Patent Law and the Supreme Court: Patent Certiorari Petitions Pending

Patent Law and the Supreme Court: Patent Certiorari Petitions Pending

Publications

WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently pending petitions, organized in reverse chronological order by date of certiorari petition.

Recently pending, granted and denied certiorari petitions

Allergan Sales, LLC v. Sandoz, Inc., No. 18-21

Questions Presented:

  1. Whether the Federal Circuit may ignore a factual stipulation, contrary to this Court’s precedent, and decisions of numerous circuit courts, holding that factual stipulations are binding?
  2. Whether the Federal Circuit’s finding of non-infringement by ignoring a factual stipulation should, at a minimum, be vacated because it did not mention the stipulation or address Allergan’s arguments that the stipulation was binding, even though it was Allergan’s lead argument on appeal?

Cert. petition filed 6/29/18.

CAFC Opinion, CAFC Argument

Nichia Corp. v. Everlight Electronics Co., Ltd., No. 17-1707

Questions Presented:

  1. This Court has repeatedly held that whether a patent is invalid as obvious is a question of law, though it may depend on subsidiary factual findings. KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418, 427 (2007); Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18 (1966). Should an appellate court review the ultimate legal question of obviousness de novo, as the Seventh and Ninth Circuits have held and as the Federal Circuit held before 2012, or must the appellate court defer to a jury’s conclusion even on the ultimate legal question, as the Federal Circuit has repeatedly held in patent cases since 2012?
  2. Alternatively, if this Court were to conclude that obviousness presents a “mixed” question of law and fact, as the Federal Circuit now treats it, should this Court grant certiorari, vacate, and remand this case to determine whether appellate review of that “mixed” question should be de novo or deferential in light of U.S. Bank National Association ex rel. CWCapital Asset Management LLC v. Village at Lakeridge, LLC, 138 S. Ct. 960, 967 (2018), a case decided after the Federal Circuit decision here?

Cert. petition filed 6/21/18.

CAFC Opinion, CAFC Argument

Promega Corp. v. Life Technologies Corp., No. 17-1669

Question Presented:

Federal Rule of Civil Procedure 50(d) provides that “a party against whom judgment as a matter of law is rendered” may move for a new trial within “28 days after the entry of the judgment.” Fed. R. Civ. P. 50(d) (emphasis added). The advisory committee notes make clear that, under this subdivision (formerly, Rule 50(c)(2)), “the verdict-winner is entitled, even after entry of judgment n.o.v. against him, to move for a new trial in the usual course.” Rule 50 Advisory Committee’s Note (1963) (emphasis added). This Court has likewise recognized that “[w]here a defendant moves for n.o.v. in the trial court, the plaintiff may present, in connection with that motion or with a separate motion after n.o.v. is granted, his grounds for a new trial.” Neely v. Martin K. Eby Constr. Co., 386 U.S. 317, 325 (1967) (second emphasis added).

The question presented is:

Whether the Federal Circuit erred in holding that, notwithstanding Federal Rule of Civil Procedure 50(d), a verdict winner must raise new-trial arguments in its opposition to a motion for judgment as a matter of law in order to raise those arguments in a timely motion for a new trial after entry of judgment.

Cert. petition filed 6/14/18.

CAFC Opinion, No CAFC Argument

WilmerHale represents petitioner Promega Corp.

Presidio Components, Inc. v. American Technical Ceramics Corp., No. 17-1649, vide 17-1497

Question Presented:

Whether a court of appeals denies a prevailing party its right of trial by jury under the Seventh Amendment, when reversing the denial of a motion for judgment as a matter of law based on a classical fact issue without mentioning any evidence that supports the jury’s verdict or construing any evidence in the prevailing party’s favor, and making its own finding of fact for the first time on appeal?

The Seventh Amendment of the U.S. Constitution mandates that the right of trial by jury shall be preserved, and no fact tried by a jury shall be otherwise reexamined in any Court of the United States. Those protections are abrogated if appellate courts do not strictly adhere to this Court’s well-established substantial evidence review of a fact tried to a jury, which occurs as to all of the evidence, and all of that evidence must be construed in the prevailing party’s favor. Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150-51 (2000) (“[I]n entertaining a motion for judgment as a matter of law, the court should review all of the evidence in the record . . . [and] the court must draw all reasonable inferences in favor of the nonmoving party . . . .”). As such, a motion for judgment as a matter of law must be denied unless, upon review of all of the evidence, construed in the prevailing party’s favor, there is an absence of substantial evidence supporting a jury’s verdict.

In this case, causation of lost profits was a classical fact tried to a jury, and therefore is protected by the Seventh Amendment. However, the Federal Circuit reversed the district court’s denial of a motion for judgment as a matter of law without mentioning, much less applying, the rule that all the evidence must be reviewed and construed in favor of the prevailing party. Moreover, none of the evidence supporting the jury’s lost profit damages verdict was construed in favor of the prevailing party. Instead, the Federal Circuit made its own finding of fact for the first time on appeal, based on no supporting evidence or argument raised by the parties. The Federal Circuit supported its reversal by construing evidence in favor of the losing party. In doing so, the Federal Circuit abrogated the protections afforded by the Seventh Amendment, and gutted the rule established by the Court that to overturn a jury’s verdict all evidence must be considered, and all evidence must be construed in favor of the prevailing party.

Conditional cross-petition filed 5/31/18.

CAFC Opinion, CAFC Argument

Bombardier Recreational Products Inc. v. Arctic Cat Inc., No. 17-1645

Question Presented:

In Halo Electronics, Inc. v. Pulse Electronics, Inc., 136 S. Ct. 1923 (2016), this Court abrogated the two-part test for enhanced patent damages established by the Federal Circuit in In re Seagate Technology, LLC, 497 F. 3d 1360, and held that the “[t]he subjective willfulness of a patent infringer, intentional or knowing, may warrant enhanced damages, without regard to whether his infringement was objectively reckless.”

The Federal Circuit subsequently held that “Halo did not disturb the substantive standard for the second prong of Seagate, subjective willfulness” and therefore for “subjective willfulness alone” to support enhanced damages, the risk of infringement must merely be “‘either known or so obvious that it should have been known to the accused infringer.’”

The question presented is:

Does a finding of willful infringement based on Seagate’s “should have been known” negligence standard violate the requirement that subjective willfulness be “intentional or knowing”?

Cert. petition filed 6/6/18.

CAFC Opinion, CAFC Argument

WilmerHale represents petitioner Bombardier Recreational Products Inc. et al.

Regeneron Pharmaceuticals, Inc. v. Merus N.V., No. 17-1616

Questions Presented:

Whether a patent right can be fully extinguished based on misconduct committed by the patentee’s counsel during federal district court litigation to enforce the patent right.

Cert. petition filed 5/25/18, waiver of respondent Merus N.V. filed 6/1/18, response requested 6/8/18.

CAFC Opinion, CAFC Argument

In re Voter Verified, Inc., No. 17-1647

Question Presented:

The Petitioner brought suit for patent infringement for a second period of infringement of its ’449 Patent, which had been previously litigated through appeal in the Federal Circuit under 35 U.S.C. § 271 for a first period of infringement, in which the Federal Circuit affirmed the validity of most of the claims of the ’449 Patent attacked by counterclaim for invalidity by the Respondent. In the second suit the Petitioner asserted preclusion of the issues of patent validity decided in the first suit, but the district court dismissed the second suit under Fed. R. Civ. P. 12(b)(6) holding that all of the claims of the ’449 Patent were invalid as directed to an “abstract idea” and unpatentable under 35 U.S.C. § 101. This Petition arises in the appeal of the district court decision in the second suit.

During the first suit Circuit Judges Lourie and Reyna sat on the panel which decided the invalidity of claim 49 of the ’449 Patent adversely to the Petitioner, supporting their decision with a fiction expressed by Judges Lourie and Reyna, a clear departure from the evidence regarding the status as prior art of a reference which was asserted to support an obviousness invalidation under 35 U.S.C. § 103. This circumstance was presented to this Court in a Petition for Certiorari in the first suit that was denied. Such conduct on the part of Judges Lourie and Reyna was raised as a reason to question their impartiality in this the second suit, thus requiring their recusal from any panel hearing of this appeal under 28 U.S.C. § 455(a). A motion thus questioning under § 455(a) was made to the Federal Circuit, but was denied by the motions Panel, comprising Judges Lourie and Reyna joined by Judge Newman. This Petition for extraordinary writ has been filed to prevent and nullify the very actions that have been taken now by all three judges to defeat the rights of the Petitioner in the ’449 Patent in their Opinion of April 20, 2018. The question therefore presented is: Whether the recusal of the currently constituted merits Panel is required by 28 U.S.C. § 455(a) upon the presentation of Petitioner’s motion reasonably questioning the impartiality of the Circuit Judges who comprise the current merits Panel.

Petition for writ of mandamus and/or prohibition filed 5/3/18.

Return Mail, Inc. v. United States Postal Service, No. 17-1594

Questions Presented:

The government cannot be sued for patent infringement under the Patent Act, 35 U.S.C. §§ 1 et seq., because it can take “a license to use the inventio[n]” by “exert[ing] the power of eminent domain.” Crozier v. Fried. Krupp Aktiengesellschaft, 224 U.S. 290, 305 (1912). Thus, a patent owner’s exclusive remedy for governmental use is to pursue a compensation action under 28 U.S.C. § 1498(a) at the U.S. Court of Federal Claims.

In 2011, Congress enacted the Leahy-Smith America Invents Act (AIA), which allows a “person” who has been sued for patent “infringement” to challenge the patent’s validity through a covered business method (CBM) review before the Patent Trial and Appeal Board. Respondent, the U.S. Postal Service, petitioned for CBM review of Petitioner’s patent after Petitioner filed suit under § 1498(a). The Board instituted the review, concluding that it has authority to adjudicate proceedings initiated by the government, and later issued a final decision invaliding Petitioner’s patent. The Federal Circuit affirmed, over a dissenting opinion.

The questions presented are:

  1. Whether the government is a “person” who may petition to institute review proceedings under the AIA.
  2. Whether a § 1498(a) action for the eminent domain taking of a patent license by the government is a suit for patent “infringement” under the AIA.

Cert. petition filed 5/14/18.

CAFC Opinion, CAFC Argument

Integrated Technological Systems, Inc. v. First Internet Bank of Indiana, No. 17-1590

Questions Presented:

  1. Does 35 U.S.C. § 282 allow for challenges to a patent’s validity based on patent eligibility under 35 U.S.C. § 101?
  2. In addition, and in close alignment with the first question, is it proper to find patents invalid under 35 U.S.C. § 101 after full examination before the U.S. Patent and Trademark Office in response to 12(b)(6) challenges when they are presumed valid under 35 U.S.C. § 282?
  3. Is it proper to grant a Rule 12(b)(6) motion to dismiss when the record contains unrebutted factual evidence that the invention is patent-eligible under § 101? .

Cert. petition filed 5/21/18.

CAFC Opinion, CAFC Argument

American Technical Ceramics Corp. v. Presidio Components, Inc., No. 17-1497, vide 17-1649

Question Presented:

The Patent Act requires every patent to “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 ¶ 2. For more than a century, this definiteness requirement has served to “apprise the public of what is still open to them.” McClain v. Ortmayer, 141 U.S. 419, 424 (1891); see also Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014) (holding that patent must be “precise enough to provide clear notice of what is claimed.”).

In this case, the Federal Circuit gutted the critical notice function of patent claims. It further ignored this Court’s clear instructions by finding the patent-in-suit definite based exclusively on extrinsic evidence generated more than a decade after the patent issued. That evidence was one trial expert’s opinion that a person of ordinary skill in the art (“POSITA”) would be able to ascertain the scope of the claims after concocting a gallimaufry of novel experiments that had never been performed outside of the instant litigation, were unknown to the scientific community, and were neither described nor identified in the patent.

The question presented is:

When a patent is devoid of intrinsic evidence and the scientific literature provides no guidance with respect to determining claim scope, can a court rely only on the ex post facto application of the scientific method to hold that the “clear notice” requirement of § 112 ¶ 2 has been satisfied? .

Cert. petition filed 4/26/18, conditional cross-petition filed 5/13/18.

CAFC Opinion, CAFC Argument

Alexsam, Inc. v. Wildcard Systems, Inc., No. 17-1483

Questions Presented:

Petitioner filed a state law Breach of Contract claim in State Court in Florida against Respondents for the breach of a patent license agreement. In response, Respondents filed a counterclaim for invalidity of the licensed patents in which they identified only a clause in the agreement as the basis for their counterclaim. In that context, the Questions Presented are:

  1. Was there an independent basis for Respondents’ assertion of an invalidity counterclaim sufficient to invoke federal subject matter jurisdiction over petitioner’s state law claim for breach of the patent license agreement?
  2. Under Gunn v. Minton, where is the line drawn for federal jurisdiction for a state law Breach of Contract claim for the breach of a patent license? .

Cert. petition filed 4/9/18, conference 9/24/18.

CAFC Opinion, CAFC Argument

Droplets, Inc. v. Iancu, No. 17-1384

Questions Presented:

This petition presents a square conflict over the Chenery doctrine in a context of exceptional legal and practical importance.  Under Chenery, an agency's decision must stand or fall on its own terms, leaving reviewing courts to “judge the propriety of [agency] action solely by the grounds invoked by the agency.”  SEC v. Chenery, 332 U.S. 194, 196 (1947); accordMotor Vehicle Mfrs. Ass'n of the U.S., Inc. v. State Farm Mut. Auto. Ins. Co., 463 U.S. 29, 50 (1983).

In the proceedings below, the Patent Trial and Appeal Board invalidated the claims of petitioner's patent.  The sole dispositive issue before the Board was the proper construction of the patented claims, yet the Board's disposition of that issue consisted of a single, unsupportable sentence.  In the Federal Circuit, the government accordingly defended the Board's decision on new legal grounds not articulated by the Board itself.  Although that tactic is precluded by Chenery and the prevailing law in multiple courts of appeals, it is permitted by entrenched precedent in the Federal Circuit, which, once again, has departed from the baseline legal norms applied in other courts.

The questions presented are:

  1. Whether “an agency's action must be upheld, if at all, on the basis articulated by the agency itself” (State Farm, 463 U.S. at 50), or whether a court can substitute its own views for the agency's whenever the issue is “legal in nature” (In re Comiskey, 554 F.3d 967, 975 & n.5 (Fed. Cir. 2009)).
  2. Whether inter partes reexamination under the Patent Act violates Article III and the Seventh Amendment by allowing Article I judges to adjudicate the validity of an issued patent. 

Cert. petition filed 4/3/18.

CAFC Opinion, CAFC Argument

Jang v. Boston Scientific Corp., No. 17-1332

Question Presented:

After a trial on the merits, a jury found that respondents were liable for infringing petitioner's patent under the doctrine of equivalents, with stipulated damages in excess of $86 million.  But the district court set aside the verdict and entered judgment for respondents under a defense known as “ensnarement”—which was unknown at common law, is not contained in the Patent Act, and has never been recognized by this Court. The Federal Circuit affirmed. The question presented is:

Whether the Federal Circuit's “ensnarement” defense to infringement violates patent holders' Seventh Amendment jury-trial rights. 

Cert. petition filed 3/21/18, waiver of respondent Boston Scientific Corporation, et al. filed 3/28/18, conference 4/10/18, conference 9/24/18.

CAFC Opinion, CAFC Argument

B/E Aerospace Inc. v. C&D Zodiac Inc., No. 17-1252

Questions Presented:

The instant petition for certiorari presents the following two questions:

  1. Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
  2. Whether an obviousness analysis involving objective indicia of non-obviousness is a one-step legal conclusion weighing all Graham factors on an equal footing, or a two-step process that includes an initial determination, or prima facie case, of obviousness that is only subsequently balanced against the weight of the objective indicia of non-obviousness. 

Cert. petition filed 3/6/18, waiver of respondent C&D Zodiac, Inc. filed 3/13/18, response requested 3/28/18, conference 9/24/18.

CAFC Opinion, CAFC Argument

Stambler v. Mastercard Intern. Inc., No. 17-1140

Questions Presented:

  1. Whether covered business method review, an adversarial process used by the Patent and Trademark Office to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
  2. Whether the Federal Circuit's issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent and Trademark Office violates 35 U.S.C. § 144's requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals.

The first question is substantially similar to that presented in Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017), which has been argued and is awaiting decision by the Court.  The second question is identical to that presented by the Petition for writ of certiorari in Celgard, LLC v. Matal (No. 16-1526) (question #2, petition pending).

Cert. petition filed 2/9/18, response requested 4/2/18, conference 9/24/18.

CAFC Opinion, CAFC Argument

EVE-USA, Inc. v. Mentor Graphics Corp., No. 17-804

Questions Presented:

  1. The Federal Circuit has carved out an exception in the Patent Act with a judge-made rule known as “assignor estoppel.” Assignor estoppel precludes an inventor who has assigned her patent, and those in privity with her, from contesting the patent's validity in an infringement suit. The Patent Act has no such bar. And, this Court in Lear, Inc. v. Adkins, 395 U.S. 653 (1969), abolished the analogous doctrine of “licensee estoppel,” which barred licensees from challenging the validity of patents they licensed, as contrary to the important public interest of eliminating invalid patents. The question is whether, and under what circumstances, assignors and their privies are free to contest a patent's validity.
  2. This Court has long adhered to a rule requiring apportionment of damages: “When a patent is . . . not for an entire[] . . . machine or contrivance, the patentee must . . . separate or apportion . . . the patentee's damages between the patented feature and the unpatented features.” Garretson v. Clark, 111 U.S. 120, 121 (1884). In Garretson and multiple other cases, this Court applied that rule to damages in the form of lost profits. The Federal Circuit, however, permits patentees to recover lost profits damages for an entire multi-component product, without apportioning the value between patented and unpatented features, simply by showing that the patentee would have made the sale “but for” the infringement. Pet. App. 22a. Did the Federal Circuit err in holding that proof of but-for causation, without more, satisfies the requirement that damages be apportioned between patented and unpatented features? 

Cert. petition filed 11/30/17, waiver of respondent Mentor Graphics Corporation filed 1/3/18, response requested 1/17/18, conference 4/20/18, CVSG 4/23/18.

CAFC Opinion, CAFC Argument

 

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