SCOTUS Patent Scorecard Update: One Pro-Patent Decision, One Pro-Patent Quality Decision

On June 13 and 20, 2016, the Supreme Court added to its patent jurisprudence. One decision was pro-patent and one was anti-patent or, more optimistically, pro-patent quality.

Pro-Patent: In Halo Elecs., Inc. v. Pulse Elecs., Inc., the Court addressed the proper test for awarding enhanced damages under 35 U.S.C. § 284. The Court overruled the Federal Circuit’s two-part Seagate test, held that enhanced damages can be awarded at the district court’s discretion, noted that such damages “should generally be reserved for egregious cases typified by willful misconduct,” rejected the clear and convincing evidence standard in an enhanced damages inquiry, reiterated that the proper standard is preponderance of the evidence and rejected the Federal Circuit’s tripartite framework for appellate review.

Pro-Patent Quality: In Cuozzo Speed Techs., LLC v. Lee, the Court addressed whether the Patent Office’s determination to institute an inter partes review on grounds not specifically mentioned in the third party’s review request can be considered by a court. A court may not review a “mine-run claim” involving the Patent Office’s decision to institute inter partes review; however, a court may be able to review a constitutional question relating to that decision. The Court also addressed whether the Patent Office’s inter partes review regulation to construe a patent claim according to its broadest reasonable construction in light of the patent specification is proper. It is.

The snapshot takeaways are that plain statutory language matters, quality IP assets matter and consistency (within an agency) matters. Those takeaways should guide any company’s IP asset management program – which should include patents and trade secrets.

If anyone is interested in a complete copy of the U.S. Supreme Court Patent Scorecard from 2005-2016, then please e-mail me at dpelletier@pelletier-ip.com.