WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently denied petitions, organized in reverse chronological order by date of certiorari petition.
DBN Holding, Inc. v. International Trade Com'n, No. 16-63
19 U.S.C. § 1337(a)(1)(B)(i) gives the International Trade Commission jurisdiction to investigate and to deal with the importation of “articles that . . . infringe a valid and enforceable” patent. Yet in a series of recent cases that have repeatedly and deeply divided the Federal Circuit, the Commission has been permitted to expand its jurisdiction to regulate the importation of articles that do not infringe any patent but are merely associated with the alleged infringing conduct of U.S. companies on U.S. soil. And in the decision below, the Commission exercised its expanded jurisdiction to enforce a patent that has been finally adjudicated to be invalid by the federal courts. The questions presented are:
Cert. petition filed 7/13/16, conference 11/22/16. Petition denied 11/28/16.
Grünenthal GmbH v. Teva Pharmaceuticals USA, Inc., 16-296 (vide 16-289)
The U.S. patent statute provides two separate bases for denying patentability over prior art, (1) lack of novelty (or anticipation) under 35 U.S.C. § 102, where the claimed invention is identically described in the prior art, and (2) obviousness under 35 U.S.C. § 103, where the claimed invention, though not identically described in the prior art, would nonetheless have been obvious to a person of ordinary skill in the art. A critical distinction between these separate requirements is that objective evidence of patentability, such as trial and failure of others, skepticism, unexpected results, industry acclaim, and commercial success, must be considered in evaluating obviousness under § 103 but may be ignored in assessing lack of novelty under § 102. Thus, substantive rights hinge on properly applying § 103 in situations where the stringent identity test of § 102 is not met.
Given the importance of this distinction, courts have permitted resort to unappreciated “inherency” to fill voids in allegedly anticipating prior art disclosures only where the evidence unambiguously demonstrated that the missing feature was necessarily present in an otherwise anticipatory previously-disclosed embodiment.
Thus, the questions presented here are:
Cert. petition filed 9/1/16, conference 11/10/16. Petition denied 11/14/16.
CAFC Opinion, No CAFC Argument
Purdue Pharma L.P. v. Epic Pharma, LLC, No. 16-289 (vide 16-296)
The Patent Act states that, in determining whether a claimed invention, though novel, is impermissibly obvious, the touchstone is whether the “differences” between that invention and the prior art are such that the invention “as a whole” would have been obvious to a person having ordinary skill in the art. 35 U.S.C. § 103 (emphasis added); see also 35 U.S.C. § 103(a) (2006). As this Court has instructed, that inquiry is holistic and flexible, see KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), and, at least since Chief Justice Taft authored the Court's decision in Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45 (1923), it has taken into account a patentee's discovery of a nonobvious source of the problem that the patent overcomes.
Here, the inventors discovered that, in the manufacture of the prescription pharmaceutical oxycodone, a previously unknown molecule was being created and causing unwanted amounts of a potential toxin to appear in the final drug product. The inventors' discovery of this previously unknown molecule allowed them to create the patented invention, the first-ever oxycodone substantially free of the potential toxin.
The question presented is:
Whether the inventors' discovery is relevant to the obviousness inquiry (as section 103 and Eibel Process command), or whether that discovery and other indicia of invention may be ignored as a matter of law, as the Federal Circuit did here.
Cert. petition filed 9/1/16, waiver of respondent Mylan Pharmaceuticals, Inc. and Mylan, Inc. filed 9/29/16, conference 11/10/16. Petition denied 11/14/16.
Cooper v. Square, Inc., No. 16-76
Whether 35 U.S.C. §318(b) violates Article III of the United States Constitution, to the extent that it empowers an executive agency tribunal to assert judicial power canceling private property rights amongst private parties embroiled in a private federal dispute of a type known in the common law courts of 1789, rather than merely issue an advisory opinion as an adjunct to a trial court.
This is the same question presented as in Cooper v. Lee, No. 15-955. As discussed below, these two Petitions by the same Petitioner (this one on direct review, the other on collateral review) should be held and decided together.
Cert. petition filed 7/13/16, waiver of respondent Square, Inc. filed 8/12/16, response requested 9/9/16, conference 11/10/16. Petition denied 11/14/16.
In re Trading Technologies Intern., Inc., No. 16-446
Given that 35 U.S.C. § 100(b) sets forth that a patent eligible “process” includes a “new use of a known process, machine, manufacture, composition of matter, or material,” did the Federal Circuit err by holding that an indisputably new and non-obvious use (i.e., game steps) of an existing manufacture (i.e., playing cards) was patent ineligible under Alice Corp. v. CLS Bank Int'l, 134 S.Ct. 2347 (2014)?
Cert. petition filed 9/29/16, waiver of respondent Michelle K. Lee, Director, United States Patent and Trademark Office et al., filed 10/14/16, conference 11/4/16. Petition denied 11/7/16.
CSP Technologies, Inc. v. Sud-Chemie AG, No. 16-238
Whether the Federal Circuit erred by limiting a claim term having an unambiguous plain and ordinary meaning to a narrow implicit definition used in connection with some but not all embodiments disclosed in the specification.
Cert. petition filed 8/22/16, conference 10/28/16. Petition denied 10/31/16.
Automated Creel Systems, Inc. v. Shaw Industries Group, Inc., No. 16-108
Cert. petition filed 7/21/16, waiver of respondent Shaw Industries Group, Inc. filed 8/18/16, conference 10/28/16. Petition denied 10/31/16.
Encyclopaedia Britannica, Inc. v. Dickstein Shapiro, LLP, No. 16-305
In the 1980s, Petitioner Encyclopaedia Britannica (“Britannica”) developed a pioneering multimedia search system that, for the first time, was able to search through vast amounts of multimedia information and display this information in a user-friendly manner. When Britannica sought to enforce patents obtained on this system, it was discovered that certain patent application filing errors committed by Respondent Dickstein Shapiro, LLP (“Dickstein”) rendered these patents invalid. Almost a decade later, Britannica's malpractice case against Dickstein was dismissed on the pleadings in light of this Court's precedent in Alice Corp. Party Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), despite the presence of a pending motion to conduct discovery and factual disputes regarding whether the patents at issue presented an “abstract idea” or lacked “an inventive concept.”
Cert. petition filed 9/8/16, waiver of respondent Dickstein Shapiro, LLP filed 9/12/16, conference 10/7/16. Petition denied 10/11/16.
No CAFC Opinion, CAFC Argument
Geotag, Inc. v. Google Inc., No. 16-268
Whether a compulsory counterclaim can satisfy the case or controversy requirement under Article III of the Constitution if there was no case or controversy at the time the complaint was filed?
Cert. petition filed 8/26/16, waiver of respondent Google Inc. filed 9/8/16, conference 10/7/16. Petition denied 10/11/16.
Merck & Cie v. Gnosis S.P.A., No. 16-125
Cert. petition filed 7/25/16, conference 10/7/16. Petition denied 10/11/16.
MCM Portfolio LLC v. Hewlett-Packard Co., No. 15-1330
The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), created a new proceeding that permits the Patent Trial and Appeal Board (PTAB) to institute inter partes review (IPR) proceedings to adjudicate the validity of granted patents. In these adversarial proceedings, intended as an alternative to litigation, the PTAB essentially plays the role of a court. In just a few short years, IPR proceedings have resulted in the invalidation of thousands of patent claims, including in this case.
This Court is considering procedural issues relating to IPR in Cuozzo Speed Technologies, Inc. v. Lee, No. 15-446 (argued Apr. 25, 2016). The Questions Presented by this Petition are:
Cert. petition filed 4/29/16, conference 9/26/16, conference 10/7/16. Petition denied 10/11/16.
Cooper v. Lee, No. 15-955
Nearly 30 years have passed since this Court last applied Article III Separation of Powers principles to declare the authority of Congress to empower an executive agency to adjudicate a private dispute. More recently in a non-agency context, in Stern v. Marshall, 131 S. Ct. 2594 (2011), Justice Scalia's concurring opinion questioned the “multifactors relied upon today [that] seem to have entered our [public rights] jurisprudence almost randomly.” Id. at 2621 (Scalia, J., concurring). The two other Stern opinions (majority and dissent) have all members of this Court expressing dissatisfaction with the clarity of Article III public rights jurisprudence: either it “has not been entirely consistent,” id. at 2611 (majority), or preceding cases “do not admit of easy synthesis.” Id. at 2624 (dissent) (citation omitted). Congress continues to pass laws against this murky backdrop, risking inappropriate expansion of the administrative state.
The question presented is whether 35 U.S.C. §318(b) violates Article III of the United States Constitution, to the extent that it empowers an executive agency tribunal to assert judicial power canceling private property rights amongst private parties embroiled in a private federal dispute of a type known in the common law courts of 1789, rather than merely issue an advisory opinion as an adjunct to a trial court.
Cert. petition filed 1/21/16, conference 5/12/16, conference 9/26/16, conference 10/7/16. Petition denied 10/11/16.
CAFC Opinion was unpublished, No CAFC Argument
Pactiv, LLC v. Lee, No. 16-205
Congress has established an ex parte reexamination mechanism at the U.S. Patent & Trademark Office (“PTO”), which permits any individual to submit prior art references and request reexamination of a granted patent claim. Before initiating an ex parte reexamination, the PTO Director must first find that the prior art reference raises a “substantial new question of patentability.” If the Director determines that such a question is raised, “the determination will include an order for reexamination of the patent for resolution of the question.” 35 U.S.C. § 304 (emphasis added). The question presented is:
Whether, because Section 304 requires the Director to issue an order for a reexamination “for resolution of the question,” the “substantial new question of patentability” included in the Director's order delineates the scope of the ex parte reexamination.
Cert. petition filed 8/12/16, waiver of respondent Michelle K. Lee, Under Secretary of Commerce for Intellectual Property and Director, Patent and Trademark Office to respond filed 9/2/16, conference 9/26/16. Petition denied 10/3/16.
Essociate, Inc. v. Clickbooth.com, LLC, No. 16-195
A patent claiming simply an instruction to implement an abstract idea on a computer is ineligible for protection under 35 U.S.C. § 101. The courts below, and hundreds of other decisions, have broadened that holding to find abstract ideas and lack of inventive concepts even in patents that solve specific technological problems using new processes. Should this Court clarify the meanings of “abstract idea” and “inventive process”?
Cert. petition filed 8/8/16, waiver of respondent Kjell Olmarker filed 7/18/16, conference 9/26/16. Petition denied 10/3/16.
Genetic Technologies Ltd. v. Merial L.L.C., No. 15-1518
As of the priority date for U.S. Patent No. 5,612,179 in 1989, scientists identified DNA haplotypes through the direct identification of allelic variants within coding DNA regions. Scientists ignored non-coding DNA because they believed those regions were merely accumulated debris or “junk DNA.” Dr. Malcolm Simons discovered that, in the DNA of unrelated individuals, a polymorphism in a non-coding DNA region and a coding region allele could be inherited together. This natural phenomenon is known as “linkage disequilibrium.” The discovery prompted Dr. Simons to invent a new and useful process for detecting a coding region allele of a multi-allelic genetic locus by interrogating a non-coding DNA sequence that is in linkage disequilibrium with that multi-allelic genetic locus. Dr. Simons' invention, as reflected in claim 1 of the '179 patent, was advantageous for a number of reasons, including that it was more reliable and quicker than prior art identification processes that used direct identification of allelic variants.
On de novo review, a Federal Circuit panel evaluated the patent-eligibility of claim 1 in response to a Rule 12(b)(6) motion and under the framework established by Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), and Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014). The panel found that claim 1 is directed to a “natural law” comprising both: (1) “the relationship between non-coding and coding sequences in linkage disequilibrium”—undisputedly a naturally occurring phenomenon; and (2) “the tendency of such non-coding sequences to be representative of the linked coding sequences”—which the parties disputed as a matter of fact, and GTG argued was Dr. Simons' application of the natural occurring phenomenon to achieve his intended purpose.
The panel also found the claimed laboratory techniques to be used in a routine and conventional manner, although it recognized “that at the time the '179 patent was filed, no one was 'using the non-coding sequence as a surrogate marker for the coding region allele . . .' [and claim 1] was found by the patent examiner to be novel over the prior art and survived multiple rounds of reexamination.”
The panel then affirmed the Delaware District Court's judgment that claim 1 is patent-ineligible under 35 U.S.C. § 101.
The questions presented are:
Cert. petition filed 8/8/16, waiver of respondent Bristol-Myers Squibb Co. filed 8/15/16, waiver of respondents Merial L.L.C. et al., filed 8/15/16, conference 9/26/16. Petition denied 10/3/16.
In re Tobinick, No. 15-1544
Cert. petition filed 6/6/16, waiver of respondent Kjell Olmarker filed 7/18/16, conference 9/26/16. Petition denied 10/3/16.
Driessen v. Sony Music Ent., No. 15-1518
The federal courts in this case evaluated the plaintiffs' patent claims using a corollary to the inter partes review called a “mini-Markman hearing.” This type of trial proceeding has become a shortened alternative to fully litigated infringement disputes. In mini‑Markman proceedings, courts construe the meaning of claim terms prior to fact discovery without consideration of prior art, field of endeavor, anticipation of invention, or infringement. Some judges and patent lawyers have called it an “early claim dispositive” hearing with the goal of “quick” and “cost-effective” conclusion to the litigation. A characteristic of the proceeding is that any meaning that can be imparted from the claim terms or phrases themselves can be weighed contra preferentem against the patent holder.
Unlike the broadest reasonable interpretation standard as used in inter partes review, mini-Markman proceedings use what is known as the acontextual branch of the plain and ordinary meaning standard. Procedural removal of the prior art field of endeavor from consideration while at the same time maintaining the rule against importation of limitations from the specification, by its very design, produces an imbalance between the meaning of claim terms in the claim itself and the meaning imparted by the invention. The guarding against importation of limitations from the specification stands alone and the invention carries no effect on the meaning of the claim terms.
In a quick decision styled “non-precedential” the Federal Circuit affirmed the early claim dispositive mini-Markman proceedings, withdrawing from the rule that we construe claim terms in light of the field of invention according to the understanding of a person having ordinary skill in the art. The result is that any and all dictionary definitions that could be implied from the claim itself will impart meaning to the claim. Federal Circuit approval will facilitate more mini-Markman proceedings, giving rise to the questions presented as follows:
Cert. petition filed 6/15/16, waiver of respondent Sony Music Entertainment et al., filed 7/15/16, conference 9/26/16. Petition denied 10/3/16.
CAFC Opinion, No CAFC Argument
Trading Techs. Intern. Inc. v. Lee, No. 15-1516
Did the court of appeals err in denying mandamus and allowing the Patent Trial and Appeal Board (“PTAB”) to conduct a trial outside of its jurisdiction in a covered business method (“CBM”) review on a patent that is clearly and indisputably not a CBM patent, in contravention of the Leahy-Smith America Invents Act (“ALA”)?
Cert. petition filed 6/16/16, waiver of respondent Michelle K. Lee, Director, United States Patent and Trademark Office filed 6/30/16, conference 9/26/16. Petition denied 10/3/16.
No CAFC Opinion (appeal is from denial of write of mandamus), No CAFC Argument
Jericho Sys. Corp. v. Axiomatics, Inc., No. 15-1502
Whether, under this Court's precedent in Alice Corp. Party Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), a patent may be invalidated as an “abstract idea” under 35 U.S.C. § 101 when it claims a specific implementation and does not preempt other uses of the abstract idea.
Cert. petition filed 6/10/16, waiver of respondents Axiomatics, Inc. filed 6/15/16, conference 9/26/16. Petition denied 10/3/16.
MacDermid Printing Solutions, LLC v. E.I. DuPont De Nemours & Co., No. 15-1499
Whether the Federal Circuit has erred in holding that there “must” be a proven “reasonable expectation of success” in a claimed combination invention in order for it to be held “obvious” under 35 U.S.C. § 103(a).
Cert. petition filed 6/9/16, waiver of right of respondent E.I. DuPont de Nemours & Company filed 6/14/16, conference 9/26/16. Petition denied 10/3/16.
Commil USA, LLC v. Cisco Sys., Inc., No. 15-1446
Cert. petition filed 5/27/16, waiver of respondent Cisco Systems, Inc. filed 6/2/16, response requested 6/15/16, conference 9/26/16. Petition denied 10/3/16.
Amphastar Pharmaceuticals, Inc. v. Momenta Pharmaceuticals, Inc., No. 15-1402
The Hatch-Waxman Act safe harbor provides that “[i]t shall not be an act of infringement to . . . 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 question presented is:
Whether the safe harbor protects a generic drug manufacturer's bioequivalence testing that is performed only as a condition of maintaining FDA approval and is documented in records that must be submitted to the FDA upon request.
Cert. petition filed 5/17/16, waiver of respondent Momenta Pharmaceuticals, Inc. filed 5/23/16, conference 6/9/16, response requested 5/31/16, conference 9/26/16. Petition denied 10/3/16.
Commonwealth Scientific and Indus. Research Organisation v. Cisco Sys., Inc., No. 15-1440
The Patent Act provides that a “[u]pon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement . . . .” 35 U.S.C. § 284. In contravention of this broad language, the Federal Circuit has erected a rigid set of legal rules to control the determination of damages by triers of fact. As a result, the Federal Circuit now exercises de novo review over inherently factual questions, resulting in routine reversals.
This Court has held with regard to another patent remedies provision that it is improper for the Federal Circuit to “superimposed an inflexible framework onto statutory text that is inherently flexible.” Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014). And this Court is considering related questions in relation to another portion of section 284 in Stryker Corp. v. Zimmer, Inc., No. 14-1520, and Halo Electronics, Inc. v. Pulse Electronics, Inc., 14-1513 (argued Feb. 23, 2016).
The question presented is:
Is the Federal Circuit's promulgation of rigid legal rules to control the weight to be given by the trier of fact to evidence of patent infringement damages proper under 35 U.S.C. § 284?
Cert. petition filed 5/25/16, waiver of respondent Cisco Systems, Inc. filed 6/3/16, conference 6/26/16. Petition denied 6/27/16.
Interval Licensing LLC v. Lee, No. 15-716
Can the Patent and Trademark Office appropriately apply the “broadest reasonable interpretation” standard in construing patent claims in post-grant validity challenges?
Cert. petition filed 11/27/15, conference 4/15/16, conference 6/26/16. Petition denied 6/27/16.
Versata Dev. Group, Inc. v. SAP Am., Inc., No. 15-1145
The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), created a new post-grant procedure at the US Patent and Trademark Office to address “the validity of covered business method patents.” Id. § 18(a)(1). The AIA defines a “covered business method patent” (“CBM”) as “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.” Id. § 18(d)(1). The statute exempts “patents for technological inventions” from CBM review. Id. The questions presented are:
Cert. petition filed 3/15/16, conference 6/23/16. Petition denied 6/27/16.
Sequenom, Inc. v. Ariosa Diagnostics, Inc., No. 15-1182
In 1996, two doctors discovered cell-free fetal DNA (cffDNA) circulating in maternal plasma. They used that discovery to invent a test for detecting fetal genetic conditions in early pregnancy that avoided dangerous, invasive techniques. Their patent teaches technicians to take a maternal blood sample, keep the non-cellular portion (which was “previously discarded as medical waste”), amplify the genetic material within (which they alone knew about), and identify paternally inherited sequences as a means of distinguishing fetal and maternal DNA. Notably, this method does not preempt other demonstrated uses of cffDNA.
The Federal Circuit “agree[d]” that this invention “combined and utilized man-made tools of biotechnology in a new way that revolutionized prenatal care.” Pet. App. 18a. But it still held that Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289 (2012), makes all such inventions patent-ineligible as a matter of law if their new combination involves only a “natural phenomenon” and techniques that were “routine” or “conventional” on their own. Multiple judges wrote separately below to explain that while this result was probably not intended by Mayo, it controlled, and only this Court could now “clarify” Mayo's reach to prevent a “crisis” in life-science innovation.
The Question Presented is:
Whether a novel method is patent-eligible where: (1) a researcher is the first to discover a natural phenomenon; (2) that unique knowledge motivates him to apply a new combination of known techniques to that discovery; and (3) he thereby achieves a previously impossible result without preempting other uses of the discovery?
Cert. petition filed 3/21/16, conference 6/23/16. Petition denied 6/27/16.
Stephenson v. Game Show Network, LLC, No. 15-1187
Can the Patent and Trademark Office appropriately apply the “broadest reasonable interpretation” standard rather than the plain and ordinary meaning standard used by the federal courts in construing patent claims in inter partes reviews challenging patent validity?
Cert. petition filed 3/14/16, conference 5/26/16, conference 6/23/16. Petition denied 6/27/16.
Shukh v. Seagate Technology, LLC, No. 15-1285
In FilmTec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), the Federal Circuit ruled without explanation that an agreement for the assignment of inventions that uses the words “hereby assign” automatically effects a present assignment of future inventions even though those inventions have not been conceived and do not exist at the time the agreement is signed. The unexplained rationale, contrary to ancient rules of patent law and equity, was that such an assignment surrenders all concrete interests in an invention, thus depriving inventors of standing under 35 U.S.C. § 256 to correct inventorship of patents for those inventions from which they have wrongfully been omitted, and preventing the inventors from regaining their default ownership of the inventions and patents.
The question presented is whether FilmTec's “automatic assignment” rule should be overruled because it extinguishes inventors' constitutional and statutory rights to inventorship and ownership, especially in view of criticisms expressed by three Justices of this Court in Bd. of Trs. of theLeland Stanford Jr. University v. Roche Molecular Sys., Inc., 131 S. Ct. 2188, 2199 & 2203 (2011) (Stanford), and the reservation of that issue by the Court. Id. at 2194, n.2.
Cert. petition filed 3/16/16, conference 6/23/16. Petition denied 6/27/16.
Automotive Body Parts Ass'n v. Ford Global Technologies, LLC, No. 15-1314
Whether a court order can be amended under Federal Rule of Civil Procedure 60(a) based solely on the issuing judge's subsequent statement of intent when there is no contemporaneous record evidence or other circumstance supporting the issuing judge's subsequent statement of intent and a party's reliance interests are adversely affected by the amendment.
Cert. petition filed 4/21/16, waiver of respondent Ford Global Technologies, LLC filed 5/13/16, conference 6/23/16. Petition denied 6/27/16.
No CAFC Opinion, No CAFC Argument
Samsung Electronics Co., Ltd. v. Apple Inc., No. 15-1386
Should the Court grant the petition, vacate the judgment below, and remand to dismiss the appeal as moot, in accordance with United States v. Munsingwear, Inc., 340 U.S. 36 (1950), where the Federal Circuit's opinion requiring a permanent injunction is mooted by a later Federal Circuit opinion eliminating all basis for liability by holding two of the three patents at issue invalid and the other one not infringed?
Cert. petition filed 5/13/16, conference 6/23/16. Petition denied 6/27/16.
Globus Medical, Inc. v. Bianco, No. 15-1203
Did the United States Court of Appeals for the Federal Circuit have jurisdiction over an appeal from the United States District Court for the Eastern District of Texas rather than transferring the case to the Fifth Circuit, where that appeal presented only questions of state trade secret law, and the appeal therefore was not a “civil action arising under . . . any Act of Congress relating to patents” as required by 28 U.S.C. § 1295(a)(1) as amended by the AIA?
Cert. petition filed 3/22/16, waiver of respondent Sabatino Bianco filed 3/28/16, conference 4/22/16, respond requested 4/18/16, conference 6/16/16. Petition denied 6/20/16.
Newegg Inc. v. MacroSolve, Inc., No. 15-1369
Cert. petition filed 5/9/16, waiver of respondent MacroSolve, Inc. filed 5/16/16, conference 6/9/16. Petition denied 6/13/16.
Cubist Pharmaceuticals, Inc. v. Hospira, Inc., No. 15-1210
In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), this Court recognized the relevance of “objective indicia” of nonobviousness (also known as “secondary considerations”)—including the long-felt need for the patented invention, the failure of others to arrive at the invention, and the invention's subsequent commercial success—in determining whether a patent's claims were obvious to a person of ordinary skill in the art. In this case, the district court created, and the Federal Circuit affirmed, two categorical limitations on the consideration of objective indicia of nonobviousness that exist nowhere in the Patent Act or this Court's jurisprudence.
The questions presented are:
Cert. petition filed 3/28/16, conference 5/26/16. Petition denied 5/31/16.
WilmerHale represents petitioner Cubist Pharmaceuticals, Inc.
Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC, No. 15-1201
Vehicle Intelligence and Safety LLC respectfully petitions for a writ of certiorari to review the judgment of the United States Court of Appeals for the Federal Circuit, that while quoting the test in Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014) in deciding patent eligibility under 35 U.S.C. § 101, has however in actual practice, multiple-mutated this test into a universal pesticide to kill and invalidate virtually all patents. The first mutation makes every invention's inevitable use or application of an abstract idea (as a tool or stepping stone for a greater goal) in a claim element automatic, conclusive proof of preemption of the abstract idea by the entire patent claim. The second mutation demands teaching all the invention implementation details, which implicitly requires that every patent and every patent claim go back and re-teach in a vacuum the already known prior art all over again in order to have any qualifying inventive concepts for Alice test patent eligibility.
Cert. petition filed 3/24/16, conference 5/26/16. Petition denied 5/31/16.
CAFC Opinion, No CAFC Argument
Dow Chemical Co. v. Nova Chemicals Corp. (Canada), No. 15-1160
Whether factual findings underlying a district court's determination on the definiteness of a patent claim under the Patent Act, 35 U.S.C. 112, like a district court's factual findings underlying construction of a patent claim, are subject to appellate review only for clear error or substantial evidence rather than de novo review.
Cert. petition filed 3/16/16, conference 5/19/16. Petition denied 5/23/16.
Cloud Satchel, LLC v. Barnes & Noble, Inc., No. 15-1161
Cert. petition filed 3/16/16, waiver of respondent Amazon.com filed 3/22/16, waiver of respondent Barnes & Noble, Inc. filed 3/23/16, conference 4/22/16. Petition denied 4/25/16.
Taş v. Beachy, No. 15-1089
Concerning a patent application claiming a new drug treatment of tumor-bearing human that produces a specific effect in the tumor cells and shrinkage or disappearance of the tumor, the Patent Trial and Appeal Board (PTAB) decided that the statement of a paragraph copied from patent disclosures of others about uses of different compounds provides written description despite no evidence in the specification of the application for the claimed treatment and despite express teaching against the claimed effect on the basis of the described findings that teach also against the claimed therapeutic results. PTAB held that stating a disease as being treatable by administering a drug compound without evidence for the treatment and without specifying the conditions under which the claimed therapeutic results can be produced can satisfy 35 U.S.C. § 112, paragraph 1. On appeal Federal Circuit held that PTAB correctly decided.
The question presented is:
Is not a patent claiming a new drug treatment required to provide evidence for that treatment, and is not a drug treatment patent without evidence of it at discord with the requirement of factual evidence for a proposed new drug treatment under 21 U.S.C. § 355 for its approval and with the required supplying of patent information about it by 21 U.S.C. § 355 and also impediment to the development of the new drug treatments prescribed by the statute?
Cert. petition filed 2/25/16, waiver of respondent Philip A. Beachy, et al. filed 3/11/16, conference 4/15/16. Petition denied 4/18/16.
CAFC Opinion, No CAFC Argument
Hemopet v. Hill's Pet Nutrition, Inc., No. 15-1062
Section 101 of Title 35 defines patentable subject matter to include “any new and useful process . . . or any new and useful improvement thereof.” Other provisions of Title 35 set forth specific conditions and requirements for the issuance of the patent itself, including that the description in the patent be sufficient “to enable any person skilled in the art to which it pertains” to make and use the invention. 35 U.S.C. § 112(a). The invention at issue in this case is a novel method for identifying, formulating, and producing pet food tailored to the genomic characteristics and gene expression of individual dogs and cats.
The questions presented are:
Cert. petition filed 2/18/16, waiver of respondent Hill's Pet Nutrition, Inc. filed 2/25/16, conference 4/15/16. Petition denied 4/18/16.
Limelight Networks, Inc. v. Akamai Technologies, Inc. , No. 15-993
In Limelight Networks, Inc. v. Akamai Technologies, Inc., 134 S. Ct. 2111 (2014), this Court noted that, under existing Federal Circuit law, “a method's steps have not all been performed as claimed by the patent unless they are all attributable to the same defendant, either because the defendant actually performed those steps or because he directed or controlled others who performed them.” Id. at 2117. This Court then held that, on the assumption that rule was correct, “there has simply been no infringement of the method [at issue in this case], because the performance of all the patent's steps is not attributable to any one person.” Id.
After remand, the en banc Federal Circuit reiterated that “[d]irect infringement under § 271(a) occurs where all steps of a claimed method are performed by or attributable to a single entity.” App. 25a. But it nevertheless unanimously held that Limelight could be held liable for direct infringement of Akamai's method patent—despite this Court's prior holding and even though nine out of the ten en banc court judges had previously held that Limelight could not be held liable under that rule. In so ruling, the Federal Circuit adopted a patent-specific conduct-attribution rule divorced from traditional vicarious-liability standards.
The question presented is:
Whether the Federal Circuit erred in holding that a defendant may be held liable for directly infringing a method patent based on the collective performance of method steps by multiple independent parties, even though the performance of all the steps of the method patent is “not attributable to any one person” under traditional vicarious-liability standards. Limelight, 134 S. Ct. at 2117.
Cert. petition filed 1/26/16, conference 4/15/16. Petition denied 4/18/16.
WilmerHale represents respondents Akamai Technologies, Inc. et al.
MPHJ Technology Investments, LLC v. State of Vermont , No. 15-988
State of Vermont v. MPHJ Technology Investments, LLC, No. 15-838
In the America Invents Act, Congress amended the jurisdictional statutes relating to patent cases in response to this Court's decision in Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 U.S. 826 (2002). In Holmes Group, the Court held that a defendant's compulsory counterclaim for patent infringement did not establish “arising under” jurisdiction for purposes of the Federal Circuit's appellate jurisdiction under 28 U.S.C. § 1295. The America Invents Act amended § 1295(a) to provide Federal Circuit jurisdiction over an appeal from a final decision of a district court “in any civil action arising under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents.” Here, the Federal Circuit considered whether § 1295(a) afforded jurisdiction over an appeal from a district court order remanding this consumer-protection case to state court for the second time. The Federal Circuit interpreted § 1295(a) to provide jurisdiction based solely on a “counterclaim” that asserts federal preemption as a defense to the State's claim. The Federal Circuit reached—and wrongly decided—this jurisdictional issue despite holding that there were no grounds for the defendant's second removal to federal court. The question presented is:
Did the Federal Circuit erroneously take jurisdiction over this appeal of the remand order?
Cert. petition filed 12/28/15, conference 4/15/16. Petition denied 4/18/16.
Retirement Capital Access Management Co. LLC v. U.S. Bancorp, No. 15-591
In 2011, Congress enacted the Leahy-Smith America Invents Act (hereinafter “AIA” or “the Act”), Pub. L. No. 112-29, 125 Stat. 284 (2011). The Act created three new post-grant administrative proceedings for challenging the validity of patents. It also created within the Patent and Trademark Office (“PTO”) a new tribunal called the Patent Trial and Appeal Board (hereinafter the “Board”) to preside over these new proceedings. One of the newly created proceedings is the transitional post-grant review, also known as “covered business method” or “CBM” review, for patents directed to a financial product or service. The AIA limits the Board's jurisdiction with respect to CBM review to challenges based on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. § 282(b). Paragraph 2 provides that a party may seek to invalidate a patent or claim on any ground specified in part II of Title 35 as a condition for patentability.
The questions presented arise from the Federal Circuit affirming, without comment, the Board's holding that 35 U.S.C. § 101 is a ground specified in part II of Title 35 as a condition for patentability and therefore constitutes a proper basis for review in a CBM proceeding, and from the Federal Circuit affirming the Board's application of § 101 to the patent claims at issue. They are:
1. Whether subject matter eligibility under 35 U.S.C. § 101 is a ground specified as a condition for patentability under 35 U.S.C. § 282(b)(2).
2. Whether the Board errs when it invalidates issued patent claims posing no risk of preemption under the abstract idea exception to patent eligibility.
Cert. petition filed 11/5/15, conference 4/1/16. Petition denied 4/5/16.
Daiichi Sankyo Co., Ltd. v. Lee, No. 15-652
1. Whether the Patent and Trademark Office could properly rely on the limitations period for judicial review in denying administrative review to correct its own acknowledged errors, resulting in the loss of rights guaranteed by Congress.
2. Whether the limitations period for judicial review of the Patent and Trademark Office's final agency action is the six-year period made generally applicable by the Administrative Procedure Act, or a 180-day period that Congress established for review of an interim decision..
Cert. petition filed 11/13/15, conference 3/25/16. Petition denied 3/28/16.
ParkerVision Inc. v. Qualcomm Incorporated, No. 15-1092
Whether and under what circumstances an inconsistency in expert testimony permits a court to set aside a jury verdict and grant the losing party judgment as a matter of law.
Cert. petition filed 2/29/16, waiver of respondent Qualcomm Incorporated filed 3/8/16, conference 3/25/16. Petition denied 3/28/16.
Biogen MA, Inc. v. Japanese Foundation for Cancer Research, No. 15-607
Whether the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), eliminated federal district courts' jurisdiction over patent interference actions under 35 U.S.C. § 146.
Cert. petition filed 11/9/15, conference 3/18/16. Petition denied 3/21/16.
WilmerHale represents respondents Japanese Foundation for Cancer Research
Morales v. Square, Inc., No. 15-896
Whether, The Due Process clause of the Fifth Amendment requires judges to recuse themselves not only when actual bias has been demonstrated or when the judges have an economic interest in the outcome of the case, but also when extreme facts create a probability of bias, or create a probability of incompetence to rule.
Whether, The patent claim in this case should be used to constrain the freedom of interpretation of Alice Corp. Pty. Ltd. [v. CLS Bank Int'l, 134 S. Ct. 2347 (2014)], to find a claim to be invalid under §101.
Cert. petition filed 12/11/15, conference 3/18/16. Petition denied 3/21/16.
CAFC Opinion, No CAFC Argument
Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc. , No. 15-974
Cert. petition filed 1/11/16, waiver of respondent Jack Henry & Associates filed 2/22/16, conference 3/18/16. Petition denied 3/21/16.
Briartek IP, Inc. v. Delorme Pub. Co. Inc., No. 15-1025
Congress has empowered three different entities to resolve patent disputes: the United States Patent and Trademark Office (PTO), the International Trade Commission (ITC), and the federal district courts. Although all three venues are open to a party ab initio, proceedings before a given venue may limit a party's options throughout all three bodies. Critically, ITC investigations are often resolved through the entry of consent orders that limit how a party may challenge a patent's validity going forward.
The question presented is as follows:
Whether a binding consent order, entered between the federal government, the ITC, and an ITC respondent, deprives federal district courts of jurisdiction over a declaratory judgment action, seeking to invalidate the patent at issue, filed by the ITC respondent not against the ITC but rather against the patent holder: a non-party to the consent order.
Cert. petition filed 2/10/16, waiver of respondent DeLorme Publishing Company, Inc. filed 2/17/16, conference 3/18/16. Petition denied 3/21/16.
Universal Lighting Technologies, Inc. v. Lighting Ballast Control LLC, No. 15-893
This petition presents the following important and unsettled question of federal patent law on the rules governing construction of patent claims:
When and how can expert testimony or other extrinsic evidence be used to avoid the construction of a patent claim otherwise dictated by the patent's intrinsic record, including in particular to avoid the restrictions imposed by 35 U.S.C. §112 ¶ 6 on functional claiming?
Cert. petition filed 1/11/16, waiver of respondent Lighting Ballast Control LLC filed 1/13/16, conference 2/19/16. Petition denied 2/29/16.
Alexsam, Inc. v. The Gap, Inc., No. 15-736
1. Did the Federal Circuit err by considering patent claims over which it had no subject matter jurisdiction?
2. Did the Federal Circuit err by misconstruing the 5th Circuit's standard of review for appeals of a Judgment as a Matter of Law (JMOL), and, as a result, improperly assumed the role of fact finder and overturned a jury verdict of no anticipation?
Cert. petition filed 12/7/15, conference 2/19/16. Petition denied 2/29/16.
Media Rights Technologies, Inc. v. Capital One Financial Corp., No. 15-725
Whether, in accord with the statutory language, historical interpretation, congressional affirmation, and general claim construction principles, there is a strong presumption against construing as subject to 35 U.S.C. § 112, Paragraph 6 claims that do not recite “means”?
Cert. petition filed 12/3/15, waiver of respondents Capital One Financial Corporation, et al. filed 12/29/15, conference 2/19/16. Petition denied 2/29/16.
ePlus, Inc. v. Lawson Software, Inc., No. 15-639
Following a jury trial, the district court permanently enjoined respondent Lawson Software, Inc., from infringing patent claims owned by petitioner ePlus, Inc. Lawson then abandoned its challenge to the validity of the key patent claim (claim 26). The Federal Circuit affirmed the judgment that Lawson infringed claim 26, and it upheld the injunction; it reversed with respect to some other patent claims.
Lawson flagrantly violated the injunction, and after a hearing, the district court entered an order of civil contempt. While Lawson's second appeal was pending, the U.S. Patent and Trademark Office cancelled claim 26 based on an invalidity ground that Lawson had not pursued in litigation. A divided Federal Circuit panel held that the cancellation order retroactively invalidated the contempt judgment.
The questions presented are as follows:
1. Whether civil contempt of a permanent injunction order that has been affirmed on appeal and is binding on the litigants under the law of judgments, may be set aside based on a legal development that came after both the permanent injunction and the contumacious conduct, and that did not call into question the correctness of the injunction when it was entered.
2. Whether, under Plaut v. Spendthrift Farm, Inc., 514 U.S. 211 (1995), the PTO, an administrative agency, may issue an order that retroactively overrides a federal court's judgment on a question of law that is not subject to further judicial review, so long as some other part of the litigation is pending.
Cert. petition filed 11/13/15, conference 2/19/16. Petition denied 2/29/16.
STC, Inc. v. Global Traffic Technologies LLC, No. 15-592
Whether marking the packaging of a patented article with patent notification satisfies the marking provision of 35 U.S.C. § 287(a) where the patented article itself is undisputedly capable of being marked.
Cert. petition filed 11/5/15, conference 2/19/16. Petition denied 2/29/16.
Arthrex, Inc. v. Smith & Nephew, Inc., No. 15-559
To be liable for induced or contributory patent infringement, a defendant must “know” that the conduct it induced or contributed to constitutes infringement of a patent. Commil USA, LLC v. Cisco Sys., Inc., 135 S. Ct. 1920, 1928 (2015). That knowledge requirement (and its equivalent, “willful blindness”) is stringent, “surpass[ing] recklessness and negligence.” Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2070 (2011). In Safeco Insurance Co. of America v. Burr, 551 U.S. 47 (2007), this Court held that a defendant does not commit a violation “knowingly” or “recklessly” if its actions are 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:
Whether a defendant may be held liable under a “knowledge” standard where its actions were consistent with an understanding of relevant legal requirements that was not objectively unreasonable.
Cert. petition filed 10/30/15, conference 2/19/16. Petition denied 2/29/16.
Achates Reference Publishing, Inc. v. Apple Inc.
This petition presents a question raised in another currently pending petition before this Court. See Cuozzo Speed Technologies, LLC v. Lee, No. 15-466, Pet. for Cert. (S. Ct. Oct. 6, 2015) (presenting same question as Question 1 herein). One week before this Petition was filed, the Cuozzo petition was distributed for this Court's January 8, 2016 conference.
In 2011, the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, created the Patent Trial and Appeal Board (“Board”) in the Patent and Trademark Office (“PTO”), to hear the newly-created Inter Partes Review (“IPR”) and Covered Business Method Patent Review adjudicatory proceedings for challenging patents previously issued by the PTO. Since the inception of these proceedings, patent challengers have filed over 4,000 petitions, nine out of ten of them IPRs. The Board has instituted review in over two-thirds of its IPR institution decisions.
Both Cuozzo and the case below involved determinations by the Federal Circuit that it lacks jurisdiction to review claims that the Board exceeded its statutory authority in instituting particular IPRs. In both cases, the Federal Circuit reached this conclusion without due consideration of this Court's precedents establishing a “strong presumption” of judicial reviewability of agency action. In the case below, the Federal Circuit dismissed the appeal as outside the purview of the courts even though the issue appealed was finally decided in the Board's final written decision, which is expressly reviewable under 35 U.S.C. §319.
The Federal Circuit has denied rehearing en banc in Cuozzo, and has treated the immunity from judicial review of the Board's view of its own authority as settled under Cuozzo and the case below.
The questions presented for review are the following:
Cert. petition filed 12/29/15. Petition dismissed – Rule 46, 2/9/16.
Apls South, LLC v. The Ohio Willow Wood Company, No. 15-567
This case presents three related questions for review:
1. When post-complaint events establish plaintiff's prudential standing, may plaintiff cure a prudential standing defect existing when the original complaint was filed by filing a supplemental complaint in accordance with Fed. R. Civ. P. 15(d), or must it file a new case to assert its claim for relief?
2. If a district court exercises its discretion to allow a supplemental complaint pursuant to Fed. R. Civ. P. 15(d), does the supplemental complaint become the operative complaint from which plaintiff's prudential standing to bring the action is determined?
3. Where an exclusive licensee acquires all substantial rights in a patent after bringing an infringement action, and it files a supplemental complaint, pursuant to Fed. R. Civ. P. 15(d), after acquiring those rights, does the exclusive licensee have prudential standing to proceed with a patent infringement action in only its name, when it did not own all substantial rights in the patent when it originally brought the infringement action?
Cert. petition filed 10/29/15, conference 1/15/16. Petition denied 1/19/16.
Arunachalam v. JPMorgan Chase & Co., No. 15-691
1. Is the Court of Appeals for the Federal Circuit (“CAFC”) permitted to create a new protected class—a giant corporation—to take private property for public use without any compensation to the inventor, an icon of America Invents (who invented Web applications displayed on a Web browser, in ubiquitous use worldwide, from which the giant corporation has financially benefited excessively), by denying the inventor the protections of the Bill of Rights and 35 U.S.C § 282 of the Patent Act, thereby voiding the judgment?
2. Whether the CAFC erred in not honoring the law, after abridging liberty rights of a citizen, arbitrarily dismissing the appeal without a hearing or an opening brief or clear and convincing evidence from a giant corporation, depriving the citizen of patent property rights, was the citizen deprived of the protections of 35 U.S.C. § 282 of the Patent Act and the Bill of Rights, thereby voiding the judgment?
3. Whether the CAFC erred in not relieving a citizen of a final judgment for misrepresentation by a giant corporation or for any reason that justifies relief for a judge denying the citizen a hearing according to law, depriving the citizen of patent property rights, was Petitioner deprived of the protections of FRCP Rule 60(b)?
4. Whether the CAFC erred in abridging a citizen's liberty rights so that she could not address her medical condition to which the CAFC had been given proper notice, exacerbating her illness and arbitrarily dismissing the appeal without a hearing or an opening brief, depriving her of her patent property rights without any compensation from a giant corporation, was Petitioner deprived of the protections of the Bill of Rights and 35 U.S.C § 282 of the Patent Act, thereby voiding the judgment?
5. Whether the CAFC erred in not requiring a judge to avoid actual impropriety and the appearance of impropriety in denying a citizen a hearing according to law, depriving the citizen of patent property rights without any compensation from a giant corporation, after abridging liberty rights of a citizen, was Petitioner deprived of the protections of 28 U.S.C. § 455, Canons 2 and 3 and the Bill of Rights?
No CAFC opinion or argument. Appeal was dismissed for failure to file opening brief in compliance with the court's rules, waiver of respondent JP Morgan Chase & Co. filed 12/3/15, conference 1/8/16.
Cert. petition filed 11/19/15. Petition denied 1/11/16.
Morgan v. Global Traffic Technologies LLC, No. 15-602
As a case of first impression, does the procedure required when a patent, cited as prior art in and accused of infringing a subsequently issued patent, include construction of the scope of the claims of the subsequent patent in light of the prior patent plus comparison of differences between the accused device and the one claimed?
Does the standard set forth in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) apply retroactively in this case, pending on appeal when Teva was decided?
Cert. petition filed 11/5/15, waiver of respondent Global Traffic Technologies LLC filed 11/20/15, conference 1/8/16. Petition denied 1/11/16.
SpeedTrack, Inc. v. Office Depot, Inc., No. 15-461
In Taylor v. Sturgell, 553 U.S. 880 (2008), this Court confirmed that there are “'uniform federal rule[s]' of res judicata.” 553 U.S. at 891. In the decision below, however, the Federal Circuit adopted its own unique form of patent-specific preclusion. This new form of preclusion bars entirely new issues and claims that no court has ever resolved. The Federal Circuit grounded this unique legal doctrine in its reading of Kessler v. Eldred, 206 U.S. 285 (1907), an anti-suit injunction case decided during “the heyday of the federal mutuality of estoppel rule.” MGA, Inc. v. Gen. Motors Corp., 827 F.2d 729, 733 (Fed. Cir. 1987). The Federal Circuit has directly acknowledged that its departure from generally applicable legal principles is “questionable” (Brain Life, LLC v. Elekta Inc., 746 F.3d 1045, 1057-1058 (Fed. Cir. 2014)), but the court has nevertheless now twice confirmed that it will not apply traditional preclusion rules “unless and until the Supreme Court overrules [Kessler].” App., infra, 23a; Brain Life, 746 F.3d at 1058. The rules of preclusion are accordingly “[dis]uniform” in the Federal Circuit alone.
The question presented is:
Whether, in direct conflict with the Third and Fourth Circuits, the Federal Circuit erred in construing Kessler to bar new issues and new claims that would survive the “uniform” rules of preclusion applied by every other circuit in all non-patent cases.
Cert. petition filed 10/8/15, waiver of respondent Office Depot, Inc. filed 10/14/15, response requested 11/3/15, conference 1/8/16. Petition denied 1/11/16.
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