Monica M. Arnold

Senior Associate Armond Wilson LLP

Michelle E. Armond

Partner Armond Wilson LLP

Intellectual Property

UC Berkeley School of Law, bachelor's in electrical engineering from the California Institute of Technology

While 2024 may be winding down, the Supreme Court will issue the bulk of its 2024-2025 term decisions in the new year. This term presents several important IP appeals, spanning infringement damages, personal jurisdiction, appellate procedure, and the regulatory safe harbor from patent infringement. Look for one new Supreme Court opinion and action on several cert petitions in 2025.

Lighting Defense Group v. SnapRays, dba SnapPower, No. 24-524

This appeal challenges a new avenue for personal jurisdiction in patent cases. The Supreme Court in World-Wide Volkswagen held that a court may exercise personal jurisdiction over a nonresident defendant if "minimum contacts" exist between the defendant and the forum state. This case addresses whether using Amazon's APEX patent infringement dispute resolution program against an alleged infringer subjected the patent owner to declaratory judgment jurisdiction in the alleged infringer's home forum.

This dispute began when Lighting Defense Group (LDG) initiated Amazon's APEX program against SnapPower. Utah-based SnapPower sued in Utah district court seeking a declaratory judgment of noninfringement of LDG's patent. The court granted LDG's motion to dismiss for lack of personal jurisdiction because LDG was incorporated in Delaware with a principal place of business in Arizona.

The Federal Circuit reversed, finding LDG was subject to specific personal jurisdiction in Utah. SnapRays, dba SnapPower v. Lighting Defense Grp., 100 F.4th 1371 (Fed. Cir. 2024). It held that by initiating the APEX program against SnapPower in Utah, (1) LDG purposefully directed enforcement activities at SnapPower, (2) that SnapPower's suit arose from LDG's activities, and (3) that LDG did not show that specific personal jurisdiction was unfair and unreasonable. The court disagreed that the Supreme Court's Walden supported finding no specific jurisdiction, holding instead that Calder controlled and by initiating the APEX program "LDG's actions were purposefully directed at residents of Utah." Id. at 1377 (citing Walden v. Fiore, 571 U.S. 277 (2014); Calder v. Jones, 465 U.S. 783 (1984)).

LDG asks the Court to close this new avenue for personal jurisdiction and to "further clarify the limits of Calder."

Dewberry Group v. Dewberry Engineers, No. 23-900

Next, is a trademark damages/corporate law case from the Fourth Circuit Court of Appeals. Dewberry Eng'rs Inc. v. Dewberry Grp., Inc., 77 F.4th 265 (4th Cir. 2023), cert. granted, 144 S. Ct. 2681 (2024). The Lanham Act allows a trademark holder to disgorge a "defendant's profits" due to trademark infringement. This appeal asks whether these profits can be disgorged from a defendant's non-party affiliates and could have broad implications for corporate organizational strategies to minimize trademark infringement liability.

Dewberry involves two real estate competitors operating in overlapping markets that both use the "Dewberry" mark. Dewberry Engineers won summary judgment of trademark infringement against Dewberry Group and was awarded about $43 million in disgorged profits mostly from Dewberry Group's separate non-party corporate affiliates, deemed appropriate by the district court due to Dewberry Group's willful infringement.

The majority affirmed, finding the Lanham Act's Section 1117(a) allows for damages "subject to the principles of equity."  The dissent disagreed because Section 1117(a) only allows recovery of the "defendant's profits" and not non-party affiliates.

On appeal, Dewberry Group asks: "Whether an award of the 'defendant's profits' under [Section] 1117(a), can include an order for the defendant to disgorge the distinct profits of legally separate non-party corporate affiliates."  Dewberry Engineers argues the Lanham Act allows discretion to consider affiliates' financial records to reflect the infringer's true financial gain.

This case has attracted several amici including from the U.S. Solicitor General's office, who advocates a middle-of-the-road approach. The Court heard arguments on December 11 and a decision is expected early 2025.

Edwards Lifesciences v. Meril Life Sciences, No. 24-428

This medical-device dispute addresses the scope of the regulatory safe harbor under 35 U.S.C. § 271(e)(1), providing exceptions for patent infringing activities if they are "solely for uses reasonably related to the development and submission of information" to the FDA for market approval. Edwards Lifescis. Corp. v. Meril Life Scis. Pvt. Ltd., 96 F.4th 1347 (Fed. Cir. 2024). The provision allows competitors to take their products to market once the patent is no longer in force. The life sciences and medical device industry are watching this one.

Edwards sued for patent infringement after Meril imported heart valve devices for a conference, arguing the importation had a commercial purpose of soliciting foreign sales. Meril won summary judgment that its importation was protected by Section 271(e)(1)'s safe harbor.

Edwards appealed to the Federal Circuit, who affirmed in a divided decision. Relying on the Supreme Court's Merck, the majority held that "solely" modified "for uses" and therefore, safe harbor protected any uses reasonably related to the development and submission of information to the FDA. Id. at 1353 (citing Merck KGaA v. Integra Lifescis. I, Ltd., 545 U.S. 193 (2005)). The dissent called for en banc review, arguing the majority effectively read "solely" out of Section 271(e)(1).

Edwards asks the Supreme Court to hit reset and "align the governing standard with the safe harbor's plain text." 

The Supreme Court is expected to consider Edwards' petition in early 2025.

ParkerVision v. TCL Industries, No. 24-518

ParkerVision's cert petition challenges current Federal Circuit procedure. ParkerVision, Inc. v. TCL Indus. Holdings Co., Ltd., No. 2023-1417, 2024 WL 2842279 (Fed. Cir. June 5, 2024) (unpublished); ParkerVision, Inc. v. TCL Indus. Holdings Co., Ltd., No. 2023-1415, 2024 WL 2842282 (Fed. Cir. June 5, 2024) (unpublished). It attacks Federal Circuit Rule 36 permitting the court to "enter a judgment of affirmance without opinion" in certain circumstances where "an opinion would have no precedential value."  ParkerVision argues that the Federal Circuit's regular use of Rule 36 affirmances is an outlier and deprives the parties and lower tribunals of necessary judicial guidance. This petition has attracted numerous amici, and a similar issue is raised in Island Intellectual Property v. TD Ameritrade, No. 24-461.

If taken up, these petitions could have a significant potential impact on Federal Circuit dispositions. Currently, the court issues Rule 36 affirmances in about 43% of appeals from Patent Office AIA proceedings and in about 35% of district court appeals. However, similar petitions in prior terms failed to gain traction with the Supreme Court.