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.
Convolve, Inc. v. Compaq Computer Corp., No. 13-547
Rule 56(a), Federal Rules of Civil Procedure, permits a grant of summary judgment only if “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” The questions presented for review are:
Cert. petition filed 10/29/13, waiver of respondent Seagate Technology filed 11/6/13, waiver of respondent Compaq Computer filed 11/8/13, conference 12/6/13. Petition denied 12/9/13.
Cephalon, Inc. v. Apotex, Inc., No. 13-441
Cert. petition filed 10/7/13, conference 12/13/13. Petition denied 12/16/13.
WilmerHale represents petitioner Cephalon, Inc.
Arthrex, Inc. v. Smith & Nephew, Inc., No. 13-290
In Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), this Court held that, to be liable under a “willful blindness” theory of intent, “(1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact.” Id. at 2070. The Court explained that “willful blindness” is a rigorous standard that “surpasses recklessness and negligence.” Ibid. In Safeco Insurance Co. of America v. Burr, 551 U.S. 47 (2007), the Court held that a defendant cannot be found to have committed a violation under the lesser “recklessness” standard if its actions were consistent with an understanding of legal requirements that was “not objectively unreasonable,” “whatever [its] subjective intent may have been.” Id. at 70 & n.20. The question presented is:
Cert. petition filed 8/30/13, conference 12/6/13. Petition denied 12/9/13.
Artesyn Technologies, Inc. et al. v. Synqor, Inc., No. 13-375
Cert. petition filed 9/23/13, conference 11/15/13. Petition denied 11/18/13.
Hyundai Motor America, Inc. v. Clear With Computers, LLC, No. 13-296
In Microsoft Corp. v. i4i Ltd., 131 S.Ct. 2238 (2011), this Court held that 35 U.S.C. § 282 requires fact finders in patent infringement cases to “determin[e] whether an invalidity defense has been proved by clear and convincing evidence.”131 S.Ct. at 2251. Three Justices also wrote separately to “emphasiz[e]” that the clear and convincing standard “applies to questions of fact” underlying invalidity, “not to questions of law” like whether an invention is non-obvious within the meaning of the Patent Act. Id. at 2253 (Breyer, J., concurring, joined by Scalia and Alito, JJ.). Consistent with centuries of Anglo-American law and multiple decisions of this Court, and to ensure that “inventions will not receive legal protection where none is due,” the concurring Justices urged district courts to “separat[e] factual and legal aspects of an invalidity claim” by “using instructions … that help the jury make the distinction.” Ibid.
Here, over petitioner's objection, the district court refused to cabin the clear and convincing standard to the jury's fact-finding, instead permitting that heightened standard to infect legal questions concerning invalidity. The district court then simply adopted the jury's verdict with no analysis of the ultimate legal questions. Without explanation, and despite full merits briefing and a lively oral argument, the Federal Circuit affirmed by summary disposition.
The question presented is whether, following i4i, a district court may ignore the fact/law distinction and in so doing instruct a jury to apply the heightened “clear and convincing” standard not only to disputed factual aspects of an invalidity claim, but also to the legal aspects of such a claim—including the ultimate question of a patent's invalidity?
Cert. petition filed 9/3/13, conference 11/8/13. Petition denied 11/12/13.
The Fox Group, Inc. v. Cree, Inc., No. 12-1378
The Federal Circuit's opinion below, for the first time in American jurisprudence, invalidated a patent based on a prior “invention” that provided no benefit to the public, because the prior inventor concealed how to make the invention, did not commercialize it, and did not apply for a patent. The Federal Circuit based its holding on a distinction between “process” and “product” patents that does not exist in the plain language of the relevant statute, 35 USC § 102. Did the Federal Circuit err in interpreting § 102(g)(2) to allow non-enabling disclosures to invalidate product patents, a result that will create significant uncertainty in litigation involving product patents and penalize patent holders who publicly shared their inventions?
Cert. petition filed 5/21/13, waiver of respondent Cree, Inc. filed 6/14/13, response requested 8/5/13, conference 9/30/13, conference 10/11/13. Petition denied 10/15/13.
Nokia Inc., et al. v. ITC, No. 12-1352
Section 337 of the Tariff Act of 1930 permits the International Trade Commission to exclude from entry into the United States an article that infringes a valid and enforceable patent. Under what is known as the “domestic industry” requirement, however, it may do so only when a complainant establishes that there is “an industry in the United States, relating to the articles protected by the patent.”
Respondent InterDigital asserted that petitioner Nokia violated section 337 by importing cellular handsets into the United States that allegedly infringed InterDigital's patents. After a five-day evidentiary hearing, a judge concluded that no infringement had occurred. In a divided opinion, the Federal Circuit, employing de novo review, concluded that the patent claims had been erroneously construed and reversed the non-infringement determination. The court also held that “licensing alone” is sufficient to satisfy the domestic industry requirement. In denying rehearing, the panel majority reiterated that licensing alone satisfies the domestic industry requirement as long as the patent concerns “the article that is the subject of the exclusion proceeding.” The questions presented are:
Cert. petition filed 5/10/13, conference 10/11/13. Petition denied 10/15/13.
Sony Computer Entertainment America LLC, et al. v. 1st Media, LLC, No. 12-1086
Did the Court of Appeals for the Federal Circuit err in restricting district courts' equitable discretion in evaluating patent unenforceability, contrary to this Court's precedent in Keystone Driller, Hazel-Atlas, and Precision Instrument, by applying a rigid test that (a) forecloses district courts from considering the entire circumstantial record; and (b) precludes district courts from granting equitable remedies where a patent applicant has violated the PTO's duty of candor.
Cert. petition filed 3/4/13, conference 5/9/13, CVSG 5/13/13, conference 10/11/13. Petition denied 10/11/13.
Public Patent Foundation, Inc. v. McNeil-PPC, Inc., et al., No. 13-161
The Patent Act has long forbidden falsely marking and advertising unpatented articles as patented. The false marking statute, 35 U.S.C. § 292, also long provided a qui tam cause of action for any member of the public to pursue violators on the government's behalf. In June 2009, Petitioner filed such an action against Respondent. In September 2011, more than two years after Petitioner filed this case, Congress passed the Leahy-Smith America Invents Act (AIA) that contained amendments to the false marking statute. One such amendment eliminated qui tam standing for members of the public to bring false marking claims. The AIA applied its changes to the false marking statute retroactively and, as a result, the district court dismissed Petitioner's case because Petitioner no longer had standing under the retroactively amended version of the statute. The Court of Appeals summarily affirmed.
Does the retroactive application of the AIA's changes to the false marking statute to this case violate Petitioner's Due Process under the Fifth Amendment?
Cert. petition filed 8/1/13, waiver of respondent United States filed 8/22/13, waiver of respondent McNeil-PPC filed 8/28/13, conference 9/30/13. Petition denied 10/7/13.
Intema Ltd. v. Perkinelmer, Inc., No. 12-1372
The Federal Circuit reversed the District Court and held the claims of Intema's patent ineligible under 35 U.S.C. §101 by misapplying Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) in a manner that creates erroneous, rigid rules for determining patent ineligibility in cases involving laws of nature. If the Judgment of the Federal Circuit is not reversed, it will have the practical effect of rendering most diagnostic, screening and personal medicine tests unpatentable.
The questions presented by this Petition for a Writ of Certiorari are:
Cert. petition filed 5/16/13, conference 9/30/13. Petition denied 10/7/13.
Raylon, LLC v. Complus Data Innovations, Inc., et al., No. 12-1354
The Federal Circuit reversed a Trial Court's denial of sanctions based on its de novo finding that the Plaintiff's patent case was frivolous in violation of Fed. R. Civ. P. 11. In its ruling, the Federal Circuit gave no deference to the Trial Court findings and created a formalistic rule that evidence of non-trivial settlements cannot be considered to determine objective reasonableness of the lawsuit under Rule 11, which conflicts with several other circuits.
The Federal Circuit found that settlement evidence “has no place in the Rule 11 analysis,” which ignores the widely-recognized relevance such evidence has in showing the views of objective litigants (e.g. settling Defendants) as to whether the underlying lawsuit was reasonably calculated to elicit a favorable outcome. Petitioner respectfully requests that the Supreme Court grant this Petition for a Writ of Certiorari on the following questions.
CoreValve Inc. v. Lifesciences AG, No. 12-1325
The “enablement” provision of the Patent Act, 35 U.S.C. § 112(a), states that a patent “shall contain a written description of the invention *** in such full, clear, concise, and exact terms as to enable any person skilled in the art *** to make and use the same.” The Federal Circuit's cases are in conflict over the meaning and application of this core patentability requirement. The patent at issue claims a collapsible prosthetic valve attached to a stent “for implantation in a body channel.” The specification describes the claimed invention as directed primarily to a valve implanted by catheter in the human heart. Yet the specification does not disclose how to make a valve that is small and stable enough to achieve that purpose. Engineers attempting to apply the patent could not make a valve suitable for human implantation despite many years of effort, and no experimental animal survived implantation for more than a few hours. The questions presented are:
Cert. petition filed 5/6/13, waiver of respondent Edwards Lifesciences AG filed 5/9/13, response requested 5/20/13, conference 9/30/13. Petition denied 10/7/13.
Technology Patents LLC v. T-Mobile (UK) Ltd., et al., No. 12-1292
Cert. petition filed 4/26/13, waiver of respondent AT&T Mobility, LLC filed 5/13/13, waivers of respondents T-Mobile (UK) Ltd., H3G S.P.A., Advanced Info Service PLC, et al., PCCW Mobile HK Ltd, KDDI, Corp. filed 5/28/13, waiver of respondent TMN – Telecomunicacoes moveis Nacionais, S.A. filed 5/29/13, conference 9/30/13. Petition denied 10/7/13.
ClearPlay, Inc. v. Nissim Corp., No. 12-1365
After Respondents granted Petitioner ClearPlay, Inc. a license of their patent rights, Respondent Nissim Corp. told ClearPlay's business partners that the licensee's products (1) violated certain covenants of the parties' license agreement unrelated to the patents' field of use, (2) were accordingly “unlicensed,” and (3) therefore infringed on the licensors' patents.
Is a patent license an affirmative covenant not to sue, as held by the Federal Circuit and adopted by several other circuits, or does a license allow the licensor to threaten infringement suits, as held by the Eleventh Circuit?
Do federal patent laws preempt state-law business-interference claims when the veracity of a licensor's assertions that its products were “unlicensed” can be determined by looking to the terms of the license agreement without regard to any issues of patent law?
Cert. petition filed 5/15/13, waiver of respondent Nissim Corp. filed 5/22/13, conference 6/20/13. Petition denied 6/24/13.
Mirror Worlds, LLC v. Apple Inc., No. 12-1158
Cert petition filed 3/21/13, waiver by respondents Apple Inc. filed 3/27/13, response requested 4/17/13, conference 6/20/13. Petition denied 6/24/13.
Momenta Pharmaceuticals Inc., et al. v. Amphastar Pharmaceuticals, Inc., et al., No. 12-1033
The Drug Price Competition and Patent Term Restoration Act, also known as the Hatch-Waxman Act, created a safe harbor from liability for patent infringement. The statutory safe harbor provides that it shall not be an act of patent infringement to make or use a patented invention “solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs.” 35 U.S.C. § 271(e)(1). The safe harbor “allows competitors, prior to the expiration of a patent, to engage in otherwise infringing activities necessary to obtain regulatory approval” from the Food and Drug Administration (“FDA”). Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661, 671 (1990). In this case, the Federal Circuit held that the safe harbor immunizes respondents' use of petitioners' patented method in the course of post-approval manufacturing of respondents' drug for commercial sale, in direct competition with petitioners, during and throughout the life of petitioners' patent.
The question presented is:
Whether the use of a patented invention in the course of post-approval manufacture of a drug for commercial sale, where the FDA requires that a record of that manufacturing activity be maintained, is exempted from liability for patent infringement under Section 271(e)(1) as “solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs.”
Cert petition filed 2/15/13, waiver of respondent Amphastar Pharmaceuticals filed 3/21/13, response requested 4/2/13, conference 6/20/13. Petition denied 6/24/13.
Voter Verified, Inc. v. Election Systems & Software, Inc., No. 12-1228, vided 12-1227
Cert. petition filed 4/4/13, conference 6/6/13. Petition denied 6/10/13.
Voter Verified, Inc. v. Premier Election Solutions, Inc., et al., No. 12-1227, vided 12-1228
Cert. petition filed 4/4/13, conference 6/6/13. Petition denied 6/10/13.
David v. Monsanto, CANo. 12-1041
Cert. petition filed 2/13/13, conference 4/26/13. Petition denied 4/29/13.
Widex A/S and Widex USA, Inc. v. Energy Transportation Group, Inc., No. 12-1136
Cert. petition filed 3/19/13, waiver of respondent Energy Transportation Group, Inc. filed 3/28/13, conference 4/19/13. Petition denied 4/22/13.
Aspex Eyewear, Inc., et al. v. Altair Eyewear, Inc., No. 12-1120
Under 35 U.S.C. § 103(a), a claimed invention is patentable if it would not have been “obvious” at the time it was made to a person having ordinary skill in the art. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), this Court held that obviousness is determined by looking “to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all to determine whether there was an apparent reason to combine known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. The question presented here is:
Whether the Federal Circuit effectively eliminated the standard articulated in KSR by substituting the trial court's own determination of “common sense,” a standardless and unpredictable standard.
Cert petition filed 3/13/13, waiver of respondent Altair Eyewear filed 3/21/13, conference 4/12/13. Petition denied 4/15/13.
Andrews Arts & Sciences Law, LLC, et al. v. Snowizard, Inc., No. 12-974
Where patent litigation is pending in federal court, the patent-holding defendant sued the plaintiffs' attorney in state court for defamation and unfair practices for publishing an essay about the federal litigation, alleging an attempt to taint the jury pool and gain unfair advantage in the federal litigation, identifying the federal case numbers, and using the word “patent” 16 times:
Do state courts have subject-matter jurisdiction of defamation and unfair-practices collateral lawsuits against the attorney for opponents in federal-court patent litigation, which allege the attorney's actions related to the patent litigation?
Court of Appeal of Louisiana, Fifth Circuit, opinion not available.
Cert. petition filed 2/4/13, waiver of respondent SnoWizard, Inc. filed 2/11/13, conference 3/15/13. Petition denied 3/18/13.
McKesson Technologies, Inc. v. Epic Systems Corp., No. 12-970
Under what circumstances is a person who performs some of the steps of a patented method, in combination with another's performance of the remaining steps, liable for direct infringement of the patent?
Conditional cross petition for cert. filed 2/4/13. Petition dismissed–Rule 46 3/11/13.
Ninestar Technology Co., Inc., et al. v. ITC, et al., No. 12-552
“The longstanding doctrine of patent exhaustion provides that the initial authorized sale of a patented item terminates all patent rights to that item.” Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 625 (2008). In Holiday v. Mattheson, 24 F. 185, 185 (C.C.S.D.N.Y. 1885), the court held that foreign sales authorized by U.S. patentees exhaust U.S. patent rights. That decision was followed for more than a century. In Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094, 1105 (Fed. Cir. 2001), however, the Federal Circuit concluded that foreign sales do not exhaust U.S. patent rights. The question presented is:
Whether the initial authorized sale outside the United States of a patented item terminates all patent rights to that item.
Cert. petition filed 11/2/12, conference 3/15/13, conference 3/22/13. Petition denied 3/25/13.
Computer Packages, Inc. v. WhitServe, LLC, et al., No. 12-833
Cert. petition filed 1/4/13, waiver of respondent WhitServe, LLC filed 1/10/13, conference 2/15/13. Petition denied 2/19/13.
Jia Jewelry Imports of America, Inc. v. Pandora Jewelry, LLC, No. 12-577
Does Article III's grant of jurisdiction of “all Cases … arising under … the Laws of the United States,” implemented in the 'actual controversy' requirement of the Declaratory Judgment Act, §28 U.S.C. 2201(a), require the patent holder to have direct communication with the potential patent infringer before that infringer may sue to declare the patent invalid or not infringed?
Cert. petition filed 11/6/12, conference 2/15/13. Petition denied 2/19/13.
Regents of the University of California, et al. v. Caldera Pharm., Inc., No. 12-570
Cert. petition filed 11/5/12, conference 2/15/13. Petition denied 2/25/13.
Cal. Supreme Court opinion not available.
Wang v. Plasmart Inc., No. 12-616
Did the Federal Circuit have power to go outside the record to override the contrary factual findings of the United States Patent and Trademark Office and invalidate a patent solely based on its own unarticulated and unexplained view of “common sense”?
Cert. petition filed 11/13/12, waiver of federal respondent filed 12/7/12, conference 1/18/13. Petition denied 1/22/13.
Transaction Holdings, Ltd., et al. v. Kappos, No. 12-674
Cert. petition filed 11/29/12, waiver by respondent David Kappos filed 12/11/12, conference 1/11/13. Petition denied 1/14/13.
Apotex Inc., et al. v. Otsuka Pharma Co., Ltd., No. 12-571
Under the Patent Act, “a patent may not be obtained” if its subject matter would have been “obvious” when viewed in light of the prior art. 35 U.S.C. § 103. This statutory patentability standard invalidates any patent claim that would have been obvious in view of any prior art, regardless of the technology at issue. In recent years, and continuing even after this Court's decision in KSR Int'l v. Teleflex, Inc., 550 U.S. 398 (2007), the Federal Circuit has applied a restrictive “lead compound” test for determining the obviousness of pharmaceutical compounds, which limits the scope of the prior art against which the obviousness of pharmaceutical compounds are evaluated to one or more “lead compound[s],” on the ground that a “lead compound” is “a natural choice and “most promising” … “for further development efforts”. The question presented is whether the “lead compound” requirement is consistent with the statutory command that all obvious variations of the prior art be denied patent protection, given that there will be cases in which the structural similarity between the patented compound and a prior art compound, even if not a lead, rendered the patented compound obvious.
Cert. petition filed 11/5/12, waiver of respondent Sun Pharma. Industries, Ltd. Filed 11/26/12, waiver of respondent Sandoz, Inc. filed 12/5/12, conference 1/11/13. Petition denied 1/14/13.
Mylan Pharm. Inc., et al. v. Eurand, Inc., nka Aptalis Pharmatech, Inc., et al., No. 12-514
The Patent Act provides that “[a] patent may not be obtained … if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.”35 U.S.C. § 103(a). In reviewing patent claims covering a “therapeutically effective” drug, which is a combination of a prior FDA-approved immediate-release drug and a well-known extended-release drug delivery system, the Federal Circuit, in reversing a district court holding of obviousness, held that such claims would not have been “obvious.” Specifically, the Federal Circuit created a “PK/ PD relationship” requirement to hold that one skilled in the art would have “no reasonable expectation of success” that the claimed drug was “therapeutically-effective” even though it was bioequivalent to the prior FDA-approved drug. The questions presented are:
Cert. petition filed 10/23/12, conference 1/11/13. Petition denied 1/14/13.
W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., No. 12-458
Title 35 U.S.C. § 116 requires two or more persons who make an invention jointly to apply for any patent jointly and provides that “[i]nventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” Here the patented invention is a vascular prosthesis made of a novel material. Together with his staff, the developer of the material, having overseen substantial experimentation to narrow the field of potentially useful material characteristics, made a small number of sample tubes for use as prostheses. Expecting at least one of those samples to be successful for its intended purpose - but not yet aware of the exact microscopic properties that allow success - he supplied those few samples to an experimenter who confirmed one sample's success and identified its microscopic structure.
The question presented is:
Whether it is consistent with Section 116 to deny joint-inventor status to the maker of the successful material, and instead deem the experimenter the sole inventor, on the ground that the maker did not communicate to the experimenter the exact property that turned out to be key.
Cert. petition file 10/12/12, conference 1/11/13. Petition denied 1/14/13.
Rates Technology Inc. v. Speakeasy, Inc., et al., No. 12-402
Cert. petition filed 9/28/12, waiver by respondent MegaPath, Inc. filed 10/16/12, waiver by respondent Speakeasy, Inc. filed 10/23/12, response requested 11/7/12, conference 1/11/13. Petition denied 1/14/13.
CA2 Opinion, CA2 Argument Not Available
GlaxoSmithKline v. Classen Immunotherapies, Inc., No. 11-1078
Congress has created a statutory safe harbor from patent-infringement liability for otherwise-infringing conduct that is “reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs.” 35 U.S.C. § 271(e)(1). In this case, the Federal Circuit concluded that this safe harbor “is limited to activities conducted to obtain pre-marketing approval of generic counterparts.” Pet. App. 27a. The question presented is:
Whether the Federal Circuit's interpretation of § 271(e)(1), which arbitrarily restricts the safe harbor to preapproval activities, is faithful to statutory text that contains no such limitation, and decisions of this Court rejecting similar efforts to impose extra-textual limitations on the statute.
Cert. petition filed 2/28/12, response requested 4/23/12, conference 6/21/12, CVSG 6/25/12, conference 1/11/13. Petition denied 1/14/13.
Leader Technologies, Inc. v. Facebook, Inc., No. 12-617
The United States Court of Appeals for the Federal Circuit stepped outside the boundaries of its appellate role, as it has done with alarming frequency the past few years, and assumed the role as fact-finder in adjudicating Leader Technologies, Inc.'s patent invalid. As an intermediate federal appellate court, the Federal Circuit is not a trial court, but nonetheless acted as one in the present case and engaged in a form of decision-making at odds with traditional notions of appellate review. The proper role of an appellate court is to decide appeals from the lower court, and should do so based on the decision below and on the arguments presented by the parties below. In far too many instances, however, the Federal Circuit, as it did in this case, takes upon itself to consider evidence not argued to the lower court, disregard the fact-finding below, disregard binding precedent of this Court, and goes beyond the factual record presented to the proper trier of fact in order to engage in its own fact-finding, evidentiary weighing, and advocacy. Not only does this type of appellant court advocacy encourage litigants to retry cases at the appellate level, but more importantly, it denies litigants their due process rights.
The questions presented are:
Cert. petition filed 11/14/12, waiver by respondent Facebook, Inc. filed 11/19/12, conference 1/4/13. Petition denied 1/7/13.
Trans Video Electronics, Ltd. v. Sony Electronics Inc., et al., No. 12-575
Cert. petition filed 11/6/12, waiver by respondent Sony Electronics, et al. filed 11/30/12, conference 1/4/13. Petition denied 1/7/13.
Three-Dimensional Media Group, Ltd. v. Kappos, No. 12-48
In Markman v. Westview Instruments, this Court afforded the power of construing the meaning of patent claim terms to judges. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). The justification for this Court's decision in Markman was in large part to provide uniformity and consistency to the interpretation of a patent's exclusive rights. Id. at 390-91. Unfortunately, the United States Court of Appeals for the Federal Circuit has failed in this endeavor, wreaking confusion and uncertainty on the patent system. In particular, the Federal Circuit refused to elaborate the proper standard for when and to what extent it is appropriate to limit the scope of a claim based upon the specification.
The Federal Circuit's abdication of its role is particularly salient here, where the court simply refused to consider the claim construction issue, notwithstanding inconsistent interpretations of the same patent by the Patent Examiner, the Board of Patent Appeals and Interferences, and a district court in a related litigation.
The questions thus presented are:
Cert. petition filed 7/9/12, waiver by respondent Kappos filed 8/6/12, response requested 8/14/12, conference 11/20/12, conference 1/4/13. Petition denied 1/7/13.
Becton Dickinson and Co. v. Retractable Technologies, Inc., No. 11-1278 (Vide 11-1154)
Retractable Technologies, Inc. and Thomas J. Shaw (collectively, “RTI”) have filed a petition for a writ of certiorari seeking review of the method that the United States Court of Appeals for the Federal Circuit used to construe the term “body” in patents owned by RTI. Specifically, RTI argues that the clear statements in the specification defining the “invention” as having a “one piece hollow outer body,” criticizing the “two-piece” designs in the prior art, and touting the benefits of a one-piece design were not sufficient to show that the term “body,” as used in the patent claims, refers to a one-piece body.
If RTI's petition is granted, the Court should also consider the following questions, which provide alternative grounds for affirmance:
Cert. petition filed 4/23/12, conference 6/21/12, conference 6/28/12, conference 1/4/13. Petition denied 1/7/13.
Retractable Technologies, Inc. v. Becton, Dickinson & Co., No. 11-1154 (Vide 11-1278)
Cert. petition filed 3/20/12, conference 6/21/12, conference 6/28/12, CVSG 6/29/12, conference 1/4/13. Petition denied 1/7/13.
WilmerHale represents respondent Becton Dickinson.
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