WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of denied petitions for this year, organized in reverse chronological order by date of certiorari petition.
OIP Technologies, Inc. v Amazon, Inc., No. 15-642
1. Whether all methods that improve existing technological processes are equally eligible for patent protection under 35 U.S.C. § 101, and the Federal Circuit erred by distinguishing a method of testing demand to improve a pricing process from Diehr's method of testing temperature to improve the timing of a rubber curing process by finding that only the business-related process was ineligible.
2. Whether a court may grant a motion to dismiss a patent infringement suit for failure to claim patent-eligible subject matter under 35 U.S.C. § 101 based on factual determinations that are inconsistent with the facts in the complaint, notwithstanding the requirement of Federal Rule of Civil Procedure 12 that all facts in the complaint be taken as true.
Cert. petition filed 11/12/15, waiver of respondent Amazon.com, Inc. filed 11/17/15, conference 12/11/15. Petition denied 12/14/15.
Allvoice Developments US, LLC v. Microsoft Corp., No. 15-538
1. Do patent claims addressed directly to software that is inherently in a computer-readable medium qualify as a “manufacture” under 35 U.S.C. § 101 without express recitation of the medium?
2. Does a district court abuse its discretion when it refuses to consider evidence of patent infringement as described in a patentee's infringement contentions on the ground that those contentions did not refer to the specific part of the accused product corresponding to a particular claim element by name when (a) the accused infringer never objected to the adequacy of the disclosure, (b) the patentee nevertheless identified the specific part by name during discovery, and (c) there is no reason, such as bad faith or prejudice to the accused infringer, for excluding the evidence as a sanction?
Cert. petition filed 10/23/15, waiver of respondent Microsoft Corp. filed 11/17/15, conference 12/11/15. Petition denied 12/14/15.
Fivetech Technology Inc. v. Southco, Inc., No. 15-381
In United States v. Adams, 383 U.S. 39, 49 (1966), this Court stated that “it is fundamental that [patent] claims are to be construed in light of the specifications, and both are to be read with a view to ascertaining the invention.” In Markman v. Westview Instruments, Inc., 517 U.S. 370, 389 (1996), this Court referenced the required “standard construction rule that a [claim] term can be defined only in a way that comports with the instrument as a whole.” (Emphasis added). In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the Federal Circuit rejected a line of Federal Circuit opinions that limited the role of the specification in defining claim terms only to instances of explicit redefinitions or explicit disavowals of claim scope. However, since Phillips, the Federal Circuit remains divided as to the role of the specification and file history (intrinsic evidence) in construing claim terms. Specifically, some panels of the Federal Circuit have adopted a rigid standard of “lexicography and disavowal” for defining claim terms which limits the relevance of the intrinsic evidence only to those instances of explicit redefinition of a claim term or explicit disavowal of claim scope. See, e.g., GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304,1308-09 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). This has raised the following questions for this Court.
Cert. petition filed 9/28/15, conference 12/4/15. Petition denied 12/7/15.
Allergan plc v. State of New York, No. 15-587
Brand drug manufacturers seeking to market a new prescription drug must undergo a long and expensive process to obtain FDA approval. Under the 1984 Drug Price Competition and Patent Term Restoration Act, better known as Hatch-Waxman, generic drug manufacturers can obtain FDA approval for a “bioequivalent” generic drug more easily, by piggy-backing on the brand's approval efforts. Once the brand drug's patent and other exclusivities expire and generic versions enter the market, state drug substitution laws permit or require pharmacists to dispense lower-priced, therapeutically equivalent generic drugs in place of brand drugs, unless the prescriber directs otherwise. Under most (but not all) states' definitions of therapeutic equivalence, however, pharmacists may not substitute a generic drug that has a different dose than the prescribed brand without the physician's approval.
The Second Circuit held below that brand drug manufacturers have a federal antitrust duty to facilitate the operation of state drug substitution laws so as to maximize the future sales of their generic competitors. Petitioners are a brand drug manufacturer and its subsidiary, who sought to exercise their rights under the Patent Act to limit distribution of an outdated version of their patented Alzheimer's drug in favor of an innovative new formulation with different dosing and longer patent protection. The Second Circuit held that so doing would violate section 2 of the Sherman Antitrust Act because it would reduce the number of prescriptions most state substitution laws would automatically hand over to Petitioners' generic rivals once the old drug's exclusivities ended.
The questions presented are:
1. Whether exercising rights granted by the Patent Act—in particular, not selling one patented product and selling a different patented product instead—can violate the Sherman Antitrust Act?
2. Whether drug manufacturers have a federal antitrust duty to facilitate the operation of state drug substitution laws to maximize competitors' sales?
Cert. petition filed 11/4/15. Petition dismissed – Rule 46 11/30/15.
CA2 Opinion, No CA2 Argument
Nautilus, Inc. v. Biosig Instruments, Inc., No. 15-561
The Patent Act's particular-and-distinct claiming mandate gives innovators the reasonable certainty they need to invent confidently near a patent claim's boundary, but not over it. See 35 U.S.C. § 112, - 2 (2006 ed.). To perform this public-notice function, a patent claim must be clear the day it issues. This Court accordingly rejected the Federal Circuit's post hoc “amenable to construction” standard: “It cannot be sufficient that a court can ascribe some meaning to a patent's claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 (2014). But, the remand panel again did the opposite. It copied and pasted much of its opinion this Court had vacated. It did not even mention the original prosecution history. Instead, it again viewed the claim post hoc in view of statements made in Patent Office proceedings 15 years after the patent issued. And, it again relied upon a purely functional distinction over a structurally identical prior-art design as supposedly providing sufficient clarity.
The questions presented are:
1. Is a patent claim invalid for indefiniteness if its scope is not reasonably certain the day the patent issues, even if statements in later Patent Office proceedings clarify it?
2. Is a patent claim invalid for indefiniteness if its scope is distinguished from prior art solely by a functional requirement, rather than by any structural difference?
Cert. petition filed 10/30/15, waiver of respondent Biosig Instruments, Inc. filed 11/5/15, conference 11/24/15. Petition denied 11/30/15.
Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., No. 15-115
Title 35 U.S.C. § 103(a) (2006) prohibits the issuance of a patent where “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” (Emphases added). This statute will continue to govern hundreds of thousands of patents (those with effective filing dates before March 16, 2013) for many years to come.
The question presented is whether a mere conception that was neither known to the public nor reduced to practice at the time a patented invention was made is “prior art” to that invention under the pre-2013 version of 35 U.S.C. § 103.
Cert. petition filed 7/27/15, response requested 9/21/15, conference 11/24/15. Petition denied 11/30/15.
Meso Scale Diagnostics, LLC v. Roche Diagnostics GmbH, No. 15-510
Whether a covenant, promise, or agreement not to sue for the infringement of a federal patent is a license of that patent as a matter of federal law.
Cert. petition filed 10/13/15, waiver of respondent Roche Diagnostics GmbH filed 10/23/15, conference 11/13/15. Petition denied 11/16/15.
Chunghwa Picture Tubes, Ltd. v. Eidos Display, LLC, No. 15-288
In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (“Teva”), this Court put an end to the Federal Circuit's universal de novo review of all district courts' claim constructions by holding that: “a court of appeals 'must not . . . set aside' a district court's '[f]indings of fact' unless they are 'clearly erroneous.'” Id. at 836. “In our view, this rule and the standard it sets forth must apply when a court of appeals reviews a district court's resolution of subsidiary factual matters made in the course of its construction of a patent claim.” Id.
Teva also confirmed that Federal Rule of Civil Procedure 52(a)(6) “does not make exceptions or purport to exclude certain categories of fact findings.” Id. at 837. This Court went on to specifically hold that “[e]ven if exceptions to the Rule were permissible, we cannot find any convincing ground for creating an exception to that Rule here.” Id.
The question presented is as follows:
Whether a district court's factual finding(s) underlying its construction of a patent claim term must be reviewed for clear error under Rule 52(a)(6) as this Court held in Teva, or is an exception created to clear error review where the appellate court finds the intrinsic record clear after a de novo review of that record, as the Federal Circuit held in this case.
Cert. petition filed 9/8/15, conference 11/13/15. Petition denied 11/16/15.
Arthrex, Inc. v. KFx Medical Corporation, No. 15-291
Under the 1952 Patent Act, an invention is not eligible for a patent if it is “obvious,” ie., “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art” at the time the patent application was filed. 35 U.S.C. § 103. This Court has stated that, in deciding obviousness, it can be important “to determine whether,” at the time the patent application was filed, there was “an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int'l Co. v. Telefax Inc., 550 U.S. 398, 418 (2007). The questions presented are:
Cert. petition filed 9/4/15, conference 11/13/15. Petition denied 11/16/15.
Mylan Pharmaceuticals Inc. v. Apotex Inc., No. 15-307
Years ago, a branded pharmaceutical company disclaimed one of two patents that underlay its brand name blood-pressure medicine in response to petitioner's Abbreviated New Drug Application (“ANDA”). Under the well-established law of this Court, that disclaimer rendered the patent a complete nullity that could not be infringed. Nonetheless, years later the respondent filed a declaratory judgment action seeking a judicial declaration of what no one did or could dispute—namely, that a generic version of the blood-pressure medicine did not infringe the disclaimed patent. Respondent's incentive for filing this action in the absence of any dispute over the question to be litigated is clear: Respondent believes that a judicial declaration of non-infringement will benefit it at petitioner's expense by effectively eliminating the period of generic exclusivity petitioner secured by filing its ANDA first. While the District Court recognized that a statutory incentive to sue was no substitute for an actual controversy, the Federal Circuit reversed in a decision that will open the doors of district courts nationwide to non-disputes over disclaimed patents.
The questions presented are:
Cert. petition filed 9/8/15, conference 11/6/15. Petition denied 11/9/15.
Sankyo, Inc. v. Apotex, Inc., No. 15-281
Whether an action seeking a declaration that a patent would not be infringed presents a justiciable case or controversy under Article III of the Constitution where the patent at issue was previously disclaimed and thus cannot be enforced.
Cert. petition filed 9/4/15, conference 11/6/15. Petition denied 11/9/15.
Automated Merchandising Systems, Inc. v. Lee, No. 15-326
Cert. petition filed 9/11/15, waiver of respondent Michelle K. Lee, Director, United States Patent and Trademark Office filed 10/9/15, conference 10/30/15. Petition denied 11/2/15.
Butler v. Balkamp Inc., No. 15-273
Is summary judgement proper in a District Court when a factual dispute exists in a Design Patent action and the District Court substitutes its own opinion for that of the ordinary observer?
In Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986), this court articulated the standard that a District Court must consider evidence presented by the non-moving party: “the evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.” Since, Anderson, and without further guidance from this Court, lower courts have reformulated the standard to allow summary judgment when there is a genuine issue as to material fact. The specific questions presented in this case:
Cert. petition filed 8/31/15, waiver of respondents Balkamp Inc., et al. filed 10/2/15, conference 10/30/15. Petition denied 11/2/15.
Luv n' Care, Ltd. v. Munchkin, Inc., No. 15-242
Did the Federal Circuit err by rejecting the law of at least the First, Second, Fourth, Fifth, Sixth, Seventh, Eighth, Ninth, Tenth, and D.C. Circuits when it affirmed a PTAB administrative judgment based on new issues raised sua sponte by the PTAB at the Final Hearing, thus depriving the patent owner of notice and a meaningful opportunity to respond?
Cert. petition filed 8/24/15, conference 10/30/15. Petition denied 11/2/15.
Bodum, Inc. v. Meyer Intellectual Properties Limited, No. 15-185
In determining whether this patent case was “exceptional” requiring an award of attorney fees to a prevailing defendant pursuant to 35 U.S.C. § 285, does the successor District Court Judge's reliance upon the decision of the predecessor District Court Judge, which decision was vacated by the Federal Circuit Court of Appeals, instead of reviewing de novo the prior record in the case, deprive the Petitioner of its right to have the case fairly adjudicated?
Cert. petition filed 8/11/15, conference 10/16/15. Petition denied 10/19/15.
MobileMedia Ideas LLC v. Apple Inc., No. 15-206
Cert petition filed 8/13/15, waiver of respondent Apple Inc. filed 8/31/15, conference 9/28/15. Petition denied 10/5/15.
Pulse Electronics, Inc. v. Halo Electronics, Inc., No. 15-121 (Vide 14-1513)
Cross-petitioners Pulse Electronics, Inc. and Pulse Electronics Corporation (collectively, “Pulse”) respectfully file this conditional cross-petition for a writ of certiorari to review the judgment of the United States Court of Appeals for the Federal Circuit in this case. The Court should deny the petition for a writ of certiorari in No. 14-1513 and, if the Court does so, it need not consider this cross-petition. If the Court grants that petition, however, it should also grant this conditional cross-petition so that the Court can first consider whether the patent claims that form the basis of the issues raised in that petition are valid or invalid. The single question presented by this conditional cross-petition is:
Whether the Federal Circuit erred by failing to consider obviousness as a de novo legal issue, and, as a result, not holding that all the asserted claims of the patents-in-suit, in light of the correct scope and content of the prior art, are invalid as a matter of law, where (a) all of the claim limitations are present in the prior art, (b) the prior art is clearly combinable, (c) the alleged secondary considerations are irrelevant or unproven, and (d) there is no proof of any nexus of any alleged secondary consideration to the claimed inventions.
Cert petition filed 7/24/15, conference 9/28/15. Petition denied 10/5/15.
W.L. Gore & Associates, Inc. v. Bard Peripheral Vascular, Inc., No. 15-41
The second paragraph of 35 U.S.C. § 261 provides, with emphasis added:
Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.
The question presented is:
Does Section 261 require that a grant or conveyance of an exclusive patent license be in writing?
Cert petition filed 7/7/15, conference 9/28/15. Petition denied 10/5/15.
Beriont v. GTE Laboratories, Inc., No. 14-1517
Many inventors seek patent protection using and trusting legal professionals to properly prosecute their patent application. To do otherwise would place the inventor, as well as any potential co-inventors, at risk of losing valuable protections afforded by a complex set of evolving patent laws. This is especially true when the inventor is an employee and has no agreement to assign patents with his employer. The Petitioner Walter Beriont, like many inventors, used a corporate patent attorney to navigate the complex path to a U.S. patent. The corporate patent attorney led Beriont to believe that the attorney would provide full disclosure and protect his interest. This case therefore presents the following questions for review:
Cert. petition filed 6/22/15, waiver of respondent GTE Laboratories, Inc. filed 7/14/15, conference 9/28/15. Petition denied 10/5/15.
CAFC Opinion, No CAFC Argument
Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, No. 14-1473
Cert. petition filed 6/10/15, conference 9/28/15. Petition denied 10/5/15.
Key Lighting, Inc. v. Briese Lichttechnik Vertriebs GMBH, et al., No. 14-1416
Cert. petition filed 5/27/15, waiver of respondent Briese Lichttechnik Vertriebs GmbH filed 6/16/15, conference 9/28/15. Petition denied 10/5/15.
Interval Licensing LLC v. AOL, Inc., et al., No. 14-1362
Whether a patent claim that includes terms that are either “subjective” or “terms of degree” is invalid as indefinite as a matter of law unless it also includes express definitional language or unambiguous limiting language.
Cert. petition filed 5/15/15, conference 9/28/15. Petition denied 10/5/15.
I/P Engine, Inc. v. AOL Inc., No. 14-1358
In Graham v. John Deere Co. of Kansas City, this Court held that whether a patent would have been “obvious” depends on several basic factual inquiries, including “the scope and content of the prior art” and “the differences between the prior art and the claims at issue.” 383 U.S. 1, 17 (1966). In KSR Int'l Co. v. Teleflex Inc., this Court explained that factual questions “continue to define the inquiry that controls” the determination of obviousness, and towards that end held that “factfinders” should not be denied recourse to the “common sense” of a skilled artisan when considering the relationship between prior art and the challenged patent. 550 U.S. 398, 407 (2007). In the decision below, the Federal Circuit held that the “substantial evidence” standard did not control its review of the jury's factual findings relating to the Graham factors, and that it was free to apply its own “common sense” in determining the relationship between the prior art and the challenged patent.
The question presented is:
Under what circumstances, if any, may the Federal Circuit review de novo a jury's factual findings underlying a district court's determination that a patent is nonobvious?
Cert. petition filed 5/13/15, conference 9/28/15. Petition denied 10/5/15.
Netairus Technologies, LLC v. Apple Inc., No. 14-1353
Cert. petition filed 5/11/15, waiver of respondent Apple Inc. filed 6/15/15, conference 9/28/15. Petition denied 10/5/15.
Ultramercial, LLC v. WildTangent, Inc., No. 14-1392
Whether computer-implemented or software-based claims, reciting novel or non-routine steps with no conventional counterparts, still cover only patent-ineligible “abstract ideas” as this Court has interpreted 35 U.S.C. § 101?
Cert. petition filed 12/7/11, conference 2/17/12, likely being held, perhaps for Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150. Cert. petition granted on 3/26/12; judgment vacated and case remanded for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 500 U.S.__(2012).
Cert petition filed 5/21/15, waiver of respondent WildTangent, Inc. filed 6/1/15, conference 6/25/15. Petition denied 6/29/15.
CAFC Opinion, No CAFC Argument
Lucree v. U.S., No. 14-1340
Cert petition filed 5/8/15, waiver of respondent United States filed 5/28/15, conference 6/18/15. Petition denied 6/22/15.
Apotex Inc. v. UCB, Inc., No. 14-1304
Inequitable conduct is a judge-made doctrine designed to ensure the integrity of patent prosecution before the US Patent and Trademark Office (“PTO”). Under that doctrine, a patent is unenforceable if clear and convincing evidence shows that the inventor intentionally withheld or misrepresented information about the prior art that would have been material to the PTO's decision to issue the patent.
Here, the Federal Circuit applied that extraordinary remedy to hold unenforceable a patent on a previously unknown process for producing a drug, because its inventor did not disclose that a competitor might be using the process in secret. The court treated the inventor's suspicions—based entirely on non-public, internal tests on the competitor's product—as material “prior art” that needed to be disclosed in arguments to the PTO during the prosecution of the patent. The Federal Circuit thus held the patent unenforceable, even though the PTO rejected the inventor's arguments, possessed all the prior art discussing the competitor's drug, and issued the patent only after the inventor amended his patent application to distinguish it from the prior art.
The questions presented are:
Cert petition filed 4/30/15, waiver of respondents UCB, Inc., et al. to filed 5/19/15, conference 6/18/15. Petition denied 6/22/15.
Google Inc. v. Vederi, LLC, No. 14-448
When an applicant for a patent amends a claim to overcome the Patent and Trademark Office's earlier disallowance of the claim, should a court (i) presume that the amendment narrowed the claim and strictly construe the amended claim language against the applicant, as this Court has held; or (ii) presume that the claim scope remained the same and require that any narrowing be clear and unmistakable, as the Federal Circuit has held?Cert. petition filed 12/4/14.
Cert. petition filed 10/16/14, conference 1/9/15, CVSG 1/12/14, brief amicus curiae of United States filed 5/19/15, conference 6/18/15. Petition denied 6/22/15.
Internet Machines, LLC v. Cyclone Microsystems, Inc., No. 14-1088
Section 271(a) of the Patent Act provides that “whoever ... sells any patented invention, within the United States ... infringes the patent.” The question presented is whether sales of an infringing product that occur within the United States are beyond the reach of the Patent Act because the products are manufactured and initially shipped overseas, even though they are ultimately imported into and used in the United States.
Cert. petition filed 2/23/15, motion to dismiss petition pursuant to Rule 46 filed 5/1/15. Petition dismissed—Rule 46, 6/5/15.
Cyclone Microsystems, Inc. v. Internet Machines, LLC, No. 14-1043
Under controlling Supreme Court precedent, a patentee seeking to recover for patent infringement “must in every case give evidence tending to separate or apportion the defendant's profits and the patentee's damages between the patented feature and the unpatented features.” Here, in conflict with that important precedent, the District Court, over the Petitioners' objections, permitted the patentee to obtain royalties on both patented and unpatented features, holding that, because the patentee's expert “used the smallest salable unit as his royalty base, additional apportionment is unwarranted and the narrow exception of the entire market value rule is inapplicable.” On appeal, the Federal Circuit affirmed the damages award based on that model. Was it proper for the Federal Circuit to sanction a damages award that is in direct conflict with this Court's controlling precedent?
Cert. petition filed 1/23/15, motion to dismiss petition pursuant to Rule 46 filed 5/4/15. Petition dismissed—Rule 46, 6/5/15.
Scientific Plastic Products, Inc. v. Biotage AB, No. 14-1186
Despite no evidence of a known problem in the prior art, the Court of Appeals for the Federal Circuit ruled below that evidence “implicitly” showing a “potential” problem is sufficient to combine references is an obviousness determination. Never before has any court held that a person of ordinary skill would have been prompted to make a combination based on “an implicit” “potential” problem. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2006), this Court reaffirmed that patent “obviousness” depends on whether evidence shows that persons of ordinary skill in the art had a “reason to combine” earlier technologies into the claimed invention, such as to address a “known problem.” Since all inventions necessarily had the “potential” to have been made, the KSR standard supplies rigor to prevent nontechnical judges and juries from using hindsight, or using standardless yardsticks tantamount to “the length of the chancellor's foot.” A majority of the divided panel in this case rejected the balance and rigor of the KSR test in favor of tautological standard that asks whether a “potential” (not “known”) problem existed in the art.
The question presented is:
Whether an “implicit” acknowledgment of a “potential” problem or “concern,” which Judge Moore, in dissent, declared “according to all of the evidence on record, never actually existed,” is consistent with this Court's anti-hindsight jurisprudence requiring substantial evidence of a “known problem” to provide a reason for combining references for an obviousness determination.
Cert. petition filed 3/19/15, conference 5/28/15. Petition denied 6/1/15.
Packard v. Lee, No. 14-655
WilmerHale represents petitioner Thomas G. Packard.
Cert. petition filed 12/2/14, conference 5/14/15. Petition denied 5/18/15.
Yufa v. TSI Inc., No. 14-1108
Cert. petition filed 3/9/15, waiver of respondent TSI, Inc. filed 3/23/15, conference 4/17/15. Petition denied 4/20/15.
CAFC Opinion, No CAFC Argument
EON Corp. IP Holdings, LLC v. Apple, Inc., No. 14-978
Under controlling law in the court below, motions to transfer venue pursuant to 28 U.S.C. § 1404(a) are governed by an application of the “Gilbert” factors used in forum non conveniens determinations as established in Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (1947). The questions presented are:
Cert. petition filed 2/12/15, waiver of respondent Apple Inc. filed 1/23/15, conference 4/17/15. Petition denied 4/20/15.
Becton Dickinson and Co. v. Retractable Technologies, Inc., No. 14-850
Cert. petition filed 1/16/15, waiver by respondents Retractable Technologies, Inc., et al. filed 1/23/15, response requested 2/10/15, conference 4/17/15. Petition denied 4/20/15.
WilmerHale represents petitioner Becton Dickinson and Co.
Albecker v. Contour Products, Inc., No. 14-860
The Court is now addressing the question regarding “deference” previously raised as the second question in Retractable Techs. v. New Med. Techs., Supreme Court No. 11-1154 (cert denied 2013). Petitioner would submit that the first question raised in Retractable is even more important, as it is goes to the underlying problem which the “deference” question alone cannot address, and it further raises substantial constitutional issues.
The Question Presented is as follows:
Whether a court may depart from the plain and ordinary meaning of a term in a patent claim based on language in the patent specification, where the patentee has neither expressly disavowed the plain meaning of the claim term nor expressly defined the term in a way that differs from its plain meaning.
Cert. petition filed 1/14/15, conference 3/27/15. Petition denied 3/30/15.
CEATS, Inc. v. Continental Airlines, Inc., No. 14-681
Petitioner CEATS, Inc. (“Petitioner” or “CEATS”) engaged in court-ordered mediation with a mediator who had an undisclosed close, enduring, and personal relationship with a partner for the law firm that was lead defense counsel in the underlying CEATS patent infringement litigation. The undisclosed relationship involved continuous emails, phone calls, visits, gifts, and lavish dinners. The Federal Circuit found that: (i) the mediator breached his duty of disclosure by failing to inform Petitioner of the relationship; and (ii) the breach was likely to undermine the public's confidence and trust in mediation.
Notwithstanding those express findings and express recognition of the potential adverse impact the decision would have on the public's view of the federal mediation process generally, the Federal Circuit declined to grant Petitioner any form of relief under Fed. R. Civ. P. 60(b). To reach its conclusion, the Federal Circuit utilized the special harmless error standard for judges set forth in the United States Supreme Court case Liljeberg v. Health Services Acquisition Corp., 486 U.S. 847 (1988).
The issue presented is whether in the face of a specific finding that the court-appointed mediator breached his duty to disclose the conflict, did the Federal Circuit err in utilizing the special harmless error standard from Liljeberg for a mediator in declining to grant Petitioner any relief for the undisclosed conflict of interest.
Stated another way, the question for Supreme Court review is whether the failure of a court-appointed mediator to disclose a long standing conflict of interest with one of the parties to the mediation can ever be “harmless.” The answer to that question strikes at the very foundation of the integrity of the Federal judicial process as well as the public's perception of the fundamental fairness of those proceedings.
Cert. petition filed 12/4/14, conference 3/20/15. Petition denied 3/23/15.
Gilead Sciences, Inc. v. Natco Pharma Ltd., No. 14-647
This Court's double-patenting doctrine establishes the “well-settled rule that two valid patents for the same invention,” or obvious modifications of that invention, “cannot be granted” to a single party. Miller v. Eagle Mfg. Co., 151 U.S. 186, 196-97 (1894). The Court has repeatedly held that when two such patents are granted to a single party, “the later one [i]s void.” Id. at 197 (discussing Suffolk Co. v. Hayden, 70 U.S. 315 (1865)). In the decision below, the Federal Circuit inverted this century-old doctrine, holding a first issued patent invalid based on the issuance of the second patent.
The question presented is:
Whether, contrary to this Court's consistent and longstanding precedent and Congress's intent, the double-patenting doctrine can be used to invalidate a properly issued patent before its statutory term has expired using a second, later-issuing patent whose term of exclusivity is entirely subsumed within that first patent's term?
Cert. petition filed 11/26/14, conference 3/6/15. Petition denied 3/9/15.
K/S HIMPP v. Hear-Wear Technologies, LLC, No. 14-744
The PTO during an inter partes reexamination of U.S. Patent No. 7,016,512 confirmed two dependent claims in a hearing-aid patent that recited a multi-pronged plug at the end of an insulated wire connecting two known portions of the hearing-aid even though there was no dispute that such multi-pronged plugs were known in the art for half a century. Yet the Federal Circuit in a precedential 2-1 decision affirmed the result solely because the Petitioner's original inter partes reexamination request did not support that notorious fact with documentary evidence. The majority affirmed in the face of an ex parte reexamination of the same patent that reached a contrary result, in the face of record prior art showing that exact feature, and even in the face of an admission at oral argument that multi-pronged plugs were known in the art. The Federal Circuit's affirmance is contrary to the Administrative Procedures Act requiring whole record review, and contrary to this Court's landmark obviousness decision in KSR Int'l Co. v. Teleflex, 550 U.S. 398 (2007).
The APA requires courts reviewing an agency decision under the substantial-evidence standard to consider the whole record of the formal agency proceedings. 5 U.S.C. § 706 (2012). What comprises the entire record of a patent in an administrative proceeding at the PTO has not been addressed by the Court. This novel legal question is important. It is not uncommon for the PTO to review a single claim over the course of several proceedings. Here the Federal Circuit ignored the factual findings of a Petitioner-initiated parallel ex parte review of the same patent claims, by the same three examiners, that reached a contrary result. It also ignored record evidence that the patent owner itself later presented in the inter partes reexamination that detracted from the PTO's decision.
This Court's obviousness jurisprudence requires an expansive approach. It was set forth most recently in KSR, 550 U.S. at 415, where this Court broadly warned against a rigid approach to determining obviousness and against an overemphasis on printed publications. Yet here, the Federal Circuit created a bright-line rule that demands documentary evidence for every structural feature of a claim, no matter how trivial or notoriously well-known. The new rule effectively precludes examiners from relying on common sense/common knowledge to find a structural feature in the prior art.
The Questions Presented are:
Cert. petition filed 12/23/14, waiver of respondent Hear-Wear Technologies, LLC filed 1/7/15, conference 2/20/15. Petition denied 2/23/15.
Southern Snow Mfg. Co., Inc. v. SnoWizard, Inc., et al.., No. 14-742
In civil actions by business competitors, alleging several instances of fraud upon the USPTO in obtaining patents and trademark registrations variously obtained, approved, and applied for at the time of filing suit, in turn misleading customers;
Where the district court dismissed before trial:
1. Does sufficiently alleged fraud upon the USPTO in obtaining patents and trademark registrations, in turn misleading customers, support civil claims by business competitors under:
2. Can Lanham Act §38 (15 USC §1120) claims for fraudulent procurement of trademark registrations be sustained against marks that are not fully registered at the filing of suit, but will likely become registered during the course of litigation?
Cert. petition filed 12/1/14, waiver of respondent SnoWizard, Inc., et al. filed 12/30/14, conference 2/20/15. Petition denied 2/23/15.
STC.UNM v. Intel Corp., No. 14-717
Rule 19 of the Federal Rules of Civil Procedure provides that where a necessary party to a lawsuit has not been joined, “the court must order that the person be made a party.” The Court of Appeals for the Federal Circuit ruled below that Rule 19 is “trumped” by a purported “substantive rule” that a co-owner of a patent can “impede an infringement suit brought by another co-owner.” The majority opinion below stands in stark contrast to this Court's precedents. For over seventy years, this Court has rejected every statutory challenge to a Federal Rule that has come before it.
The question presented is:
Whether Rule 19 of the Federal Rules of Civil Procedure applies in patent infringement cases or is trumped by a substantive right of a patent co-owner to bar a fellow owner's infringement suit.
Cert. petition filed 12/16/14.
Tse v. Google Inc., No. 14-692
The district court granted summary judgment of invalidity of most claims of U.S. Patent No. 6,665,797 (“'797 patent”) under 35 U.S.C. § 112, for lack of written description support in the originally filed patent application for the “No Charge” negative limitations in the invalidated claims (“Summary Judgment”).
However, evidences found in the Summary Judgment show that the district court actually granted it without even having a look at the originally filed claims, which it should, to check if there is any “No Charge” limitation therein. Tse respectfully submits, they do have languages explicitly precluding payment.
As such, the Summary Judgment itself is nothing but a no opinion judgment, at least in respect to the originally filed claims.
And thereafter, a Federal Circuit panel affirmed the summary judgment, with no opinion, by virtue of Fed. Cir. Rule 36 and then the Federal Circuit denied a combined petition for panel rehearing and rehearing en banc, again with no opinion.
This is an issue of first impression, the question is:
Regardless of the decision below being made is right or not, whether the Federal Circuit should use its Rule 36 power to issue a no opinion affirmance order, when there is an omission in the opinion of the court below which is so critical that the use of Rule 36 power would result in a serious violation of the Fifth Amendment to the United States Constitution, which guarantees “No person shall . . . be deprived of life, liberty, or property, without due process of law” and, the requirements of due process includes, “Requirement that the tribunal prepare written findings of fact and reasons for its decision.” (emphasis added) A well-regarded article. “Some Kind of Hearing”, by late Judge Henry Friendly.
Cert. petition filed 12/11/14, waiver of respondent HTC America, Inc. filed 12/17/14, waiver of respondent Samsung Telecommunications America, LLC filed 12/19/14, waiver of respondent Google, Inc. filed 12/29/14, conference 2/20/15. Petition denied 2/23/15.
CAFC Opinion, CAFC Argument Not Available
SnoWizard, Inc. v. Southern Snow Mfg. Co., Inc., No. 14-684
Cert. petition filed 12/1/14, waiver of respondent Southern Snow Manufacturing Co., Inc., et al. filed 12/27/15, conference 2/20/15. Petition denied 2/23/15.
Zoll Lifecor Corp. v. Philips Electronics North America Corp., No. 14-619
Sections 312, 314, and 315 of Title 35 each identify separate requirements for instituting an administrative inter partes review (IPR) proceeding to invalidate a patent that the U.S. Patent & Trademark Office (USPTO) erroneously issued. The only one of these three sections that limits an IPR petitioner's right to appeal is Section 314, and it is limited on its face to decisions “under this section.” A general right to appeal is provided by 28 U.S.C. § 1295(a)(4)(A), which grants the Federal Circuit “exclusive jurisdiction . . . of an appeal from a decision of - the Patent Trial and Appeal Board [PTAB] of the [USPTO] with respect to a[n] . . . inter partes review under Title 35.” Despite this statutory structure and plain statutory language, the Federal Circuit has repeatedly refused to review dismissals of IPR proceedings made under Sections 312 and 315 (which are not the sections under which Congress said there could be no appeal). The Federal Circuit's holdings leave IPR petitioners dismissed under these sections with no appellate review, and give the USPTO essentially unfettered discretion to dispose of petitions alleging that the agency erred in granting a patent.
The question presented is:
Whether the Federal Circuit has erred in blocking all appellate review of USPTO decisions made under 35 U.S.C. §§ 312 and 315, when the only limit in the statute is in Section 314, which is expressly limited to decisions made “under this section” - thus giving the USPTO complete and unreviewable authority under these two sections to reject assertions that the agency previously erred in granting patents.
Cert. petition filed 11/24/14, conference 2/20/15. Petition denied 2/23/15.
CAFC Opinion, CAFC Argument Not Available
Consumer Watchdog v. Wisconsin Alumni Research Foundation, No. 14-516
Does a statute that expressly provides a requester of agency action a right to appeal any dissatisfactory decision of the agency on her request to the courts provide sufficient Article III standing for the appeal, or must additional requirements be satisfied above and beyond the statute?
Cert. petition filed 10/31/14, conference 2/20/15. Petition denied 2/23/15.
MadStad Engineering, Inc. v. United States Patent And Trademark Office, No. 14-366
Cert. petition filed 9/26/14, conference 2/20/15. Petition denied 2/23/15.
Southern Electronics Supply, Inc. v. Camsoft Data Systems, Inc., No. 14-628
In cases removed to federal court, Caterpillar, Inc. v. Lewis generally provides a plaintiff the appellate right to challenge the denial of a motion to remand, but qualifies that right if “considerations of finality, efficiency, and economy become overwhelming.” 519 U.S. 61, 75 (1996). The Circuit Courts of Appeals are divided on the proper application of Caterpillar to the following two questions:
Cert. petition filed 11/25/14, conference 1/16/15. Petition denied 1/20/15.
Allergan, Inc. v. Apotex Inc., No. 14-465
May the Federal Circuit sitting in review of a district court bench trial on patent obviousness find facts that the district court never found or must the Federal Circuit remand to the district court for further fact finding consistent with Federal Rule of Civil Procedure 52(a)?
Cert. petition filed 10/10/14, waiver of respondent Hi-Tech Pharmacol, Co. filed 11/19/14, waiver of respondent Sandoz, Inc. filed 11/20/14, waiver of respondents Watson Laboratories, Inc., et al. filed 11/21/14, waiver of respondent Apotex Inc., et al. filed 11/21/14, conference 1/9/15. Petition denied 1/12/15.
Yufa v. Lockheed Martin Corp., No. 14-454
Cert. petition filed 10/14/14, conference 1/9/15. Petition denied 1/12/15.
CAFC Opinion, CAFC Argument Not Available
Apple Inc. v. Ancora Technologies, Inc., No. 14-469
Cert. petition filed 10/20/14, conference 1/9/15. Petition denied 1/12/15.
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