By J. Gibson Lanier

Maybe Chief Justice Roberts did not get the memo, but despite reports that he desires to limit access to the courts, this does not appear to be true with respect to matters relating to intellectual property.  True, this may not be 2013 with significant rulings on 35 U.S.C. § 101, but to be sure the potential Supreme Court calendar for 2016 will have a significant impact on intellectual property.  It will interesting to see how these cases will be handled, particularly with the present vacancy in the Court.

Among the cases already accepted by the court or with petitions for Writ of Certiorari pending are three matters relating to whether willfulness is a necessary condition for enhanced damages under § 284; whether the burden of proof should be clear and convincing evidence; and what the standard of appellate review should be used.

Additionally, the Court will also be looking at the standard of review for claims in Inter Pates Review (IPR) cases to determine if the Broadest Reasonable Interpretation standard should be applied rather than the plain and ordinary meaning of the claims.  This issue along with determining whether the Patent Trials and Appeal Board decisions to grant an IPR should be judicially reviewable is the focus of four matters including Cuozzo Speed Tech v. Lee for which Cert has already been granted.

In what is starting to feel like an annual occurrence, the Court may also hear more arguments for Limelight Networks, Inc v. Akamai Technologies, Inc.  This time the court may have the opportunity to address the question of whether a defendant can be liable for the collective performance of method steps performed by multiple independent parties.

There is also potential for the Court to lend clarity as to what constitutes an abstract idea if cert is granted in Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc.  Taking on this issue would certainly be met with great applause, but given the Supremes past reluctance to provide define anything IP related with precision, as well as, the present vacancy, it is doubtful the holding would be anything more than a very narrow ruling.  And certainly not the more global direction desired by many.

For more information on this topic, contact your Intellectual Property counsel at Smith, Gambrell & Russell, LLP.