Welcome to Skilled in the Art. I'm Law.com IP reporter Scott Graham. It's always exciting when the Supreme Court takes up intellectual property cases, isn't it? Isn't it? Well, maybe not so much in Term 2018. The first IP case of Term 2019 also looks very narrow—but there still could be big fireworks ahead. In other news, Delaware has further beefed up the IP expertise on its bench, and I've got a quickie preview of the state sovereign immunity arguments coming to the Federal Circuit next week. As always you can email me your thoughts and follow me on Twitter.

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Irell & Manella's Morgan Chu (courtesy photo).

Wake Me When Term 2018 Is Over

Well, the Supreme Court has managed to fill in two more small blanks in IP law with a pair of unanimous decisions Monday. In Rimini Street v. Oracle, the court ruled that only statutorily enumerated costs can be awarded in copyright cases, and in Fourth Estate Public Benefit v. Wall-Street.com, the justices clarified that copyright registration requires action from the register.

These decisions undoubtedly matter to many rights holders, but they're not exactly game changers. They're a far cry from, say, 2016's Kirtsaeng decision on copyright attorneys fees and even the 2014's Petrella decision on laches in copyright cases.

Let's just say it: It's been a dull term for intellectual property at the Supreme Court. Earlier this year, the court—again unanimously—ruled that the Federal Circuit correctly determined that the America Invents Act did not change the onsale bar. Last month the court heard argument on whether the government can petition under the AIA—a case that has stirred some academic interest but, from as best I can tell, would affect about two AIA petitions per year. (Skechers USA has filed more IPR petitions to date than the USA, it appears.)

On Monday, the same day it decided Rimini Street and Fourth Estate, the court took up its first IP case of Term 2019, agreeing to decide in Iancu v. NantKwest whether the PTO can collect its in-house attorneys fees when it has to defend decisions to deny patent applications in district court.

This case did generate some amicus interest at the Federal Circuit, with the Intellectual Property Owners Association warning that patent owners could face “potentially crushing attorneys' fees” for exercising their statutory rights. The actual attorney fee bill in this case was only $75,000, though, so again, NantKwest doesn't seem revolutionary.

One thing I will say, the en banc arguments in NantKwest before the Federal Circuit were a barn burner. If Irell & Manella partner Morgan Chu and DOJ's Jaynie Lilley get a chance to duke it out again before the Supremes next fall, that would be entertaining.

But Term 2018 isn't going to be anything like Term 2013, where the court weighed in on eligibilty, indefiniteness and Section 285 in a matter of months. It isn't even going to rise to the level of Term 2016, where the justices reset the law of patent venue, exhaustion and the copyrightability of cheerleader uniforms. Instead, the big thrill of 2018 is going to be finding out if a merchandiser can trademark the word FUCT.

Villanova law professor Michael Risch speculated that the court could be picking non-controversial IP cases to offset the possible blockbusters that might be associated with a new justice. (Risch also believes NantKwest could surface some intriguing issues, such as whether in-house attorneys fees are ever recoverable.)

I'm thinking wait till next year. Term 2019 could bring us sovereign immunity at the PTAB, software copyrightability, and the meaning of “well-understood, routine and conventional” in patent eligibility cases. Then we'll have some excitement.

More IP Brainpower for Delaware Federal Bench

It's been a challenging couple of years for patent litigation in Delaware. The Supreme Court's 2017 TC Heartland decision made D-Del the nation's busiest patent docket just as two of its four members were getting set to retire.

The Article III bench returned to full strength last summer with the confirmations of U.S. District Judges Colm Connolly and Maryellen Noreika. Now an additional reinforcement has arrived in the form of a new U.S. magistrate judge with an impressive IP pedigree.

Jennifer Hall is the chief of the civil division in Delaware's U.S. attorney's office and a former patent litigator at Fish & Richardson. She holds a Ph.D. in molecular biophysics and biochemistry from Yale and has clerked for Federal Circuit Chief Judge Sharon Prost and Third Circuit Judge Kent Jordan.

“I think Jen is a great pick for the District of Delaware—hopefully as a district judge some day,” said Fish & Richardson partner John Dragseth.

He remembers once working with Hall for a client who felt good about its case but wanted the devil's advocate treatment. “Jen took the laboring oar and we presented an argument that really shook the client—and made them restructure how they were handling their case,” Dragseth recalls. He says Hall showed “solid judgment as a member of the team in figuring out which arguments made sense and which did not.”

The message for Delaware attorneys, Dragseth says: “You're lucky that people of Jen's qualifications are willing to take a big pay cut and serve, and be on your toes because she's sharp.”

Weil Gotshal & Manges partner Ed Reines said Hall looks like a great fit for Delaware's growing life sciences docket, which is being fueled by biosimilar litigation, ANDA disputes, and biotech cases in the genetics space.

“Adding this technical depth to an already talented Delaware bench is forward thinking, as suits in her areas of expertise continue to swell on the Delaware docket,” Reines said.

Hall is being appointed to a new MJ position created by the U.S. Judicial Conference.

Who's Arguing?

Sovereign immunity at the Patent Trial and Appeal Board is back before the Federal Circuit on Monday. This time the issue is state sovereign immunity, not tribal. The buzz around Regents of the University of Minnesota v. LSI seems to have cooled, probably because Judge Kimberly Moore seemed to foreshadow the outcome in her decision last summer that found no tribal immunity at the PTAB. “While we recognize there are many parallels, we leave for another day the question of whether there is any reason to treat state sovereign immunity differently,” Moore wrote in Saint Regis Mohawk Tribe v. Mylan.

That decision “decides this appeal,” Orrick, Herrington & Sutcliffe partner Mark Davies argues in briefs to the court for appellee Ericsson. As the Federal Circuit reasoned, IPRs aren't private civil litigation where immunity applies, but rather a second look by the PTO at a previously issued patent, instituted at the PTO director's discretion. Even if immunity did apply in that circumstance, he argues, the university waived it by suing Ericsson's customers in district court. Davies will be splitting time with Kilpatrick Townsend & Stockton partner Kristopher Reed, who is representing appellees LSI and Avago Technologies; Bartlit Beck partner Adam Mortara, representing intervenor Gilead Sciences; and with DOJ's Courtney Dixon, representing amicus curiae United States.

Wolf, Greenfield & Sacks partner Michael Albert will have the lectern all to himself for appellant University of Minnesota. He has some Federal Circuit precedent of his own: a 2007 decision from Judge Pauline Newman that said state sovereign immunity does apply in PTO interferences. “Its reasoning is indistinguishable here,” Albert argues in briefs. The mere presence of the PTO director as a gatekeeper in IPR proceedings cannot unwind state sovereign immunity, “which is not within the purview of Congress to abrogate,” he argues. The attorneys general of 14 states signed an amicus brief supporting the university, though none will be arguing Monday.

That's all from Skilled in the Art this week. I'll be on hiatus Friday, but will see you all again on Tuesday.