Questions Presented:

Section 101 of the Patent Act, 35 U.S.C. § 101, establishes the broad categories of subject matter that are patent-eligible and has been construed to exclude abstract ideas. Section 101 is directed to the patent as a whole and does not impose substantive requirements beyond delineating the patent-eligible subject matters—requirements such as specificity and enablement are dealt with in other provisions of the Patent Act.

In this case, the district court and court of appeals agreed that the patents-in-suit are directed to an innovative technological architecture that improves the functionality of online media streaming. But both courts nevertheless concluded that the patents’ claims are directed to an abstract idea—and are therefore ineligible under Section 101—because the asserted claims, read in isolation, do not describe with sufficient specificity how to achieve the innovation. In reaching that conclusion, the courts expressly ignored the detailed description of the inventions in the rest of the specification and refused to consider proffered evidence demonstrating how the inventions solved existing technical problems and added significant innovative concepts to the prior art.

The questions presented are:

1. In order to clear the threshold eligibility determination under 35 U.S.C. § 101, must a patent include in its claims a sufficient level of specificity such that the claims, read in isolation, fully describe the nature of the innovation and the means of achieving it?
2. Does a court’s determination that a claim is ineligible under 35 U.S.C. § 101 because it is not directed to an inventive concept that was previously unknown in the art require resolution of underlying factual questions that, when disputed, cannot be resolved on a motion to dismiss?

Cert. petition filed 7/27/18 (full docket here). Petition denied 10/15/18.

CAFC Opinion, CAFC Argument

Questions Presented:

The date on which a district court judgment becomes final is critical to the federal appellate process. A number of critical deadlines for filings and submissions are computed from the date a district court's judgment is final. Recognizing the importance of defining whether a judgment is a final judgment, this Court set forth specific criteria for making this determination. In United States v. F. & M. Schaefer Brewing Co., 356 U.S. 227 (1958), this Court held that the use of specific words is not required for a judgment to be final. The circumstances must show that the district court had an intention to terminate the case. Following this precedent, the Court of Appeals for the Federal Circuit held that in patent cases for a judgment to be final a dismissal of an invalidity counterclaim need not be express. A district court can effectively dismiss a counterclaim. However, in the present case, a judgment was held not be final because an invalidity counterclaim was not expressly dismissed. It is therefore important that this Court grant the petition to review the following questions:

1. Whether this Court should exercise its supervisory power to assure that precedents are followed and reverse a decision that the district court judgment was not final because a counterclaim was not EXPRESSLY dismissed even though this counterclaim was effectively and necessarily dismissed by the district court?
2. Whether Due Process Rights of the Petitioner Were Violated When the Federal Circuit Court of Appeals affirmed Without Opinion District Court's Decision That Was Clearly Inconsistent with Precedents?

Cert. petition filed 9/5/18 (full docket here). Petition denied 10/12/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes review (“IPR”) of patents filed before enactment of the Leahy-Smith America Invents Act (“AIA”) violates the Takings Clause of the Fifth Amendment to the U.S. Constitution.

Cert. petition filed 8/3/18 (full docket here). Petition denied 10/9/18.

CAFC Opinion, CAFC Argument

Questions Presented:

Petitioner filed a state law Breach of Contract claim in State Court in Florida against Respondents for the breach of a patent license agreement. In response, Respondents filed a counterclaim for invalidity of the licensed patents in which they identified only a clause in the agreement as the basis for their counterclaim. In that context, the Questions Presented are:

1. Was there an independent basis for Respondents’ assertion of an invalidity counterclaim sufficient to invoke federal subject matter jurisdiction over petitioner’s state law claim for breach of the patent license agreement?
2. Under Gunn v. Minton, where is the line drawn for federal jurisdiction for a state law Breach of Contract claim for the breach of a patent license? .

Cert. petition filed 4/9/18, conference 9/24/18 (full docket here). Petition denied 10/9/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether jurisdictional defects in a first suit dismissed for lack of personal jurisdiction can be cured in a second suit by alleging facts that were known before the first suit was dismissed but that occurred after the first suit was filed.

Cert. petition filed 8/27/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Question Presented:

A party asserting patent invalidity bears the burden of establishing that the patent is invalid. 35 U.S.C. § 282. This burden includes not only persuasion, but also the initial production of evidence. Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91, 107 (2011).

To invalidate, prior art must enable one of ordinary skill to make the claimed invention without undue experimentation. The Federal Circuit does not, however, place the initial burden of producing evidence to establish this element of invalidity on patent challengers. Instead, it requires patent owners to prove that prior art references are not enabled.

Procedurally, this approach results in the first evidence concerning enablement being presented by the patent owner after a challenger’s initial showing on the other elements of invalidity during inter partes review proceedings before the Patent Trial and Appeals Board (the “Board”). The Board then permits the challenger to provide evidence of enablement in its reply.

The Administrative Procedure Act affords parties to formal adjudications the right “to submit rebuttal evidence . . . as may be required for a full and true disclosure of the facts.” 5 U.S.C. § 556(d). The Board, however, denies that right to patent owners when challengers raise evidence of enablement for the first time in reply under the Federal Circuit's order of proof.

The question presented is:

Does the Federal Circuit’s requirement that patent owners negate enablement of prior art in the first instance invert the statutory burden of proving invalidity and deprive patent owners of due process by foreclosing the right to submit rebuttal evidence guaranteed by the Administrative Procedure Act?

Cert. petition filed 8/9/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether Administrative Patent Judges of the Patent Trial and Appeal Board (“Board”) are principal Officers of the United States who must be appointed by the President with the advice and consent of the Senate under the Appointments Clause.
2. Whether retroactive application of Covered Business Method Review to patents on inventions disclosed before passage of the Leahy-Smith America Invents Act violates the Due Process Clause of the Fifth Amendment.
3. Whether undisputed evidence that a patented invention is not unduly preemptive, presented to technically proficient judges of the Board, is relevant to the question whether the invention is patent-eligible under 35 U.S.C. § 101.

Cert. petition filed 8/9/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Questions Presented:

The plain language of 35 U.S.C. § 100 (d) identifies a “patentee” as “to whom the patent was issued but also the successors in title to the patentee.”

1. If the original inventor of the patent “to whom the patent was issued” is expressly included in the definition of “patentee” under 35 U.S.C. § 100 (d), does that person maintain statutory standing to sue for infringement under 35 U.S.C. § 281 (“[a] patentee shall have remedy by civil action for infringement of his patent”)?
2. If the original inventor of the patent assigns such patent to another party subject to a royalty agreement, is such assignment, and any subsequent assignment, contingent upon payment of the agreed upon royalties?
3. If no royalties are ever paid in furtherance of the assignment agreement, is the assignment devoid of consideration, illusory and unenforceable?
4. If an assignment of a patent misidentifies the inventor to defraud that inventor of royalties, is that assignment void and unenforceable?
5. If the Federal Circuit is presented with a fundamental issue of law as to the standing of an inventor to sue under Title 35 and that court does not provide any explanation for its affirmance, does it violate or undermine its mandate under 28 U.S.C. § 1295 “to reduce the widespread lack of uniformity and uncertainty of legal doctrine that exist[ed] in the administration of patent law”? H.R. Rep. No. 97-312, 23 (1981).

Cert. petition filed 6/28/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether the Federal Circuit may ignore a factual stipulation, contrary to this Court’s precedent, and decisions of numerous circuit courts, holding that factual stipulations are binding?
2. Whether the Federal Circuit’s finding of non-infringement by ignoring a factual stipulation should, at a minimum, be vacated because it did not mention the stipulation or address Allergan’s arguments that the stipulation was binding, even though it was Allergan’s lead argument on appeal?

Cert. petition filed 6/29/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. This Court has repeatedly held that whether a patent is invalid as obvious is a question of law, though it may depend on subsidiary factual findings. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 427 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). Should an appellate court review the ultimate legal question of obviousness de novo, as the Seventh and Ninth Circuits have held and as the Federal Circuit held before 2012, or must the appellate court defer to a jury’s conclusion even on the ultimate legal question, as the Federal Circuit has repeatedly held in patent cases since 2012?
2. Alternatively, if this Court were to conclude that obviousness presents a “mixed” question of law and fact, as the Federal Circuit now treats it, should this Court grant certiorari, vacate, and remand this case to determine whether appellate review of that “mixed” question should be de novo or deferential in light of U.S. Bank National Association ex rel. CWCapital Asset Management LLC v. Village at Lakeridge, LLC, 138 S. Ct. 960, 967 (2018), a case decided after the Federal Circuit decision here?

Cert. petition filed 6/21/18 (full docket here).Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Question Presented:

Federal Rule of Civil Procedure 50(d) provides that “a party against whom judgment as a matter of law is rendered” may move for a new trial within “28 days after the entry of the judgment.” Fed. R. Civ. P. 50(d) (emphasis added). The advisory committee notes make clear that, under this subdivision (formerly, Rule 50(c)(2)), “the verdict-winner is entitled, even after entry of judgment n.o.v. against him, to move for a new trial in the usual course.” Rule 50 Advisory Committee’s Note (1963) (emphasis added). This Court has likewise recognized that “[w]here a defendant moves for n.o.v. in the trial court, the plaintiff may present, in connection with that motion or with a separate motion after n.o.v. is granted, his grounds for a new trial.” Neely v. Martin K. Eby Constr. Co., 386 U.S. 317, 325 (1967) (second emphasis added).

The question presented is:

Whether the Federal Circuit erred in holding that, notwithstanding Federal Rule of Civil Procedure 50(d), a verdict winner must raise new-trial arguments in its opposition to a motion for judgment as a matter of law in order to raise those arguments in a timely motion for a new trial after entry of judgment.

Cert. petition filed 6/14/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, No CAFC Argument

WilmerHale represents petitioner Promega Corp.

Question Presented:

Whether a court of appeals denies a prevailing party its right of trial by jury under the Seventh Amendment, when reversing the denial of a motion for judgment as a matter of law based on a classical fact issue without mentioning any evidence that supports the jury’s verdict or construing any evidence in the prevailing party’s favor, and making its own finding of fact for the first time on appeal?

The Seventh Amendment of the U.S. Constitution mandates that the right of trial by jury shall be preserved, and no fact tried by a jury shall be otherwise reexamined in any Court of the United States. Those protections are abrogated if appellate courts do not strictly adhere to this Court’s well-established substantial evidence review of a fact tried to a jury, which occurs as to all of the evidence, and all of that evidence must be construed in the prevailing party’s favor. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150-51 (2000) (“[I]n entertaining a motion for judgment as a matter of law, the court should review all of the evidence in the record . . . [and] the court must draw all reasonable inferences in favor of the nonmoving party . . . .”). As such, a motion for judgment as a matter of law must be denied unless, upon review of all of the evidence, construed in the prevailing party’s favor, there is an absence of substantial evidence supporting a jury’s verdict.

In this case, causation of lost profits was a classical fact tried to a jury, and therefore is protected by the Seventh Amendment. However, the Federal Circuit reversed the district court’s denial of a motion for judgment as a matter of law without mentioning, much less applying, the rule that all the evidence must be reviewed and construed in favor of the prevailing party. Moreover, none of the evidence supporting the jury’s lost profit damages verdict was construed in favor of the prevailing party. Instead, the Federal Circuit made its own finding of fact for the first time on appeal, based on no supporting evidence or argument raised by the parties. The Federal Circuit supported its reversal by construing evidence in favor of the losing party. In doing so, the Federal Circuit abrogated the protections afforded by the Seventh Amendment, and gutted the rule established by the Court that to overturn a jury’s verdict all evidence must be considered, and all evidence must be construed in favor of the prevailing party.

Conditional cross-petition filed 5/31/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Question Presented:

In Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016), this Court abrogated the two-part test for enhanced patent damages established by the Federal Circuit in In re Seagate Technology, LLC, 497 F. 3d 1360, and held that the “[t]he subjective willfulness of a patent infringer, intentional or knowing, may warrant enhanced damages, without regard to whether his infringement was objectively reckless.”

The Federal Circuit subsequently held that “Halo did not disturb the substantive standard for the second prong of Seagate, subjective willfulness” and therefore for “subjective willfulness alone” to support enhanced damages, the risk of infringement must merely be “‘either known or so obvious that it should have been known to the accused infringer.’”

The question presented is:

Does a finding of willful infringement based on Seagate’s “should have been known” negligence standard violate the requirement that subjective willfulness be “intentional or knowing”?

Cert. petition filed 6/6/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

WilmerHale represents petitioner Bombardier Recreational Products Inc. et al.

Questions Presented:

Whether a patent right can be fully extinguished based on misconduct committed by the patentee’s counsel during federal district court litigation to enforce the patent right.

Cert. petition filed 5/25/18, waiver of respondent Merus N.V. filed 6/1/18, response requested 6/8/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Question Presented:

The Petitioner brought suit for patent infringement for a second period of infringement of its ’449 Patent, which had been previously litigated through appeal in the Federal Circuit under 35 U.S.C. § 271 for a first period of infringement, in which the Federal Circuit affirmed the validity of most of the claims of the ’449 Patent attacked by counterclaim for invalidity by the Respondent. In the second suit the Petitioner asserted preclusion of the issues of patent validity decided in the first suit, but the district court dismissed the second suit under Fed. R. Civ. P. 12(b)(6) holding that all of the claims of the ’449 Patent were invalid as directed to an “abstract idea” and unpatentable under 35 U.S.C. § 101. This Petition arises in the appeal of the district court decision in the second suit.

During the first suit Circuit Judges Lourie and Reyna sat on the panel which decided the invalidity of claim 49 of the ’449 Patent adversely to the Petitioner, supporting their decision with a fiction expressed by Judges Lourie and Reyna, a clear departure from the evidence regarding the status as prior art of a reference which was asserted to support an obviousness invalidation under 35 U.S.C. § 103. This circumstance was presented to this Court in a Petition for Certiorari in the first suit that was denied. Such conduct on the part of Judges Lourie and Reyna was raised as a reason to question their impartiality in this the second suit, thus requiring their recusal from any panel hearing of this appeal under 28 U.S.C. § 455(a). A motion thus questioning under § 455(a) was made to the Federal Circuit, but was denied by the motions Panel, comprising Judges Lourie and Reyna joined by Judge Newman. This Petition for extraordinary writ has been filed to prevent and nullify the very actions that have been taken now by all three judges to defeat the rights of the Petitioner in the ’449 Patent in their Opinion of April 20, 2018. The question therefore presented is: Whether the recusal of the currently constituted merits Panel is required by 28 U.S.C. § 455(a) upon the presentation of Petitioner’s motion reasonably questioning the impartiality of the Circuit Judges who comprise the current merits Panel.

Petition for writ of mandamus and/or prohibition filed 5/3/18 (full docket here). Petition denied 10/1/18.

Questions Presented:

1. Does 35 U.S.C. § 282 allow for challenges to a patent’s validity based on patent eligibility under 35 U.S.C. § 101?
2. In addition, and in close alignment with the first question, is it proper to find patents invalid under 35 U.S.C. § 101 after full examination before the U.S. Patent and Trademark Office in response to 12(b)(6) challenges when they are presumed valid under 35 U.S.C. § 282?
3. Is it proper to grant a Rule 12(b)(6) motion to dismiss when the record contains unrebutted factual evidence that the invention is patent-eligible under § 101? .

Cert. petition filed 5/21/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Question Presented:

The Patent Act requires every patent to “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 ¶ 2. For more than a century, this definiteness requirement has served to “apprise the public of what is still open to them.” McClain v. Ortmayer, 141 U.S. 419, 424 (1891); see also Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014) (holding that patent must be “precise enough to provide clear notice of what is claimed.”).

In this case, the Federal Circuit gutted the critical notice function of patent claims. It further ignored this Court’s clear instructions by finding the patent-in-suit definite based exclusively on extrinsic evidence generated more than a decade after the patent issued. That evidence was one trial expert’s opinion that a person of ordinary skill in the art (“POSITA”) would be able to ascertain the scope of the claims after concocting a gallimaufry of novel experiments that had never been performed outside of the instant litigation, were unknown to the scientific community, and were neither described nor identified in the patent.

The question presented is:

When a patent is devoid of intrinsic evidence and the scientific literature provides no guidance with respect to determining claim scope, can a court rely only on the ex post facto application of the scientific method to hold that the “clear notice” requirement of § 112 ¶ 2 has been satisfied? .

Cert. petition filed 4/26/18, conditional cross-petition filed 5/13/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Questions Presented:

This petition presents a square conflict over the Chenery doctrine in a context of exceptional legal and practical importance.  Under Chenery, an agency's decision must stand or fall on its own terms, leaving reviewing courts to “judge the propriety of [agency] action solely by the grounds invoked by the agency.”  SEC v. Chenery, 332 U.S. 194, 196 (1947); accord Motor Vehicle Mfrs. Ass'n of the U.S., Inc. v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 50 (1983).

In the proceedings below, the Patent Trial and Appeal Board invalidated the claims of petitioner's patent.  The sole dispositive issue before the Board was the proper construction of the patented claims, yet the Board's disposition of that issue consisted of a single, unsupportable sentence.  In the Federal Circuit, the government accordingly defended the Board's decision on new legal grounds not articulated by the Board itself.  Although that tactic is precluded by Chenery and the prevailing law in multiple courts of appeals, it is permitted by entrenched precedent in the Federal Circuit, which, once again, has departed from the baseline legal norms applied in other courts.

The questions presented are:

1. Whether “an agency's action must be upheld, if at all, on the basis articulated by the agency itself” (State Farm, 463 U.S. at 50), or whether a court can substitute its own views for the agency's whenever the issue is “legal in nature” (In re Comiskey, 554 F.3d 967, 975 & n.5 (Fed. Cir. 2009)).
2. Whether inter partes reexamination under the Patent Act violates Article III and the Seventh Amendment by allowing Article I judges to adjudicate the validity of an issued patent. 

Cert. petition filed 4/3/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Question Presented:

After a trial on the merits, a jury found that respondents were liable for infringing petitioner's patent under the doctrine of equivalents, with stipulated damages in excess of $86 million.  But the district court set aside the verdict and entered judgment for respondents under a defense known as “ensnarement”—which was unknown at common law, is not contained in the Patent Act, and has never been recognized by this Court. The Federal Circuit affirmed. The question presented is:

Whether the Federal Circuit's “ensnarement” defense to infringement violates patent holders' Seventh Amendment jury-trial rights. 

Cert. petition filed 3/21/18, waiver of respondent Boston Scientific Corporation, et al. filed 3/28/18, conference 4/10/18, conference 9/24/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Questions Presented:

The instant petition for certiorari presents the following two questions:

1. Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
2. Whether an obviousness analysis involving objective indicia of non-obviousness is a one-step legal conclusion weighing all Graham factors on an equal footing, or a two-step process that includes an initial determination, or prima facie case, of obviousness that is only subsequently balanced against the weight of the objective indicia of non-obviousness. 

Cert. petition filed 3/6/18, waiver of respondent C&D Zodiac, Inc. filed 3/13/18, response requested 3/28/18, conference 9/24/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether covered business method review, an adversarial process used by the Patent and Trademark Office to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
2. Whether the Federal Circuit's issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent and Trademark Office violates 35 U.S.C. § 144's requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals.

The first question is substantially similar to that presented in Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017), which has been argued and is awaiting decision by the Court.  The second question is identical to that presented by the Petition for writ of certiorari in Celgard, LLC v. Matal (No. 16-1526) (question #2, petition pending).

Cert. petition filed 2/9/18, response requested 4/2/18, conference 9/24/18 (full docket here). Petition denied 10/1/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. The Federal Circuit has carved out an exception in the Patent Act with a judge-made rule known as “assignor estoppel.” Assignor estoppel precludes an inventor who has assigned her patent, and those in privity with her, from contesting the patent's validity in an infringement suit. The Patent Act has no such bar. And, this Court in Lear, Inc. v. Adkins, 395 U.S. 653 (1969), abolished the analogous doctrine of “licensee estoppel,” which barred licensees from challenging the validity of patents they licensed, as contrary to the important public interest of eliminating invalid patents. The question is whether, and under what circumstances, assignors and their privies are free to contest a patent's validity.
2. This Court has long adhered to a rule requiring apportionment of damages: “When a patent is . . . not for an entire[] . . . machine or contrivance, the patentee must . . . separate or apportion . . . the patentee's damages between the patented feature and the unpatented features.” Garretson v. Clark, 111 U.S. 120, 121 (1884). In Garretson and multiple other cases, this Court applied that rule to damages in the form of lost profits. The Federal Circuit, however, permits patentees to recover lost profits damages for an entire multi-component product, without apportioning the value between patented and unpatented features, simply by showing that the patentee would have made the sale “but for” the infringement. Pet. App. 22a. Did the Federal Circuit err in holding that proof of but-for causation, without more, satisfies the requirement that damages be apportioned between patented and unpatented features? 

Cert. petition filed 11/30/17, waiver of respondent Mentor Graphics Corporation filed 1/3/18, response requested 1/17/18, conference 4/20/18, CVSG 4/23/18 (full docket here). Petition dismissed – Rule 46.

CAFC Opinion, CAFC Argument

Question Presented:

Whether the Federal Circuit’s issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent and Trademark Office violates 35 U.S.C. §144’s requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals.

The question is identical to that presented by the pending Petitions for writ of certiorari in Celgard, LLC v. Lancu (No. 16-1526) (question #2); C-Cation Tech., LLC v. Arris Group, Inc., et al. (No. 17-617) (question #2); Integrated Claims Sys., LLC v. Travelers Lloyds of Texas Ins. Co., et al. (No. 17-330) (question #2); and Stambler v. Mastercard International Inc. (No. 17-1140) (question #2).

Cert. petition filed 4/16/18, conference 6/21/18. Petition denied 6/25/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether the United States Patent and Trademark Office (PTO) can by reexamination lawfully revoke a duly issued U.S. patent based upon written testimonial declarations of biased adverse witnesses having no duty of candor to the PTO, while completely barring all confrontation and cross-examination of those adverse witnesses.
2. Whether the PTO can lawfully “decline to address” a due process confrontation claim, including the specific underlying facts confirming a due process right to confront and cross-examine adverse witnesses, while prohibiting any confrontation and cross-examination of the adverse witnesses.
3. Whether the Court of Appeals for the Federal Circuit can lawfully avoid deciding a due process confrontation claim by resort to a one-word, Rule 36 affirmance of the PTO's decision wholly refusing to even consider the claim, in violation of 35 U.S.C. § 144 and the common law duty to decide novel and important constitutional issues with articulate reasoning subject to Supreme Court review.
4. Whether inter partes reexamination—an adversarial process used by the PTO to adjudicate the validity of existing patents—violates the Constitution by extinguishing private party rights through a non-Article III forum without a jury. 

Cert. petition filed 3/6/18, waiver of Shell Oil Company filed 4/5/18, conference 6/21/18. Petition denied 6/25/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes review—an adversarial process statutorily created in 2011 and used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury, especially for patents granted before inter partes review was created.

This petition presents the same question which this Court is considering in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 639 F. App'x 639 (Fed. Cir. 2016), cert. granted, 2017 WL 2507340 (U.S. June 12, 2017) (“Oil States Energy Services”).  Because this petition implicates the same issues to be decided in Oil States Energy Services, and because the Court will soon decide the power of the Patent Trial and Appeal Board of the USPTO to determine validity of patent rights, Petitioner asks that the Court hold its decision on this petition pending that decision.

Cert. petition filed 3/16/18, petition dismissed pursuant to Rule 46 on 6/18/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether a GVR order in this non-final case is appropriate, in light of Federal Circuit's intervening en banc decision in Wi-fi One, LLC v. Broadband Corp., Case No. 2015-1944 (Fed. Cir. January 8, 2018) (en banc), which held the “final and nonappealable” provision of 35 U.S.C. § 314(d) is inapplicable to the threshold jurisdictional bar under 35 U.S.C. § 315(b) resulting from prior filing of a civil action.
2. Whether inter partes review under the America Invents Act violates Article III and the Seventh Amendment of the Constitution.
3. Whether the “broadest reasonable interpretation” of patent claims used in inter partes review under the America Invents Act - upheld in Cuozzo - is subject to the traditional claim construction principles utilized by this Court for 150 years, including the maxim that claims must be construed, if practicable, to uphold and not destroy the right of the inventor?

Cert. petition filed 1/25/18, waiver of respondent Coleman Cable, LLC filed 2/27/18, response requested 3/7/18, conference 6/14/18. Petition denied 6/18/18.

CAFC Opinion, CAFC Argument

Question Presented:

This petition presents the same question that the Court is considering in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, No. 16-712:

Whether inter partes review—an adversarial process used by the United States Patent and Trademark Office to analyze the validity of existing patents—violates the Constitution by adjudicating and potentially extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 4/9/18, waiver of respondent Owens Corning filed 5/10/18, conference 6/7/18. Petition denied 6/11/18.

CAFC Opinion, CAFC Argument

Questions Presented:

The Supreme Court decision in Merck v. Integra, 125 S. Ct. 2372 (2005) left uncertainty as to the enforceability of research tools under 35 U.S.C. § 271(e)(1). The Supreme Court commented in Footnote 7 on p. 2382, “We therefore need not and do not-express a view about whether, or to what extent, 35 U.S.C. §271(e)(1) exempts from infringement the use of ‘research tools’ in the development of information for the regulatory process.” The CAFC has come to different conclusions on research tools used after marketing approval. Two CAFC panels arrived at opposite rulings (Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc., 686 F.3d 1348 (Fed. Cir. 2012), (Momenta Pharm., Inc. v. Teva Pharm. USA, Inc., 809 F.3d 610, 620 (Fed. Cir. 2015). In the current case the two separate CAFC panels came to a different opinion on the applicability of Telectronics Pacing Sys. v. Ventritex, Inc., 982 F.2d 1520, 1523-24 (Fed. Cir. 1992) to a research tool.

In the current case, in contrast to Momenta, the court ruled use of the research tool was “non-routine” and raises different questions than Momenta:

1. The CAFC has developed a litmus test to determine when 35 U.S.C. § 271(e)(1) applies to research tools used after marketing approval. The litmus test was introduced in Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) “The statute does not apply to information that may be routinely reported to the FDA, long after marketing approval has been obtained. Id. at 1070.” In subsequent cases including the current case the CAFC has struggled with defining what constitutes “non-routinely” reported and thus protected by the safe harbor. The litmus test classifies something as “routine” if it is FDA required for ongoing FDA approval but “non-routine” if the post marketing use is not required by the FDA. Is the CAFC’s litmus test for research tools consistent with the law?
2. In this case, as opposed to Momenta’s case, the court granted safe harbor because Elan’s submissions to the FDA were deemed “non-routine” because they were necessary to update the Skelaxin product label and to change the FDA-approval process for generic versions of Skelaxin (Appx. 42a). What if the FDA recommends but does not require its use, is use still “routine”? Is this arbitrary?
3. As written and intended by Congress the safe harbor of 35 U.S.C. § 271(e)(1) is applied when (the whole) “invention” is used to for submission of data to the FDA. Is the CAFC’s decision in this case to extend the safe harbor under 35 U.S.C. § 271(e)(1), to inventions where one or more but not all steps of an invention creates or uses data submitted to the FDA, consistent with the law?
4. Is the CAFC’s decision to extend the safe harbor in this case to sale of product, where the product is claimed by process claims and where the process may utilize data submitted to the FDA, consistent with the law? 

Cert. petition filed 3/26/18, conference 6/7/18. Petition denied 6/11/18.

CAFC Opinion, CAFC Argument

Questions Presented:

In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), the inventors identified an element existing in nature and claimed known methods to detect that element for a purpose already known in the art.  This Court held that patent invalid for claiming ineligible subject matter, but cautioned that “too broad an interpretation of this exclusionary principle could eviscerate patent law.”  Id. at 71.  This Court further noted, for example, that “a new drug or a new way of using an existing drug” could be patent-eligible under 35 U.S.C. § 101 (“Section 101”).  Id. at 87.

In this case, the patents were fully examined by the United States Patent and Trademark Office (“PTO”) and found to be novel and not obvious, including for one of the patents, confirmation after two ex parte reexaminations.  The PTO further found that the prior art taught away from the claimed inventions.  Notwithstanding that the inventions were groundbreaking and a significant advancement over the prior art, the district court declared them invalid at the pleading stage.  It gave the patents a cursory review, and refused to construe any claim terms.  It took 55 separate claims—each claiming a distinct invention with many different limitations—and analyzed them as if all of the claimed inventions were a single method with two simplistic steps.  The court did not permit evidentiary submissions or development of the record, and while the district court purported to take judicial notice of the prosecution history, it ignored the PTO record in its analysis.  The Federal Circuit affirmed the lower court, invalidating valuable patent rights in a new and nonobvious diagnostic method using known techniques to detect an element in blood, but where the inventors had discovered that adapting known techniques for an entirely new purpose yielded medically-relevant data not known in the prior art and, in fact, taught away from by the prior art.

The questions presented are:

1. Whether the court below erred in holding, contrary to Mayo, that a method involving natural phenomena is ineligible for patent protection if it claims known techniques that have been adapted for a new use and purpose not previously known in the art.
2. Whether Mayo authorizes a district court to invalidate valuable patent rights on the pleadings when there are disputed questions of fact, a disputed question of claim construction or scope, and/or an undeveloped evidentiary record, notwithstanding the presumption of patent validity and settled procedural and Seventh Amendment safeguards that ordinarily prevent the resolution of such disputed questions on the pleadings.

Cert. petition filed 1/16/18, waiver of respondent True Health Diagnostics LLC filed 2/16/18, response requested 3/7/18, conference 6/7/18. Petition denied 6/11/18.

CAFC Opinion, CAFC Argument

Question Presented:

This petition presents the same question that the Court is considering in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712:

Whether inter partes review—an adversarial process used by the United States Patent and Trademark Office to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. 

Cert. petition filed 3/6/18, waiver of respondent Homeland Housewares, LLC filed 3/12/18, response requested 3/27/18, conference 5/31/18. Petition denied 6/4/18.

CAFC Opinion, CAFC Argument

Question Presented:

On June 12, 2017, the Court granted review in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 to consider the following question presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Id.  This case also involves an inter partes review proceeding in which the PTO invalidated Petitioner's patent and, therefore, this petition presents the same question as Oil States.

Cert. petition filed 2/9/18, waiver of respondent SteadyMed Ltd. Filed 2/16/18, response requested 3/7/18, petition dismissed pursuant to Rule 46 on 6/4/18.

CAFC Opinion, CAFC Argument

Question Presented:

Currently submitted for decision is this Court's review in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712, 137 S. Ct. 2237 (Mem.), where the following question was presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Id.  The present case likewise involves an inter partes review proceeding in which the Patent and Trademark Office (the “PTO”) invalidated Petitioner's patent. Accordingly, this petition presents the same question as Oil States. 

Cert. petition filed 3/12/18. Petition denied 5/21/18.

CAFC Opinion, CAFC Argument

Questions Presented:

In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Court set forth its two-part test for determining whether an invention is patent-eligible under 35 U.S.C. § 101: (1) whether the patent claims are directed to a patent ineligible concept, such as laws of nature, natural phenomena, or abstract ideas, and (2) if so, whether the elements of the claim contain an “inventive concept” that transforms the ineligible concept into an invention that is patent-eligible.

The questions presented are:

1. In determining patent-eligible subject matter within the meaning of 35 U.S.C. § 101, when a claim has been found to be directed to an abstract idea (the first part of Alice), should courts consider whether the claim substantially preempts the identified abstract idea in determining whether the claim includes an “inventive concept” (the second part of Alice)?
2. Because “[a]t some level, 'all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas' ” (id. at 2354), does the second part of Alice function as a safeguard, preventing claims that do not substantially preempt the identified abstract idea from falling victim to a misapplication of this exclusionary principle, which is often due to findings on inventiveness that are more properly addressed under 35 U.S.C. §§ 102 and 103.

Cert. petition filed 1/16/18. Petition denied 5/14/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether the Patent and Trademark Office's decision invalidating Petitioner's patent in inter partes review violates the Reexamination Clause of the Seventh Amendment by overturning a jury's findings of facts in the prior district court action, Personal Audio, LLC v. CBS Corp., C.A. No. 2:13-cv-270 (E.D. Tex. Apr. 11, 2013).
2. Whether inter partes review—an adversarial process used by the Patent and Trademark Office to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 1/30/18, waiver of respondent Electronic Frontier Foundation filed 2/15/18, response requested 3/6/18. Petition denied 5/14/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether ordinary plausible fact pleading of objective baselessness is sufficient under Federal Rule of Civil Procedure 8(a)(2) to satisfy the “objectively baseless” prong of Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc., 508 U.S. 49 (1993), in a Sherman Act complaint alleging “sham” intellectual property litigation.
2. Whether the Federal Circuit erred by holding that Petitioner's Sherman Act complaint lacks sufficient pleading of objective baselessness, where the complaint states that Respondents, in their predicate “trade dress infringement” litigation against Petitioner, alleged “infringement” despite knowing they had no relevant trade dress and persistently failing to identify any trade dress, and where the Federal Circuit left undisturbed the district court's non-infringement and “exceptional case” finding that “[Respondents] could not identify any relevant trade dress . . . .”
3. Whether an express threat of objectively baseless litigation fails to support a Sherman Act claim alleging “sham litigation” as the Federal Circuit held with respect to defendants' patent and copyright litigation threats against Petitioner, or whether such a threat suffices, as the First Circuit has held.
4. Whether the Federal Circuit erred by affirming denial of Petitioner's Rule 15(a)(2) motion for leave to amend the complaint, based on (a) an undue-delay theory contradicted by precedent of this Court as recognized by the Second and Seventh Circuits, and (b) a first-instance “futility” inquiry and finding of a kind held unlawful by the First, Seventh and Ninth Circuits. 

Cert. petition filed 3/26/18, waiver of right of respondents SNF, Inc., et al. filed 4/3/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes review—an adversarial process used by the United States Patent and Trademark Office (“USPTO”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

This petition presents the same question which this Court is considering in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 639 F. App'x 639 (Fed. Cir. 2016), cert. granted, 2017 WL 2507340 (U.S. June 12, 2017) (“Oil States”).  Because this petition implicates the same issues to be decided in Oil States, and because the Court will soon decide the power of the Patent Trial and Appeal Board (“Board”) of the USPTO to determine validity of patent rights, Petitioner asks that the Court hold its petition pending that decision.

Cert. petition filed 1/22/18, conference 3/29/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes review under the Patent Act violates Article III and the Seventh Amendment by allowing Article I judges to adjudicate the validity of an issued patent that (i) has since expired and (ii) is relevant only in infringement litigation between private parties.

Cert. petition filed 1/19/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

This Court recently granted certiorari in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 639 F. App'x 639 (Fed. Cir. 2016), cert. granted, 2017 WL 2507340 (U.S. June 12, 2017) (“Oil States”) to consider the constitutionality of inter partes review (“IPR”) proceedings that analyze the validity of issued patents. The present case, in which the United States Patent & Trademark Office (“USPTO”) invalidated Petitioner's patent, involves the same question presented in Oil States: that is, whether IPR proceedings, an adversarial process used by the Patent Trial and Appeal Board (“Board”) of the USPTO to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. 

Cert. petition filed 11/27/17, response requested 1/19/18, conference 3/23/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

This petition presents the same question that the Court is considering in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712:

Whether inter partes review—an adversarial process used by the United States Patent and Trademark Office to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.  

Cert. petition filed 11/21/17, waiver of respondent Alliance of Rare-Earth Permanent Magnet Industry filed 12/13/17, response requested 12/29/17, conference 3/2/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether the Federal Circuit has erred in holding that, for the purposes of an obviousness determination under 35 U.S.C. § 103(a), a reference “teaches away” from a proposed combination only if it expressly “criticize[s], discredit [s], or otherwise discourage[s]” the proposed combination.
2. Whether inter partes review—an adversarial process used by the Patent and Trademark Office to analyze the validity of existing patents—violates the Constitution by extinguishing private party rights through a non-Article III forum without a jury. . 

Cert. petition filed 11/20/17, waiver of respondent Zhongshan Broad Ocean Motor Co., et al. filed 12/8/17, conference 2/23/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. 

Cert. petition filed 11/3/17, waiver of respondent DOT Hill Systems, Corp. filed 12/14/17, response requested 1/2/18, conference 4/13/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.  

Cert. petition filed 11/3/17, response requested 1/3/18, conference 4/13/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, 137 S. Ct. 2239 (2017) to consider the constitutionality of certain administrative proceedings created by the Leahy-Smith America Invents Act (“AIA”) to evaluate the validity of issued patents. Pub. L. No. 112-29, 125 Stat. 284 (2011). This case involves one such type of proceeding (“covered business method” review), which presents the same constitutional infirmities as the inter partes review proceeding at issue in Oil States. Thus, this case presents essentially the same question presented in Oil States, namely:

Whether adversarial processes used by the Patent and Trademark Office (PTO) to analyze the validity of issued patents violate the Constitution by extinguishing private property rights through a non-Article III forum without a jury. 

Cert. petition filed 10/23/17, waiver of respondent Mitchell International, Inc. filed 11/27/17, response requested 12/11/17, conference 2/16/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether inter partes review - an adversarial process used by the Patent and Trademark Office (USPTO) to analyze the validity of existing patents - violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
2. Whether the Federal Circuit's issuance of Rule 36 judgments without opinions for the disposition of appeals from the USPTO violates 35 U.S.C. § 144's requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals.

The first question is identical to that presented in Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017). The second question is identical to that presented in In re: Celgard, LLC, No. 16-1526 (question #2, petition pending).

Petitioner requests that this Petition be held for each of these respective dispositions, and if favorable to either of those petitioners, requests that this Petition be granted, with the case vacated and remanded.

Cert. petition filed 10/24/17, conference 1/5/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

On June 12, 2017, the Court granted review in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712, to consider the following question presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Id.  This case presents the same issue in a covered business method (CBM) review proceeding, to wit:

Whether covered business method review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

The only difference between this case and Oil States is the type of review that was conducted by the PTO through the Patent Trial and Appeal Board (PTAB).  Oil States was an inter partes review proceeding whereas this case was a CBM review proceeding. 

Cert. petition filed 10/10/17, motion to defer consideration of the petition filed by petitioner 10/10/17, waiver of respondent VigiLink, Inc., Skimlinks, Inc., and Skimbit, Ltd. Filed 12/12/17, conference 1/5/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether covered business method review—an adversarial process used by the Patent Trial and Appeal Board of the Patent and Trademark Office to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. 

Cert. petition filed 10/10/17, conference 1/12/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes review—an adversarial process used by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) to reconsider the validity of already-issued patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 9/14/17, conference 1/5/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves a Patent Office proceeding, in which the Patent Office invalidated Petitioner's patent and therefore involves the same issue in Oil States. That is, this petition presents the question of:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 9/5/17, conference 1/5/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether the Federal Circuit has jurisdiction to review the Patent Trial and Appeal Board''s determination that a patent is a “covered business method” patent.
2. Whether a court should extend deference to an agency interpretation contained in a regulatory preamble.

Cert. petition filed 9/1/17, conference 1/5/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented (same Question Presented in each petition):

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 8/7/17, waiver of respondent Ford Motor Co. filed 9/6/17, response requested 9/26/17, conference 12/8/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves a Patent Office proceeding, in which the Patent Office invalidated Petitioner's patent, and therefore involves the same issue in Oil States. That is, this petition presents the question of:

Whether a reexamination proceeding—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 8/3/17, conference 12/1/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves a Patent Office proceeding, in which the Patent Office invalidated Petitioner's patent, and therefore involves the same issue in Oil States. That is, this petition presents the question of:

Whether a reexamination proceeding—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 8/3/17, conference 12/1/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

The Question Presented by this Petition is the same for which certiorari was granted in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712 (granted June 12, 2017):

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Given the pending Oil States case, Petitioner requests a hold on this petition pending disposition of Oil States, and at that time the granting of certiorari for plenary review or certiorari should be granted, vacating the decision below and remanding for further proceedings.

Cert. petition filed 8/2/17, conference 1/5/18, conference 4/27/18. Petition denied 4/30/18.

No CAFC Opinion, No CAFC Argument

Question Presented:

Whether inter partes review—an adversarial process used by the Patent Trial and Appeal Board (PTAB) of the Patent and Trademark Office to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 7/28/17, conference 11/3/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17, conference 12/8/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17, conference 12/8/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17, conference 12/8/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17, conference 12/8/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves a Patent Office proceeding, in which the Patent Office invalidated Petitioner's patent and therefore involves the same issue in Oil States. That is, this petition presents the question of:

Whether inter partes reexamination—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 7/14/17, conference 10/27/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves an inter partes review proceeding at the Patent Office, in which the Patent Office invalidated Petitioner's patent and therefore involves the same question in Oil States. That is, this petition presents the question of:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 7/14/17, waiver of respondent Samsung Electronics Co., et al. filed 8/14/17, response requested 8/17/17, conference 11/21/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes review comports with Article III and the Seventh Amendment.

Cert. petition filed 7/21/17, conference 10/27/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes reexamination—an adversarial process used by the Patent Trial and Appeal Board (PTAB) of the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 7/5/17, conference 10/6/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether inter partes review—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?
2. Whether the Federal Circuit's issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent Office violates 35 U.S.C. § 144's requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals?
3. Whether the Federal Circuit's pervasive practice of issuing Rule 36 judgments without opinions to affirm more than 50% of appeals from the Patent Office has exceeded the bounds of reasonableness and is inconsistent with “principles of right and justice”?
4. Whether the Patent Office's consistent practice of failing to consider the claimed invention “as a whole” and failing to consider whether the combination of elements would lead to “anticipated success” in an obviousness determination conflicts with 35 U.S.C. § 103 and this Court's precedent in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)?

Cert. petition filed 6/19/17, conference 9/25/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

For almost two centuries, the Nation's patent laws have established two options for aggrieved parties to challenge agency determinations in priority-of-invention disputes between competing inventors—district-court civil actions allowing for civil process and additional evidence (followed by appellate-court review), see 35 U.S.C. § 146, or immediate appellate review of the agency action, see 35 U.S.C. § 141.

The Federal Circuit, however, has interpreted the Leahy-Smith America Invents Act of 2011 (and its technical amendments) as having impliedly repealed by negative inference § 146 district-court subject-matter jurisdiction, and limiting Article III jurisdiction unto itself under § 141, for such “interference” proceedings declared after September 15, 2012.  In so ruling, the Federal Circuit has never even attempted to reconcile its decision with this Court's rulings holding that “jurisdiction is not defeated by implication.” Galveston, Harrisburg & San Antonio Ry. Co. v. Wallace, 223 U.S. 481, 490 (1912).

The question presented is:

In the America Invents Act, did Congress impliedly repeal the almost-200-year-old statutory grant of district-court subject-matter jurisdiction, currently codified in 35 U.S.C. § 146, in favor of exclusive jurisdiction in the Federal Circuit? 

Cert. petition filed 3/5/18, waiver of respondent United States filed 4/2/18, waiver of respondents Jeremy clark, et al. filed 4/3/18, conference 4/20/18. Petition denied 4/23/18.

CAFC Opinion, CAFC Argument

Questions Presented:

This Petition presents the following questions:

1. What are the rules, both procedural and substantive, for assessing patent-eligible subject matter under 35 U.S.C. § 101 for patents claiming inventions described as new and useful combinations of existing components and technologies?
2. Should the Federal Circuit be required to revisit its decision in this case in light of its Berkheimer and Aatrix Software decisions?

Cert. petition filed 2/20/18, waiver of respondent NBA Media Ventures, et al. filed 3/29/18, conference 4/20/18. Petition denied 4/23/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether it is a denial of due process under the Fifth Amendment to the United States Constitution for the United States Court of Appeals for the Federal Circuit, on issues requiring de novo review, to affirm summarily in a one-word per curiam judgment under Federal Circuit Rule 36 a district court judgment which itself included no reasoning or explanation, concerning intellectual property rights including patent rights.

Cert. petition filed 1/18/18, conference 3/29/18. Petition denied 4/2/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. May a court determine that a patent claim is “directed to” an abstract idea under Step 1 of Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014) without analyzing the requirements of the individual claim steps?
2. Do Fed. R. Civ. P. 56(c), Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) and Celotex Corp. v. Catrett, 477 U.S. 317 (1986) prohibit a court from entering a summary judgment finding that an invention is ineligible for patent protection when the record contains uncontroverted, relevant evidence establishing that there is at least a genuine issue of material fact as to whether the claim is “directed to” an abstract idea?

Cert. petition filed 1/9/18, waiver of respondent Intermec Technologies Corp. filed 3/9/18, conference 3/29/18. Petition denied 4/2/18.

CAFC Opinion, CAFC Argument

Question Presented:

In FTC v. Actavis, Inc., 133 S. Ct. 2223 (2013), this Court held that a patentee who settles an infringement suit by making a “large” and “unexplained” payment to an alleged infringer in exchange for the competitor's agreement to refrain from entering the market is not protected by the antitrust immunity patentees otherwise enjoy. Actavis made clear, however, that its holding should not be construed as impinging upon any other “right” that the patent laws grant patentees, “whether expressly or by fair implication.” Id. at 2233. 

One such right granted by the patent laws is the right to grant a competitor an exclusive license—i.e., an authorization allowing the competitor to enter the market before patent expiry in exchange for payment from the competitor. See 35 U.S.C. §261. Despite Actavis' clear admonition that such rights should be respected, and notwithstanding the obvious differences between an exclusive license and the kind of “reverse payment” Actavis addressed, the Third Circuit held that a patente's decision to settle patent litigation by granting an exclusive license to the alleged infringer may trigger antitrust scrutiny, even when the license allows the competitor to enter the market before patent expiry, and even when the competitor provides robust consideration in exchange for its license.

The question presented is:

Whether a patentee's grant of an exclusive license to settle a single patent dispute may give rise to antitrust liability notwithstanding 35 U.S.C. §261. 

Cert. petition filed 11/20/17, waiver of respondent Rochester Drug Co-operative, Inc. filed 12/4/17, waiver of respondent Professional Drug Company, Inc. filed 12/13/17, conference 2/16/18. Petition denied 2/20/18.

CA3 Opinion, CA3 Argument

Question Presented:

Contracts—particularly corporate agreements—frequently provide for the prevailing party to receive its attorney's fees in the event of litigation. Federal Rule of Civil Procedure 54(d)(2)(A) provides: “A claim for attorney's fees . . . must be made by motion,” unless “require[d]” by the substantive law “to be proved at trial as an element of damages.” Such a “motion must[] be filed no later than 14 days after the entry of judgment,” unless a statute or order provides otherwise. Fed. R. Civ. P. 54(d)(2)(B)(i).

The Question Presented, about which the courts of appeals are deeply divided, is:

May a party seek contractual prevailing-party attorney's fees without filing a timely post-judgment motion under Rule 54(d)(2)? 

Cert. petition filed 10/27/17, waiver of respondent Medtronic et al. filed 11/1/17, response requested 11/16/17, waiver of respondents Boston Scientific Corp. and Guidant Corp. filed 11/27/17, conference 1/12/18. Petition denied 1/16/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether the Extraterritoriality Doctrine of Dormant Commerce Clause is applicable for a state or a federal agent to directly regulate professional service wholly out of the state's or agent's territories. Professionals include, but not limited to accountants, architects, economists, engineers, medical doctors, nurses, lawyers, morticians, optometrists, real estate brokers, scientists, and surveyors. 

Cert. petition filed 11/6/17, waiver of respondent Joseph Matal filed 12/4/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, No CAFC Argument

Question Presented:

Whether a district court's factual findings in support of its holding that claims are directed to patent eligible subject matter may be reviewed de novo, as the Federal Circuit requires (and as the panel did in this case), or only for clear error, as Rule 52(a) and corollary Supreme Court precedent require.  

Cert. petition filed 11/9/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether patents that claim a specific arrangement of technological elements, claiming apparatuses and specific methods providing a technological solution to the problem of Internet data piracy, are patent eligible under 35 U.S.C. § 101 when they do not preempt alternative technological solutions. 

Cert. petition filed 11/9/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. In Florida Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S. 627, 640 (1999), this Court struck down the Patent Remedy Act which held States liable for patent infringement and did so noting that “Congress identified no pattern of . . .constitutional violations” to show such legislation is warranted to force waiver of a state's Eleventh Amendment sovereign immunity. In the Federal Circuit case of Xechem Int'l, Inc. v. Univ. of Tex. M.D. Anderson Cancer Ctr., 382 F.3d 1324,1335 (Fed. Cir. 2004), cert. denied 543 U.S. 1149, (2005), that court held that states have sovereign immunity to inventorship corrective suit under 35 U.S.C. § 256, but Judge Newman noted in additional views that the States' increasing use of sovereign immunity was creating “an increasing urgency, as the states enter the private competitive arena governed by the laws of intellectual property, to establish fair relationships and just recourse.” In this action, the Federal Circuit affirmed the dismissal of a suit under 35 U.S.C. § 256 by an omitted inventor to correct inventorship on patents jointly owned by the state-entity University of Massachusetts and the private Carnegie Institution of Washington, with sovereign immunity for UMass barring joinder for the inventor to maintain the action against Carnegie. Both the lower District of Columbia District Court and Federal Circuit noted that the current law does not provide the omitted inventor with the possibility of “complete relief” due to UMass' sovereign immunity, providing the Petitioner no recourse. At what point do patent-owning States waive their sovereign immunity when they voluntarily participate in the patent system?
2. The limited monopoly an inventor gains with the issuance of a patent is a right in equity without a monetary equivalent. By holding that States and their private patent co‑owners are immune to inventor-corrective suit under § 256, an omitted inventor has no way to obtain the equitable right to which he is entitled, and no state can provide the federal rights of a patent to the wronged inventor as compensatory damages for an unlawful taking. If Eleventh Amendment sovereign immunity is extended to allow patent-owning states to escape suits under § 256, how is this not a taking from wrongfully omitted inventors and a violation of due process of law under the Fourteenth Amendment?
3. Carnegie is a private entity and does not have Eleventh Amendment sovereign immunity. If a State is allowed to essentially extend its sovereign immunity privilege to a private entity who co-owns a patent, how is this not a State granting a privileged status to select citizens and violative of the equal protection clause of the Fourteenth Amendment?
4. The Constitution states at Art. 1, Sec. 8, that, “The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” 35 U.S.C. § 256 embodies this power of Congress and was specifically enacted to provide a judicial mechanism to correct inventorship in patents. Can Eleventh Amendment sovereign immunity subjugate Congress' express power under Art. 1, Sec. 8? 

Cert. petition filed 10/18/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, No CAFC Argument

Questions Presented:

In Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), the Court set forth a two-step test for determining whether computer-implemented inventions claim patentable subject matter under 35 U.S.C. § 101. First, a court must determine whether the claims at issue are “directed to” an abstract idea. Second, if the claims are “directed to” an abstract idea, the court must then determine whether the claims recite inventive concepts—elements which ensure that the patent amounts to significantly more than a patent upon the abstract idea itself. 

The questions presented are:

1. Whether computer-implemented inventions that provide specific improvements to existing technological processes for encoding or decoding data are patent-eligible under the first step of the Alice test, even if those inventions involve or make use of abstract ideas.
2. Whether the use of new mathematical algorithms to improve existing technological processes by reducing bandwidth and memory usage can constitute “inventive concepts” under the second step of the Alice test.

Cert. petition filed 11/1/17, waiver of respondent Nintendo Co., Ltd. Filed 12/4/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, CAFC Argument

Question Presented:

Does the Federal Circuit's sole post-Octane Fitness precedential decision reversing a trial court's discretionary fee award against a patent holder creating four new rigid tests conflict with this Court's clear directives in Octane Fitness and Highmark? Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014); Highmark Inc. v. Allcare Health Mgmt. Sys., 134 S. Ct. 1178 (2014).

Cert. petition filed 10/3/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, CAFC Argument

Questions Presented:

The Questions Presented by this Petition are:

1. Whether the USPTO had exceeded its statutory authority in declaring and conducting an interference proceeding based on claims in a pending patent application that were neither directed to patent eligible subject matter under 35 U.S.C. § 101 nor in allowable form?
2. Whether the Federal Circuit's affirmance without opinion in appeals from USPTO's decision violates 35 U.S.C. § 144? Should the determination of which USPTO appeals require a written opinion rather than a Fed. Cir. Rule 36 Judgment depend primarily on whether the written opinion might benefit further proceedings in the case in the USPTO?
3. Whether the USPTO's practice to cancel the claims of an issued patent in an interference proceeding is unconstitutional, violating the Seventh Amendment and Article III?

Cert. petition filed 8/25/17, waiver of respondent Baizhen Yang, et al. filed 9/27/17, response requested 10/18/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, CAFC Argument