Top Tens in 2013: Patent, Trademark, Copyright and Trade Secret Cases

Abstract

This paper discusses notable intellectual property law caselaw in the United States in 2013. The Supreme Court decided four patent cases, holding that isolated human DNA is not patentable; that lawsuits alleging legal malpractice in patent cases are to be litigated in state, not federal, court; that seeds grown from genetically modified patented seeds cannot be resold; and that reverse-payment settlements between brand name and generic pharmaceutical companies are subject to scrutiny under the anti-trust laws. The one trademark case the Court decided addressed an issue with more impact in the patent area: whether a rights holder can destroy jurisdiction in a declaratory judgment case, by promising not to sue.

First sale, or exhaustion, proved to be a pressure point. In all areas, courts looked at how much control a rights holder has on authorized products released to the market. The Supreme Court held that copyright is not infringed, where books printed overseas with the permission of the copyright holder (intended for foreign markets) are imported to the US. Other copyright cases addressed whether first sale authorized resale of digital works, whether a digital clipping service violated copyright, and whether an artist’s adaptation of authorized photo prints qualified for fair use. In patent law, the Court considered the application of exhaustion to works in code. Looking to another form of control of information, an increasing split appears with respect to how the Computer Fraud and Abuse Act protects information in computer systems, especially where the information is protected less by security measures than by contracts, such as employment contracts or web site terms of use.

On cross-border issues, the Supreme Court held that, in effect, a copyright holder does not have the right to create separate foreign and domestic markets. In patent law, the Federal Circuit held that International Trade Commission procedures may be not be used to exclude infringing products, where no real domestic production or patent licensing program exists to protect, as opposed to simply putting leverage for settlement of a dispute.