Patent Law and the Supreme Court: Patent Certiorari Petitions Denied in 2012

Patent Law and the Supreme Court: Patent Certiorari Petitions Denied in 2012

Publications

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. 

Recently pending, granted and denied certiorari petitions

Montgomery, et al. v. Kappos, No. 12-182

Question Presented:

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.

CAFC Opinion, CAFC Argument

Picture Patents LLC, et al. v. Aeropostale, Inc., et al., No. 12-339

Question Presented:

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.

CAFC Opinion, CAFC Argument

The California Table Grape Commission v. Delano Farms Company, et al., No. 11-1371

Question Presented:

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

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

Cert. petition filed 5/11/12, waiver of respondent Delano Farms Company filed 6/11/12, respond requested 9/18/12, conference 11/20/12. Petition denied 11/26/12.

CAFC Opinion, CAFC Argument.

WilmerHale represents petitioner California Table Grape Commission.

Allergan, Inc., et al. v. Watson Laboratories, Inc., et al., No. 12-342

Question Presented:

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.

CAFC Opinion, CAFC Argument

Nova Chemicals Corp. (Canada), et al. v. The Dow Chemical Co., No. 12-243

Questions Presented:

  1. Whether the Federal Circuit improperly created a special rule in patent infringement cases that shifts to the defendant the burden of proof to disprove standing.
  2. Whether the Federal Circuit's test for patent indefiniteness, which upholds claims as long as their meaning “ 'is discernible [by a reviewing court], even though the task may be formidable and the conclusion may be one over which reason-able persons will disagree,' ” effectively eliminates the Patent Act's requirement that claims be definite and this Court's longstanding precedent that patent claim descriptions be neither vague nor ambiguous.

Cert. petition filed 8/23/12, conference 10/26/12. Petition denied 10/29/12.

CAFC Opinion, CAFC Argument

WilmerHale represents petitioner Nova Chemicals Corp.

ClearValue, Inc., et al. v. Pearl River Polymers, Inc., et al., No 12-212

Question Presented:

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.

CAFC Opinion, CAFC Argument

John Mezzalingua Associates, Inc. (dba PPC) v. ITC, No. 11-1427

Questions Presented:

  1. Whether the ITC acted cursorily and capriciously in finding that PPC's substantial investment in engineering, research and development for the EX product was minimally attributable to its design patent, U.S. Pat. No. D440, 539 (“the '539 patent”), thus precluding satisfaction of the domestic industry requirement under 19 U.S.C. Sec. 1337 (a)(3)(C) and, thereby, arbitrarily diminishing the availability of Section 337 relief, including for design patents generally?
  2. Whether the ITC's interpretation of “exploitation” in section 337(a)(3)(C) was unduly narrow and manifestly contrary to the plain meaning of the language of that statute which compels this term to be read broadly in accordance with its text, thereby artificially and arbitrarily narrowing the domestic industry requirement to the detriment of PPC and other patent owners similarly situated?
  3. Whether it was error for the ITC, in its capacity as an administrator of an important intellectual property statute, 19 U.S.C. Sec. 1337, to place an undue expectation of trade-related or production-related activity upon PPC's '539 patent when analyzing the domestic industry requirement, thereby improperly limiting section 337 relief including for patents generally?
  4. Whether litigation, undertaken to enforce patent rights and enhance the value of a patent or pave the way for a stronger competitive advantage, constitutes a substantial investment in exploitation under section 337(a)(3)(C), regardless of that activity's relationship to licensing, engineering, research or production, such that it was error for the ITC to exclude PPC's litigation costs untethered to licensing when considering whether PPC had established a domestic industry for the '539 patent?
  5. Whether litigation activities alone can support a finding of a substantial investment in exploitation under section 337(a)(3)(C)?

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.

CAFC Opinion

Collins, et al. v. Kappos, No. 12-57

Questions Presented:

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:

  1. Whether denying an inventor a patent claim without explanation is a violation of due process?
  2. Whether a rejection of a claim for one reason by the USPTO or Board of Patent Appeals and Interferences of the USPTO (hereinafter “Board”) may be affirmed for a completely different reason by the Federal Circuit?
  3. Whether using a “capable of” standard is proper when rejecting a claim?

Cert. petition filed 7/10/12, waiver by respondent Kappos filed 7/23/12, conference 9/24/12. Petition denied 10/1/12.

CAFC Opinion, CAFC Argument

Rudy v. Kappos, No. 11-1408

Questions Presented:

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:

  1. Whether the Federal Circuit's rule of obviousness that a claimed invention, which includes as elements “printed matter” and a substrate on which the “printed matter” resides, cannot be granted a utility patent under 35 USC 103(a) if the sole difference between the prior art and the claim is the “printed matter,” unless the “printed matter” bears a functional, mechanical relationship to the substrate, violates the statute.
  2. Whether a claimed combination including a substrate and “printed matter” not bearing a functional, mechanical relationship to the substrate, yet providing more together than either the substrate or “printed matter” element alone provides in view of the prior art, is not obvious and therefore, taken as a whole, is patentable under 35 USC 103(a).

Cert. petition filed 5/21/12, conference 9/24/12. Petition denied 10/1/12.

CAFC Opinion, CAFC Agrument.

R. J. Reynolds Tobacco Co., et al. v. Star Scientific, Inc., No. 11-1182

Question Presented:

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.

CAFC Opinion, CAFC Argument

Memorylink Corp. v. Motorola, Inc., et al., No. 11-1356

Questions Presented:

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

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

Cert. petition filed 4/26/12, waiver by respondents Motorola, Inc., et al filed 5/14/12, conference 5/31/12. Petition denied 6/4/12.

CAFC Opinion, CAFC Argument.

Tessera, Inc. v. ITC, et al., No. 11-903

Questions Presented:

Whether a patent license may make the subsequent payment of royalties by the licensee a condition of the licensee's authority to sell infringing products.

Cert. petition filed 12/28/11, conference 5/24/12. Petition denied 5/29/12.

CAFC Opinion, CAFC Argument

Saint-Gobain Ceramics & Plastics, Inc. v. Siemens Medical Solutions USA, Inc., No. 11-301

Questions Presented:

  1. Whether the Patent and Trademark Office's (PTO) presumptively valid finding that an invention is not obvious and is thus patentable over a prior art patent is impermissibly nullified or undermined when a jury is allowed to find, by a mere preponderance of the evidence, that the patented invention is "insubstantially different" from the very same prior art patent, and thus infringes that prior art patent under the "doctrine of equivalents."
  2. Whether, as the dissent below warned, the Federal Circuit's failure to impose a heightened evidentiary standard to ensure that juries do not use the doctrine of equivalents to override the PTO's presumptively valid non-obvious determinations undermines the reasonable reliance of competitors and investors on such PTO determinations, thereby intolerably increasing uncertainty over claim scope, fostering litigation, "deter[ring] innovation and hamper[ing] legitimate competition." App. 89a (Dyk, J., dissenting from the denial of rehearing en banc).

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.

CAFC Opinion, CAFC Argument

Yufa v. Kappos, No. 11-1253

Questions Presented:

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

Cert. petition filed 4/17/12, waiver by respondent David J. Kappos, Director Patent & Trademark Office, filed 4/25/12, conference 5/17/12. Petition denied 5/21/12.

CAFC Opinion

Research & Diagnostic Systems, Inc., et al., v. Streck, Inc., No. 11-1212

Questions Presented:

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

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

Cert. petition filed 4/9/12, waiver by respondent Streck, Inc. filed 4/23/12, conference 5/17/12. Petition denied 5/21/12.

CAFC Opinion, CAFC Argument

Gardner v. Kappos, No. 11-1195

Question Presented:

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

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

CAFC Opinion

Zimmerman v. Flagstar Bancorp, No. 11-1112

Question Presented:

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

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

CAFC Opinion, CAFC Agrument

Kim v. The Earthgrains Company, No. 11-1106

Questions Presented:

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

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

CAFC Opinion

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., No. 11-1079

Question Presented:

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

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

The question presented is:

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

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

CAFC Opinion, CAFC Argument

GEO Foundation, Ltd. v. Costco Wholesale Corp., et al., No. 11-984

Question Presented:

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

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

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

CAFC Opinion, CAFC Argument

Apotex, Inc. v. Allergan, Inc., et al., No. 11-800

Questions Presented:

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:

  1. Whether the Federal Circuit, in conflict with KSR, effectively gutted the “obvious to try” standard by holding that it could not be satisfied in this case (involving the combination of two previously patented eyedrop solutions that were already routinely used together by patients) because, among other things, (a) it was possible that the two ingredients might be incompatible or ineffectual when combined in a single solution, (b) this particular combination was not shown to have been an “anticipated success,” and (c) the inventors themselves testified in support of their patent that they were “surprised” that the combination of the two products worked in light of “concerns” they had.
  2. Whether the Federal Circuit erroneously treats as a factual finding, reviewable only deferentially on appeal, a trial court's determination that a person of ordinary skill in the art would not have believed a claimed invention to be “obvious” or “obvious to try” or been motivated (by common sense or prior art) to combine particular references.

Cert. petition filed 12/21/11, conference 3/23/12. Petition denied 3/26/12.

CAFC Opinion, CAFC Argument

Apotex, Inc., et al. v. Unigene Laboratories, Inc., et al., No. 11-879

Question Presented:

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.

CAFC Opinion, CAFC Argument

Aerotel, Ltd. v. Telco Group, Inc., et al., No. 11-871

Question Presented:

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.

CAFC Opinion, CAFC Argument

Kastner v. Chet's Shoes, Inc., No. 11-776

Question Presented:

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.

CAFC Opinion, CAFC Argument

Janssen Biotech, Inc., et al. v. Abbott Laboratories, et al., No. 11-596

Question Presented:

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.

CAFC Opinion, CAFC Argument

WilmerHale represents respondent Abbott Laboratories

Eastman Chemical Co. v. Wellman, Inc., No. 11-584

Question Presented:

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.

CAFC Opinion, CAFC Argument

Hynix Semiconductor Inc., et al. v. Rambus Inc., No. 11-549

Questions Presented:

  1. Whether principles of equity recognized in Miller v. Brass Co., 104 U.S. 350 (1882), and Woodbridge v. United States, 263 U.S. 50 (1923), foreclose the infringement claims of a participant in a standard-setting organization that conceals its pending applications while secretly amending its claims to cover the emerging standard; delays the issuance of its amended claims until after it has exited the organization; and then alleges that standard-compliant products infringe claims descending from the concealed applications.
  2. Whether the specification and the prosecution history of a patent are the principal guides to construction of the patent's claims, as the Federal Circuit held in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), or whether the specification and the prosecution history are relevant only if they amount to a "clear disclaimer or disavowal" of the dictionary meaning of claim terms, as the Federal Circuit held in this case.

Cert petition filed 10/27/11, conference 2/17/12. Petition denied 2/21/12.

CAFC Opinion, CAFC Argument

Kimberly-Clark Worldwide, Inc., et al. v. First Quality Baby Products, LLC, et al., No. 11-605

Question Presented:

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.

CAFC Opinion, CAFC Argument

  

Patent certiorari petitions denied this year

Patent certiorari petitions denied in: 2015, 2014, 2013, 2012, 2011, 2010, 2009

For more information on this or other patent appeal matters, contact:

Joseph J. Mueller   +1 617 526 6396   joseph.mueller@wilmerhale.com
Thomas G. Saunders   +1 202 663 6536   thomas.saunders@wilmerhale.com
Leslie Pearlson   +1 617 526 6809   leslie.pearlson@wilmerhale.com