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.
Montgomery, et al. v. Kappos, No. 12-182
Undisputed facts produce either of two contradictory outcomes at The Court of Appeals for the Federal Circuit because different judges apply conflicting rules for “inherent anticipation.” The Circuit acknowledges this intra-Circuit conflict, yet has rebuffed every request to resolve the conflict en banc. Petitioner thus asks this Court to do so. The question presented is:
Whether a research proposal which was never in fact performed can, as a matter of law, inherently anticipate a patent claim under Tilghman v. Proctor, 102 U.S. 707 (1880)?
Cert. petition filed 8/6/12, conference 12/7/12. Petition denied 12/10/12.
Picture Patents LLC, et al. v. Aeropostale, Inc., et al., No. 12-339
In FilmTec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), the Federal Circuit ruled without explanation that an agreement for the assignment of inventions that uses the words “hereby assign” effects a present assignment of future inventions even though those inventions have not been conceived and do not exist at the time the agreement is signed.
The question presented is whether FilmTec's “automatic assignment” rule should be overruled given the doubts about its validity expressed by three Justices of the United States Supreme Court in Bd. of Trustees of the Leland Stanford Jr. University v. Roche Molecular Sys., Inc., 131 S. Ct. 2188, 2199 & 2203 (2011), and in light of the reservation of that issue by the Court's Opinion therein. Id. at 2194, n.2.
Cert. petition filed 9/17/12, conference 11/20/12. Petition denied 11/26/12.
The California Table Grape Commission v. Delano Farms Company, et al., No. 11-1371
The United States Court of Appeals for the Federal Circuit held that the waiver of sovereign immunity in the Administrative Procedure Act, 5 U.S.C. § 702, applies to a declaratory judgment action under the Patent Act that challenges the validity of patents owned by the United States. The question presented is:
Does the waiver of sovereign immunity in 5 U.S.C. § 702 apply to a claim that does not challenge the legality of “agency action” or “final agency action” within the meaning of the Administrative Procedure Act - or even any government action or inaction of any kind - but instead challenges the validity of government owned property based solely on actions by private parties?
Cert. petition filed 5/11/12, waiver of respondent Delano Farms Company filed 6/11/12, respond requested 9/18/12, conference 11/20/12. Petition denied 11/26/12.
WilmerHale represents petitioner California Table Grape Commission.
Allergan, Inc., et al. v. Watson Laboratories, Inc., et al., No. 12-342
Under 35 U.S.C. § 103(a), an invention is patentable unless the differences between the invention and what was known in the prior art are such that the invention would have been “obvious” at the time it was made to a person having ordinary skill in the art.
The Federal Circuit has held that for an invention to have been obvious, the prior art must have given the skilled artisan a “reasonable expectation” that he would succeed at achieving the claimed invention, and it has treated the question of whether such a “reasonable expectation” existed as a question of fact. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007).
In Graham v. John Deere Co., 383 U.S. 1 (1966), this Court held “the ultimate question of patent validity is one of law” that depends on several “basic factual inquiries.” In Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238 (2011), three Justices stressed the importance of “separating [the] factual and legal aspects of an invalidity claim.” Id. at 2253 (Breyer, J., concurring).
The question presented is as follows:
Is it a question of law whether a given likelihood that an invention would succeed is sufficient to establish the invention was obvious, and, if so, what factors may be considered in determining whether that likelihood is sufficient to show obviousness in a given case?
Cert. petition filed 9/17/12, waiver by respondents Sandoz, Inc. filed 9/25/12, waiver by respondents Watson Labs., Inc.-Florida filed 9/25/12, waiver by respondents Paddock Labs filed 9/25/12, conference 10/12/12. Petition denied 10/15/12.
Nova Chemicals Corp. (Canada), et al. v. The Dow Chemical Co., No. 12-243
Cert. petition filed 8/23/12, conference 10/26/12. Petition denied 10/29/12.
WilmerHale represents petitioner Nova Chemicals Corp.
ClearValue, Inc., et al. v. Pearl River Polymers, Inc., et al., No 12-212
Section 282 of the Patent Act provides that “[a] patent shall be presumed valid.” 35 U.S.C. § 282. This Court held in Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238 (2011), that this presumption is not merely a procedural device to shift the burden of proof, but is substantive in nature and requires proof of invalidity by clear and convincing evidence. The jury in this case found Petitioners' patent valid. Despite § 282, the court of appeals nullified that finding and invalidated the patent, holding that there was no “substantial evidence” to support the jury's finding. The question presented is:
Whether 35 U.S.C. § 282 and the Seventh Amendment require conclusive proof of invalidity as a matter of law in order to overturn a jury's finding upholding the patent, or whether a lesser showing will suffice.
Cert. petition filed 8/16/12, waiver by respondent Pearl River Polymers filed 8/24/12, response requested 9/6/12, conference 11/9/12. Petition denied 11/13/12.
John Mezzalingua Associates, Inc. (dba PPC) v. ITC, No. 11-1427
Cert. petition filed 3/7/12, waiver of respondent ITC filed 6/6/12, conference 9/24/12, response requested 7/6/12, conference 10/5/12. Petition denied 10/9/12.
Collins, et al. v. Kappos, No. 12-57
The patent system provides for the protection of inventions to promote the progress of science and the useful arts. In order for the proper scope of an invention to be protected, the United States Patent and Trademark Office (hereinafter “USPTO”) and U.S. Court of Appeals (hereinafter “Federal Circuit”) must explain why a patent claim has been rejected. The Federal Circuit has explicitly stated that the USPTO has not properly rejected the patent claims in this case, yet affirmed the rejection of the claims without providing any reason.
This situation highlights a lack of due process afforded inventors.
The questions presented, therefore, are:
Cert. petition filed 7/10/12, waiver by respondent Kappos filed 7/23/12, conference 9/24/12. Petition denied 10/1/12.
Rudy v. Kappos, No. 11-1408
Utility patent claims are composed of parts, i.e., elements, which, taken together, define the invention patented or, during examination before the Patent and Trademark Office (PTO), sought to be patented. The claims of most if not all patented articles of manufacture are new combinations of old elements, features or principles. Combinations that are obvious over the prior art are not patentable.
The questions presented are as follows:
Cert. petition filed 5/21/12, conference 9/24/12. Petition denied 10/1/12.
R. J. Reynolds Tobacco Co., et al. v. Star Scientific, Inc., No. 11-1182
The Patent Act requires that a patent application include claims “particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 ¶ 2. This Court has made clear that this definiteness requirement demands that a valid patent inform the public during the life of the patent of the limits of the monopoly asserted - that is, what may be safely used or manufactured without a license. Such practical notice of the patent's claim limits is necessary, inter alia, to avoid chilling the inventive creativity of others.
In recent years, the Federal Circuit has adopted a definiteness standard demanding only that patent claims not be “insolubly ambiguous,” which test it has often found satisfied if the claims are “amenable to construction,” however difficult the task or debatable the result. The question presented is:
Whether the Federal Circuit's insolubly ambiguous/amenable-to-construction test for patent definiteness, which upholds patents whose construed claims fail to inform a skilled artisan of the outer limits of the claimed monopoly, faithfully implements § 112 ¶ 2 as interpreted by the decisions of this Court.
Cert. petition filed 3/28/12, conference 9/24/12. Petition dismissed–Rule 46 9/21/12.
Memorylink Corp. v. Motorola, Inc., et al., No. 11-1356
For over 70 years, federal courts hearing state-law claims must apply state law, even if even if it is irrational or bad public policy. Erie Railroad Co. v. Tompkins, 304 U.S. 64, 58 S. Ct. 817, 82 L. Ed. 1188 (1938). Here, the Federal Circuit Court of Appeals - the only federal appellate court without diversity jurisdiction - upheld the dismissal of a state-law claim without opinion, while the district court's 12(b)(6) dismissal on the pleadings ignored the controlling Illinois Supreme Court authority. This Petition presents two questions:
Cert. petition filed 4/26/12, waiver by respondents Motorola, Inc., et al filed 5/14/12, conference 5/31/12. Petition denied 6/4/12.
Tessera, Inc. v. ITC, et al., No. 11-903
Saint-Gobain Ceramics & Plastics, Inc. v. Siemens Medical Solutions USA, Inc., No. 11-301
Cert petition filed 9/6/11.
Conference 11/4/11, CVSG 11/7/11, brief amicuscuriae of United States filed 4/25/12, conference 5/24/12. Petition denied 5/29/12.
Yufa v. Kappos, No. 11-1253
Cert. petition filed 4/17/12, waiver by respondent David J. Kappos, Director Patent & Trademark Office, filed 4/25/12, conference 5/17/12. Petition denied 5/21/12.
Research & Diagnostic Systems, Inc., et al., v. Streck, Inc., No. 11-1212
When a party chooses to appeal a decision in an interference by the Board of Patent Appeals and Interferences (“Board”), it may choose to seek review either directly to the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) under 35 U.S.C. § 141 (“Section 141”), or to a United States District Court, under 35 U.S.C. § 146 (“Section 146”). When the appeal is taken directly to the Federal Circuit under Section 141, the appeal is decided strictly on the administrative record. However, when the review is sought in a district court under Section 146, the statute permits the parties to introduce additional evidence which was not presented before the Board. The questions presented are as follows:
Cert. petition filed 4/9/12, waiver by respondent Streck, Inc. filed 4/23/12, conference 5/17/12. Petition denied 5/21/12.
Gardner v. Kappos, No. 11-1195
Whether the Federal Circuit has erred in holding a combination of pre-existing elements unpatentable under 35 U.S.C. § 103(a) providing a synergistic result, an effect greater than the sum of several effects taken separately while solely and consistently being limited to applying the vague standard of what would be obvious to the hypothetical “person having ordinary skill in the art” without regard to the importance of secondary evidence relative to the issue of obviousness where petitioner has established a nexus between the merits of the claimed invention and the proffered evidence of secondary considerations.
Cert. petition filed 1/23/12, waiver by respondent David Kappos filed 4/11/12, conference 5/10/12. Petition denied 5/14/12.
Zimmerman v. Flagstar Bancorp, No. 11-1112
Did the Federal Circuit err in construing the patent claim terms in this case because it employs different methodologies to construe claims rather than employing a single methodology providing the uniformity required by this Court's decision in Markman, et al. v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)?
Cert. petition filed 1/9/12, waiver by respondent Flagstar Bancorp filed 4/10/12, conference 5/10/12. Petition denied 5/14/12.
Kim v. The Earthgrains Company, No. 11-1106
Cert. petition filed 3/7/12, waiver filed by respondent The Earthgrains Co. 4/3/12, conference 4/27/12. Petition denied 4/30/12.
Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., No. 11-1079
In a dramatic shift from established principles of patent law, the Federal Circuit upheld the validity of Respondent's patent claims based on a feature that was discovered by third parties, long after the patent application was filed, and was neither disclosed nor claimed by the patentee at the time of the invention.
Petitioner owns a patent related to cloning synthetic blood clotting proteins, and sued to have later, overlapping patent claims issued to Respondent declared invalid. Over a vigorous dissent by Judge Dyk, a divided panel of the Federal Circuit held that Respondent's patented claims were not obvious in light of Petitioner's claims. The majority credited Respondent with a discovery on the basis of “unexpected results” based on a feature that was not expressly or inherently disclosed or claimed and was discovered by others long after Respondent applied for its patents. That holding disregards fundamental principles of patent law, including that an invention must not have “been obvious at the time the invention was made,” 35 U.S.C. 103(a), that the elements of the invention must be set forth in the claims, and that only the person responsible for the underlying discovery may obtain a patent for that discovery. U.S. Const. art. I, § 8, cl. 8; 35 U.S.C. 101.
The question presented is:
Whether a patentee may rely, as evidence of the nonobviousness of his invention, on an undisclosed and unclaimed feature that does not flow inherently from the claims, which he did not and could not know at the time of the patent application's filing, and which was discovered separately, years after the patent application was filed, from research conducted by others.
Cert. petition filed 2/28/12, conference 4/13/12. Petition denied 4/16/12.
GEO Foundation, Ltd. v. Costco Wholesale Corp., et al., No. 11-984
Whether the unclean-hands doctrine empowers a federal court to nullify valid patent-property rights asserted by an innocent transferee, rather than merely deny relief to the party with unclean hands.
Cert. petition filed 2/8/12, conference 4/13/12. Petition denied 4/16/12.
Waiver filed by respondent Ikea Illinois, LLC 3/8/12, waiver filed by respondent Wal-Mart Stores, Inc. 3/8/12, waiver filed by respondent Costco Wholesale Corp. 3/8/12, waiver filed by respondent Lowes Home Centers, Inc. 3/14/12.
Apotex, Inc. v. Allergan, Inc., et al., No. 11-800
In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), this Court made clear that a patent claim may be “obvious” and therefore invalid under 35 U.S.C. § 103(a) if the claimed invention would have been “obvious to try” given the state of the prior art to a person with ordinary skill in the relevant field. The Court also emphasized that “[t]he ultimate judgment of obviousness is a legal determination.” 550 U.S. at 427. The questions presented are:
Cert. petition filed 12/21/11, conference 3/23/12. Petition denied 3/26/12.
Apotex, Inc., et al. v. Unigene Laboratories, Inc., et al., No. 11-879
In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), this Court rejected the use of “mandatory formulas” to determine whether a patent would have been obvious under 35 U.S.C. § 103 and instructed that courts must take an “expansive and flexible approach” to the obviousness inquiry in all patent cases. Despite those clear directives, the Federal Circuit has continued to apply an inflexible and formalistic “lead compound” test as the exclusive standard for determining obviousness of chemical compositions. The question presented is:
Whether the Federal Circuit's rigid application of the “lead compound” test to determine whether a patent directed to a chemical composition would have been obvious under 35 U.S.C. § 103 conflicts with KSR and impermissibly creates different patentability standards for chemical and nonchemical inventions.
Cert. petition filed 1/13/12, conference 3/16/12. Petition denied 3/19/12.
Aerotel, Ltd. v. Telco Group, Inc., et al., No. 11-871
The 1952 Patent Act authorizes patent claims that describe “[a]n element in a claim … as a means … for performing a specified function without the recital of structure.” 35 U.S.C. 112, ¶ 6 (emphasis added). When drafted this way, the “claim shall be construed to cover the corresponding structure … described in the specification and equivalents thereof.” Ibid. (emphasis added). Congress endorsed this special manner of drafting “means” claims to remove the doubt that this Court's decision in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), had cast on using functional language in claims.
Although this Court has never construed a “means-plus-function” patent claim, the Federal Circuit, prior to this appeal, has recognized that the language of Paragraph 6 requires that such claims be construed in a multi-step process. The court first identifies the function based on the ordinary meaning of the words recited in the claim itself. Only thereafter does the court identify the structures disclosed in the specification that correspond to the claimed function. A means-plus-function claim covers all disclosed structures as well as equivalent structures. Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).
The question presented is whether a court errs when, as in this case, it conflates the multiple steps for construing means-plus-function claims and narrows the ordinary meaning of the claimed function by reading into it limitations of a disclosed embodiment, thereby effectively eliminating the benefits of a means-plus-function type of claim that Congress endorsed in Section 112, ¶ 6.
Cert. petition filed 1/11/12. Petition denied 3/19/12.
Waiver of respondents Telco Group filed 2/2/12, waiver of respondents Radiant Telecom Inc. filed 2/8/12, conference 3/16/12.
Kastner v. Chet's Shoes, Inc., No. 11-776
Whether the U.S. Court of Appeals for the Federal Circuit can properly affirm an obviously incorrect district court holding with the single word, Affirmed, thereby leaving the appellant completely without knowledge as to the basis for the affirmance.
Cert. petition filed 12/20/11, conference 2/17/12. Petition denied 2/21/12.
Janssen Biotech, Inc., et al. v. Abbott Laboratories, et al., No. 11-596
The Patent Act provides, in relevant part:
The specification [for a patent] shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. 35 U.S.C. § 112 (2010).
The Federal Circuit has read into Section 112 a “written description” mandate that goes beyond disclosing the invention and enabling others to make and use it. The question presented is:
Whether Section 112 forecloses the Federal Circuit's written-description mandate, which in implementation (i) has required a heightened, actual-reduction-to-practice standard for biotechnology patents, (ii) has licensed de novo appellate review of what the Federal Circuit labels a fact question, and (iii) has led to substantial unpredictability and instability in patent protection.
Cert. petition filed 11/10/11, conference 2/7/12. Petition denied 2/21/12.
WilmerHale represents respondent Abbott Laboratories
Eastman Chemical Co. v. Wellman, Inc., No. 11-584
Whether the legal standard for patent indefiniteness is an artificial and blunt rule assessing whether patent claims are “amenable to construction,” or a more textually grounded and nuanced rule assessing whether the patent notifies a skilled artisan of the bounds of the patent claims and what would infringe those claims.
Cert. petition filed 11/9/11, conference 2/17/12. Petition denied 2/21/12.
Hynix Semiconductor Inc., et al. v. Rambus Inc., No. 11-549
Cert petition filed 10/27/11, conference 2/17/12. Petition denied 2/21/12.
Kimberly-Clark Worldwide, Inc., et al. v. First Quality Baby Products, LLC, et al., No. 11-605
Whether preliminary injunctions in patent infringement lawsuits should be governed by the same equitable principles that govern all other cases, instead of the Federal Circuit's patent-specific standard, under which a preliminary injunction may not be entered where an accused infringer has raised a “substantial question” as to the validity of an asserted patent claim and the patentee has not shown that the accused infringer's defense “lacks substantial merit,” regardless of the patentee's likelihood of success on the merits and the court's assessment of the other equitable factors.
Cert. petition filed 11/10/11, conference 1/20/12. Petition denied 1/23/12.
For more information on this or other patent appeal matters, contact: