SUPREME COURT’S IP TERM IN REVIEW
The Supreme Court issued its final opinions of the term on June 30 and is now in recess until the next term opens on October 5. The Court decided two intellectual property cases this term. On June 4, the Court ruled in Hikma Pharmaceuticals USA Inc. v. Amarin Pharma, Inc. that Hikma did not induce infringement of Amarin’s patented use of Vascepa through its skinny-label generic, holding that the relevant question is whether a defendant actively encouraged infringing use rather than whether physicians could plausibly read its statements that way. On March 25, the Court ruled in Cox Communications, Inc. v. Sony Music Entertainment, holding that an ISP is contributorily liable only if it intended its service be used for infringement, not merely by continuing service to subscribers with knowledge of infringement.
The Court granted certiorari in RiseandShine Corp. v. PepsiCo, Inc. to decide whether trademark strength is a question of fact in a likelihood-of-confusion analysis under 15 U.S.C. § 1114. Argument is expected next term.
The Court denied several petitions for certiorari. On the patent side, the Court declined United Services Automobile Association v. PNC Bank, N.A., (subject matter ineligibility of mobile check-deposit patents directed to an abstract idea), MSN Pharmaceuticals v. Novartis (relevance of after-arising technology to sufficiency of written description), Thaler v. Perlmutter (AI authorship under the Copyright Act), CPC Patent Technologies Pty Ltd. v. Apple Inc. (challenging Rule 36 no-opinion affirmances as contrary to the statutory opinion requirement in PTAB appeals), Hyatt v. Squires (relevance of prosecution laches to the Patent Act’s statutory timeliness provisions), Finesse Wireless v. AT&T Mobility (relevance of inconsistent expert testimony to jury credibility versus judgment as a matter of law), Polar Electro v. Firstbeat (relevance of court-constructed invalidity arguments to the party-presentation principle), and Dolby Laboratories v. Unified Patents (relevance of real-party-in-interest identification to patent owner standing and judicial review). On the trademark side, the court denied Curtin v. United Trademark Holdings (consumer standing to oppose the mark RAPUNZEL). On trade secrets, the Court denied Tata Consultancy Services Limited v. Computer Sciences Corp. (relevance of unjust-enrichment recovery and punitive-damages ratios to DTSA damages) and Chaturvedi v. Bridge Over Corp. (relevance of DTSA preemption to a state court’s trade-secret disclosure order).
Currently a petition is pending in Google LLC v. VirtaMove, Corp., concerning the relevance of “settled expectations” to the USPTO’s authority to deny IPR institution. This list may grow in the coming weeks because several other parties have been granted extensions of time to file petitions. The Court will continue to act on pending cert petitions over the summer, including at its “long conference” in late September.
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**DISTRICT COURT CORRECTLY CONSTRUED CLAIMS TO INCLUDE BOTH FREE BASE AND SALT FORM OF COMPOUNDS
Otsuka Am. Pharma., Inc. v. Hetero Labs Ltd., 25-2016 — Yesterday in an opinion by Judge BRYSON, the Federal Circuit affirmed-in-part a district court order enjoining Hetero from introducing a generic version of Otsuka’s neurological drug marketed as Nuedexta®. Hetero argued the district court erred in finding Otsuka was likely to succeed on the merits of its infringement claims because Hetero’s product did not fall within the claimed “1:0.5 or less” weight-to-weight ratio of dextromethorphan and quinidine when calculated using only the weight of the free base forms of the compounds.
The Federal Circuit disagreed, holding the intrinsic and extrinsic record supported construing the terms “dextromethorphan” and “quinidine” to encompass both free base and salt forms of the compounds. The dependent claims expressly required “pharmaceutically acceptable salt” forms of dextromethorphan and quinidine, and the specification used the terms to refer to both forms in the context of clinical studies. The examiner also indicated that they understood the claimed dosage to include administration of the compounds in salt form. Finally, Hetero’s construction would place Nuedexta outside the claimed weight-to-weight ratio, a result that was unlikely intended by the inventors. Judge DYK argued in dissent that the majority’s construction was inconsistent with the purpose of the invention and unsupported by the specification and prosecution history.
(1 to 4 stars rate impact of opinion on patent & trademark law)
HOUSE JUDICIARY SUBCOMMITTEE EXAMINES PIRACY, DIGITAL REPLICAS, AND AI TRAINING
On Tuesday the House Judiciary Subcommittee on Courts, Intellectual Property, Artificial Intelligence, and the Internet held a hearing titled “A Midlife Crisis? IP and the Internet After 40,” that examined judicial site-blocking legislation, unauthorized AI-generated digital replicas, and AI training on copyrighted works. Subcommittee Chairman DARRELL ISSA (R-CA) called for a uniform federal site-blocking standard to combat piracy tied to organized crime, while Subcommittee Ranking Member HANK JOHNSON (D-GA) emphasized fair compensation for creators. Full Committee Ranking Member JAMIE RASKIN (D-MD) raised concerns about federal preemption of state AI laws in the absence of federal legislation.
Witnesses SEAN ASTIN (SAG-AFTRA), CHRIS FLOYD (Amblin Entertainment), STEVE FRANCIS (IP House), CHRIS MOHR (SIIA), and BHAMATI VISWANATHAN (Suffolk University Law School) broadly supported site-blocking legislation and a federal digital replica right modeled on the NO FAKES Act, though their views diverged on appropriate scope. Mr. Mohr flagged concerns with the NO FAKES Act’s preemption and safe-harbor provisions, while Dr. Viswanathan argued AI companies’ uncompensated use of training material exceeds fair use.
A video recording of the hearing is available on the Judiciary Committee website.
BOOK YOUR HOTEL ROOM FOR IPO’S ANNUAL MEETING
IPO has reserved a block of rooms at Sheraton Centre Hotel, where IPO’s Annual Meeting is taking place from September 27-29, 2026. In order to receive the IPO group rate of $415 CAD per night (single/double occupancy, plus taxes) for a single/double room, reservations must be made online by August 27, 2026 or until the room block is sold out, whichever comes first. After September 1st, rooms will be subject to availability at the standard hotel rate, if available. Visit the website for additional information and to register. Please note that IPO does not use a third-party reservation service. If you are contacted by a third-party claiming to be IPO or the hotel to make a room reservation – do not give out your information.
USPTO TO REQUIRE FOREIGN-DOMICILED PATENT APPLICANTS AND OWNERS TO USE REGISTERED U.S. PRACTITIONERS BEGINNING JULY 20
Last week the USPTO sent a reminder that beginning Monday, July 20, 2026, patent applicants and patent owners not domiciled in the U.S. or its territories will be required to be represented by a USPTO-registered practitioner. This applies to all papers received in patent matters on or after that date, regardless of the application’s filing date. The USPTO has said the change is intended to improve efficiency, reduce backlog, improve quality, deter fraud and misrepresentation, and bring U.S. practice in line with most other major offices. Consistent with IPO’s January comments, applications will receive a filing date even if filed without a practitioner’s signature and the USPTO may issue notices giving applicants time to appoint counsel.
IPOEF SEEKING ATLANTA BASED CREATORS AND INNOVATORS
IPO Education Foundation needs YOUR help connecting with creators and innovators in the Atlanta area for a short video series. This project supports the Foundation’s strategic priority of elevating awareness about the role IP plays in innovation. Videos will feature stories about IP lessons learned, whether from failing to protect an innovation or from how protection helped a business succeed. More information about participation in the project can be found here. If you know a creator or innovator that may be a good fit or are interested in learning more, contact Deputy Executive Director, KRISTEN LURYE, klurye@ipo.org.
IPO CLOSED TOMORROW, JULY 3
IPO will be closed and we will not publish the Daily News tomorrow, July 3, in observance of the Independence Day holiday in the U.S. Normal operations will resume on Monday, July 6.