 12, 2016) (En Banc)), which held that a US patent owner can restrict downstream trade in used and resale goods by lawfully and clearly communicating single-use/no-resale restrictions at the time of sale, while the sale or authorisation of sale of a product abroad did not exhaust the US patent rights in the product.Taken individually, it is difficult to see how any of these rulings will directly affect patent value. However, it is clear that each has the capability to influence two important drivers of patent exploitation strategy: how one formulates one's licensing and sale contracts and how one approaches patent litigation. The IAM post is therefore a welcome reminder that businesses operate in an ever-changing legal environment and that, both cumulatively and individually, the evolving body of Federal Circuit case law is no less worthy of study than the seismic shifts at Supreme Court level.
* Nuance Communications Inc v ABBYY USA Software House Inc (2016 WL 692497 (Fed Cir Feb 22, 2016)), holding that a US district court may properly enter final judgment as to patents that were part of the original complaint, but which were removed after a voluntary narrowing of the case where patentee did not expressly reserve its rights with respect to those patents.
* Blue Calypso v Groupon Inc (2016 WL 791107 (Fed Cir March 1, 2016)), which established that the Federal Circuit may review the Patent Trial and Appeal Board’s decision that a patent is an unpatentable covered business method (CBM).