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

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

Industrial Models, Inc. v. SNF, Inc., No. 17-1367

Questions Presented:

  1. Whether ordinary plausible fact pleading of objective baselessness is sufficient under Federal Rule of Civil Procedure 8(a)(2) to satisfy the “objectively baseless” prong of Professional Real Estate Investors, Inc. v. Columbia Pictures Industries, Inc., 508 U.S. 49 (1993), in a Sherman Act complaint alleging “sham” intellectual property litigation.
  2. Whether the Federal Circuit erred by holding that Petitioner's Sherman Act complaint lacks sufficient pleading of objective baselessness, where the complaint states that Respondents, in their predicate “trade dress infringement” litigation against Petitioner, alleged “infringement” despite knowing they had no relevant trade dress and persistently failing to identify any trade dress, and where the Federal Circuit left undisturbed the district court's non-infringement and “exceptional case” finding that “[Respondents] could not identify any relevant trade dress . . . .”
  3. Whether an express threat of objectively baseless litigation fails to support a Sherman Act claim alleging “sham litigation” as the Federal Circuit held with respect to defendants' patent and copyright litigation threats against Petitioner, or whether such a threat suffices, as the First Circuit has held.
  4. Whether the Federal Circuit erred by affirming denial of Petitioner's Rule 15(a)(2) motion for leave to amend the complaint, based on (a) an undue-delay theory contradicted by precedent of this Court as recognized by the Second and Seventh Circuits, and (b) a first-instance “futility” inquiry and finding of a kind held unlawful by the First, Seventh and Ninth Circuits. 

Cert. petition filed 3/26/18, waiver of right of respondents SNF, Inc., et al. 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 4/20/18.

CAFC Opinion, CAFC Argument

Dragon Intellectual Property, LLC v. Dish Network LLC, No. 17-1327

Question Presented:

Whether inter partes review—an adversarial process statutorily created in 2011 and 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, especially for patents granted before inter partes review was created.

This petition presents the same question which this Court is considering in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 639 F. App'x 639 (Fed. Cir. 2016), cert. granted, 2017 WL 2507340 (U.S. June 12, 2017) (“Oil States Energy Services”).  Because this petition implicates the same issues to be decided in Oil States Energy Services, and because the Court will soon decide the power of the Patent Trial and Appeal Board of the USPTO to determine validity of patent rights, Petitioner asks that the Court hold its decision on this petition pending that decision.

Cert. petition filed 3/16/18.

CAFC Opinion, CAFC Argument

Rothschild Digital Media Innovations, LLC v. Sony Interactive Entertainment America, LLC, No. 17-1294

Question Presented:

Currently submitted for decision is this Court's review in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712, 137 S. Ct. 2237 (Mem.), where the following question was presented:

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?

Id.  The present case likewise involves an inter partes review proceeding in which the Patent and Trademark Office (the “PTO”) invalidated Petitioner's patent. Accordingly, this petition presents the same question as Oil States

Cert. petition filed 3/12/18.

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.

CAFC Opinion, CAFC Argument

Whirlpool Corp. v. Homeland Housewares, LLC, No. 17-1246

Question Presented:

This petition presents the same question that the Court is considering in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712:

Whether inter partes review—an adversarial process used by the United States 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. 

Cert. petition filed 3/6/18, waiver of respondent Homeland Housewares, LLC filed 3/12/18, response requested 3/27/18.

CAFC Opinion, CAFC Argument

Specialty Fertilizer Products, LLC v. Shell Oil Co., No. 17-1243

Questions Presented:

  1. Whether the United States Patent and Trademark Office (PTO) can by reexamination lawfully revoke a duly issued U.S. patent based upon written testimonial declarations of biased adverse witnesses having no duty of candor to the PTO, while completely barring all confrontation and cross-examination of those adverse witnesses.
  2. Whether the PTO can lawfully “decline to address” a due process confrontation claim, including the specific underlying facts confirming a due process right to confront and cross-examine adverse witnesses, while prohibiting any confrontation and cross-examination of the adverse witnesses.
  3. Whether the Court of Appeals for the Federal Circuit can lawfully avoid deciding a due process confrontation claim by resort to a one-word, Rule 36 affirmance of the PTO's decision wholly refusing to even consider the claim, in violation of 35 U.S.C. § 144 and the common law duty to decide novel and important constitutional issues with articulate reasoning subject to Supreme Court review.
  4. Whether inter partes reexamination—an adversarial process used by the PTO to adjudicate the validity of existing patents—violates the Constitution by extinguishing private party rights through a non-Article III forum without a jury. 

Cert. petition filed 3/6/18, waiver of Shell Oil Company filed 4/5/18.

CAFC Opinion, CAFC Argument

Storer v. United States of America, No. 17-1248

Question Presented:

For almost two centuries, the Nation's patent laws have established two options for aggrieved parties to challenge agency determinations in priority-of-invention disputes between competing inventors—district-court civil actions allowing for civil process and additional evidence (followed by appellate-court review), see 35 U.S.C. § 146, or immediate appellate review of the agency action, see 35 U.S.C. § 141.

The Federal Circuit, however, has interpreted the Leahy-Smith America Invents Act of 2011 (and its technical amendments) as having impliedly repealed by negative inference § 146 district-court subject-matter jurisdiction, and limiting Article III jurisdiction unto itself under § 141, for such “interference” proceedings declared after September 15, 2012.  In so ruling, the Federal Circuit has never even attempted to reconcile its decision with this Court's rulings holding that “jurisdiction is not defeated by implication.” Galveston, Harrisburg & San Antonio Ry. Co. v. Wallace, 223 U.S. 481, 490 (1912).

The question presented is:

In the America Invents Act, did Congress impliedly repeal the almost-200-year-old statutory grant of district-court subject-matter jurisdiction, currently codified in 35 U.S.C. § 146, in favor of exclusive jurisdiction in the Federal Circuit? 

Cert. petition filed 3/5/18, waiver of respondent United States filed 4/2/18, waiver of respondents Jeremy clark, et al. filed 4/3/18, conference 4/20/18.

CAFC Opinion, CAFC Argument

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 17-1229

Question Presented:

Whether, under the Leahy-Smith America Invents Act, an inventor's sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.

Cert. petition filed 2/28/18.

CAFC Opinion, CAFC Argument

Frontrow Technologies, LLC v. MLB Advanced Media, LP, No. 17-1226

Questions Presented:

This Petition presents the following questions:

  1. What are the rules, both procedural and substantive, for assessing patent-eligible subject matter under 35 U.S.C. § 101 for patents claiming inventions described as new and useful combinations of existing components and technologies?
  2. Should the Federal Circuit be required to revisit its decision in this case in light of its Berkheimer and Aatrix Software decisions?

Cert. petition filed 2/20/18, waiver of respondent NBA Media Ventures, et al. filed 3/29/18, conference 4/20/18.

CAFC Opinion, CAFC Argument

Secured Mail Solutions LLC v. Universal Wilde, Inc.,  No. 17-1319

Questions Presented:

In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Court set forth its two-part test for determining whether an invention is patent-eligible under 35 U.S.C. § 101: (1) whether the patent claims are directed to a patent ineligible concept, such as laws of nature, natural phenomena, or abstract ideas, and (2) if so, whether the elements of the claim contain an “inventive concept” that transforms the ineligible concept into an invention that is patent-eligible.

The questions presented are:

  1. In determining patent-eligible subject matter within the meaning of 35 U.S.C. § 101, when a claim has been found to be directed to an abstract idea (the first part of Alice), should courts consider whether the claim substantially preempts the identified abstract idea in determining whether the claim includes an “inventive concept” (the second part of Alice)?
  2. Because “[a]t some level, 'all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas' ” (id. at 2354), does the second part of Alice function as a safeguard, preventing claims that do not substantially preempt the identified abstract idea from falling victim to a misapplication of this exclusionary principle, which is often due to findings on inventiveness that are more properly addressed under 35 U.S.C. §§ 102 and 103.

Cert. petition filed 1/16/18.

CAFC Opinion, CAFC Argument

United Therapeutics Corp. v. SteadyMed Ltd., No. 17-1137

Question Presented:

On June 12, 2017, the Court granted review in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 to consider the following question presented:

Whether interpartes 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?

Id.  This case also involves an interpartes review proceeding in which the PTO invalidated Petitioner's patent and, therefore, this petition presents the same question as Oil States.

Cert. petition filed 2/9/18, waiver of respondent SteadyMed Ltd. Filed 2/16/18, response requested 3/7/18.

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.

CAFC Opinion, CAFC Argument

Personal Audio, LLC v. Electronic Frontier Foundation, No. 17-1085

Questions Presented:

  1. Whether the Patent and Trademark Office's decision invalidating Petitioner's patent in interpartes review violates the Reexamination Clause of the Seventh Amendment by overturning a jury's findings of facts in the prior district court action, Personal Audio, LLC v. CBS Corp., C.A. No. 2:13-cv-270 (E.D. Tex. Apr. 11, 2013).
  2. Whether interpartes 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?

Cert. petition filed 1/30/18, waiver of respondent Electronic Frontier Foundation filed 2/15/18, response requested 3/6/18.

CAFC Opinion, CAFC Argument

Richmond v. Coleman Cable, LLC, No. 17-1061

Questions Presented:

  1. Whether a GVR order in this non-final case is appropriate, in light of Federal Circuit's intervening en banc decision in Wi-fi One, LLC v. Broadband Corp., Case No. 2015-1944 (Fed. Cir. January 8, 2018) (en banc), which held the “final and nonappealable” provision of 35 U.S.C. § 314(d) is inapplicable to the threshold jurisdictional bar under 35 U.S.C. § 315(b) resulting from prior filing of a civil action.
  2. Whether inter partes review under the America Invents Act violates Article III and the Seventh Amendment of the Constitution.
  3. Whether the “broadest reasonable interpretation” of patent claims used in inter partes review under the America Invents Act - upheld in Cuozzo - is subject to the traditional claim construction principles utilized by this Court for 150 years, including the maxim that claims must be construed, if practicable, to uphold and not destroy the right of the inventor?

Cert. petition filed 1/25/18, waiver of respondent Coleman Cable, LLC filed 2/27/18, response requested 3/7/18.

CAFC Opinion, CAFC Argument

Worldwide Oilfield Machine, Inc. v. Ameriforge Group, Inc., No. 17-1043

Question Presented:

Whether inter partes review—an adversarial process used by the United States Patent and Trademark Office (“USPTO”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

This petition presents the same question which this Court is considering in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 639 F. App'x 639 (Fed. Cir. 2016), cert. granted, 2017 WL 2507340 (U.S. June 12, 2017) (“Oil States”).  Because this petition implicates the same issues to be decided in Oil States, and because the Court will soon decide the power of the Patent Trial and Appeal Board (“Board”) of the USPTO to determine validity of patent rights, Petitioner asks that the Court hold its petition pending that decision.

Cert. petition filed 1/22/18, conference 3/29/18.

CAFC Opinion, CAFC Argument

Uniloc USA, Inc. v. SEGA of America, Inc., No. 17-1018

Question Presented:

Whether inter partes review under the Patent Act violates Article III and the Seventh Amendment by allowing Article I judges to adjudicate the validity of an issued patent that (i) has since expired and (ii) is relevant only in infringement litigation between private parties.

Cert. petition filed 1/19/18.

CAFC Opinion, CAFC Argument

Cleveland Clinic Foundation v. True Health Diagnostics LLC, No. 17-997

Questions Presented:

In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66 (2012), the inventors identified an element existing in nature and claimed known methods to detect that element for a purpose already known in the art.  This Court held that patent invalid for claiming ineligible subject matter, but cautioned that “too broad an interpretation of this exclusionary principle could eviscerate patent law.”  Id. at 71.  This Court further noted, for example, that “a new drug or a new way of using an existing drug” could be patent-eligible under 35 U.S.C. § 101 (“Section 101”).  Id. at 87.

In this case, the patents were fully examined by the United States Patent and Trademark Office (“PTO”) and found to be novel and not obvious, including for one of the patents, confirmation after two ex parte reexaminations.  The PTO further found that the prior art taught away from the claimed inventions.  Notwithstanding that the inventions were groundbreaking and a significant advancement over the prior art, the district court declared them invalid at the pleading stage.  It gave the patents a cursory review, and refused to construe any claim terms.  It took 55 separate claims—each claiming a distinct invention with many different limitations—and analyzed them as if all of the claimed inventions were a single method with two simplistic steps.  The court did not permit evidentiary submissions or development of the record, and while the district court purported to take judicial notice of the prosecution history, it ignored the PTO record in its analysis.  The Federal Circuit affirmed the lower court, invalidating valuable patent rights in a new and nonobvious diagnostic method using known techniques to detect an element in blood, but where the inventors had discovered that adapting known techniques for an entirely new purpose yielded medically-relevant data not known in the prior art and, in fact, taught away from by the prior art.

The questions presented are:

  1. Whether the court below erred in holding, contrary to Mayo, that a method involving natural phenomena is ineligible for patent protection if it claims known techniques that have been adapted for a new use and purpose not previously known in the art.
  2. Whether Mayo authorizes a district court to invalidate valuable patent rights on the pleadings when there are disputed questions of fact, a disputed question of claim construction or scope, and/or an undeveloped evidentiary record, notwithstanding the presumption of patent validity and settled procedural and Seventh Amendment safeguards that ordinarily prevent the resolution of such disputed questions on the pleadings.

Cert. petition filed 1/16/18, waiver of respondent True Health Diagnostics LLC filed 2/16/18, response requested 3/7/18.

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.

CAFC Opinion, CAFC Argument

Enova Technology Corp. v. Seagate Technology (US) Holdings, Inc., No. 17-787

Question Presented:

This Court recently granted certiorari in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 639 F. App'x 639 (Fed. Cir. 2016), cert. granted, 2017 WL 2507340 (U.S. June 12, 2017) (“Oil States”) to consider the constitutionality of interpartes review (“IPR”) proceedings that analyze the validity of issued patents. The present case, in which the United States Patent & Trademark Office (“USPTO”) invalidated Petitioner's patent, involves the same question presented in Oil States: that is, whether IPR proceedings, an adversarial process used by the Patent Trial and Appeal Board (“Board”) of the USPTO to analyze the validity of existing patents, violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury. 

Cert. petition filed 11/27/17, response requested 1/19/18, conference 3/23/18.

CAFC Opinion, CAFC Argument

Hitachi Metals, Ltd. v. Alliance of Rare-Earth Permanent Magnet Industry, No. 17-768

Question Presented:

This petition presents the same question that the Court is considering in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712:

Whether interpartes review—an adversarial process used by the United States 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.  

Cert. petition filed 11/21/17, waiver of respondent Alliance of Rare-Earth Permanent Magnet Industry filed 12/13/17, response requested 12/29/17, conference 3/2/18.

CAFC Opinion, CAFC Argument

Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Ltd., et al., No 17-751

Questions Presented:

  1. Whether the Federal Circuit has erred in holding that, for the purposes of an obviousness determination under 35 U.S.C. § 103(a), a reference “teaches away” from a proposed combination only if it expressly “criticize[s], discredit [s], or otherwise discourage[s]” the proposed combination.
  2. Whether inter partes review—an adversarial process used by the Patent and Trademark Office to analyze the validity of existing patents—violates the Constitution by extinguishing private party rights through a non-Article III forum without a jury. . 

Cert. petition filed 11/20/17, waiver of respondent Zhongshan Broad Ocean Motor Co., et al. filed 12/8/17, conference 2/23/18.

CAFC Opinion, CAFC Argument

KIP CR P1 LP v. Oracle Corporation, et al., No. 17-708

Question Presented:

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. 

Cert. petition filed 11/3/17, waiver of respondent DOT Hill Systems, Corp. filed 12/14/17, response requested 1/2/18, conference 4/1/18.

CAFC Opinion, CAFC Argument

KIP CR P1 LP v. Cisco Systems, Inc., et al., No. 17-707

Question Presented:

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.  

Cert. petition filed 11/3/17, response requested 1/3/18, conference 4/13/18.

CAFC Opinion, CAFC Argument

Audatex North America, Inc. v. Mitchell Intern., Inc., No. 17-656

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, 137 S. Ct. 2239 (2017) to consider the constitutionality of certain administrative proceedings created by the Leahy-Smith America Invents Act (“AIA”) to evaluate the validity of issued patents. Pub. L. No. 112-29, 125 Stat. 284 (2011). This case involves one such type of proceeding (“covered business method” review), which presents the same constitutional infirmities as the inter partes review proceeding at issue in Oil States. Thus, this case presents essentially the same question presented in Oil States, namely:

Whether adversarial processes used by the Patent and Trademark Office (PTO) to analyze the validity of issued patents violate the Constitution by extinguishing private property rights through a non-Article III forum without a jury. 

Cert. petition filed 10/23/17, waiver of respondent Mitchell International, Inc. filed 11/27/17, response requested 12/11/17, conference 2/16/18.

CAFC Opinion, CAFC Argument

C-Cation Technologies, LLC v. Arris Group, Inc., No. 17-617

Questions Presented:

  1. Whether inter partes review - an adversarial process used by the Patent and Trademark Office (USPTO) 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 USPTO 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 identical 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). The second question is identical to that presented in In re: Celgard, LLC, No. 16-1526 (question #2, petition pending).

Petitioner requests that this Petition be held for each of these respective dispositions, and if favorable to either of those petitioners, requests that this Petition be granted, with the case vacated and remanded.

Cert. petition filed 10/24/17, conference 1/5/18.

CAFC Opinion, CAFC Argument

Linkgine, Inc. v. VigLink, Inc., No. 17-558

Question Presented:

On June 12, 2017, the Court granted review in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712, to consider the following question presented:

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.

Id.  This case presents the same issue in a covered business method (CBM) review proceeding, to wit:

Whether covered business method 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.

The only difference between this case and Oil States is the type of review that was conducted by the PTO through the Patent Trial and Appeal Board (PTAB).  Oil States was an interpartes review proceeding whereas this case was a CBM review proceeding. 

Cert. petition filed 10/10/17, motion to defer consideration of the petition filed by petitioner 10/10/17, waiver of respondent VigiLink, Inc., Skimlinks, Inc., and Skimbit, Ltd. Filed 12/12/17, conference 1/5/18.

CAFC Opinion, CAFC Argument

TransPerfect Global, Inc. v. Matal, No. 17-535

Question Presented:

Whether covered business method review—an adversarial process used by the Patent Trial and Appeal Board of 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. 

Cert. petition filed 10/10/17, conference 1/12/18.

CAFC Opinion, CAFC Argument

Outdry Technologies Corp. v. Geox S.p.A., No. 17-408

Question Presented:

Whether inter partes review—an adversarial process used by the Patent Trial and Appeal Board (PTAB) of the U.S. Patent and Trademark Office (USPTO) to reconsider the validity of already-issued patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 9/14/17, conference 1/5/18.

CAFC Opinion, CAFC Argument

Skky, Inc. v. MindGeek, S.A.R.L., No. 17-349

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves a Patent Office proceeding, in which the Patent Office invalidated Petitioner's patent and therefore involves the same issue in Oil States. That is, this petition presents the question of:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (“Patent 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?

Cert. petition filed 9/5/17, conference 1/5/18.

CAFC Opinion, CAFC Argument

PNC Bank Nat. Ass'n v. Secure Axcess, LLC, No. 17-350

Questions Presented:

The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), established new post-grant adjudicatory processes for challenging the validity of patents. Covered business method (“CBM”) review is available for “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, except that the term does not include patents for technological inventions.” AIA § 18(d)(1).

In this divided panel of the Federal Circuit reversed the Patent Trial and Appeal Board's (“Board's”) determination that the challenged patent was eligible for CBM review. In doing so, the panel majority conditioned eligibility for CBM review on whether a patent claim itself contains “a financial activity element.” App. 19a-20a; see also App. 12a-13a, 15a. The court of appeals denied rehearing by a vote of 6-5. App. 131a-132a.

In a separate appeal, the Federal Circuit affirmed a determination in an unrelated proceeding that certain claims of the same challenged patent, including all claims that Secure Axcess had asserted against Petitioners, were invalid. As a result, and while the period to petition for a writ of certiorari was pending, Secure Axcess dismissed its infringement claims against Petitioners with prejudice.

The questions presented are as follows:

  1. Whether the court of appeals' judgment should be vacated and remanded with instructions to dismiss the appeal as moot, in accordance with United States v. Munsingwear, Inc., 340 U.S. 36 (1950), where the claims of the challenged patent are invalid and there is no longer a live case or controversy between Petitioners and Respondent.
  2. If the case is not moot, whether the court of appeals erred in holding that the statutory definition of a patent eligible for CBM review requires that the claims of the patent expressly include a “financial activity element”—in other words, that the claim have no use outside of financial activity—rather than making CBM review available for patents that claim “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.”

Cert. petition filed 9/4/17, waiver of respondent Secure Axcess LLC filed 9/29/17, response requested 10/12/17, conference 1/5/18.

CAFC Opinion, CAFC Argument

WilmerHale represents petitioners PNC Bank National Association et al.

Google Inc. v. Unwired Planet, LLC, No. 17-357

Questions Presented:

  1. Whether the Federal Circuit has jurisdiction to review the Patent Trial and Appeal Board''s determination that a patent is a “covered business method” patent.
  2. Whether a court should extend deference to an agency interpretation contained in a regulatory preamble.

Cert. petition filed 9/1/17, conference 1/5/18.

CAFC Opinion, CAFC Argument

Paice LLC v. Ford Motor Co., No. 17-220, -222, -229

Question Presented (same QP in each petition):

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.

Cert. petition filed 8/7/17, waiver of respondent Ford Motor Co. filed 9/6/17, response requested 9/26/17, conference 12/8/17.

CAFC Opinion, CAFC Argument

Affinity Labs of Texas, LLC v. Matal, No. 17-233

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves a Patent Office proceeding, in which the Patent Office invalidated Petitioner's patent, and therefore involves the same issue in Oil States. That is, this petition presents the question of:

Whether a reexamination proceeding—an adversarial process used by the Patent and Trademark Office (“Patent 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?

Cert. petition filed 8/3/17, conference 12/1/17.

CAFC Opinion, CAFC Argument

In Re: Affinity Labs of Texas, LLC, No. 17-232

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves a Patent Office proceeding, in which the Patent Office invalidated Petitioner's patent, and therefore involves the same issue in Oil States. That is, this petition presents the question of:

Whether a reexamination proceeding—an adversarial process used by the Patent and Trademark Office (“Patent 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?

Cert. petition filed 8/3/17, conference 12/1/17.

CAFC Opinion, CAFC Argument

Security People Inc. v. Matal, No. 17-214

Question Presented:

The Question Presented by this Petition is the same for which certiorari was granted in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712 (granted June 12, 2017):

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.

Given the pending Oil States case, Petitioner requests a hold on this petition pending disposition of Oil States, and at that time the granting of certiorari for plenary review or certiorari should be granted, vacating the decision below and remanding for further proceedings.

Cert. petition filed 8/2/17, conference 1/5/18.

No CAFC Opinion, No CAFC Argument

IPR Licensing, Inc. v. ZTE Corp., No. 17-159

Question Presented:

Whether inter partes review—an adversarial process used by the Patent Trial and Appeal Board (PTAB) of 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.

Cert. petition filed 7/28/17, conference 11/3/17.

CAFC Opinion, CAFC Argument

Paice LLC v. Ford Motor Co., No. 17-113

Question Presented:

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.

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17, conference 12/8/17.

CAFC Opinion, CAFC Argument

Paice LLC v. Ford Motor Co., No. 17-112

Question Presented:

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.

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17, conference 12/8/17.

CAFC Opinion, CAFC Argument

Paice LLC v. Ford Motor Co., No. 17-111

Question Presented:

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.

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17, conference 12/8/17.

CAFC Opinion, CAFC Argument

Paice LLC v. Ford Motor Co., No. 17-110

Question Presented:

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.

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17, conference 12/8/17.

CAFC Opinion, CAFC Argument

In Re: Affinity Labs of Texas, LLC, No. 17-117

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves a Patent Office proceeding, in which the Patent Office invalidated Petitioner's patent and therefore involves the same issue in Oil States. That is, this petition presents the question of:

Whether inter partes reexamination—an adversarial process used by the Patent and Trademark Office (“Patent 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?

Cert. petition filed 7/14/17, conference 10/27/17.

CAFC Opinion, CAFC Argument

Affinity Labs of Texas, LLC v. Samsung Electronics Co., Ltd., No. 17-116

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves an inter partes review proceeding at the Patent Office, in which the Patent Office invalidated Petitioner's patent and therefore involves the same question in Oil States. That is, this petition presents the question of:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (“Patent 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?

Cert. petition filed 7/14/17, waiver of respondent Samsung Electronics Co., et al. filed 8/14/17, response requested 8/17/17, conference 11/21/17.

CAFC Opinion, CAFC Argument

Depomed Inc. v. Matal, No. 17-114

Question Presented:

Whether inter partes review comports with Article III and the Seventh Amendment.

Cert. petition filed 7/21/17, conference 10/27/17.

CAFC Opinion, CAFC Argument

Hillcrest Laboratories, Inc. v. Movea, Inc., No. 17-39

Question Presented:

Whether inter partes reexamination—an adversarial process used by the Patent Trial and Appeal Board (PTAB) of 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.

Cert. petition filed 7/5/17, conference 10/6/17.

CAFC Opinion, CAFC Argument

Celgard, LLC v. Matal, No. 16-1526

Questions Presented:

  1. Whether inter partes review—an adversarial process used by the Patent and Trademark Office (“Patent 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 Office violates 35 U.S.C. § 144's requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals?
  3. Whether the Federal Circuit's pervasive practice of issuing Rule 36 judgments without opinions to affirm more than 50% of appeals from the Patent Office has exceeded the bounds of reasonableness and is inconsistent with “principles of right and justice”?
  4. Whether the Patent Office's consistent practice of failing to consider the claimed invention “as a whole” and failing to consider whether the combination of elements would lead to “anticipated success” in an obviousness determination conflicts with 35 U.S.C. § 103 and this Court's precedent in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)?

Cert. petition filed 6/19/17, conference 9/25/17.

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