Patent Law and the Supreme Court

Question Presented:

Whether the Federal Circuit has erred in holding a combination of pre-existing elements unpatentable under 35 U.S.C. § 103(a) providing a synergistic result, an effect greater than the sum of several effects taken separately while solely and consistently being limited to applying the vague standard of what would be obvious to the hypothetical “person having ordinary skill in the art” without regard to the importance of secondary evidence relative to the issue of obviousness where petitioner has established a nexus between the merits of the claimed invention and the proffered evidence of secondary considerations.

Cert. petition filed 1/23/12, waiver by respondent David Kappos filed 4/11/12, conference 5/10/12. Petition denied 5/14/12.

CAFC Opinion

Question Presented:

The United States Court of Appeals for the Federal Circuit held that the waiver of sovereign immunity in the Administrative Procedure Act, 5 U.S.C. § 702, applies to a declaratory judgment action under the Patent Act that challenges the validity of patents owned by the United States. The question presented is:

Does the waiver of sovereign immunity in 5 U.S.C. § 702 apply to a claim that does not challenge the legality of “agency action” or “final agency action” within the meaning of the Administrative Procedure Act - or even any government action or inaction of any kind - but instead challenges the validity of government owned property based solely on actions by private parties?

Cert. petition filed 5/11/12.

CAFC Opinion, CAFC Argument.

WilmerHale represents petitioner California Table Grape Commission.

Question Presented:

Did the Federal Circuit err in construing the patent claim terms in this case because it employs different methodologies to construe claims rather than employing a single methodology providing the uniformity required by this Court's decision in Markman, et al. v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)?

Cert. petition filed 1/9/12, waiver by respondent Flagstar Bancorp filed 4/10/12, conference 5/10/12. Petition denied 5/14/12.

CAFC Opinion, CAFC Agrument

Questions Presented:

For over 70 years, federal courts hearing state-law claims must apply state law, even if even if it is irrational or bad public policy. Erie Railroad Co. v. Tompkins, 304 U.S. 64, 58 S. Ct. 817, 82 L. Ed. 1188 (1938). Here, the Federal Circuit Court of Appeals - the only federal appellate court without diversity jurisdiction - upheld the dismissal of a state-law claim without opinion, while the district court's 12(b)(6) dismissal on the pleadings ignored the controlling Illinois Supreme Court authority. This Petition presents two questions:

1. Does the Federal Circuit's jurisdictional grab over state-law patent-attorney malpractice claims comply with this Court's federalism analysis in Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (1988) and its progeny?[FN1]
   FN1. The question of “arising under” federal jurisdiction also is presented in a certiorari petition to the Texas Supreme Court pending before this Court in No. 11-1118, Gunn et al. v. Minton (Docketed 13 March 2012).
2. Did the Federal Circuit's lack of experience with federalism analysis result in a violation of Petitioner's Constitutional Rights under Erie Railroad?

Cert. petition filed 4/26/12, waiver by respondents Motorola, Inc., et al filed 5/14/12, conference 5/31/12.

CAFC Opinion, CAFC Argument.

Questions Presented:

Retractable Technologies, Inc. and Thomas J. Shaw (collectively, “RTI”) have filed a petition for a writ of certiorari seeking review of the method that the United States Court of Appeals for the Federal Circuit used to construe the term “body” in patents owned by RTI. Specifically, RTI argues that the clear statements in the specification defining the “invention” as having a “one piece hollow outer body,” criticizing the “two-piece” designs in the prior art, and touting the benefits of a one-piece design were not sufficient to show that the term “body,” as used in the patent claims, refers to a one-piece body.

If RTI's petition is granted, the Court should also consider the following questions, which provide alternative grounds for affirmance:

1. Whether the Federal Circuit's construction of the “lodging” limitation should be reversed because, at RTI's urging, the Federal Circuit deviated from the term's clear meaning on far weaker grounds than the court relied on to construe the ambiguous term “body.”
2. Whether the Federal Circuit's construction of the “retainer member” limitation should be reversed because, at RTI's urging, the Federal Circuit deviated from the term's clear meaning on far weaker grounds than the court relied on to construe the ambiguous term “body.”
3. Whether the Federal Circuit's holding that the asserted claims cover devices that work by cutting should be reversed because, at RTI's urging, the Federal Circuit disregarded a clear disclaimer of claim scope on far weaker grounds than the court relied on to construe the ambiguous term “body.”

Cert. petition filed 4/23/12.

CAFC Opinion, CAFC Argument.

WilmerHale represents petitioner Becton Dickinson and Co.

Questions Presented:

1. Whether applicable law by Justice Souter and ruling in Phillips is adopted to construe the claim construction of RE36,355 F1 patent by the Court of Appeals' Decision.
2. Whether the courts' decision taking away the jury verdict is in violation of petitioner's Seventh Amendment Constitutional Right by making the completely unsupported and erroneous fact finding that potassium bromate replacer is a substitute in the production of bread as potassium bromate.
3. Whether extensive objective evidence was introduced to prove PBR as a functional replacement for PB, but the courts have failed to grasp the technical subject matter, reaching a determination as to non-infringement and further failing to secure inventors the exclusive rights to their respective discoveries as our Constitution rightly states, U.S. Constitution, Article 1, Section 8, and Clause 8.
4. Whether the Appeals and District courts have further deprived the petitioner of due process by relying on the clearly erroneous fact finding to rule that the change in this transitional phrase was required by the Reexaminer to overcome prior art.
5. Whether the Court of Appeals granted defendant's motion on Applicable Damages Period by ruling that the use of “consisting of” or “present” narrowed the claim scope of RE36,355 F1 patent.

Cert. petition filed 3/7/12, waiver filed by respondent The Earthgrains Co. 4/3/12, conference 4/27/12. Petition denied 4/30/12.

CAFC Opinion

Questions Presented:

1. Whether the United States Court of Appeals for the Federal Circuit has erred in holding that a claimed invention can be held “obvious”, and thus unpatentable under 35 U.S.C. § 103(a), on the grounds of a combination of the subject matter, described in the embodiment section of a single prior art reference, with the subject matter criticized and discredited as a “drawback” in the background section of the same single prior art reference?
2. Whether the United States Court of Appeals for the Federal Circuit has erred in holding that a claimed invention can be held “obvious”, and thus unpatentable under 35 U.S.C. § 103(a), on the grounds of the reasoning of “obviousness”, wherein said reasoning with its own words “criticizes, discredits, or otherwise discourages” the claimed invention?

Cert. petition filed 4/17/12, waiver by respondent David J. Kappos, Director Patent & Trademark Office, filed 4/25/12, conference 5/17/12.

CAFC Opinion

Questions Presented:

When a party chooses to appeal a decision in an interference by the Board of Patent Appeals and Interferences (“Board”), it may choose to seek review either directly to the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) under 35 U.S.C. § 141 (“Section 141”), or to a United States District Court, under 35 U.S.C. § 146 (“Section 146”). When the appeal is taken directly to the Federal Circuit under Section 141, the appeal is decided strictly on the administrative record. However, when the review is sought in a district court under Section 146, the statute permits the parties to introduce additional evidence which was not presented before the Board. The questions presented are as follows:

1. Whether, when any new evidence is introduced under Section 146, “the district court may decide de novo the factual questions to which the evidence pertains, without giving deference to the prior decision of the PTO.” See Kappos v. Hyatt, No. 10-1219 (second question presented, argued on January 9, 2012, presently awaiting decision, but relating to parallel 35 U.S.C. § 145 (“Section 145”) rather than Section 146).
2. Whether, when new evidence is introduced in an action under Section 146 that does not conflict with the record before the Board, the district court must give deference to the Board's factual findings and apply the Administrative Procedure Act's substantial evidence standard of review.

Cert. petition filed 4/9/12, waiver by respondent Streck, Inc. filed 4/23/12, conference 5/17/12.

CAFC Opinion, CAFC Argument

Question Presented:

In a dramatic shift from established principles of patent law, the Federal Circuit upheld the validity of Respondent's patent claims based on a feature that was discovered by third parties, long after the patent application was filed, and was neither disclosed nor claimed by the patentee at the time of the invention.

Petitioner owns a patent related to cloning synthetic blood clotting proteins, and sued to have later, overlapping patent claims issued to Respondent declared invalid. Over a vigorous dissent by Judge Dyk, a divided panel of the Federal Circuit held that Respondent's patented claims were not obvious in light of Petitioner's claims. The majority credited Respondent with a discovery on the basis of “unexpected results” based on a feature that was not expressly or inherently disclosed or claimed and was discovered by others long after Respondent applied for its patents. That holding disregards fundamental principles of patent law, including that an invention must not have “been obvious at the time the invention was made,” 35 U.S.C. 103(a), that the elements of the invention must be set forth in the claims, and that only the person responsible for the underlying discovery may obtain a patent for that discovery. U.S. Const. art. I, § 8, cl. 8; 35 U.S.C. 101.

The question presented is:

Whether a patentee may rely, as evidence of the nonobviousness of his invention, on an undisclosed and unclaimed feature that does not flow inherently from the claims, which he did not and could not know at the time of the patent application's filing, and which was discovered separately, years after the patent application was filed, from research conducted by others.

Cert. petition filed 2/28/12, conference 4/13/12. Petition denied 4/16/12.

CAFC Opinion, CAFC Argument

Question Presented:

Whether the unclean-hands doctrine empowers a federal court to nullify valid patent-property rights asserted by an innocent transferee, rather than merely deny relief to the party with unclean hands.

Cert. petition filed 2/8/12, conference 4/13/12. Petition denied 4/16/12.

Waiver filed by respondent Ikea Illinois, LLC 3/8/12, waiver filed by respondent Wal-Mart Stores, Inc. 3/8/12, waiver filed by respondent Costco Wholesale Corp. 3/8/12, waiver filed by respondent Lowes Home Centers, Inc. 3/14/12.

CAFC Opinion, CAFC Argument