JOLT Digest

Written by Heather Whitney
Edited by Kassity Liu
Editorial Policy

United States v. Jones (U.S. Jan. 23, 2012)
2012 WL 171117; No. 10-1259

In a hotly anticipated decision, the Supreme Court unanimously found that the Government’s warrantless attachment of a Global Positioning System (GPS) tracking device to a vehicle to monitor its movement constituted a Fourth Amendment violation. While unanimous in judgment, the Court split on both its underlying reasoning and with regards to whether the tracking amounted to a search at all. The Court also did not reach the question of whether the search was reasonable. Due to the Court’s fractured analysis, it remains unclear when the Government must obtain a warrant to track a vehicle’s movements, particularly in the case of short-term monitoring. In concurrence, Justice Alito also suggests that if the public views the losses of privacy brought on by new technologies as inevitable, his Katz analysis would be different in future cases.  (more…)

Supreme Court Hears Arguments on Patent-Eligibility of Medical Protocol Based on Correlations Between Blood Tests and Patient Health
By Laura Fishwick – Edited by Michael Hoven

Mayo Collaborative Servs. v. Prometheus Labs., Inc., No. 10-1150 (U.S. Dec. 7, 2011)
Transcript of Oral Arguments

Mayo v. Prometheus returned to the Supreme Court after the Court of Appeals for the Federal Circuit again held that Prometheus’s method patents covered a particular application of a natural phenomenon, not the natural phenomenon itself, and were therefore valid. JOLT Digest covered the Federal Circuit’s initial ruling and its reaffirmation.

The Supreme Court heard arguments concerning whether a treatment that indicates a drug dosage based on correlations between metabolite levels in the patient’s blood and drug efficiency or toxicity is eligible for patent protection. Mayo argued that Prometheus’s patent was invalid because it covered a natural phenomenon: the correlation between metabolite levels, as revealed by a blood test, and patient health. Additionally,  Mayo claimed that the patent preempted all competing tests that would use metabolite levels (above a certain concentration that Prometheus’s patent covers) to adjust drug dosages. Transcript of Oral Argument at 8. Prometheus argued that their patent would not preempt competing tests because another party could file an improvement patent specifying a different range. Id. at 42. Prometheus said that its claims were patentable because it applied the conventional step of measuring metabolites in patients to the discovery of the natural correlation, and analogized its patents to patented processes that detect earthquakes, also a natural phenomenon.

Patently-O provides an overview of the case. Ars Technica criticized the lack of attention that the Court gave to the issue of whether medical patents are legal in general, analogizing the issue to overly-broad software patents. IPWatchdog has predicted that the Court will interpret § 101 as a “coarse filter” and leave Mayo to challenge Prometheus under § 102 and § 103. Published before the Court heard oral arguments, the Wall Street Journal argued that the Court should continue its longstanding policy of providing strong patent protection to encourage investment by finding Prometheus’s diagnostic test to be patentable subject matter. The Washington Post features a discussion of the main arguments. (more…)

Supreme Court Hears Oral Arguments on GPS Tracking Case
By Amara Osisioma – Edited by Andrew Crocker

U.S. v. Jones, 10-1259 (2011)
Transcript of Oral Arguments

On Tuesday, November 8th, the Supreme Court heard oral arguments in U.S. v. Jones to determine whether the police had violated Antoine Jones’ Fourth Amendment rights when they attached a GPS to his car without a warrant and tracked his movements. Though the police initially obtained a warrant for the investigation, it had expired when they placed the GPS on Jones’ car. Under the standard first developed in Katz. v. United States, Fourth Amendment protection extends to an individual’s “reasonable expectation of privacy.”

In applying this standard, the Court must determine whether and how warrantless GPS tracking differs from police tailing an individual by sight in public, which is not subject to Fourth Amendment protection. U.S. Deputy Solicitor General Michael Dreeben, on behalf of the government, argued that regardless of the method used, police tracking of individuals in public places is constitutional. Yet, despite questioning from several justices suggesting that use of a GPS might constitute a search under the Fourth Amendment, Jones’ attorney, Stephen Leckar, instead tried to propose a narrow rule that the installation of the GPS was itself a search or seizure requiring a warrant.

Commentaries by the Center for Democracy & Technology and Professor Orin Kerr for The Volokh Conspiracy highlight the justices’ discomfort with the idea that evolving technology might render current constitutional protections insufficient, a scenario they repeatedly compared to George Orwell’s 1984. At the same time, SCOTUSblog notes that both parties’ inability at oral argument to suggest clear rules for guiding law enforcement’s use of surveillance technology frustrated the justices, leaving the outcome uncertain. The Wall Street Journal suggests that even a decision by the Court requiring a warrant in order to use a GPS tracking device may not change the limits of police surveillance because law enforcement authorities in most states can instead request access to a customer’s cell phone records for tracking purposes without a warrant and without the customer’s knowledge.

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Is It Unconstitutional for Congress to Take Foreign Works Out of the Public Domain?
By Julie Dorais – Edited by Matt Gelfand

Golan v. Holder, No. 10-545 (U.S. 2010)
Transcript of Oral Arguments

On October 5, 2011, the Supreme Court heard oral arguments for Golan v. Holder. The case involves the challenged constitutionality of Section 514 of the Uruguay Round Agreements Act (codified as 17 U.S.C. §§ 104A, 109), which extends copyright protection to certain foreign works that have already been in the public domain in the United States. Petitioners claim that Section 514 violates both the First Amendment and Progress Clause of the Constitution. The government in turn contends that Congress acted constitutionally and in accordance with a significant interest in complying with international obligations.

The case comes up after the Tenth Circuit upheld the constitutionality of Section 514 in two separate decisions, with the first decision rejecting the Progress Clause challenge and the second decision rejecting the First Amendment challenge. The Digest covered the Tenth Circuit’s first decision, the district court’s decision on remand, the Tenth Circuit’s second decision, and the plaintiffs’ petition to the Supreme Court. For commentaries on the oral arguments, see Copyright and Trademark Blog and The Denver Post.

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Supreme Court to Consider Civil Procedure Issues in Two Patent Cases
By Marina Shvarts – Edited by Dorothy Du

Hyatt v. Kappos, 625 F.3d 1320 (Fed. Cir. 2010)
Petition for Writ of Certiorari hosted by scotusblog.com

Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S, 601 F.3d 1359 (Fed. Cir. 2010)
Petition for Writ of Certiorari hosted by scotusblog.com

In Kappos v. Hyatt, the Court will consider whether a patent applicant who is seeking to overturn a Patent and Trademark Office (“PTO”) decision in a Section 145 civil action may introduce new evidence that could have been, but was not, presented to the PTO, and when new evidence is introduced, whether the district court can decide related factual questions de novo or whether it must give deference to the PTO’s prior decision.

In Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S, the Court will consider the extent of a generic drug manufacturer’s rights to file a counterclaim under the Hatch-Waxman act seeking an order to require the patent holder to correct or delete the patent information submitted to the FDA that misstates the scope of the patent.

Patent Docs summarizes the Federal Circuit en banc decision in Kappos. Patent Docs also discusses the Federal Circuit holding in Caraco Pharmaceutical Laboratories.

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