We round up the most significant appellate decisions relevant to commercial litigation each week.

Judgment in German action didn’t bar claim that defendant could (but didn’t have to) bring as counterclaim.

Loan contract that limited arbitration to claims under tribal law violated public policy.

Amount in controversy for purposes of removal under CAFA includes “reasonably possible” punitive damages.

Network monitor patent did more than embody abstract idea under Alice.

Researchers qualified as inventors of patents on cancer-targeting antibodies.

Claim that offshore drilling contract resulted from bribery didn’t defeat $622 million arbitration award for its breach.

Fair value of firm could equal value of its stock.

FAA exempts contracts with international transport workers who don’t cross any state line.

ERISA doesn’t preempt contract claims for insurer’s breach of promise to pay out of network charges.

Making twin of U.S. pizza joint in Scotland didn’t violate U.S. copyright or trademark law.

Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, energy, and intellectual property–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Appeals Roundup.

Check out my profile on the Susman Godfrey website.

Steve Susman–my friend and mentor and my firm’s founding partner–died yesterday. A great many people who knew or knew of Steve have sent condolences, which I appreciate very much. I am very sad but also very grateful.

For those of you who hadn’t heard or want to know more, below is a statement that the partners issued this morning.

Be well.

Steve Susman, 1941-2020

With extraordinary sadness, the partners of Susman Godfrey LLP announce the death of our beloved founder, colleague and friend Stephen D. Susman.  Steve died in Houston on July 14 from complications of a bicycle accident in April.

Steve was our leader.   The firm was always his vision.  He loved the law firm, and loved us, and it was mutual.  Steve was passionate about the law and justice.  He spent his entire life thinking and talking about, and working for, ways to improve the system of civil justice in America.

Steve changed the nature of law practice forever.  Long before the profession gave serious thought to basing a complex commercial litigation practice on contingent fees and other arrangements that rewarded success rather than the number of hours billed, Steve championed this and built a firm around his idea.  Hundreds of other firms have followed that model, but Steve pioneered it and proved, spectacularly, that it could work.

Steve also changed the way cases get litigated.  He urged lawyers to avoid excessive discovery and pretrial disputes, and instead focus on trial.  He taught Susman Godfrey lawyers and many other lawyers around the country that being fierce advocates does not preclude treating one’s adversaries with honesty, professionalism, and respect.

To decades of lawyers at Susman Godfrey, Steve was not just our founder and leader, but our mentor and friend.  He was as eager to work on cases with and spend leisure time with the firm’s newest associates as with his most senior colleagues.  Many of the older Susman Godfrey lawyers referred to him as “Dad” and it was more-than-half serious.  Steve played a fatherly role at the firm, even if he was a father whose words of wisdom were liberally sprinkled with F-bombs, dares, and raucous laughter. Through the power of his personality and intellect he imparted to generations of Susman Godfrey lawyers his dedication to hard work, intellectual rigor, zealous but honest advocacy, candor in dealing with clients and courts, entrepreneurial inventiveness, devotion to the legal system, and social consciousness.

We all knew that the Steve Susman era would end at some point, but that did not stop us from hoping in our hearts that he would be with us at Susman Godfrey forever.  When he flirted with retirement two years ago, the partnership responded by unanimously adopting a policy of mandatory retirement at age 100.

Our hearts go out to Steve’s wife Ellen, his son Harry and wife Karen, his daughter Stacy and husband Tom, his step-daughter Whitney and husband Matt, his step-daughter Amanda and husband Matt, his brother Tommy and wife Susan, his eight grandchildren, and his entire law firm family.

We will miss Steve tremendously as we carry on his legacy, practicing law the way Steve taught us, honoring the values he imparted, treasuring the extraordinary camaraderie that he built. It is no surprise that when Steve was injured bicycling in April, he was with lawyers from his firm, young and old, moving forward, having fun, in the lead, pedaling as fast as he could.

We round up the most significant appellate decisions relevant to commercial litigation each week.

Beating a motion to dismiss or for summary judgment doesn’t count as success on merits.

Sports shoe making design patent wasn’t obvious.

Light up shoe design patent was obvious.

Congress gave chief of CFSB too much independence.

Fiduciary shield doctrine crumples.

Tacking .com to end of generic word or phrase may create protectable copyright.

Arthritis patent beats double-patenting, insufficient description, and obviousness attacks.

Exceptional case determination needed to address patent plaintiff’s practice of seeking nuisance-value settlements.

Claim of oral side deal breached warranties in APA, barring claim and triggering indemnification.

Salt supply agreement lacked promise to buy only from seller, therefore didn’t constitute requirements contract.

Copyright law didn’t preempt unjust enrichment claim, but win on copyright claim entitled defendant to fees.

Lack of link to factual nucleus underlying federal law claim deprived court of supplemental jurisdiction over state law claim.

Debtors who didn’t fall for misleading debt-collection letter lacked standing to sue.

Letter giving notice of intent to start marketing competing drug satisfied statute.

Free pass for robocalls to collect federal debts failed strict scrutiny test under first amendment.

Past buyers of pasta couldn’t bring class action to enjoin future sales.

Statute doesn’t allow federal courts to order discovery in aid of private arbitration outside U.S.

PTAB shouldn’t have deemed invention “not unpatentable” without ruling on its obviousness in IPR.

Judgment in German action didn’t bar claim that defendant could (but didn’t have to) bring as counterclaim.

Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, energy, and intellectual property–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Appeals Roundup.

Check out my profile on the Susman Godfrey website.

Contempt action for violation of bankruptcy discharge order belonged in court despite arbitration clause. ca2.uscourts.gov/decisions/isys

DACA survives. supremecourt.gov/opinions/19pdf

Lawyer who won judgment on Argentine bonds had lien on proceeds of settlement he didn’t participate in and could sue Argentina under commercial activity exception to FSIA. ca2.uscourts.gov/decisions/isys

Arbitration clause required that arbitrator arbitrate arbitrability. opn.ca6.uscourts.gov/opinions.pdf/2

Monopolization claim against giant in niche packaging market didn’t state viable patent fraud, sham litigation, or bundling predicates. ecf.ca8.uscourts.gov/opndir/20/06/1

Class false advertising claim didn’t qualify for restitution due to availability of damages as legal remedy. cdn.ca9.uscourts.gov/datastore/opin

Experts and part owner of partnership failed to support opinions on loss-in-value trade-secret damages. txcourts.gov/media/1447776/

Bank’s proxy statement may have misled shareholders about regulatory risks its practices posed to merger. www2.ca3.uscourts.gov/opinarch/17369

Shift in focus didn’t sidestep with-prejudice dismissal’s preclusive effects on later patent infringement claims. cafc.uscourts.gov/sites/default/

SEC’s power to get “equitable relief” includes disgorgement but only to extent of wrongdoer’s net profits and only to benefit victims. supremecourt.gov/opinions/19pdf

Qui tam claim for fraud beats officials’ immunity defense. ca4.uscourts.gov/opinions/18157

Bankruptcy plan can estimate how long it will last. cdn.ca9.uscourts.gov/datastore/opin

Third-party counterclaim defendants have no right to remove a case from state court. media.ca11.uscourts.gov/opinions/pub/f

Breach of duty to disclose claim against director requires proof of reliance, causation, and damages. courts.delaware.gov/Opinions/Downl

Refund of improper charge didn’t defeat Article III standing. cdn.ca9.uscourts.gov/datastore/opin

SEC didn‘t have to impose fiduciary duty on broker-dealers. ca2.uscourts.gov/decisions/isys

Russian operator of websites that enabled users to rip audio files may have to defend against music owners’ copyright claims in Virginia. ca4.uscourts.gov/opinions/19112

Class of life insurance owners can keep $34 million verdict for improper “cost of insurance” fees that State Farm added to premiums. ecf.ca8.uscourts.gov/opndir/20/06/1

Airplane bathroom patent on space-saving design was obvious. cafc.uscourts.gov/sites/default/

Skipping interlocutory appeal didn’t forfeit appeal from final judgment. txcourts.gov/media/1448051/

Business that alleged defamation had only a business disparagement claim. txcourts.gov/media/1448050/

Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, energy, and intellectual property–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Appeals Roundup.

Check out my profile on the Susman Godfrey website.

Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, energy, and intellectual property–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Appeals Roundup.

Check out my profile on the Susman Godfrey website.


This week’s Commercial Appeals Roundup actually covers a fortnight of appeals court rulings, from May 18 to June 5. Eyeballing the total number (24) makes me think the courts’ output has slowed only a little as a result of COVID-19.  

Subject-matter-wise, the courts:

  • spoke on 7 IP issues,
  • dealt with securities and pension claims in 4,
  • decided arbitration questions in 3,
  • considered commercial contract claims in 2,
  • upheld 1 big price-fixing jury award, and
  • resolved 1 case each involving (a) Article III standing, (b) punitive damages, (c) removability of some kinds of nuisance cases, (d) res judicata, (e) the appointments clause, (f) preemption, and a (g) copycat class action.

Be well.

* * * *

Signing of one-page contract to rent car didn’t bind customers to arbitration clause in “rental jacket”. www2.ca3.uscourts.gov/opinarch/18378

Scent sprayer patent was obvious. cafc.uscourts.gov/sites/default/

Grant of right to use trademark in divorce didn’t create “naked license” without quality controls and therefore didn’t abandon trademark. ecf.ca8.uscourts.gov/opndir/20/05/1

Copyright owner doesn’t have burden to show copied elements of its work were protectable. media.ca11.uscourts.gov/opinions/pub/f

Actionable “use” of trade secret doesn’t require breach of duty. media.ca11.uscourts.gov/opinions/pub/f
$5.8 million in punitives on $20,000 in actuals for fraud in sale of Ferrari surpassed due process limits. ecf.ca8.uscourts.gov/opndir/20/05/1

Broad warnings about risk of single-stock funds beat ERISA claim 
for failure to warn employees about risk of fund that owned employer’s stock. ca5.uscourts.gov/opinions/pub/1
Rosy statement that became untrue after investment didn’t support fraud claim. media.ca1.uscourts.gov/pdf.opinions/1
Nuisance claim didn’t support federal jurisdiction. cdn.ca9.uscourts.gov/datastore/opin
Res judicata didn’t bar class claim for life insurance premium overcharges. media.ca11.uscourts.gov/opinions/pub/f
To meet test for pleading scienter, Securities Exchange Act claim must link false statements about bad product to people who knew it had problems. ca2.uscourts.gov/decisions/isys
Airline worker who oversaw ticketing and gate agents didn’t engage in moving goods in commerce and therefore didn’t qualify for exemption under Arbitration Act. ca5.uscourts.gov/opinions/pub/1
Trucking company that hired 167 drivers despite non-competes with competitor that trained them faces trial on competitor’s tortious interference and unjust enrichment claims. ecf.ca8.uscourts.gov/opndir/20/05/1
Copycat class action plaintiff could keep first to file plaintiff out of case, settle class claims. ecf.ca8.uscourts.gov/opndir/20/05/1
Presence, in “single unit” copyright registration, of works that weren’t published with the other works could invalidate copyright in work that was. cdn.ca9.uscourts.gov/datastore/opin
Federal drug laws didn’t preempt state-law class claims for shorting amount of drug. ca10.uscourts.gov/opinions/19/19
Beneficiaries of ERISA defined-benefit pension plan lacked standing to sue for harm to plan from fiduciary breach. supremecourt.gov/opinions/19pdf
Treaty didn’t bar equitable estoppel as ground for enforcing arbitration agreement as to nonsignatory. supremecourt.gov/opinions/19pdf
Appointments clause in Article II of U.S Constitution doesn’t apply to appointment of federal officials having local duties in Puerto Rico. supremecourt.gov/opinions/19pdf
Clean Air Act didn’t pre-empt claims of states and counties against Volkswagen for pollution from diesel Volkswagens resold by others. cdn.ca9.uscourts.gov/datastore/opin
Statute for fee awards in “exceptional” patent cases doesn’t allow awards for IPR appeals. cafc.uscourts.gov/sites/default/
Disk drive maker owes HP $469 million as attacks on price-fixing damages model and verdict misfire. ca5.uscourts.gov/opinions/pub/1
Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, energy, and intellectual property–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Appeals Roundup.

Check out my profile on the Susman Godfrey website.


Appeals courts kept churning out rulings in the commercial sphere last week, but even more than usual dealt with IP issues—10 of 12 by my count, with one oil and gas and one class action rounding out the dozen.

The Supreme Court Itself spoke up, ruling in a trademark death-match that the end of previous phase of the feud didn’t preclude the Hatfields from upholstering a new defensive weapon. That trickle will turn into a flood, as the 2019 Term nears its June end.

Stay safe, keep doing good, and be well.

Federal Drug & Cosmetic Act preempted state-law claims about liquid products you can’t fully dispense. ca2.uscourts.gov/decisions/isys

Copyright owner had burden to show terms of license didn’t allow licensee to use works as it did. ca2.uscourts.gov/decisions/isys

Any case that turns on copyright validity and infringement can trigger award of fees to winner. cdn.ca9.uscourts.gov/datastore/opin

Post-suit reformation of patent assignment applied retroactively, giving plaintiff right to sue at time of filing. cafc.uscourts.gov/sites/default/

Terms of firm’s winning bid for lead class counsel spot sets starting point for fee award. cdn.ca9.uscourts.gov/datastore/opin

A jury could find “Engineered Tax Services” service mark inherently distinctive. media.ca11.uscourts.gov/opinions/pub/f

Patent claimed abstract idea of giving advance notice of delivering something. cafc.uscourts.gov/sites/default/
Patent claimed abstract idea of giving advance notice of delivering something. cafc.uscourts.gov/sites/default/
Chalk holder that looks like chubby pencil loses design patent, copyright, trade dress, and unfair competition claims. cafc.uscourts.gov/sites/default/
Patent on hearing aid that uses head bone to conduct sound to non-deaf ear survives preamble-as-limiting and some obviousness attacks. cafc.uscourts.gov/sites/default/
Doctrine of ”defense preclusion” might not be a thing, but if it is, it doesn’t bar defense in second suit against new claim. supremecourt.gov/opinions/19pdf
Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, energy, and intellectual property–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Appeals Roundup.

Check out my profile on the Susman Godfrey website.

Decisions by appeals court have started to slow as the judges work through backlogs and adjust to remote oral arguments, remote conferences, and home offices with yappy dogs and bitey cats. The Week of May 4 produced 7 opinions that rated tweets on @contingencyblog, most of them dealing with intellectual property. Your Commercial Appeals Roundup, featuring a blurb for each of those rulings, appears below.

Be well.

* * * *

Party that brought IPR waived Appointments Clause complaint objection to panel of Patent Trial and Appeal Board. cafc.uscourts.gov/sites/default/

Mistake in view of prior art required new look at obviousness of patent asserted against Uber. cafc.uscourts.gov/sites/default/

New GM didn’t judicially admit it had to pay death claim against old GM. ca2.uscourts.gov/decisions/isys

Only “party affected” by force majeure event had duty to try to overcome it. media.ca7.uscourts.gov/cgi-bin/rssExe

Ruling on unconstitutionality of appointments to Patent Trial and Appeals Board panels didn’t apply to final decisions that post-dated ruling. cafc.uscourts.gov/sites/default/

Calling cooking oil that contains GMOs “100% Natural” could mislead consumers. media.ca1.uscourts.gov/pdf.opinions/1

Patents on cancer drug spoke of ethanol but didn’t include it in claims, ceding right to assert drug that used ethanol infringed patents. cafc.uscourts.gov/sites/default/

Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, energy, and intellectual property–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Appeals Roundup.

Check out my profile on the Susman Godfrey website.

Here are the Commercial Appeals Roundups for the weeks of April 20-24, 2020 and April 27-May 1, 2020. The Roundups describe a key aspect of precedential appellate rulings by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas and provide links directly to the relevant court’s opinion.

Week of April 20

Extension of drug patent term didn’t apply to inactive variation of active ingredient. cafc.uscourts.gov/sites/default/

Beating patent claim on mootness grounds made defendant prevailing party that could get fee award. cafc.uscourts.gov/sites/default/

Tsunami case against GE belonged in Japan. media.ca1.uscourts.gov/pdf.opinions/1

Averaging could doom class cert in pay-for-delay antitrust case. www2.ca3.uscourts.gov/opinarch/19165

You can’t sue a dead person. cdn.ca9.uscourts.gov/datastore/opin

Company founded by assignor of three patents couldn’t contest validity of two in suit by assignee but could defeat third patent via IPR that resulted in invalidation. cafc.uscourts.gov/sites/default/

Drug seller lacked standing to appeal loss in IPR attack on patentability of drug it didn’t yet and might never make. cafc.uscourts.gov/sites/default/

Patent on method for fishing claimed abstract idea. cafc.uscourts.gov/sites/default/

Week of April 27

Privilege didn’t protect names of tax law firm’s clients. ca5.uscourts.gov/opinions/pub/1

Instruction in jury charge mooted question that required antitrust plaintiff to prove competitors’ pact allocated both customers and territories. ecf.ca8.uscourts.gov/opndir/20/04/1

Deep-sixing of database accused of copyright infringement supported verdict against new company set up by founder of copyright owner. ecf.ca8.uscourts.gov/opndir/20/04/1

Fraud verdict adequately compensated lender for reliance on faulty appraisal of Las Vegas Lakes project. txcourts.gov/media/1446454/

Disclaimer of reliance didn’t bar Texas jury’s fraudulent inducement finding under New York law. txcourts.gov/media/1446454/

Sanctions against lawyer require proof of bad faith. txcourts.gov/media/1446455/

Award of profits for trademark infringement doesn‘t depend on finding of willfulness. txcourts.gov/media/1446455/

Conflict of laws rules overrode choice of law in contract. ca5.uscourts.gov/opinions/pub/1

Law firms’ advance split of contingent fee didn’t track actual work, had to give way. ecf.ca8.uscourts.gov/opndir/20/04/1

Objective test governs sham-lawsuit exception to immunity under first amendment protection for petitioning activity. ca10.uscourts.gov/opinions/19/19

“Breezy” class cert ruling in ERISA case didn’t have enough “rigor”. ca5.uscourts.gov/opinions/pub/1

Daubert barred class expert in case over design defect. ca5.uscourts.gov/opinions/pub/1

Hope of someday selling goods in U.S. didn’t provide basis for jurisdiction to contest U.S. trademark rights. ca2.uscourts.gov/decisions/isys

“Lawful possessor” of trade secrets may sue for their misappropriation. www2.ca3.uscourts.gov/opinarch/19172

Communication system patent covered more than an unpatentable abstract idea. cafc.uscourts.gov/sites/default/

Too-narrow claim construction in IPR required second look at obviousness on remand. cafc.uscourts.gov/sites/default/

Arbitrators could change ”Partial Final Award”. nycourts.gov/ctapps/Decisio

Payment of unlawful import fee by ocean freight carriers didn’t confer standing to sue on shippers. media.ca1.uscourts.gov/pdf.opinions/1

Federal court may have diversity jurisdiction over petition to enforce arbitrators’ subpoena against non-parties to arbitration even if it wouldn’t have diversity jurisdiction over case between parties. ca2.uscourts.gov/decisions/isys

FAA allows courts to enforce arbitrators’ subpoenas that call for production at “a hearing” before arbitrators. ca2.uscourts.gov/decisions/isys

Court may defer rulings on objections to subpoena for documents to arbitrators. ca2.uscourts.gov/decisions/isys

Bud Light ads can say Molson Coors makes Coors Light with corn syrup. media.ca7.uscourts.gov/cgi-bin/rssExe

Copyright law doesn’t protect state legal code. supremecourt.gov/opinions/19pdf

Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, energy, and intellectual property–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Appeals Roundup.

Check out my profile on the Susman Godfrey website.

Here’s the Commercial Roundup: Appeals for the week of April 13-17, 2020. As you’ll see, it went heavy on intellectual property and procedure, the latter including rulings on arbitration awards and class (de)certification.

Have a great week. We’ll see you again next Monday.

Be well.

Note for readers

Because my practice focuses on complex commercial disputes–especially antitrust, oil and gas, and patents–I keep daily track of important decisions by the U.S. Supreme Court, the 13 U.S. Courts of Appeals, and the highest appeals courts in Delaware, New York, and Texas.

You can follow along during the week on Twitter (@contingencyblog) or here at The Contingency each Monday with this Commercial Roundup: Appeals