Kimble v. Marvel Enterprises

Issues

Can royalty payments from a patent licensing contract extend beyond the life of the patent?

In this case, the Supreme Court will reconsider Brulotte, which held that a “royalty agreement that projects beyond the expiration date of the patent is unlawful per se.” Kimble argues that the Court should overturn Brulotte and replace it with a flexible rule grounded in a reasonable standard. However, Marvel counters that the Court should not overrule Brulotte because there are insufficient reasons to deviate from stare decisis. The Court’s decision may alter patent licensing practices by transforming the evaluation of patent agreements, and may affect the public’s access to patented inventions. 

Questions as Framed for the Court by the Parties

Petitioners are individuals who assigned a patent and conveyed other intellectual property rights to Respondent. The court of appeals "reluctantly" held that Respondent, a large business concern, was absolved of its remaining financial obligations to Petitioners because of "a technical detail that both parties regarded as insignificant at the time of the agreement." App. 2-3; 23. Specifically, because royalty payments under the parties' contract extended undiminished beyond the expiration date of the assigned patent, Respondent's obligation to pay was excused under Brulotte v. Thys Co., 379 U.S. 29, 32 (1964), which had held that "a patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se."

A product of a bygone era, Brulotte is the most widely criticized of this Court's intellectual property and competition law decisions. Three panels of the courts of appeals (including the panel below), the Justice Department, the Federal Trade Commission, and virtually every treatise and article in the field have called on this Court to reconsider Brulotte, and to replace its rigid per se prohibition on post--expiration patent royalties with a contextualized rule of reason analysis.

The question presented is:

Whether this Court should overrule Brulotte v. Thys Co., 379 U.S. 29 (1964).

Stephen Kimble patented a Spider-Man toy that was set to expire in May 2010. Kimble v. Marvel Enters., 727 F.3d 856, 857-58 (9th Cir. 2013). Importantly, “[a] patent grants the patent holder the exclusive right to exclude others from making, using . . .

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Harris v. Viegelahn

Issues

Does a debtor who has paid part of his wages to a trust as part of a Chapter 13 bankruptcy agreement recover the wages upon conversion to Chapter 7 bankruptcy, or do those wages belong to the creditors?

The Supreme Court will determine whether undistributed funds in a Chapter 13 trustee’s possession must be returned to the debtor upon conversion to Chapter 7, or whether creditors have a right to those funds. See Brief for Respondent, Mary K. Viegelahn, Chapter 13 Trustee at i. Harris argues that the Third Circuit’s rule is right in that a debtor’s post-petition wages become part of the property of the estate and thus revert back to the debtor upon conversion. See Brief for Petitioner, Charles E. Harris, III at 18–20. Viegelahn, however, counters that the Fifth Circuit’s rule is the correct one because funds belong to creditors, as the Bankruptcy Code creates an escrow relationship between the trustee and creditors. See Brief for Respondent at 19–21. The resolution of this case has the potential to affect the incentives a debtor has to file under Chapter 13, and may also implicate the balance of equitable considerations between debtor and creditor. See Brief of Amicus Curiae the National Association of Consumer Bankruptcy Attorneys (“NACBA”), in support of Petitioner at 29; see Brief for Respondent at 28; Brief of NACBA at 25.

Questions as Framed for the Court by the Parties

Chapter 13 of the Bankruptcy Code allows debtors to repay their creditors by turning a portion of their monthly income over to a Chapter 13 trustee for distribution to those creditors. At any time, however, a debtor may convert a Chapter 13 bankruptcy case to one under Chapter 7. Congress has provided that "[e]xcept" where the conversion is made in bad faith, the resulting Chapter 7 estate is limited to the debtor's property "as of the date" the original Chapter 13 petition was filed; it does not include wages or property that the debtor acquired after the petition date. 11 U.S.C. § 348(f).

The question presented is:

When a debtor in good faith converts a bankruptcy case to Chapter 7 after confirmation of a Chapter 13 plan, are undistributed funds held by the Chapter 13 trustee refunded to the debtor (as the Third Circuit held in In re Michael, 699 F.3d 305 (2012) [sic] or distributed to creditors (as the Fifth Circuit held below)?

In February of 2010, after falling $3,700 behind on his mortgage loan, Charles E. Harris III filed for bankruptcy under Chapter 13 of the Bankruptcy Code. See In re Harris, 757 F.3d 468, 471 (5th Cir.). His reorganization plan was confirmed in April of 2010.

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Commil USA, LLC v. Cisco Systems, Inc.

Issues

Is a defendant’s reasonable, good-faith belief that a patent is invalid a viable defense to patent infringement by inducement under 35 U.S.C. § 271(b)?

The Supreme Court will determine whether a defendant with a good-faith belief that a patent is invalid can be found liable for induced infringement. Commil argues that a good-faith belief defense of a patent’s invalidity is irrelevant to the intent requirement to establish infringement by inducement under § 271(b). In opposition, Cisco argues that a good-faith belief defense of a patent’s invalidity is crucial to determining culpability and thus, relevant in establishing infringement by inducement. The ruling in this case will impact the scope of a patent owner’s rights and the availability of a new defense to patent infringement by inducement. Additionally, the decision in this case could have important consequences for the sale and marketing of generic-drug counterparts. 

Questions as Framed for the Court by the Parties

Commil holds a patent teaching a method to implement short-range wireless networks. At trial, the jury returned a verdict that Commil's patent was valid, that Cisco directly infringed but did not induce infringement, and awarded damages. Because Cisco's counsel invoked stereotypes about Commil's Jewish owner and inventors during trial, the district court found the verdict "inconsistent with substantial justice" and ordered a new trial on inducement and damages only. At the second trial, the jury returned a verdict that Cisco induced infringement and awarded damages. The Federal Circuit reversed and remanded for a third trial on two grounds. First, although Commil's patent is valid, the Federal Circuit held that Cisco's "good faith belief” that the patent was invalid is a defense to induced infringement. Second, although Cisco had actual knowledge of Commil's patent, the Federal Circuit held that this Court's opinion in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011) rendered erroneous and prejudicial the jury instruction based on DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006). 

Did the Federal Circuit err in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b)?

Petitioner Commil USA, LLC (“Commil”) owns a patent, U.S. Patent No. 6,430,395 (“the ’395 patent”), relating to wireless local area networks (“WLANs”).

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Louis B. Bullard v. Blue Hills Bank

Issues

Does the denial of a debtor’s proposed reorganization plan in a bankruptcy case entitle the debtor to an immediate appeal on that ruling? 

In this case, the Supreme Court must determine whether a bankruptcy court’s denial of a debtor’s Chapter 13 reorganization plan is “final” within the meaning of 28 U.S.C. § 158 and thus immediately appealable by a debtor. Petitioner Louis B. Bullard argues that his Chapter 13 plan’s denial was “final” and thus appealable because the denial amounted to a court’s adjudication of a discrete issue within the bankruptcy process. In contrast, looking at an entire bankruptcy case as a “single judicial unit,” Respondent Blue Hills Bank argues that Bullard’s plan was not final and thus not appealable because Bullard’s plan was denied with leave to amend. The Supreme Court’s decision in this case will implicate practical considerations within the bankruptcy process and the appropriate balance between the bargaining power of debtors and creditors. 

Questions as Framed for the Court by the Parties

Whether an order denying confirmation of a bankruptcy plan is appealable.

Petitioner Louis B. Bullard (“Bullard”) purchased a house in Massachusetts, which he had financed through a mortgage with Respondent Blue Hills Bank for the amount of $387,000. See In Re Bullard, 752 F.3d 483, 484 (1st Cir. 2014).

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Acknowledgments

The authors would like to thank Professor Odette Lienau for her guidance in analyzing this case. 

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Brumfield v. Cain

Issues

Are indigent prisoners entitled to government funds to present new claims of mental incompetency in post-conviction proceedings in state court?

The Supreme Court will determine the extent to which indigent prisoners sitting on death row are entitled to government resources in order to present new claims of mental incompetency in post-conviction proceedings. Brumfield argues that the Louisiana state court violated federal law by interfering with his due process rights. In contrast, Cain argues that the state court did not violate any of Brumfield’s clearly established rights under federal law. This case raises questions about the extent to which federal courts may rely on states’ pre-Atkins proceedings to uphold death sentences imposed on prisoners now offering evidence that they were mentally incompetent. Determining this question implicates the extent to which a state’s quality or reliability of review should factor into the federal courts’ deference to the previous state court determination. This case will have implications for indigent prisoners sentenced to death prior to the Court’s decision in Atkins. 

Questions as Framed for the Court by the Parties

  1. Has a state court that considers the evidence presented at a petitioner’s penalty phase proceeding as determinative of the petitioner’s claim of mental retardation under Atkins v. Virginia, 536 U.S. 304 (2002), based its decision on an unreasonable determination of facts under 28 U.S.C. § 2254(d)(2)?
  2. Has a state court that denies funding to an indigent petitioner who has no other means of obtaining evidence of his mental retardation has denied petitioner his “opportunity to be heard,” contrary to Atkins and Ford v. Wainwright, 477 U.S. 399 (1986), and his constitutional right to be provided with “basic tools” for an adequate defense, contrary to Ake v. Oklahoma, 470 U.S. 69 (1985)?

This case arises from Kevan Brumfield’s 1993 conviction for the murder of a Baton Rouge police officer and an attempted armed robbery. See Brumfield v. Cain, 854 F. Supp. 2d 366, 371 (M.D. La. 2012). On January 5, 1993, Brumfield and an associate went to a self-described psychic counselor for a reading. See State of Louisiana ex rel. Cain v. Brumfield, 737 So. 2d 660, 662 (La.

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Acknowledgments

The authors would like to thank Professors Keir Weyble, Michael Dorf, and John Blume for their help.

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Walker v. Sons of Confederate Veterans

Issues

Do the messages and symbols on state-issued specialty license plates qualify as government speech and has Texas engaged in viewpoint discrimination by rejecting the license-plate design proposed by the Sons of Confederate Veterans?

The Supreme Court will determine whether states may limit the messages and symbols on state-issued specialty license plates and whether Texas committed viewpoint discrimination in rejecting the Sons of Confederate Veterans license plate design that included a logo of the confederate battle flag. Walker argues that the messages and symbols on state-issued license plates constitute government speech—which allows the government to restrict the speech and evade the requirement of viewpoint neutrality—and that Texas did not engage in viewpoint discrimination in refusing the confederate design because it did not issue any plates disparaging the confederacy. SCV counters that the messages and symbols are private speech protected under the First Amendment right to free speech, and that Texas committed viewpoint discrimination by rejecting the confederate license plate design. The Supreme Court’s decision in this case implicates states’ ability to favor certain viewpoints on state-issued license plates. 

Questions as Framed for the Court by the Parties

  1. Do the messages and symbols on state-issued specialty license plates qualify as government speech immune from any requirement of viewpoint neutrality?  
  2. Has Texas engaged in “viewpoint discrimination” by rejecting the license-plate design proposed by the Sons of Confederate Veterans, when Texas has not issued any license plate that portrays the confederacy or the confederate battle flag in a negative or critical light? 

Texas provides drivers with the opportunity to purchase and utilize specialty license plates. See Tex. Div., Sons of Confederate Veterans, Inc. v. Vandergriff, 759 F.3d 388, 390 (5th Cir. 2014).

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San Francisco v. Sheehan

Issues

What is the scope of reasonable police officer action under Title II of the ADA and the Fourth Amendment when dealing with armed and violent, mentally ill individuals?

The Supreme Court will determine whether the ADA requires police officers, when attempting an arrest, to reasonably accommodate a violent and armed, mentally ill suspect. San Francisco argues that Sheehan, the suspect in this case, posed a direct threat to others and, accordingly, the ADA did not apply. Moreover, San Francisco contends that, at the least, the officers did not violate a clearly established right and, thus, are protected from liability by qualified immunity. Sheehan counters that she posed a threat only to people that entered her room and that the officers’ action violated her clearly established right to be free from unreasonable seizures. The Court’s ruling will have an effect on the safety of the public, the mentally ill, and law enforcement officers. 

Questions as Framed for the Court by the Parties

  1. Whether Title II of the Americans with Disabilities Act requires law enforcement officers to provide accommodations to an armed, violent, and mentally ill suspect in the course of bringing the suspect into custody.
  2. Whether it clearly established that even where an exception to the warrant requirement applied an entry into a residence could be unreasonable under the Fourth Amendment by reason of the anticipated resistance of an armed and violent suspect within.

In 2008, Respondent Teresa Sheehan, who has a mental illness, was a resident at the Conrad House, a group home in San Francisco for the mentally ill. See Sheehan v. San Francisco, 743 F.3d 1211, 1217 (9th Cir. 2014). After a social worker, Heath Hodge, entered Sheehan’s room without her permission to check on her, Sheehan told Hodge to leave and threatened him after stating that she had a knife.

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Additional Resources

  • Lyle Denniston: Court to rule on disability rights, mercury pollution, SCOTUSblog (Nov. 25, 2014).
  • Jessie Lorenz: SF appeal threatens protections for the disabled, The San Francisco Examiner (Jan. 20, 2015).
  • Richard Wolf: Justices to decide rights of disabled during arrests, USA Today (Nov. 25, 2014).
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City of Los Angeles v. Naranjibhai Patel

Issues

Does the Fourth Amendment provides grounds for facial challenges of a statute or ordinance, and if so, is an ordinance that requires hotel guests to supply information to a hotel guest registry and authorizes police to inspect such a registry without a warrant or pre-compliance judicial review constitutional? 

Patel, with other Los Angeles motel and hotel owners, challenged Los Angeles Municipal Code 41.49 (“Section 41.49”) alleging that it violated the Fourth Amendment on its face. Asserting that it had a compelling interest in fighting crimes such as human trafficking and prostitution, which frequently involve hotels and motels in their operation, the City of Los Angeles responded that inspections under Section 41.49 are reasonable, and constitutional applications of Section 41.49 exist. The Supreme Court’s decision in this case will determine whether similar laws and ordinances not only in California but also in other states, as well as in other industries, can continue to operate, and whether a compelling government interest in crime deterrence can justify consentless police searches free of judicial review.

Questions as Framed for the Court by the Parties

  1. To resolve a split between the Ninth and Sixth Circuits are facial challenges to ordinances and statutes permitted under the Fourth Amendment?
  2. To resolve a spilt between the Ninth Circuit and the Massachusetts Supreme Court, does a hotel have an expectation of privacy under the Fourth Amendment in a hotel guest registry where the guest supplied information is mandated by law and that ordinance authorizes the police to inspect the registry? If so, is the ordinance facially unconstitutional under the Fourth Amendment unless it expressly provides for pre-compliance judicial review before the police can inspect the registry?

Respondents (“Patel”) are the Los Angeles Lodging Association and “approximately forty hotel owners,” including Naranjibhai Patel, who operate their businesses in Los Angeles.

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Ohio v. Clark

Issues

  1. Whether someone who must report suspected child abuse is considered an agent of law enforcement under the Confrontation Clause.
  2. Whether a child’s statements to a teacher about child abuse are “testimonial” statements for purposes of the Confrontation Clause.

The Supreme Court will determine whether teachers who are obligated to report suspected child abuse are agents of law enforcement and whether a child’s out-of-court statements to a teacher about child abuse are testimonial for purposes of the Confrontation Clause. Ohio asserts that a child’s statements made to teachers about potential child abuse are not testimonial because their primary purpose is not intended to further investigation, but rather to protect children. Also, Ohio argues and that teachers that must report suspected child abuse to authorities are not agents of the state. Darius Clark counters that teachers intend to report the potential child abuse when they question children and thus, teachers are agents of the state in doing so. The Additionally, Clark contends that the children’s statements are testimonial because they are meant to further the prosecution of the suspected abuser. The Court’s ruling impacts the admissibility of children’s statements about potential child abuse under the Confrontation Clause when children make statements to teachers who are obligated to report suspected child abuse to state authorities. 

Questions as Framed for the Court by the Parties

  1. Does an individual’s obligation to report suspected child abuse make that individual an agent of law enforcement for purposes of the Confrontation Clause?
  2. Do a child’s out-of-court statements to a teacher in response to the teacher’s concerns about potential child abuse qualify as “testimonial” statements subject to the Confrontation Clause?

T.T. had two children, L.P. and A.T., and lived with her boyfriend Darius Clark. See State v. Clark, 999 N.E.2d 592, 594 (Ohio 2013). While L.P., T.T.’s three-year-old son, was at the William Patrick Day Head Start Center in Cleveland, Ohio, on March 17, 2010, one of his preschool teachers noticed that his eye was bloodshot.

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Acknowledgments

The authors would like to thank Professor Valerie Hans of Cornell Law School for her insights into this case. 

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King v. Burwell

Issues

Can the IRS give tax credits to participants of federally-run health insurance marketplaces established under the Affordable Care Act?

In 2010, Congress passed the Patient Protection and Affordable Care Act (“ACA”). The ACA, in part, provides tax credits for insurance premiums to eligible citizens that obtain insurance through “Exchanges,” which are health insurance marketplaces. The IRS interpreted the ACA to permit tax credits to all eligible citizens regardless of whether the Exchange is federally or state-run. In this case, the Supreme Court will have the opportunity to resolve whether the ACA, which grants tax credits to individuals who obtained insurance through state-established Exchanges, also extends those tax credits to federally-established Exchanges. Several Virginia residents contend that the plain text of the ACA shows that Congress only intended for state-established Exchanges receive tax credits and that the Chevron deference is inapplicable because of the unambiguous meaning of the text. The government counters that tax credits are available to “applicable taxpayers”—a status determined independent of the type of Exchange within a citizen’s state—and, also, that the Chevron deference applies because the government’s interpretation avoids creating conflicts within the ACA. This case will profoundly impact the balance of federalism, the separation of power between the legislative and executive branches, and the American healthcare marketplace. 

Questions as Framed for the Court by the Parties

Section 36B of the Internal Revenue Code, which was enacted as part of the Patient Protection and Affordable Care Act ("ACA"), authorizes federal tax-credit subsidies for health insurance coverage that is purchased through an "Exchange established by the State under section 1311" of the ACA.

The question presented is whether the Internal Revenue Service ("IRS") may permissibly promulgate regulations to extend tax-credit subsidies to coverage purchased through Exchanges established by the federal government under section 1321 of the ACA.

In 2010, to help increase health care insurance coverage, Congress passed the Patient Protection and Affordable Care Act (“ACA”). See King v. Burwell, 759 F.3d 358, 363 (4th Cir. 2014).

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