Patent Law and the Supreme Court: Patent Certiorari Petitions Denied in 2015

Patent Law and the Supreme Court: Patent Certiorari Petitions Denied in 2015

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

OIP Technologies, Inc. v Amazon, Inc., No. 15-642

Questions Presented:

1. Whether all methods that improve existing technological processes are equally eligible for patent protection under 35 U.S.C. § 101, and the Federal Circuit erred by distinguishing a method of testing demand to improve a pricing process from Diehr's method of testing temperature to improve the timing of a rubber curing process by finding that only the business-related process was ineligible.

2. Whether a court may grant a motion to dismiss a patent infringement suit for failure to claim patent-eligible subject matter under 35 U.S.C. § 101 based on factual determinations that are inconsistent with the facts in the complaint, notwithstanding the requirement of Federal Rule of Civil Procedure 12 that all facts in the complaint be taken as true.

Cert. petition filed 11/12/15, waiver of respondent Amazon.com, Inc. filed 11/17/15, conference 12/11/15. Petition denied 12/14/15.

CAFC Opinion, CAFC Argument

Allvoice Developments US, LLC v. Microsoft Corp., No. 15-538

Questions Presented:

1. Do patent claims addressed directly to software that is inherently in a computer-readable medium qualify as a “manufacture” under 35 U.S.C. § 101 without express recitation of the medium?

2. Does a district court abuse its discretion when it refuses to consider evidence of patent infringement as described in a patentee's infringement contentions on the ground that those contentions did not refer to the specific part of the accused product corresponding to a particular claim element by name when (a) the accused infringer never objected to the adequacy of the disclosure, (b) the patentee nevertheless identified the specific part by name during discovery, and (c) there is no reason, such as bad faith or prejudice to the accused infringer, for excluding the evidence as a sanction?

Cert. petition filed 10/23/15, waiver of respondent Microsoft Corp. filed 11/17/15, conference 12/11/15. Petition denied 12/14/15.

CAFC Opinion, CAFC Argument

Fivetech Technology Inc. v. Southco, Inc., No. 15-381

Questions Presented:

In United States v. Adams, 383 U.S. 39, 49 (1966), this Court stated that “it is fundamental that [patent] claims are to be construed in light of the specifications, and both are to be read with a view to ascertaining the invention.” In Markman v. Westview Instruments, Inc., 517 U.S. 370, 389 (1996), this Court referenced the required “standard construction rule that a [claim] term can be defined only in a way that comports with the instrument as a whole.” (Emphasis added). In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the Federal Circuit rejected a line of Federal Circuit opinions that limited the role of the specification in defining claim terms only to instances of explicit redefinitions or explicit disavowals of claim scope. However, since Phillips, the Federal Circuit remains divided as to the role of the specification and file history (intrinsic evidence) in construing claim terms. Specifically, some panels of the Federal Circuit have adopted a rigid standard of “lexicography and disavowal” for defining claim terms which limits the relevance of the intrinsic evidence only to those instances of explicit redefinition of a claim term or explicit disavowal of claim scope. See, e.g., GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304,1308-09 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). This has raised the following questions for this Court.

  1. Whether it is proper for the Federal Circuit to limit the role of the intrinsic evidence in construing patent claims under the exacting “lexicography and disavowal” standard.
  2. Whether the Federal Circuit's exacting “lexicography and disavowal” standard improperly circumscribes the objective standard of the person of ordinary skill in the art in construing claim terms.

Cert. petition filed 9/28/15, conference 12/4/15. Petition denied 12/7/15.

CAFC Opinion, CAFC Argument

Allergan plc v. State of New York, No. 15-587

Questions Presented:

Brand drug manufacturers seeking to market a new prescription drug must undergo a long and expensive process to obtain FDA approval. Under the 1984 Drug Price Competition and Patent Term Restoration Act, better known as Hatch-Waxman, generic drug manufacturers can obtain FDA approval for a “bioequivalent” generic drug more easily, by piggy-backing on the brand's approval efforts. Once the brand drug's patent and other exclusivities expire and generic versions enter the market, state drug substitution laws permit or require pharmacists to dispense lower-priced, therapeutically equivalent generic drugs in place of brand drugs, unless the prescriber directs otherwise. Under most (but not all) states' definitions of therapeutic equivalence, however, pharmacists may not substitute a generic drug that has a different dose than the prescribed brand without the physician's approval.

The Second Circuit held below that brand drug manufacturers have a federal antitrust duty to facilitate the operation of state drug substitution laws so as to maximize the future sales of their generic competitors. Petitioners are a brand drug manufacturer and its subsidiary, who sought to exercise their rights under the Patent Act to limit distribution of an outdated version of their patented Alzheimer's drug in favor of an innovative new formulation with different dosing and longer patent protection. The Second Circuit held that so doing would violate section 2 of the Sherman Antitrust Act because it would reduce the number of prescriptions most state substitution laws would automatically hand over to Petitioners' generic rivals once the old drug's exclusivities ended.

The questions presented are:

1. Whether exercising rights granted by the Patent Act—in particular, not selling one patented product and selling a different patented product instead—can violate the Sherman Antitrust Act?

2. Whether drug manufacturers have a federal antitrust duty to facilitate the operation of state drug substitution laws to maximize competitors' sales?

Cert. petition filed 11/4/15. Petition dismissed – Rule 46 11/30/15.

CA2 Opinion, No CA2 Argument

Nautilus, Inc. v. Biosig Instruments, Inc., No. 15-561

Questions Presented:

The Patent Act's particular-and-distinct claiming mandate gives innovators the reasonable certainty they need to invent confidently near a patent claim's boundary, but not over it. See 35 U.S.C. § 112, - 2 (2006 ed.). To perform this public-notice function, a patent claim must be clear the day it issues. This Court accordingly rejected the Federal Circuit's post hoc “amenable to construction” standard: “It cannot be sufficient that a court can ascribe some meaning to a patent's claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 (2014). But, the remand panel again did the opposite. It copied and pasted much of its opinion this Court had vacated. It did not even mention the original prosecution history. Instead, it again viewed the claim post hoc in view of statements made in Patent Office proceedings 15 years after the patent issued. And, it again relied upon a purely functional distinction over a structurally identical prior-art design as supposedly providing sufficient clarity.

The questions presented are:

1. Is a patent claim invalid for indefiniteness if its scope is not reasonably certain the day the patent issues, even if statements in later Patent Office proceedings clarify it?

2. Is a patent claim invalid for indefiniteness if its scope is distinguished from prior art solely by a functional requirement, rather than by any structural difference?

Cert. petition filed 10/30/15, waiver of respondent Biosig Instruments, Inc. filed 11/5/15, conference 11/24/15. Petition denied 11/30/15.

CAFC Opinion, CAFC Argument

Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., No. 15-115

Questions Presented:

Title 35 U.S.C. § 103(a) (2006) prohibits the issuance of a patent where “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” (Emphases added). This statute will continue to govern hundreds of thousands of patents (those with effective filing dates before March 16, 2013) for many years to come.

The question presented is whether a mere conception that was neither known to the public nor reduced to practice at the time a patented invention was made is “prior art” to that invention under the pre-2013 version of 35 U.S.C. § 103.

Cert. petition filed 7/27/15, response requested 9/21/15, conference 11/24/15. Petition denied 11/30/15.

CAFC Opinion, CAFC Argument

Meso Scale Diagnostics, LLC v. Roche Diagnostics GmbH, No. 15-510

Question Presented:

Whether a covenant, promise, or agreement not to sue for the infringement of a federal patent is a license of that patent as a matter of federal law.

Cert. petition filed 10/13/15, waiver of respondent Roche Diagnostics GmbH filed 10/23/15, conference 11/13/15. Petition denied 11/16/15.

Delaware Supreme Court Opinion, Delaware Supreme Court Argument

Chunghwa Picture Tubes, Ltd. v. Eidos Display, LLC, No. 15-288

Questions Presented:

In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (“Teva”), this Court put an end to the Federal Circuit's universal de novo review of all district courts' claim constructions by holding that: “a court of appeals 'must not . . . set aside' a district court's '[f]indings of fact' unless they are 'clearly erroneous.'” Id. at 836. “In our view, this rule and the standard it sets forth must apply when a court of appeals reviews a district court's resolution of subsidiary factual matters made in the course of its construction of a patent claim.” Id.

Teva also confirmed that Federal Rule of Civil Procedure 52(a)(6) “does not make exceptions or purport to exclude certain categories of fact findings.” Id. at 837. This Court went on to specifically hold that “[e]ven if exceptions to the Rule were permissible, we cannot find any convincing ground for creating an exception to that Rule here.” Id.

The question presented is as follows:

Whether a district court's factual finding(s) underlying its construction of a patent claim term must be reviewed for clear error under Rule 52(a)(6) as this Court held in Teva, or is an exception created to clear error review where the appellate court finds the intrinsic record clear after a de novo review of that record, as the Federal Circuit held in this case.

Cert. petition filed 9/8/15, conference 11/13/15. Petition denied 11/16/15.

CAFC Opinion, CAFC Argument

Arthrex, Inc. v. KFx Medical Corporation, No. 15-291

Questions Presented:

Under the 1952 Patent Act, an invention is not eligible for a patent if it is “obvious,” ie., “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art” at the time the patent application was filed. 35 U.S.C. § 103. This Court has stated that, in deciding obviousness, it can be important “to determine whether,” at the time the patent application was filed, there was “an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int'l Co. v. Telefax Inc., 550 U.S. 398, 418 (2007). The questions presented are:

  1. Whether the “reason to combine” inquiry is a subsidiary question of fact, subject to deferential review on appeal, or a legal question for the court, and reviewed de novo.
  2. Whether the ultimate legal issue of obviousness (or even predicate factual issues bearing on obviousness) should be resolved by the court rather than submitted to the jury for resolution.

Cert. petition filed 9/4/15, conference 11/13/15. Petition denied 11/16/15.

CAFC Opinion, CAFC Argument

Mylan Pharmaceuticals Inc. v. Apotex Inc., No. 15-307

Questions Presented:

Years ago, a branded pharmaceutical company disclaimed one of two patents that underlay its brand name blood-pressure medicine in response to petitioner's Abbreviated New Drug Application (“ANDA”). Under the well-established law of this Court, that disclaimer rendered the patent a complete nullity that could not be infringed. Nonetheless, years later the respondent filed a declaratory judgment action seeking a judicial declaration of what no one did or could dispute—namely, that a generic version of the blood-pressure medicine did not infringe the disclaimed patent. Respondent's incentive for filing this action in the absence of any dispute over the question to be litigated is clear: Respondent believes that a judicial declaration of non-infringement will benefit it at petitioner's expense by effectively eliminating the period of generic exclusivity petitioner secured by filing its ANDA first. While the District Court recognized that a statutory incentive to sue was no substitute for an actual controversy, the Federal Circuit reversed in a decision that will open the doors of district courts nationwide to non-disputes over disclaimed patents.

The questions presented are:

  1. Whether Article III's case or controversy requirement can be satisfied when the suit seeks a judgment of non-infringement of a disclaimed patent.
  2. Whether Congress can create Article III jurisdiction by imposing statutory consequences that turn on obtaining a judgment of non-infringement of a disclaimed patent.

Cert. petition filed 9/8/15, conference 11/6/15. Petition denied 11/9/15.

CAFC Opinion, CAFC Argument

Sankyo, Inc. v. Apotex, Inc., No. 15-281

Questions Presented:

Whether an action seeking a declaration that a patent would not be infringed presents a justiciable case or controversy under Article III of the Constitution where the patent at issue was previously disclaimed and thus cannot be enforced.

Cert. petition filed 9/4/15, conference 11/6/15. Petition denied 11/9/15.

CAFC Opinion, CAFC Argument

Automated Merchandising Systems, Inc. v. Lee, No. 15-326

Questions Presented:

  1. Must the federal judiciary await the substantive conclusion of an agency proceeding before it can evaluate whether an express statutory limitation on that agency's jurisdiction requires that agency to terminate its proceeding?
  2. Did the Federal Circuit err in refusing to order the United States Patent and Trademark Office to terminate the subject inter partes reexaminations under 35 U.S.C. § 317(b)?

Cert. petition filed 9/11/15, waiver of respondent Michelle K. Lee, Director, United States Patent and Trademark Office filed 10/9/15, conference 10/30/15. Petition denied 11/2/15.

CAFC Opinion, CAFC Argument

Butler v. Balkamp Inc., No. 15-273

Questions Presented:

Is summary judgement proper in a District Court when a factual dispute exists in a Design Patent action and the District Court substitutes its own opinion for that of the ordinary observer?

Factual Disputes:

In Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986), this court articulated the standard that a District Court must consider evidence presented by the non-moving party: “the evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.” Since, Anderson, and without further guidance from this Court, lower courts have reformulated the standard to allow summary judgment when there is a genuine issue as to material fact. The specific questions presented in this case:

  1. Was the District Court in error in granting summary judgment of non-infringement when the record included competent and unrefuted evidence that ordinary observers considered the patented and accused designs to be substantially the same?
  2. Was the District Court's decision to ignore the evidence presented by Plaintiff, the non-movant, in direct conflict with the standard articulated by this Court in Anderson, 477 U.S. 242?

    Design Patents:
    Infringement of a design patent is a question of fact not a question of law. (cite) The standard for determining design patent infringement was established by this Court in Gorham Co. v. White, 81 U.S. 511, (1871). In Gorham, this court created a test that expressly favored the ordinary observer's viewpoint when considering the overall similarity of a patented design to an accused design. Since, Gorham, and without further guidance from this Court, lower courts have reformulated the test by substituting the opinion of the District Court for that of the ordinary observers. The question presented in this case is:

    1. Can a District Court substitute its own observations on substantial similarity for the observations of ordinary observers and thus change the “facts,” without impermissibly altering the Gorham's ordinary observers test for design patent infringement?

Cert. petition filed 8/31/15, waiver of respondents Balkamp Inc., et al. filed 10/2/15, conference 10/30/15. Petition denied 11/2/15.

CAFC Opinion, CAFC Argument

Luv n' Care, Ltd. v. Munchkin, Inc., No. 15-242

Questions Presented:

Did the Federal Circuit err by rejecting the law of at least the First, Second, Fourth, Fifth, Sixth, Seventh, Eighth, Ninth, Tenth, and D.C. Circuits when it affirmed a PTAB administrative judgment based on new issues raised sua sponte by the PTAB at the Final Hearing, thus depriving the patent owner of notice and a meaningful opportunity to respond?

Cert. petition filed 8/24/15, conference 10/30/15. Petition denied 11/2/15.

CAFC Opinion, CAFC Argument

Bodum, Inc. v. Meyer Intellectual Properties Limited, No. 15-185

Questions Presented:

In determining whether this patent case was “exceptional” requiring an award of attorney fees to a prevailing defendant pursuant to 35 U.S.C. § 285, does the successor District Court Judge's reliance upon the decision of the predecessor District Court Judge, which decision was vacated by the Federal Circuit Court of Appeals, instead of reviewing de novo the prior record in the case, deprive the Petitioner of its right to have the case fairly adjudicated?

Cert. petition filed 8/11/15, conference 10/16/15. Petition denied 10/19/15.

CAFC Opinion, CAFC Argument

MobileMedia Ideas LLC v. Apple Inc., No. 15-206

Questions Presented:

  1. Did the US Court of Appeals for the Federal Circuit violate due process by summarily reversing a patent infringement judgment based upon a new and unprompted claim construction without remand to the district court in denial of Petitioner's right to present evidence at trial and fully and fairly litigate the matter of infringement for the first time based on the new construction?
  2. What standard should apply to denying remand for trial on a new claim construction used by the US Court of Appeals for the Federal Circuit to summarily reverse a patent infringement judgment?
  3. Has the US Court of Appeals for the Federal Circuit effectively rendered Markman hearings and rulings meaningless by creating an unworkable, burdensome and judicially inefficient precedent that will require plaintiffs to present evidence at trial of every imaginable claim construction?

Cert petition filed 8/13/15, waiver of respondent Apple Inc. filed 8/31/15, conference 9/28/15. Petition denied 10/5/15.

CAFC Opinion, CAFC Argument

Pulse Electronics, Inc. v. Halo Electronics, Inc., No. 15-121 (Vide 14-1513)

Questions Presented:

Cross-petitioners Pulse Electronics, Inc. and Pulse Electronics Corporation (collectively, “Pulse”) respectfully file this conditional cross-petition for a writ of certiorari to review the judgment of the United States Court of Appeals for the Federal Circuit in this case. The Court should deny the petition for a writ of certiorari in No. 14-1513 and, if the Court does so, it need not consider this cross-petition. If the Court grants that petition, however, it should also grant this conditional cross-petition so that the Court can first consider whether the patent claims that form the basis of the issues raised in that petition are valid or invalid. The single question presented by this conditional cross-petition is:

Whether the Federal Circuit erred by failing to consider obviousness as a de novo legal issue, and, as a result, not holding that all the asserted claims of the patents-in-suit, in light of the correct scope and content of the prior art, are invalid as a matter of law, where (a) all of the claim limitations are present in the prior art, (b) the prior art is clearly combinable, (c) the alleged secondary considerations are irrelevant or unproven, and (d) there is no proof of any nexus of any alleged secondary consideration to the claimed inventions.

Cert petition filed 7/24/15, conference 9/28/15. Petition denied 10/5/15.

CAFC Opinion, CAFC Argument

W.L. Gore & Associates, Inc. v. Bard Peripheral Vascular, Inc., No. 15-41

Questions Presented:

The second paragraph of 35 U.S.C. § 261 provides, with emphasis added:

Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.

The question presented is:

Does Section 261 require that a grant or conveyance of an exclusive patent license be in writing?

Cert petition filed 7/7/15, conference 9/28/15. Petition denied 10/5/15.

CAFC Opinion, CAFC Argument

Beriont v. GTE Laboratories, Inc., No. 14-1517

Questions Presented:

Many inventors seek patent protection using and trusting legal professionals to properly prosecute their patent application. To do otherwise would place the inventor, as well as any potential co-inventors, at risk of losing valuable protections afforded by a complex set of evolving patent laws. This is especially true when the inventor is an employee and has no agreement to assign patents with his employer. The Petitioner Walter Beriont, like many inventors, used a corporate patent attorney to navigate the complex path to a U.S. patent. The corporate patent attorney led Beriont to believe that the attorney would provide full disclosure and protect his interest. This case therefore presents the following questions for review:

  1. Does a dispute regarding the breach of a patent attorney's fiduciary duty by not determining legal inventorship raise a material issue of fact concerning presumption of validity of a named inventor of an issued United States patent?
  2. Did the district court's refusal to grant an inventor important discovery from his patent attorney, employer, and alleged co-inventor violate the inventor's right to due process?
  3. Did the court err by not accepting full jurisdiction over the claim of a breach of a patent attorney's fiduciary duties?

Cert. petition filed 6/22/15, waiver of respondent GTE Laboratories, Inc. filed 7/14/15, conference 9/28/15. Petition denied 10/5/15.

CAFC Opinion, No CAFC Argument

Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, No. 14-1473

Questions Presented:

  1. Whether on a motion to dismiss a party can overcome the statutory presumption of validity of all claims by arguing patent-ineligibility of selected claims and alleging that all the claims are substantially similar to the selected claims.
  2. Whether a computer technology for processing information is patent-eligible where it performs a task in a manner that is qualitatively different from the way the task is performed by a human; in other words, is it proper to determine patent-eligibility by focusing on the result achieved by an invention rather than on the manner by which the invention accomplishes its task.

Cert. petition filed 6/10/15, conference 9/28/15. Petition denied 10/5/15.

CAFC Opinion, CAFC Argument

Key Lighting, Inc. v. Briese Lichttechnik Vertriebs GMBH, et al., No. 14-1416

Questions Presented:

  1. Where the jury is erroneously instructed on the standard for direct patent infringement as “Additionally, personal liability may be imposed upon corporate officers for participating in, inducing, and approving acts of patent infringement,” and the erroneous instruction was objected to at trial and there was no evidence of direct infringement under 35 USC § 271(a) by the individual defendants [corporate officers], are further proceedings required under [the prejudicial jury instruction rule]?
  2. In Shinseki v. Sanders, 556 U.S. 396 (2009), this Court struck down the Federal Circuit's prior complex, rigid and mandatory harmless error framework and replaced it with a case-specific application of judgment based upon examination of the record and given the unambiguous language in 35 U.S.C. § 271(a) that direct infringement requires a party to make, use, sell, offer to sell or import the patented invention, the question presented is whether the decision of the court of appeals is consistent with the standards set down in Shinseki v. Sanders and the statutory language of 28 U.S.C. § 2111?

    [ . . . the erroneous direct infringement instruction was not prejudicial or simply a harmless error? . . . ]

    [where petitioner objected to the erroneous instruction, petitioner showed with facts and evidence the instruction was prejudicial and respondents did not argue the evidence on the point was overwhelming regardless and conceded so at the oral argument]

Cert. petition filed 5/27/15, waiver of respondent Briese Lichttechnik Vertriebs GmbH filed 6/16/15, conference 9/28/15. Petition denied 10/5/15.

CAFC Opinion, CAFC Argument

Interval Licensing LLC v. AOL, Inc., et al., No. 14-1362

Questions Presented:

Whether a patent claim that includes terms that are either “subjective” or “terms of degree” is invalid as indefinite as a matter of law unless it also includes express definitional language or unambiguous limiting language.

Cert. petition filed 5/15/15, conference 9/28/15. Petition denied 10/5/15.

CAFC Opinion, CAFC Argument

I/P Engine, Inc. v. AOL Inc., No. 14-1358

Questions Presented:

In Graham v. John Deere Co. of Kansas City, this Court held that whether a patent would have been “obvious” depends on several basic factual inquiries, including “the scope and content of the prior art” and “the differences between the prior art and the claims at issue.” 383 U.S. 1, 17 (1966). In KSR Int'l Co. v. Teleflex Inc., this Court explained that factual questions “continue to define the inquiry that controls” the determination of obviousness, and towards that end held that “factfinders” should not be denied recourse to the “common sense” of a skilled artisan when considering the relationship between prior art and the challenged patent. 550 U.S. 398, 407 (2007). In the decision below, the Federal Circuit held that the “substantial evidence” standard did not control its review of the jury's factual findings relating to the Graham factors, and that it was free to apply its own “common sense” in determining the relationship between the prior art and the challenged patent.

The question presented is:

Under what circumstances, if any, may the Federal Circuit review de novo a jury's factual findings underlying a district court's determination that a patent is nonobvious?

Cert. petition filed 5/13/15, conference 9/28/15. Petition denied 10/5/15.

CAFC Opinion, CAFC Argument

Netairus Technologies, LLC v. Apple Inc., No. 14-1353

Questions Presented:

  1. This Court has repeatedly held that the ultimate issue of a patent's validity is a question of law. See, e.g., Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238, 224-243 (2011); KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007); Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 810 (1986); Sakraida v. Ag Pro, Inc., 425 U.S. 273, 280 (1976); Graham v. John Deere Co., 383 U.S. 1, 17 (1966). This Court has further explained that legal issues must be decided by a judge, not a jury. See, e.g., Dimick v. Schiedt, 293 U.S. 474, 486 (1935). The district court below, however, following settled Federal Circuit authority, charged the jury with determining the ultimate legal question of patent validity, subject only to review for “sufficient evidence.” Did the Federal Circuit err when it affirmed that decision?
  2. It is an elementary proposition that an accused device that practices all of the limitations of a method claim infringes that method claim. Did the lower courts err by imposing the additional condition for infringement under 35 U.S.C. § 271 that all of the limitations must be practiced every time that the device is utilized?

Cert. petition filed 5/11/15, waiver of respondent Apple Inc. filed 6/15/15, conference 9/28/15. Petition denied 10/5/15.

CAFC Opinion, CAFC Argument

Ultramercial, LLC v. WildTangent, Inc., No. 14-1392

Questions Presented:

Whether computer-implemented or software-based claims, reciting novel or non-routine steps with no conventional counterparts, still cover only patent-ineligible “abstract ideas” as this Court has interpreted 35 U.S.C. § 101?

Cert. petition filed 12/7/11, conference 2/17/12, likely being held, perhaps for Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150. Cert. petition granted on 3/26/12; judgment vacated and case remanded for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 500 U.S.__(2012).

Cert petition filed 5/21/15, waiver of respondent WildTangent, Inc. filed 6/1/15, conference 6/25/15. Petition denied 6/29/15.

CAFC Opinion, No CAFC Argument

Lucree v. U.S., No. 14-1340

Questions Presented:

  1. Did the Federal Court of Appeals err in dismissal of the claim in not following the Constitutional Powers of The Judicial Branch in reviewing and interpreting Legislative actions?
  2. Did the Federal Claims Court err in dismissing the challenge to Congress's authority to impose patent Maintenance Fees under the Intellectual Property Clause of the Constitution, (Art. I, § 8, cl. 8); claim akin to illegal exaction, takings claim?
  3. Did the Federal Claims Court err in avouching that the “Maintenance Fees” and the Patent System put in place “Do Not Conflict with the Constitution”?
  4. Did the Federal Claims Court err in finding that Congresses' determination of Federal spending priorities and how the patent system fit into National Development Goals is an eminently “Rational” exercise of its power?
  5. Did the Federal Claims Court err in finding that the early expiration of her Patent did not constitute a taking by the Government, but rather was consequence for her failure to fulfill the requirements upon which her patent was conditioned?
  6. Did the Federal Court of Claims err in declining the challenge of the “First to File” system *ii given the Court's deference to Congressional discretion over Patent Legislation?
  7. Did the Federal Claims Court err in determining that the expiration (lapsing) of over 1,500 Patents on Tuesday of every week (79,00[0] per year) for nonpayment of “Maintenance Fees” are “RATIONALLY” related to the promotion of “PROGRESS” in “Science and the Useful Arts”.
  8. Is the publication of the invention after eighteen months an unconstitutional taking of private property?
  9. Is Congress protecting Small Business and Independent Inventors rights?

Cert petition filed 5/8/15, waiver of respondent United States filed 5/28/15, conference 6/18/15. Petition denied 6/22/15.

CAFC Opinion, CAFC Argument

Apotex Inc. v. UCB, Inc., No. 14-1304

Questions Presented:

Inequitable conduct is a judge-made doctrine designed to ensure the integrity of patent prosecution before the US Patent and Trademark Office (“PTO”). Under that doctrine, a patent is unenforceable if clear and convincing evidence shows that the inventor intentionally withheld or misrepresented information about the prior art that would have been material to the PTO's decision to issue the patent.

Here, the Federal Circuit applied that extraordinary remedy to hold unenforceable a patent on a previously unknown process for producing a drug, because its inventor did not disclose that a competitor might be using the process in secret. The court treated the inventor's suspicions—based entirely on non-public, internal tests on the competitor's product—as material “prior art” that needed to be disclosed in arguments to the PTO during the prosecution of the patent. The Federal Circuit thus held the patent unenforceable, even though the PTO rejected the inventor's arguments, possessed all the prior art discussing the competitor's drug, and issued the patent only after the inventor amended his patent application to distinguish it from the prior art.

The questions presented are:

  1. Whether the secret process used to make an existing product is material prior art that must be disclosed to the PTO in a later inventor's application to patent a similar or identical process.
  2. Whether alleged misconduct that does not induce the PTO to issue a patent can render that patent unenforceable.

Cert petition filed 4/30/15, waiver of respondents UCB, Inc., et al. to filed 5/19/15, conference 6/18/15. Petition denied 6/22/15.

CAFC Opinion, CAFC Argument

Google Inc. v. Vederi, LLC, No. 14-448

Question Presented:

When an applicant for a patent amends a claim to overcome the Patent and Trademark Office's earlier disallowance of the claim, should a court (i) presume that the amendment narrowed the claim and strictly construe the amended claim language against the applicant, as this Court has held; or (ii) presume that the claim scope remained the same and require that any narrowing be clear and unmistakable, as the Federal Circuit has held?Cert. petition filed 12/4/14.

Cert. petition filed 10/16/14, conference 1/9/15, CVSG 1/12/14, brief amicus curiae of United States filed 5/19/15, conference 6/18/15. Petition denied 6/22/15.

CAFC Opinion, CAFC Argument

Internet Machines, LLC v. Cyclone Microsystems, Inc., No. 14-1088

Question Presented:

Section 271(a) of the Patent Act provides that “whoever ... sells any patented invention, within the United States ... infringes the patent.” The question presented is whether sales of an infringing product that occur within the United States are beyond the reach of the Patent Act because the products are manufactured and initially shipped overseas, even though they are ultimately imported into and used in the United States.

Cert. petition filed 2/23/15, motion to dismiss petition pursuant to Rule 46 filed 5/1/15. Petition dismissed—Rule 46, 6/5/15.

CAFC Opinion, CAFC Argument

Cyclone Microsystems, Inc. v. Internet Machines, LLC, No. 14-1043

Question Presented:

Under controlling Supreme Court precedent, a patentee seeking to recover for patent infringement “must in every case give evidence tending to separate or apportion the defendant's profits and the patentee's damages between the patented feature and the unpatented features.” Here, in conflict with that important precedent, the District Court, over the Petitioners' objections, permitted the patentee to obtain royalties on both patented and unpatented features, holding that, because the patentee's expert “used the smallest salable unit as his royalty base, additional apportionment is unwarranted and the narrow exception of the entire market value rule is inapplicable.” On appeal, the Federal Circuit affirmed the damages award based on that model. Was it proper for the Federal Circuit to sanction a damages award that is in direct conflict with this Court's controlling precedent?

Cert. petition filed 1/23/15, motion to dismiss petition pursuant to Rule 46 filed 5/4/15. Petition dismissed—Rule 46, 6/5/15.

CAFC Opinion, CAFC Argument

Scientific Plastic Products, Inc. v. Biotage AB, No. 14-1186

Question Presented:

Despite no evidence of a known problem in the prior art, the Court of Appeals for the Federal Circuit ruled below that evidence “implicitly” showing a “potential” problem is sufficient to combine references is an obviousness determination. Never before has any court held that a person of ordinary skill would have been prompted to make a combination based on “an implicit” “potential” problem. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2006), this Court reaffirmed that patent “obviousness” depends on whether evidence shows that persons of ordinary skill in the art had a “reason to combine” earlier technologies into the claimed invention, such as to address a “known problem.” Since all inventions necessarily had the “potential” to have been made, the KSR standard supplies rigor to prevent nontechnical judges and juries from using hindsight, or using standardless yardsticks tantamount to “the length of the chancellor's foot.” A majority of the divided panel in this case rejected the balance and rigor of the KSR test in favor of tautological standard that asks whether a “potential” (not “known”) problem existed in the art.

The question presented is:

Whether an “implicit” acknowledgment of a “potential” problem or “concern,” which Judge Moore, in dissent, declared “according to all of the evidence on record, never actually existed,” is consistent with this Court's anti-hindsight jurisprudence requiring substantial evidence of a “known problem” to provide a reason for combining references for an obviousness determination.

Cert. petition filed 3/19/15, conference 5/28/15. Petition denied 6/1/15.

CAFC Opinion, CAFC Argument

Packard v. Lee, No. 14-655

Questions Presented:

  1. Can the Federal Circuit affirm an administrative agency decision on a novel procedural ground that the agency did not consider?
  2. Can the United States Patent and Trademark Office use a standard that this Court expressly rejected in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), to decide whether patent claims violate the definiteness requirement of 35 U.S.C. § 112(b)?

WilmerHale represents petitioner Thomas G. Packard.

Cert. petition filed 12/2/14, conference 5/14/15. Petition denied 5/18/15.

CAFC Opinion, CAFC Argument

Yufa v. TSI Inc., No. 14-1108

Questions Presented:

  1. Whether the Federal Circuit has erred in affirming the District Court's summary judgment, believing only in the movant's non-evidentiary and unsupported arguments made in favor of the movant, conclusory stating a non-infringement, without applying, discussing or at least mentioning in the Federal Circuit decision of the movant's statement on record made in favor of nonmovant, evidentiary proving the use of the patented technology in the accused products, thereby creating a genuine evidentiary dispute of the admissible triable evidentiary material fact additionally to other admissible triable evidentiary material facts, including electrical schematic diagram, all of which have been clearly specified and supplied by non-movant for Federal Circuit.
  2. Whether the Federal Circuit has erred in affirming the District Court's summary judgment, believing only in the movant's non-evidentiary and unsupported conclusory arguments and in the movant's “amended” interrogatory answer under oath, denying the use of the patented technology, instead of believing in the movant's original interrogatory answer under oath, confirming the use of the patented technology, and in the nonmovant's other evidences, as it is strictly enforced by the common laws requiring that the Courts “must believe the nonmoving party's evidence, and must draw all reasonable inferences in the nonmovant's favor.”

Cert. petition filed 3/9/15, waiver of respondent TSI, Inc. filed 3/23/15, conference 4/17/15. Petition denied 4/20/15.

CAFC Opinion, No CAFC Argument

EON Corp. IP Holdings, LLC v. Apple, Inc., No. 14-978

Questions Presented:

Under controlling law in the court below, motions to transfer venue pursuant to 28 U.S.C. § 1404(a) are governed by an application of the “Gilbert” factors used in forum non conveniens determinations as established in Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (1947). The questions presented are:

  1. Is a writ of mandamus appropriate to review a trial court's exercise of discretion to deny a transfer motion pursuant to 28 U.S.C. § 1404(a)?
  2. 2. Did the Federal Circuit err by issuing a writ of mandamus to reverse the district court's denial of transfer based solely on the Federal Circuit's disagreement with the manner in which the district court applied the Gilbert factors?

Cert. petition filed 2/12/15, waiver of respondent Apple Inc. filed 1/23/15, conference 4/17/15. Petition denied 4/20/15.

CAFC Opinion

Becton Dickinson and Co. v. Retractable Technologies, Inc., No. 14-850

Questions Presented:

  1. Where a jury uses a general verdict form to award damages, and at least one but not all of the claims submitted to the jury is set aside on appeal, are further proceedings to recalculate damages required under the general verdict rule?
  2. To benefit from the general verdict rule following a partial reversal on appeal, must a litigant object to the general verdict form and invoke the general verdict rule in advance of a partial reversal (as four courts of appeal have held), or are these steps unnecessary (as five courts of appeals have held)?

Cert. petition filed 1/16/15, waiver by respondents Retractable Technologies, Inc., et al. filed 1/23/15, response requested 2/10/15, conference 4/17/15. Petition denied 4/20/15.

CAFC Opinion, CAFC Argument

WilmerHale represents petitioner Becton Dickinson and Co.

Albecker v. Contour Products, Inc., No. 14-860

Question Presented:

The Court is now addressing the question regarding “deference” previously raised as the second question in Retractable Techs. v. New Med. Techs., Supreme Court No. 11-1154 (cert denied 2013). Petitioner would submit that the first question raised in Retractable is even more important, as it is goes to the underlying problem which the “deference” question alone cannot address, and it further raises substantial constitutional issues.

The Question Presented is as follows:

Whether a court may depart from the plain and ordinary meaning of a term in a patent claim based on language in the patent specification, where the patentee has neither expressly disavowed the plain meaning of the claim term nor expressly defined the term in a way that differs from its plain meaning.

Cert. petition filed 1/14/15, conference 3/27/15. Petition denied 3/30/15.

CAFC Opinion

CEATS, Inc. v. Continental Airlines, Inc., No. 14-681

Question Presented:

Petitioner CEATS, Inc. (“Petitioner” or “CEATS”) engaged in court-ordered mediation with a mediator who had an undisclosed close, enduring, and personal relationship with a partner for the law firm that was lead defense counsel in the underlying CEATS patent infringement litigation. The undisclosed relationship involved continuous emails, phone calls, visits, gifts, and lavish dinners. The Federal Circuit found that: (i) the mediator breached his duty of disclosure by failing to inform Petitioner of the relationship; and (ii) the breach was likely to undermine the public's confidence and trust in mediation.

Notwithstanding those express findings and express recognition of the potential adverse impact the decision would have on the public's view of the federal mediation process generally, the Federal Circuit declined to grant Petitioner any form of relief under Fed. R. Civ. P. 60(b). To reach its conclusion, the Federal Circuit utilized the special harmless error standard for judges set forth in the United States Supreme Court case Liljeberg v. Health Services Acquisition Corp., 486 U.S. 847 (1988).

The issue presented is whether in the face of a specific finding that the court-appointed mediator breached his duty to disclose the conflict, did the Federal Circuit err in utilizing the special harmless error standard from Liljeberg for a mediator in declining to grant Petitioner any relief for the undisclosed conflict of interest.

Stated another way, the question for Supreme Court review is whether the failure of a court-appointed mediator to disclose a long standing conflict of interest with one of the parties to the mediation can ever be “harmless.” The answer to that question strikes at the very foundation of the integrity of the Federal judicial process as well as the public's perception of the fundamental fairness of those proceedings.

Cert. petition filed 12/4/14, conference 3/20/15. Petition denied 3/23/15.

CAFC Opinion, CAFC Argument

Gilead Sciences, Inc. v. Natco Pharma Ltd., No. 14-647

Question Presented:

This Court's double-patenting doctrine establishes the “well-settled rule that two valid patents for the same invention,” or obvious modifications of that invention, “cannot be granted” to a single party. Miller v. Eagle Mfg. Co., 151 U.S. 186, 196-97 (1894). The Court has repeatedly held that when two such patents are granted to a single party, “the later one [i]s void.” Id. at 197 (discussing Suffolk Co. v. Hayden, 70 U.S. 315 (1865)). In the decision below, the Federal Circuit inverted this century-old doctrine, holding a first issued patent invalid based on the issuance of the second patent.

The question presented is:

Whether, contrary to this Court's consistent and longstanding precedent and Congress's intent, the double-patenting doctrine can be used to invalidate a properly issued patent before its statutory term has expired using a second, later-issuing patent whose term of exclusivity is entirely subsumed within that first patent's term?

Cert. petition filed 11/26/14, conference 3/6/15. Petition denied 3/9/15.

CAFC Opinion, CAFC Argument

K/S HIMPP v. Hear-Wear Technologies, LLC, No. 14-744

Questions Presented:

The PTO during an inter partes reexamination of U.S. Patent No. 7,016,512 confirmed two dependent claims in a hearing-aid patent that recited a multi-pronged plug at the end of an insulated wire connecting two known portions of the hearing-aid even though there was no dispute that such multi-pronged plugs were known in the art for half a century. Yet the Federal Circuit in a precedential 2-1 decision affirmed the result solely because the Petitioner's original inter partes reexamination request did not support that notorious fact with documentary evidence. The majority affirmed in the face of an ex parte reexamination of the same patent that reached a contrary result, in the face of record prior art showing that exact feature, and even in the face of an admission at oral argument that multi-pronged plugs were known in the art. The Federal Circuit's affirmance is contrary to the Administrative Procedures Act requiring whole record review, and contrary to this Court's landmark obviousness decision in KSR Int'l Co. v. Teleflex, 550 U.S. 398 (2007).

The APA requires courts reviewing an agency decision under the substantial-evidence standard to consider the whole record of the formal agency proceedings. 5 U.S.C. § 706 (2012). What comprises the entire record of a patent in an administrative proceeding at the PTO has not been addressed by the Court. This novel legal question is important. It is not uncommon for the PTO to review a single claim over the course of several proceedings. Here the Federal Circuit ignored the factual findings of a Petitioner-initiated parallel ex parte review of the same patent claims, by the same three examiners, that reached a contrary result. It also ignored record evidence that the patent owner itself later presented in the inter partes reexamination that detracted from the PTO's decision.

This Court's obviousness jurisprudence requires an expansive approach. It was set forth most recently in KSR, 550 U.S. at 415, where this Court broadly warned against a rigid approach to determining obviousness and against an overemphasis on printed publications. Yet here, the Federal Circuit created a bright-line rule that demands documentary evidence for every structural feature of a claim, no matter how trivial or notoriously well-known. The new rule effectively precludes examiners from relying on common sense/common knowledge to find a structural feature in the prior art.

The Questions Presented are:

  1. Did the Federal Circuit misapprehend and grossly misapply the APA's doctrine of whole record review when it refused to consider submitted prior art and all the PTO's prior patentability determinations of the disputed claims under review?
  2. Did the Federal Circuit err when it created a new, bright-line rule that precludes the use of common knowledge or common sense to find obvious claimed structural elements, no matter how trivial or notoriously well-known?.

Cert. petition filed 12/23/14, waiver of respondent Hear-Wear Technologies, LLC filed 1/7/15, conference 2/20/15. Petition denied 2/23/15.

CAFC Opinion, CAFC Argument

Southern Snow Mfg. Co., Inc. v. SnoWizard, Inc., et al.., No. 14-742
   

Questions Presented:

In civil actions by business competitors, alleging several instances of fraud upon the USPTO in obtaining patents and trademark registrations variously obtained, approved, and applied for at the time of filing suit, in turn misleading customers;

Where the district court dismissed before trial:

  • all Civil-RICO claims, because of absence of USPTO reliance and absence of pleading “criminal acts”;
  • antitrust claims, because fraud upon the USPTO cannot be an element of such claims nor admissible evidence in support;
  • 15 USC §1125(a) unfair-competition claims, because of no proven damages and no materiality; and
  • 15 USC §1120 claims, where trademarks were not fully registered at the time of filing suit;
 

1. Does sufficiently alleged fraud upon the USPTO in obtaining patents and trademark registrations, in turn misleading customers, support civil claims by business competitors under:

a. Civil-RICO (18 USC §1964);
b. Clayton Act §4 & §16 (15 USC §15 & §26) antitrust attempted monopolization;
c. Lanham Act §43(a) (15 USC §1125(a)) unfair competition?

2. Can Lanham Act §38 (15 USC §1120) claims for fraudulent procurement of trademark registrations be sustained against marks that are not fully registered at the filing of suit, but will likely become registered during the course of litigation?

Cert. petition filed 12/1/14, waiver of respondent SnoWizard, Inc., et al. filed 12/30/14, conference 2/20/15. Petition denied 2/23/15.

CAFC Opinion, CAFC Argument

STC.UNM v. Intel Corp., No. 14-717

Question Presented:

Rule 19 of the Federal Rules of Civil Procedure provides that where a necessary party to a lawsuit has not been joined, “the court must order that the person be made a party.” The Court of Appeals for the Federal Circuit ruled below that Rule 19 is “trumped” by a purported “substantive rule” that a co-owner of a patent can “impede an infringement suit brought by another co-owner.” The majority opinion below stands in stark contrast to this Court's precedents. For over seventy years, this Court has rejected every statutory challenge to a Federal Rule that has come before it.

The question presented is:

Whether Rule 19 of the Federal Rules of Civil Procedure applies in patent infringement cases or is trumped by a substantive right of a patent co-owner to bar a fellow owner's infringement suit.

Cert. petition filed 12/16/14.

CAFC Opinion, CAFC Argument

Tse v. Google Inc., No. 14-692

Question Presented:

The district court granted summary judgment of invalidity of most claims of U.S. Patent No. 6,665,797 (“'797 patent”) under 35 U.S.C. § 112, for lack of written description support in the originally filed patent application for the “No Charge” negative limitations in the invalidated claims (“Summary Judgment”).

However, evidences found in the Summary Judgment show that the district court actually granted it without even having a look at the originally filed claims, which it should, to check if there is any “No Charge” limitation therein. Tse respectfully submits, they do have languages explicitly precluding payment.

As such, the Summary Judgment itself is nothing but a no opinion judgment, at least in respect to the originally filed claims.

And thereafter, a Federal Circuit panel affirmed the summary judgment, with no opinion, by virtue of Fed. Cir. Rule 36 and then the Federal Circuit denied a combined petition for panel rehearing and rehearing en banc, again with no opinion.

This is an issue of first impression, the question is:

Regardless of the decision below being made is right or not, whether the Federal Circuit should use its Rule 36 power to issue a no opinion affirmance order, when there is an omission in the opinion of the court below which is so critical that the use of Rule 36 power would result in a serious violation of the Fifth Amendment to the United States Constitution, which guarantees “No person shall . . . be deprived of life, liberty, or property, without due process of law” and, the requirements of due process includes, “Requirement that the tribunal prepare written findings of fact and reasons for its decision.” (emphasis added) A well-regarded article. “Some Kind of Hearing”, by late Judge Henry Friendly.

Cert. petition filed 12/11/14, waiver of respondent HTC America, Inc. filed 12/17/14, waiver of respondent Samsung Telecommunications America, LLC filed 12/19/14, waiver of respondent Google, Inc. filed 12/29/14, conference 2/20/15. Petition denied 2/23/15.

CAFC Opinion, CAFC Argument Not Available

SnoWizard, Inc. v. Southern Snow Mfg. Co., Inc., No. 14-684

Questions Presented:

  1. Whether the United States Court of Appeals for the Federal Circuit misapplied this Court's holding in Pfaff v. Wells Electronics, Inc. 525 U.S. 55, 119 (1998) by conflating the 'ready for patenting' standard with that of the on-sale bar by concluding that non binding price quotations for two component parts constituted a sale of the “claimed” invention simply because one skilled in the art could infer the claimed invention from the non-binding price quotations.
  2. Whether the United States Court of Appeals for the Federal Circuit erred in concluding that the on-sale bar applied because one skilled in the art could infer the claimed invention from the alleged invalidating activity even when absolutely no evidence whatsoever from one skilled in the art as to what the activity suggests was of record.
  3. Whether the United States Court of Appeals for the Federal Circuit erred by applying the on-sale bar to the receipt of non-binding price quotations for two component parts of claimed invention without any consideration whatsoever of multiple dependent claims, some of which clearly define a complete ice shaving machine.
  4. Whether the United States Court of Appeals for the Federal Circuit erred by concluding that Petitioners infringed an alleged trademark of one of the parties when all parties judicially confessed that the trademark was generic.
 

Cert. petition filed 12/1/14, waiver of respondent Southern Snow Manufacturing Co., Inc., et al. filed 12/27/15, conference 2/20/15. Petition denied 2/23/15.

CAFC Opinion, CAFC Argument

Zoll Lifecor Corp. v. Philips Electronics North America Corp., No. 14-619

Question Presented:

Sections 312, 314, and 315 of Title 35 each identify separate requirements for instituting an administrative inter partes review (IPR) proceeding to invalidate a patent that the U.S. Patent & Trademark Office (USPTO) erroneously issued. The only one of these three sections that limits an IPR petitioner's right to appeal is Section 314, and it is limited on its face to decisions “under this section.” A general right to appeal is provided by 28 U.S.C. § 1295(a)(4)(A), which grants the Federal Circuit “exclusive jurisdiction . . . of an appeal from a decision of - the Patent Trial and Appeal Board [PTAB] of the [USPTO] with respect to a[n] . . . inter partes review under Title 35.” Despite this statutory structure and plain statutory language, the Federal Circuit has repeatedly refused to review dismissals of IPR proceedings made under Sections 312 and 315 (which are not the sections under which Congress said there could be no appeal). The Federal Circuit's holdings leave IPR petitioners dismissed under these sections with no appellate review, and give the USPTO essentially unfettered discretion to dispose of petitions alleging that the agency erred in granting a patent.

The question presented is:

Whether the Federal Circuit has erred in blocking all appellate review of USPTO decisions made under 35 U.S.C. §§ 312 and 315, when the only limit in the statute is in Section 314, which is expressly limited to decisions made “under this section” - thus giving the USPTO complete and unreviewable authority under these two sections to reject assertions that the agency previously erred in granting patents.

Cert. petition filed 11/24/14, conference 2/20/15. Petition denied 2/23/15.

CAFC Opinion, CAFC Argument Not Available

Consumer Watchdog v. Wisconsin Alumni Research Foundation, No. 14-516 
Question Presented:  

 

Does a statute that expressly provides a requester of agency action a right to appeal any dissatisfactory decision of the agency on her request to the courts provide sufficient Article III standing for the appeal, or must additional requirements be satisfied above and beyond the statute? 

 

Cert. petition filed 10/31/14, conference 2/20/15. Petition denied 2/23/15.

 

CAFC Opinion, CAFC Argument

MadStad Engineering, Inc. v. United States Patent And Trademark Office, No. 14-366

Questions Presented:

  1. Whether the Federal Circuit's decision that Petitioners lack standing to challenge the “First-Inventor-to-File” provisions of the America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (“AIA”), conflicts with precedent of this Court and decisions in other circuits.
  2. Whether the “First-Inventor-to-File” provisions of the AIA are unconstitutional under the Intellectual Property Clause of Article I, Section 8, Clause 8.

Cert. petition filed 9/26/14, conference 2/20/15. Petition denied 2/23/15.

CAFC Opinion, CAFC Argument

Southern Electronics Supply, Inc. v. Camsoft Data Systems, Inc., No. 14-628

Questions Presented:

In cases removed to federal court, Caterpillar, Inc. v. Lewis generally provides a plaintiff the appellate right to challenge the denial of a motion to remand, but qualifies that right if “considerations of finality, efficiency, and economy become overwhelming.” 519 U.S. 61, 75 (1996). The Circuit Courts of Appeals are divided on the proper application of Caterpillar to the following two questions:

  1. Whether a plaintiff waives its right to appeal under Caterpillar by amending its complaint, after denial of a motion to remand, to add new and distinct federal claims thereby independently creating undisputed federal-question jurisdiction.
  2. Whether a federal court's adjudication of the majority of a plaintiff's claims on summary judgment and dismissals with prejudice creates sufficient considerations of “finality, efficiency, and economy” to foreclose appellate review of the denial of the motion to remand.
     
    The Circuit Courts of Appeals are also divided on the underlying question of removal jurisdiction in this case:
  3. Whether federal courts have subject matter jurisdiction over claims of inventorship involving a pending patent application, as the Federal Circuit has held, or only over claims of inventorship involving an issued patent, as the Fifth Circuit held here.CAFC Opinion, CAFC Argument.

Cert. petition filed 11/25/14, conference 1/16/15. Petition denied 1/20/15.

CA5 Opinion, CA5 Argument

Allergan, Inc. v. Apotex Inc., No. 14-465

Question Presented:

May the Federal Circuit sitting in review of a district court bench trial on patent obviousness find facts that the district court never found or must the Federal Circuit remand to the district court for further fact finding consistent with Federal Rule of Civil Procedure 52(a)?

Cert. petition filed 10/10/14, waiver of respondent Hi-Tech Pharmacol, Co. filed 11/19/14, waiver of respondent Sandoz, Inc. filed 11/20/14, waiver of respondents Watson Laboratories, Inc., et al. filed 11/21/14, waiver of respondent Apotex Inc., et al. filed 11/21/14, conference 1/9/15. Petition denied 1/12/15.

CAFC Opinion, CAFC Argument

Yufa v. Lockheed Martin Corp., No. 14-454

Questions Presented:

  1. Whether the Federal Circuit has erred in affirming the District Court's summary judgment, holding that the non-movant of summary judgment “did not supply evidence creating a genuine evidentiary dispute,” without discussion or at least mention in the Federal Circuit decision of the clearly specified evidences on record, which create a genuine evidentiary dispute of the admissible triable evidentiary material facts, supplied by the non-movant for the Federal Circuit consideration.
  2. Whether the Federal Circuit has erred in affirming the District Court's summary judgment, holding that the District Court “applied the proper standards in granting summary judgment,” without applying, discussion or at least mention in the Federal Circuit decision of the standards, supplied by the non-movant for the Federal Circuit consideration, and which “must” be performed in granting summary judgment.

 

Cert. petition filed 10/14/14, conference 1/9/15. Petition denied 1/12/15.  

CAFC Opinion, CAFC Argument Not Available
Apple Inc. v. Ancora Technologies, Inc., No. 14-469

Questions Presented:

  1. Whether this petition should be held for disposition of Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., No. 13-854, which will address whether de novo review applies to a district court's ruling on the meaning of patent claims, because the Federal Circuit in this case expressly applied de novo review in reversing the district court's construction of a key claim term.
  2. Whether this Court should grant, vacate, and remand for the Federal Circuit to reconsider whether, in light of Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), the patent claims are invalid for indefiniteness where the ordinary meaning of a key claim term is irreconcilable with the usage of the term in the patent's specification.

Cert. petition filed 10/20/14, conference 1/9/15. Petition denied 1/12/15.

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