Publications & News

Patent Law and the Supreme Court: Patent Certiorari Petitions Granted

April 2018

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

Recently pending, granted and denied certiorari petitions

WesternGeco LLC v. ION Geophysical Corp., No. 16-1011

Questions Presented:

Under 35 U.S.C. § 271(f), it is an act of patent infringement to supply “components of a patented invention,” “from the United States,” knowing or intending that the components be combined “outside of the United States,” in a manner that “would infringe the patent if such combination occurred within the United States.”

Under 35 U.S.C. § 284, patent owners who prevail in litigation are entitled to “damages adequate to compensate for the infringement.”

In this case, despite affirming that Respondent was liable for infringement under § 271(f), the majority of a divided panel of the court of appeals held that Petitioner was not entitled to lost profits caused by the proscribed combination. The court of appeals reasoned that even when Congress has overridden the presumption against extraterritorial application of the law in creating liability, the presumption must be applied a second time to restrict damages.

The question presented is:

Whether the court of appeals erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases where patent infringement is proven under 35 U.S.C. § 271(f).

Cert. petition filed 2/17/17, conference 5/25/17, CVSG 5/30/17, SG brief filed 12/6/17, conference 1/5/18, conference 1/12/18, cert. petition granted 1/12/18, argument set for 4/16/18.

CAFC Opinion, CAFC Argument

All briefs available here.

Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712

Questions Presented:

  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 the amendment process implemented by the PTO in inter partes review conflicts with this Court's decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), and congressional direction.
  3. Whether the “broadest reasonable interpretation” of patent claims—upheld in Cuozzo for use in inter partes review—requires the application of traditional claim construction principles, including disclaimer by disparagement of prior art and reading claims in light of the patent's specification.

Cert. petition filed 11/23/16, waiver of respondent Michelle Lee, Director, Patent and Trademark Office filed 12/12/16, conference 3/3/17, response required 2/27/17, conference 6/1/17, cert. petition granted 6/12/17 (limited to Question 1), argument 11/27/17 ( transcript here).

Merits Briefs

Amicus Briefs in Support of Petitioner

Amicus Briefs in Support of Respondent

Amicus Briefs in Support of Neither Party

CAFC Opinion, CAFC Argument

SAS Institute Inc. v. Matal, No. 16-969

Question Presented:

Does 35 U.S.C. § 318(a), which provides that the Patent Trial and Appeal Board in an inter partes review “shall issue a final written decision with respect to the patentability of any patent claim challenged by the petitioner,” require that Board to issue a final written decision as to every claim challenged by the petitioner, or does it allow that Board to issue a final written decision with respect to the patentability of only some of the patent claims challenged by the petitioner, as the Federal Circuit held?

Cert. petition filed 1/31/17, conference 5/11/17, conference 5/18/17, cert. petition granted 5/22/17, argument 11/27/17 ( transcript here).

Merits Briefs

Amicus Briefs in Support of Petitioner

Amicus Briefs in Support of Respondent

CAFC Opinion, CAFC Argument

Romag Fasteners, Inc. v. Fossil, Inc., No. 16-202

Questions Presented:

Section 43(a) of the Lanham Act prohibits trademark infringement through false representations regarding the origin, endorsement, or association of goods through the use of another's distinctive mark. 15 U.S.C. § 1125(a). Section 35 of the Lanham Act permits a trademark holder who establishes a violation of Section 43(a) to recover the infringer's profits, among other damages. Id. § 1117(a). The federal circuits are intractably divided—six to six—over whether a trademark holder also must establish that the infringement was willful in order recover an award of profits.

The questions presented are:

  1. Whether, under Section 35 of the Lanham Act, willful infringement is a prerequisite for an award of infringer's profits for a violation of section 43(a).
  2. Whether and to what extent the defense of laches may bar an award for patent infringement brought within the Patent Act's six-year statutory limitations period, 35 U.S.C. § 286—the same issue this Court granted for plenary review in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927.

Cert. petition filed 8/12/16, conference 11/22/16, conference 3/24/17, GVR 3/27/17 in light of SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC.

CAFC Opinion, CAFC Argument

Endotach LLC v. Cook Medical LLC, No. 16-127

Questions Presented:

Petitioner respectfully requests that this case be held in view of SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 136 S. Ct. 1824 (2016) (“SCA II”), No. 15-927. In SCA II, this Court granted a petition for writ of certiorari in order to determine if the defense of laches could bar a claim for patent infringement brought within the six-year statutory limitations period of the Patent Act. The granting of the writ followed this Court's decision in Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (2014), which held the defense of laches cannot be used to shorten the three-year copyright limitations period set forth in 17 U.S.C. § 507(b). In Petrella, this Court noted that “we have never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period.” 134 S. Ct. at 1975.

The Federal Circuit ignored this Court's Petrella guidance shortly thereafter in a divisive 6-5 split en banc opinion in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 807 F.3d 1311, 1333 (Fed. Cir. 2015) (“SCA I”), and instead carved out a patent-specific approach for laches. The dissent in SCA I recognized the conflict with Petrella, noting “[t]he Supreme Court has repeatedly cautioned this court not to create special rules for patent cases. In light of the Supreme Court's clear, consistent, and longstanding position on the unavailability of laches to bar damages claims filed within a statutory limitations period, we should not do so here.” SCA I, 807 F.3d at 1333. This Court has already recognized the benefit in reviewing the Federal Circuit's position on this matter and this petition presents the same vital question posed in SCA II:

Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act's six-year statutory limitations period, 35 U.S.C. § 286.

Cert. petition filed 7/25/16, waiver of respondent Cook Medical LLC filed 8/26/16, response requested 9/12/16, conference 1/6/17, conference 3/24/17, GVR 3/27/17 in light of SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC.

No CAFC Opinion, CAFC Argument

Medinol Ltd. v. Cordis Corp., No. 15-998

Question Presented:

In Petrella v. Metro-Goldwyn-Mayer, this Court ruled that if a damages claim is timely under the relevant statute of limitations, judges cannot bar the claim by invoking the defense of laches. 134 S. Ct. 1962 (2014). The timeliness of the claim depends on “Congress' judgment,” not the discretion of judges exercising their equitable powers. Id. at 1967.

In this case, the Federal Circuit affirmed the use of laches to dismiss damages claims that were timely under the Patent Act's statute of limitations. The Federal Circuit relied on a 6-5 en banc decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Prods., LLC, 807 F.3d 1311 (Fed. Cir. 2015), that disregarded Petrella's admonition that “courts are not at liberty to jettison Congress' judgment on the timeliness of suit.” 134 S. Ct. at 1967. Rather than following Petrella, the Federal Circuit created an exception for damages claims in patent cases.

The question presented is:

May judges use the equitable defense of laches to bar legal claims for damages that are timely under the express terms of the Patent Act.

Cert. petition filed 2/2/16, conference 4/22/16, conference 4/29/16, conference 3/24/17, GVR 3/27/17 in light of SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC.

CAFC Opinion was unpublished, No CAFC Argument

Sandoz Inc. v. Amgen Inc.; Amgen Inc. v. Sandoz Inc., No. 15-1039, vide 15-1195

Questions Presented:

In the Biologics Price Competition and Innovation Act of 2009 (“BPCIA”), Congress created an abbreviated regulatory pathway for the Food and Drug Administration (“FDA”) to license “biosimilar” products—i.e., products that are “highly similar” to approved biological products. 42 U.S.C. § 262(i)(2). The BPCIA's “Notice of commercial marketing” provision states that a biosimilar applicant shall provide notice to the incumbent seller of the biological product “not later than 180 days before the date of the first commercial marketing of the biological product licensed under” this abbreviated pathway. Id. § 262(l)(8)(A) (emphasis added).

The Federal Circuit concluded that a biosimilar applicant “may only give effective notice of commercial marketing after the FDA has licensed its product.” App., infra, 20a (emphasis added). As the dissenting judge recognized, the Federal Circuit turned this mere notice provision into a grant of 180 days of additional exclusivity for all biological products beyond the exclusivity period Congress expressly provided—delaying the launch of all future biosimilars by six months. The Federal Circuit transformed the notice provision into a stand-alone requirement unconnected to the patent resolution provisions of the BPCIA. It also disregarded the only remedy provided by Congress—the right to initiate patent litigation—and instead created its own extrastatutory injunctive remedy to bar the launch of FDA-approved biosimilars.

The questions presented are:

Whether notice of commercial marketing given before FDA approval can be effective and whether, in any event, treating Section 262(l)(8)(A) as a standalone requirement and creating an injunctive remedy that delays all biosimilars by 180 days after approval is improper.

Question Presented in Conditional Cross-Petition:

Respondents Amgen Inc. and Amgen Manufacturing Limited (together, “Amgen”) have today filed a Conditional Cross-Petition for a writ of certiorari to review an aspect of the Federal Circuit's decision that involves the same patent-dispute-resolution regime. Amgen's Cross-Petition presents this question: Is an Applicant required by 42 U.S.C. § 262(l)(2)(A) to provide the Sponsor with a copy of its biologics license application and related manufacturing information, which the statute says the Applicant “shall provide,” and, where an Applicant fails to provide that required information, is the Sponsor's sole recourse to commence a declaratory-judgment action under 42 U.S.C. § 262(l) (9)(C) and/or a patent-infringement action under 35 U.S.C. § 27l(e)(2)(C)(ii)? (Cross-Pet. at i-iii.) For the reasons set forth below, the Court should deny Sandoz's Petition. If the Court does so, it should deny Amgen's Cross-Petition too. If, however, the Court grants Sandoz's Petition, it should consider both questions regarding the patent-resolution scheme of the BPCIA by granting Amgen's Conditional Cross-Petition as well.

Cert. petition filed 2/16/16, conditional cross-petition filed 3/21/16, conference 6/16/16, CVSG 6/20/16, conference 1/13/17, cert granted 1/13/17, set for argument 4/26/17, argued 4/26/17 ( transcript here), vacated in part, reversed in part, and remanded (opinion here) 6/12/17.

Merits Briefs

Amicus Briefs

In Support of Petitioner

In Support of Amgen

CAFC Opinion, CAFC Argument

WilmerHale represents respondent Amgen Inc.

TC Heartland, LLC v. Kraft Foods Group Brands LLC, No. 16-341

Question Presented:

The patent venue statute, 28 U.S.C. § 1400(b), provides that patent infringement actions “may be brought in the judicial district where the defendant resides . . . .” The statute governing “[v]enue generally,” 28 U.S.C. § 1391, has long contained a subsection (c) that, where applicable, deems a corporate entity to reside in multiple judicial districts.

In Fourco Glass Co. v. Transmirra Products Corp., 353 U.S. 222 (1957), this Court held that § 1400(b) is not to be supplemented by § 1391(c), and that as applied to corporate entities, the phrase “where the defendant resides” in § 1400(b) “mean[s] the state of incorporation only.” Id. at 226. The Court's opinion concluded: “We hold that 28 U.S.C. § 1400(b) is the sole and exclusive provision controlling venue in patent infringement actions, and that it is not to be supplemented by the provisions of 28 U.S.C. § 1391 (c).” Id. at 229.

Federal Circuit precedent holds to the contrary. Although Congress has not amended § 1400(b) since Fourco, the Federal Circuit has justified its departure from Fourco's interpretation of § 1400(b) based on amendments to § 1391(c). As stated in the decision below, Federal Circuit precedent holds that “the definition of corporate residence in the general venue statute, § 1391(c), applie[s] to the patent venue statute, 28 U.S.C. § 1400” (App. 4a) and that “Fourco was not and is not the prevailing law” (App. 8a) on where venue is proper in patent infringement actions under § 1400(b).

The question in this case is thus precisely the same as the issue decided in Fourco:

Whether 28 U.S.C. § 1400(b) is the sole and exclusive provision governing venue in patent infringement actions and is not to be supplemented by 28 U.S.C. § 1391(c).

Cert. petition filed 9/12/16, conference 12/9/16, cert. petition granted 12/14/16, argued 3/27/17 ( transcript here), reversed and remanded (opinion here) 5/22/17

Merits Briefs

Amicus Briefs

In Support of Petitioner

In Support of Respondent

In Support of Neither Party

CAFC Opinion, No CAFC Argument

Impression Products, Inc. v. Lexmark Intern., Inc., No. 15-1189

Questions Presented:

The “patent exhaustion doctrine”—also known as the “first sale doctrine”—holds that “the initial authorized sale of a patented item terminates all patent rights to that item.” Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617, 625 (2008). This case presents two questions of great practical significance regarding the scope of this doctrine on which the en banc Federal Circuit divided below:

  1. Whether a “conditional sale” that transfers title to the patented item while specifying post-sale restrictions on the article's use or resale avoids application of the patent exhaustion doctrine and therefore permits the enforcement of such post-sale restrictions through the patent law's infringement remedy.
  2. Whether, in light of this Court's holding in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351, 1363 (2013), that the common law doctrine barring restraints on alienation that is the basis of exhaustion doctrine “makes no geographical distinctions,” a sale of a patented article—authorized by the US patentee—that takes place outside of the United States exhausts the US patent rights in that article.

Cert. petition filed 3/21/16, conference 6/16/16, CVSG 6/20/16, brief amicus curiae of United States filed 10/12/16, conference 11/22/16, conference 12/2/16, cert. petition granted 12/2/16, argued 3/21/17 ( transcript here), reversed and remanded (opinion here) 5/30/17

Merits Briefs

Amicus Briefs

In Support of Petitioner

In Support of Respondent

In Support of Neither Party

Other

CAFC OpinionCAFC Argument

Click-To-Call Technologies, LP v. Oracle Corporation,  No. 15-1014

Questions Presented:

This Petition presents two questions raised in two previous petitions for writs of certiorari. With respect to the first question presented here, this Court has granted certiorari in Cuozzo Speed Technologies, LLC v. Lee, No. 15-466 (S. Ct. Jan. 15, 2016), and the second question presented here is currently pending in another petition before this Court, Achates Reference Publ'g, Inc. v. Apple Inc. and Lee, No. 15-842 (S. Ct. Dec. 29, 2015).

In 2011, Congress enacted the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284, creating post-grant adjudicatory proceedings for challenging patentability of patents. Among other types of proceedings, the AIA created inter partes review (IPR) proceedings, which are heard by the newly-established Patent Trial and Appeal Board (Board) in the United States Patent and Trademark Office (PTO). Since the inception of IPR proceedings, the number of challengers has increased at an unexpected and unparalleled rate, with roughly 4,000 petitions being filed to date. The Board has instituted review in over two-thirds of its IPR institution decisions, and roughly 87% of cases proceeding to final written decisions have resulted in the cancellation of some or all claims under review. Based on these success rates, the proceedings have quickly become the venue of choice for entities wishing to challenge patent validity.

In Cuozzo, Achates, and this case, the Federal Circuit held that it lacks jurisdiction to review claims that the Board exceeded its statutory authority in instituting their respective IPRs. In each case, the Federal Circuit denied review without due consideration of the strong presumption of judicial review of agency action. In Cuozzo, the Federal Circuit denied review of the institution decision itself, and this Court has granted certiorari to determine whether a Board institution decision made in excess of its statutory authority is judicially reviewable. In Achates, the Federal Circuit denied judicial review of a decision made in excess of its statutory authority both at the institution phase and in the Board's final written decision, for which the AIA affords judicial review under 35 U.S.C. § 319 and § 141(c). This case has analogous issues to those in Cuozzo and Achates, as the board exceeded its statutory authority at both institution and in its final written decision. Judicial review is available under § 319 and § 141(c) to determine whether the Board exceeded its statutory authority by instituting IPR and issuing its final written decision, notwithstanding that the patent challenger was served with a complaint alleging infringement of the patent more than one year before filing its petition for IPR in direct violation of 35 U.S.C. § 315(b).

The questions presented are as follows:

  1. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board's decision whether to institute an IPR proceeding is judicially unreviewable.
  2. Whether the court of appeals erred in holding that, even if the Board expressly decided in its final written decision that it had statutory authority to institute the proceeding, the Board's decision is judicially unreviewable.

Cert. petition filed 2/10/16, waiver of respondents Ingenio, Inc. and Yellowpages, LLC filed 4/11/16, conference 6/23/16, GVR 6/27/16.

CAFC Opinion, No CAFC Argument

Life Technologies Corp. v. Promega Corp., No. 14-1538

Questions Presented:

35 U.S.C. § 271(f)(1) provides that it is an act of patent infringement to “suppl[y] . . . in or from the United States all or a substantial portion of the components of a patented invention, . . . in such manner as to actively induce the combination of such components outside the United States.” Despite this Court's clear dictate that section 271(f) should be construed narrowly, Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007), the Federal Circuit held that Life Technologies is liable for patent infringement for worldwide sales of a multi-component kit made abroad because just a single, commodity component of the kit was shipped from its U.S. facility to its own foreign facility. The questions presented are:

  1. Whether the Federal Circuit erred in holding that a single entity can “actively induce” itself to infringe a patent under 35 U.S.C. § 271(f)(1).
  2. Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all worldwide sales

Cert. petition filed 6/26/15, conference 9/28/15, CVSG 10/5/15, SG brief filed 5/11/16, conference 6/16/16, conference 6/23/16, granted limited to question 2 6/27/16, set for argument 12/6/16, argued 12/6/16 ( transcript here), reversed and remanded ( opinion here) 2/22/17 . 

Merits Briefs

Amicus Briefs

In Support of Petitioner

In Support of Respondent

In Support of Neither Party

CAFC Opinion, CAFC Argument

WilmerHale represents respondent Promega Corporation

WesternGeco LLC v. ION Geophysical Corp., No. 15-1085

Questions Presented:

This Court has held that, by its terms, 35 U.S.C. § 271(f) is an “exception” to “the general rule under United States patent law that no infringement occurs when a patented product is made and sold in another country.” Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 441 (2007). Section 271(f) defines acts of patent infringement by reference to extraterritorial conduct: if certain requirements are met, infringement occurs where components of a patented invention are exported abroad for combination “outside of the United States in a manner that would infringe the patent if such combination occurred within the United States."

Here, despite affirming that Respondent was liable for infringement under § 271(f), the court of appeals nullified all the Petitioner's lost-profit damages awarded because those damages were based on so-called “foreign lost profits.” The court of appeals based its ruling on an understanding of the presumption against extraterritoriality that neither this Court nor any other has adopted and did so over the dissent of three circuit judges. The court of appeals held that even when Congress has overridden the presumption in creating liability, the presumption must be applied a second time to restrict damages. That approach guts Congress's enactment of § 271(f), which was specifically adopted to overrule this Court's decision in Deepsouth Packaging Co. v. Laitram Corp., 406 U.S. 518 (1972).

Separately, the court of appeals also affirmed the district court's decision not to enhance damages under 35 U.S.C. § 284, by applying the restrictive view of that statute currently under review this Term in Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513, and Stryker Corp. v. Zimmer, Inc., No. 14-1520.

The questions presented are:

  1. Whether the court of appeals erred in holding that damages based on a patentee's so called “foreign lost profits” are categorically unavailable in cases of patent infringement under 35 U.S.C. § 271(f).
  2. Whether the Court should hold this Petition for Halo and Stryker.

Cert. petition filed 2/26/16, conference 6/2/16, conference 6/16/16, GVR 6/20/16.

CAFC Opinion, CAFC Argument

Innovention Toys, LLC v. MGA Entertainment, Inc., No. 15-635

Questions Presented:

1. Whether the Federal Circuit erred by applying a rigid, two-part test for willful patent infringement and the enhancement of damages under 35 U.S.C. § 284, which is the same rigid, two-part test this Court rejected in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) for an award of attorney fees under 35 U.S.C. § 285, a statute with very similar wording as Section 284.

2. Whether a district court has discretion to enhance damages under 35 U.S.C. § 284 (similar to the “exceptional case” abuse-of-discretion standard for 35 U.S.C. § 285, as set forth in Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014)), where the infringer, one of the world's largest toy companies, intentionally copied the patented game of a competitor, a small three-person toy company, and made no attempt to avoid infringement of the smaller company's valid patent.

Cert. petition filed 11/10/15, conference 1/15/16, conference 6/16/16, GVR 6/20/16.

CAFC Opinion, CAFC Argument

SCA Hygiene Products v. First Quality Baby Products, LLC , No. 15-927

Question Presented:

In Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (2014), the Court held that the defense of laches cannot be used to shorten the three-year copyright limitations period set forth in 17 U.S.C. § 507(b), observing that “we have never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period.” 134 S. Ct. at 1974. In reaching its decision, the Court noted that the Federal Circuit follows a contrary rule in the patent setting, applying laches to bar infringement claims accruing within the six-year limitations period prescribed in 35 U.S.C. § 286, but stated: “[w]e have not had occasion to review the Federal Circuit's position.” Petrella, 134 S. Ct. at 1974 n.15 (discussing A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc)).

Following Petrella, the Federal Circuit convened en banc in this matter to consider the conflict between Petrella and Aukerman. All judges of the court agreed that there is “no substantive distinction material to the Petrella analysis” between the copyright and patent limitations periods. Pet. App. 18a. Nevertheless, in a 6-5 decision, the court reaffirmed its position in Aukerman and held that laches may be used to bar patent infringement claims accruing within the six-year limitations period.

The question presented is:

Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act's six-year statutory limitations period, 35 U.S.C. § 286.

Cert. petition filed 1/19/16, conference 4/22/16, conference 4/29/16, cert. petition granted 5/2/16, argued 11/1/16 ( transcript here), vacated in part and remanded (opinion here) 3/21/17.

Merits Briefs

Amicus Briefs

In Support of Petitioner

In Support of Respondent

In Support of Neither Party

CAFC Opinion, CAFC Argument

WilmerHale represents respondents First Quality Baby Prods., LLC

Samsung Electronics Co., Ltd. v. Apple Inc., No. 15-777

Questions Presented:

Design patents are limited to “any new, original and ornamental design for an article of manufacture.” 35 U.S.C. § 171. A design-patent holder may elect infringer's profits as a remedy under 35 U.S.C. § 289, which provides that one who “applies the patented design . . . to any article of manufacture . . . shall be liable to the owner to the extent of his total profit, . . . but [the owner] shall not twice recover the profit made from the infringement.”

The Federal Circuit held that a district court need not exclude unprotected conceptual or functional features from a design patent's protected ornamental scope. The court also held that a design-patent holder is entitled to an infringer's entire profits from sales of any product found to contain a patented design, without any regard to the design's contribution to that product's value or sales. The combined effect of these two holdings is to reward design patents far beyond the value of any inventive contribution. The questions presented are:

1. Where a design patent includes unprotected non-ornamental features, should a district court be required to limit that patent to its protected ornamental scope?

2. Where a design patent is applied to only a component of a product, should an award of infringer's profits be limited to those profits attributable to the component?

Cert. petition filed 12/14/15, conference 3/4/16, conference 3/18/16, cert. petition granted, limited to Question 2, 3/21/16, set for argument 10/11/16, argued 10/11/16 ( transcript here), reversed and remanded 12/6/16 ( opinion here).

Merit Briefs

Amicus Briefs

In Support of the Petitioners

In Support of Respondent

In Support of Neither Party

CAFC Opinion, CAFC Argument

WilmerHale represents respondent Apple Inc.

Medtronic Sofamor Danek USA, Inc. v. NuVasive, Inc., No. 15-85

Questions Presented:

In this case, the Federal Circuit affirmed a judgment of indirect infringement, solely on the ground that defendant Medtronic was aware of the patent and instructed doctors to use its products in a manner that was later determined to be infringing. The Federal Circuit did not discuss whether Medtronic's reading of the patent claims—under which it did not infringe—was reasonable.

Two months later, this Court decided Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (2015). That decision rejected the proposition that “even if the defendant reads the patent's claims differently from the plaintiff, and that reading is reasonable, he would still be liable because he knew the acts might infringe,” and held that a plaintiff asserting a claim of indirect infringement must provide “proof the defendant knew the acts were infringing.”

The question presented is:

Whether the Court should grant the petition, vacate the judgment below, and remand to the Federal Circuit for further consideration in light of Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (2015).

Cert. petition filed 7/17/15, waiver of respondent NuVasive, Inc. filed 8/19/15, response requested 9/14/15, GVR 1/19/16.

CAFC Opinion, CAFC Argument

Cuozzo Speed Technologies, LLC v. Lee, No. 15-446

Questions Presented:

In 2011, Congress enacted the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, which established a new post-grant adjudicatory process for challenges to the validity of patents. The Act created a body within the Patent and Trademark Office, called the Patent Trial and Appeal Board (Board), to hear those challenges as a quick and cost-effective alternative to litigation. One of the new types of adjudicative proceedings, inter partes review (IPR), has been both unexpectedly popular and surprisingly lethal. Since the inception of IPR, patent challengers have filed over 3,400 petitions, and nearly 85% of the IPR proceedings to date have resulted in the cancellation of some or all claims in the patent under review.

A primary reason for the high cancellation rate is that, although IPR was expressly designed to be a surrogate for litigation, the Board does not use the same claim construction standard as federal courts. Rather than construe the claim in an issued patent according to its plain and ordinary meaning, as a federal court would be required to do, the Board gives the claim its broadest reasonable interpretation, which is a protocol used by examiners in reviewing patent applications. Of course, the broader the interpretation of the claim, the more extensive the array of relevant prior art—and in turn the more likely that the claim will be held invalid in light of that prior art. Consequently, the Board's broad interpretation allows for differing determinations of validity in IPR proceedings and litigation.

Over a dissent by Judge Newman, a divided panel of the Federal Circuit affirmed the Board's use of the broadest-reasonable-interpretation standard for claim construction. The panel majority also held that, even if the Board had exceeded its statutory authority in instituting an IPR proceeding in the first place, the Board's decision to institute was judicially unreviewable. The court of appeals denied rehearing by a vote of 6-5, over a joint dissent by Chief Judge Prost and Judges Newman, Moore, O'Malley, and Reyna, as well as a separate dissent by Judge Newman. The five dissenting judges addressed the merits of, and would have rejected, the Board's claim construction standard.

The questions presented are as follows:

  1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
  2. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board's decision whether to institute an IPR proceeding is judicially unreviewable.

Cert. petition filed 10/6/15, conference 1/8/16, conference 1/15/16, cert. petition granted 1/15/16, argued 4/25/16 ( transcript here), affirmed 6/20/16 ( opinion here). 

Merit Briefs

Amicus Briefs

In Support of Petitioner:

In Support of Respondent:

In Support of Neither Party:

CAFC Opinion, CAFC Argument

Stryker Corp. v. Zimmer, Inc., No. 14-1520

Questions Presented:

The Patent Act provides that district courts “may increase . . . damages up to three times the amount found or assessed.” 35 U.S.C. § 284. Despite this permissive and discretionary language, the Federal Circuit requires, as a prerequisite to awarding enhanced damages under § 284, that a patentee prove by clear and convincing evidence that infringement was “willful,” meaning both that (1) there was an objectively high likelihood that the infringer's actions constituted infringement, and (2) this likelihood was either known or so obvious that it should have been known to the accused infringer.
 
The questions presented are:

  1. Has the Federal Circuit improperly abrogated the plain meaning of 35 U.S.C. § 284 by forbidding any award of enhanced damages unless there is a finding of willfulness under a rigid, two-part test, when this Court recently rejected an analogous framework imposed on 35 U.S.C. § 285, the statute providing for attorneys' fee awards in exceptional cases?
  2. Does a district court have discretion under 35 U.S.C. § 284 to award enhanced damages where an infringer intentionally copied a direct competitor's patented invention, knew the invention was covered by multiple patents, and made no attempt to avoid infringing the patents on that invention?

Cert. petition filed 6/22/15, conference 9/28/15, conference 10/9/15, conference 10/16/15, cert granted and consolidated with No. 14-1513 (limited to Question 1 presented in No. 14-1513), argued on 2/23/16 ( transcript here), vacated and remanded 6/13/16 ( opinion here).

CAFC Opinion, CAFC Argument

Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513 (VIDE No. 14-1520)

Questions Presented:

  1. Whether the Federal Circuit erred by applying a rigid, two-part test for enhancing patent infringement damages under 35 U.S.C. § 284, that is the same as the rigid, two part test this Court rejected last term in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) for imposing attorney fees under the similarly worded 35 U.S.C. § 285.
  2. Whether the Federal Circuit erred by holding that a U.S. defendant does not “sell” or “offer to sell” the patented invention “within the United States” under 35 U.S.C. § 271(a), even though it enters a requirements contract with a U.S. customer that they negotiate and execute in the U.S., that is governed by California law, that specifies the material terms, and that creates legally binding obligations.

Cert. petition filed 6/22/15, conference 9/28/15, conference 10/9/15, conference 10/16/15, cert. granted limited to Question 1 presented and consolidated with No. 14-1520, set for argument on 2/23/16, argued on 2/23/16 ( transcript here), vacated and remanded 6/13/16 ( opinion here).

Merit Briefs

Amicus Briefs

In Support of Petitioners:

In Support of Respondents:

In Support of Neither Party:

CAFC Opinion, CAFC Argument

CardSoft (Assignment for the Ben. of Creditors), LLC v. VeriFone, Inc., No. 14-1160

Question Presented:

Did the United States Court of Appeals for the Federal Circuit err in using a de novo standard of review in considering evidence and making new factual findings, instead of using a “clear error” standard of review in reviewing the factual findings underlying the United States District Court for the Eastern District of Texas's claim construction of the term “virtual machine” as used in U.S. Pats. Nos. 6,934,945 and 7,302,683?

Cert. petition filed 3/23/15, conference 6/25/15, GVR 6/29/15.

CAFC Opinion, CAFC Argument

CSR PLC v. Azure Networks, LLC, No. 14-976

Question Presented:

Did the United States Court of Appeals for the Federal Circuit err in using a de novo standard of review instead of a “clear error” standard of review in reviewing the factual findings made by the United States District Court for the Eastern District of Texas while construing the term “MAC Address” as used in U.S. Patent No. 7,756,129?

Cert. petition filed 2/4/15, conference 4/17/15, GVR 4/20/15.

CAFC Opinion, CAFC Argument

WilmerHale represents petitioner Broadcom.

Shire Development, LLC v. Watson Pharmaceuticals, Inc., No. 14-206

Question Presented:

Rule 52(a) of the Federal Rules of Civil Procedure provides that in matters tried to a district court, the court's “[f]indings of fact…must not be set aside unless clearly erroneous.”

The question presented is as follows:

Whether a district court's factual findings in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit currently requires, or only for clear error, as Rule 52(a) requires.

Cert. petition filed 8/18/14, conference 10/31/14, conference 1/23/15, GVR 1/26/15.

CAFC Opinion, CAFC Argument

Lighting Ballast Control LLC v. Universal Lighting Technologies, Inc., No. 13-1536

Questions Presented:

In Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), the Federal Circuit construed this Court's decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), to hold that patent claim construction presents a purely legal question subject to de novo review. In this case, the Federal Circuit granted en banc review to reconsider the widely criticized Cybor rule. In a 6-4 decision, it decided to adhere to its precedent on stare decisis grounds, which hold no sway in this Court. Shortly after the decision, this Court granted the petition for certiorari in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., No. 13-854 (Mar. 31, 2014), to consider the validity of the Cybor rule.

This petition presents the same question presented in Teva. It also presents a second question that will be squarely implicated if the Court, in Teva, affirms the Cybor rule. That question arises from Respondent's failure to raise the claim construction arguments on which it ultimately prevailed below (which are purely legal issues per Cybor) in a motion for judgment as a matter of law after they were previously rejected on summary judgment. The courts of appeals are starkly divided as to whether there is an exception for "purely legal" issues to the general rule that issues raised in a failed summary judgment motion and not renewed in a motion for JMOL are forfeited, a question this Court expressly left open in Ortiz v. Jordan, 131 S. Ct. 884 (2011).

The questions presented are:

  1. Whether a district court's factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires, or only for clear error, as Federal Rule of Civil Procedure 52(a) requires.
  2. Whether there is an exception for "purely legal" issues to the general rule that an issue raised only in a failed summary judgment motion and not raised in a motion for judgment as a matter of law under Federal Rule of Civil Procedure 50 is forfeited on appeal.
Cert. petition filed 6/20/14, conference 9/29/14, conference 1/23/15, GVR 1/26/15.

CAFC Opinion, CAFC Argument

Gevo, Inc. v. Butamax Advanced Biofuels LLC, No. 13-1286

Question Presented:

Rule 52(a) of the Federal Rules of Civil Procedure provides that in matters tried to a district court, the court's “[f]indings of fact . . . must not be set aside unless clearly erroneous.”

The question presented is as follows:

Whether a district court's factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.

Cert. petition filed 4/22/14, conference 6/26/14, conference 1/23/15, GVR 1/26/15.

CAFC Opinion, CAFC Argument

Stephen Kimble, et al. v. Marvel Enterprises, Inc., No. 13-720

Question Presented:

Petitioners are individuals who assigned a patent and conveyed other intellectual property rights to Respondent. The court of appeals “reluctantly” held that Respondent, a large business concern, was absolved of its remaining financial obligations to Petitioners because of “a technical detail that both parties regarded as insignificant at the time of the agreement.” App. 2-3; 23. Specifically, because royalty payments under the parties' contract extended undiminished beyond the expiration date of the assigned patent, Respondent's obligation to pay was excused under Brulotte v. Thys Co., 379 U.S. 29, 32 (1964), which had held that “a patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.”

A product of a bygone era, Brulotte is the most widely criticized of this Court's intellectual property and competition law decisions. Three panels of the courts of appeals (including the panel below), the Justice Department, the Federal Trade Commission, and virtually every treatise and article in the field have called on this Court to reconsider Brulotte, and to replace its rigid per se prohibition on post-expiration patent royalties with a contextualized rule of reason analysis.

The question presented is:

Whether this Court should overrule Brulotte v. Thys Co., 379 U.S. 29 (1964).

Cert petition filed 12/13/13, response requested 1/23/14, conference 5/9/14, CVSG 6/2/14, conference 12/5/14, conference 12/12/14, cert. petition granted 12/12/14, argued 3/31/15 ( oral argument transcript here), affirmed ( opinion here) 6/22/15.

CA9 Opinion, CA9 Argument

Merit Briefs

Amicus Briefs

WilmerHale represents respondent Marvel Enterprises, Inc.

Commil USA, LLC v. Cisco Systems, Inc., No. 13-896, vide 13-1044

Questions Presented:

Commil holds a patent teaching a method to implement short-range wireless networks. At trial, the jury returned a verdict that Commil's patent was valid, that Cisco directly infringed but did not induce infringement, and awarded damages. Because Cisco's counsel invoked stereotypes about Commil's Jewish owner and inventors during trial, the district court found the verdict “inconsistent with substantial justice” and ordered a new trial on inducement and damages only. At the second trial, the jury returned a verdict that Cisco induced infringement and awarded damages. The Federal Circuit reversed and remanded for a third trial on two grounds. First, although Commil's patent is valid, the Federal Circuit held that Cisco's “good faith belief” that the patent was invalid is a defense to induced infringement. Second, although Cisco had actual knowledge of Commil's patent, the Federal Circuit held that this Court's opinion in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), rendered erroneous and prejudicial the jury instruction based on DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006). The questions presented are:

  1. Whether the Federal Circuit erred in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).
  2. Whether the Federal Circuit erred in holding that Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), required retrial on the issue of intent under 35 U.S.C. § 271(b) where the jury (1) found the defendant had actual knowledge of the patent and (2) was instructed that “[i]nducing third-party infringement cannot occur unintentionally.”.

Cert. petition filed 2/27/14, conference 5/22/14, CVSG 5/27/14, brief amicus curiae of United States filed 10/16/14, conference 11/25/14, conference 12/5/14, cert. petition granted limited to question one 12/5/14, argued 3/31/15 ( oral argument transcript here), vacated and remanded (opinion here) 5/26/15.

CAFC Opinion, CAFC Argument

WilmerHale represents cross-petitioner Cisco Systems, Inc.

Merit Briefs

Amicus Briefs

WilmerHale represents respondent Cisco Systems, Inc.

WildTangent, Inc. v. Ultramercial, LLC, et al., No. 13-255

Question Presented:

When is a patent's reference to a computer, or computer-implemented service like the Internet, sufficient to make an unpatentable abstract concept patent eligible under 35 U.S.C. § 101?

Cert. petition filed 8/23/13, waiver by respondent Ultramercial, LLC filed 11/6/13, conference 12/6/13, response requested 12/6/13, conference 1/24/14, conference 6/26/14, GVR 6/30/14.

CAFC Opinion, CAFC Argument

Kobe Properties Sarl, et al. v. Checkpoint Systems, Inc., No. 13-788

Questions Presented:

The Patent Act provides that a "court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285. Recent decisions by the Federal Circuit have held that, in the absence of litigation misconduct or misconduct in securing the patent, a case can be deemed "exceptional" if it is both objectively baseless and brought in bad faith. After living with this case for more than ten years, including overseeing a two-week jury trial, the District Court found that this case was objectively baseless and brought in bad faith, and awarded the defendants all of their fees. In its very first application of its decision in Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., 687 F.3d 1300 (Fed. Cir. 2012), the Federal Circuit panel gave no deference to the District Court's objective baselessness and exceptional case determinations and reversed. App. 15. The Federal Circuit subsequently denied rehearing and rehearing en banc.

The questions presented are:[FN1]

FN1. These are the same questions presented in the petitions for writ of certiorari filed in Highmark, supra, and in Octane Fitness, LLC v. Icon Health & Fitness, Inc., No. 12-1184. This Court granted certiorari in both of those cases on October 1, 2013, 134 S. Ct. 48 (2013), 134 S. Ct. 49 (2013), and they are now pending before this Court.

  1. Whether a district court's exceptional case finding under 35 U.S.C. § 285, based on its judgment that a suit is objectively baseless, is entitled to deference.
  2. More broadly, whether the Federal Circuit's above-described two-part test for determining whether a case is exceptional under 35 U.S.C. § 285 improperly appropriates a district court's discretionary authority to award attorney fees to prevailing accused infringers in contravention of statutory intent and this Court's precedent, thereby raising the standard for accused infringers to recoup their fees and encouraging patent plaintiffs to bring spurious patent cases to cause competitive harm or for other improper purposes.

Cert. petition filed 12/30/13, conference 4/18/14, conference 5/2/14, GVR 5/5/14.

CAFC Opinion, CAFC Argument

LG Electronics, Inc., et al. v. InterDigital Communications, LLC, et al., No. 13-796

Questions Presented:

  1. Does a court have jurisdiction to review an agency action omitted from a statute's detailed list of reviewable actions, because (a) the presumption favoring judicial review overrides the statutory text, or (b) the agency action purportedly has the same “operative effect, in terms of economic impact,” as actions the statute specifies as reviewable?
  2. Where the parties indisputably agreed to arbitrate issues of arbitrability, should a court conduct its own inquiry into the merits of the arbitrability issue before referring the matter to arbitration?

Cert. petition filed 12/31/13, waiver of respondent International Trade Commission filed 3/19/14, conference 4/18/14, GVR 4/21/14.

CAFC Opinion, CAFC Argument

Teva Pharmaceuticals USA, Inc. et al., v. Sandoz, Inc., et al., No. 13-854

Question Presented:

Rule 52(a) of the Federal Rules of Civil Procedure provides that in matters tried to a district court, the court's "[f]indings of fact…must not be set aside unless clearly erroneous."

The question presented is as follows:

Whether a district court's factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.

Cert. petition filed 1/10/14, conference 3/7/14, conference 3/21/14, conference 3/28/14, cert. petition granted 3/31/14, argued 10/15/14 ( transcript here), vacated and remanded ( opinion here) 1/20/15.

CAFC Opinion, CAFC Argument

Merit Briefs

Amicus Briefs

Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369
 
Questions Presented:
  1. Does the Federal Circuit's acceptance of ambiguous patent claims with multiple reasonable interpretations - so long as the ambiguity is not “insoluble” by a court - defeat the statutory requirement of particular and distinct patent claiming?
  2. Does the presumption of validity dilute the requirement of particular and distinct patent claiming

Cert. petition filed 9/21/13, conference 1/10/14, cert. petition granted 1/10/14, argument set for 4/28/14, argued 4/28/14 ( transcript here), vacated and remanded 6/2/14 ( opinion here).

CAFC Opinion, CAFC Argument

Merits Briefs

Brief for Petitioner, Nautilus, Inc.
Brief for Respondent, Biosig Instruments, Inc.
Reply Brief for Petitioner, Nautilus, Inc.

Amicus Briefs

Brief for AARP in Support of Petitioner
Brief for Amazon.com, Inc., Cisco Systems, Inc., Dell Inc., ESRI, Garmin International, Inc., Google Inc., J.C. Penney Corporation, Inc., Limelight Networks, Inc., Netflix, Inc., Newegg Inc., Red Hat, Inc., SAP America, Inc., SAS Institute Inc., and Verizon Communications Inc. in Support of Petitioner
Brief for Electronic Frontier Foundation and Public Knowledge in Support of Petitioner
Brief for Microsoft Corporation in Support of Petitioner
Brief for Nova Chemicals Inc., Aetna Inc., Micron Technology, Inc., General Motors LLC, EMC Corporation, Intel Corporation, and Thermo Fisher Scientific Inc. in Support of Petitioner
Brief for Biotechnology Industry Organization in Support of Respondent
Brief for Interval Licensing LLC in Support of Respondent
Brief for Nokia Corporation and Nokia USA Inc. in Support of Respondent
Brief for the American Bar Association in Support of Neither Party
Brief for American Intellectual Property Law Association in Support of Neither Party
Brief for the Intellectual Property Law Association of Chicago in Support of Neither Party
Brief for Intellectual Property Owners Association in Support of Neither Party
Brief for Professor Peter S. Menell in Support of Neither Party
Brief for Sigram Schindler Beteiligungsgesellschaft mbh, in Support of Neither Party
Brief for Yahoo! Inc. in Support of Reversal
Motion for Leave to File Brief Out of Time and Brief of Ananda M. Chakrabarty, Ph.D., in Support of Petitioner
Brief for the United States in Support of Respondent

Limelight Networks, Inc. v. Akamai Technologies, Inc., et al., No. 12-786, vide 12-800

Question Presented:

Akamai holds a patent claiming a method involving redirecting requests for Internet content and selecting optimal servers. The Federal Circuit acknowledged that neither Limelight nor customers using Limelight's service directly infringe Akamai's patent under 35 U.S.C. § 271(a) because no one performs all the steps of the patented method. App. 6a, 30a. The Federal Circuit nevertheless held that Limelight could be liable, under 35 U.S.C. § 271(b), for inducing infringement if (1) it knew of Akamai's patent; (2) it performed all but one of the steps of the method; (3) it induced its customers to perform the final step of the claimed method; and (4) the customers performed that step. App. 30a. The question presented is:

Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a).

Cert. petition filed 12/28/12, conference 6/6/13, conference 6/13/13, conference 6/20/13, CVSG 6/24/13, brief of amicus United States filed 12/10/13, conference 1/10/14, cert. petition granted 1/10/14, argued 4/30/14 ( transcript here), reversed and remanded 6/2/14 ( opinion here).

CAFC Opinion, CAFC Argument

Merits Briefs

Brief for Petitioner, Limelight Networks, Inc.
Brief for Respondents, Akamai Technologies, Inc., and MIT
Reply Brief for Petitioner, Limelight Networks, Inc.

Amicus Briefs

Brief for Altera Corporation, HTC Corporation, HTC America, Inc., Smugmug, Inc. and Weatherford International in Support of Petitioner
Brief for Cargill, Incorporated; the Coca-Cola Company; General Mills, Inc.; and Hormel Foods Corporation in Support of Petitioner
Brief for the Clearing House and the Financial Services Roundtable in Support of Petitioner and Reversal
Brief for CTIA-The Wireless Association in Support of Petitioner
Brief for Electronic Frontier Foundation in Support of Petitioner
Brief for Google, Inc.; Cisco Systems, Inc.; Ebay Inc.; Facebook, Inc., Micron Technology, Inc.; Netflix, Inc.; Oracle Corporation; Red Hat, Inc.; SAP America Inc.; SAS Institute Inc.; Vizio, Inc.; Xilinx, Inc.; Yahoo! Inc. in Support of Petitioner
Brief for Microsoft Corporation in Support of Petitioner
Brief for Newegg and L.L. Bean in Support of Petitioner
Brief for Patent and Intellectual Property Law Scholars in Support of Petitioners on the Issue of Joint Infringement
Brief for Ten Intellectual Property Law Professors in Support of Petitioner on the Issue of Extraterritoriality
Brief for the United States in Support of Petitioner
Brief for American Intellectual Property Law Association ("AIPLA") in Support of Respondent
Brief for Bally Technologies, Inc., Bally Gaming, Inc., and SHFL Entertainment, Inc. in Support of Respondents
Brief for Biotechnology Industry Organization in Support of Respondents
Brief for Eli Lilly and Company, in Support of Respondents
Brief for Myriad Genetics, Inc. and Genomic Health, Inc. in Support of Respondent
Brief for Pharmaceutical Research and Manufacturers of America in Support of Respondents
Brief for Robert Mankes in Support of Respondents
Brief for William Mitchell College of Law Intellectual Property Institute in Support of Respondents
Brief for the American Bar Association in Support of Neither Party
Brief for Conejo Valley Bar Association in Support of Neither Party
Brief for Intellectual Property Owners Association in Support of Neither Party
Brief for International Business Machines Corp. in Support of Neither Party

Alice Corp. Pty. Ltd. v. CLS Bank International. et al., No. 13-298

Question Presented:

Whether claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?

Cert. petition filed 9/4/13, conference 12/6/13, cert. petition granted 12/6/13, argued 3/31/14 ( transcript here), affirmed 6/19/14 ( opinion here).

CAFC Opinion, CAFC Argument

Merit Briefs

Brief for Petitioner Alice Corp.
Brief for Respondents, CLS Bank International and CLS Services Ltd.
Reply Brief for Petitioner, Alice Corporation PTY. Ltd.

Amicus Briefs

Brief for Advanced Biological Laboratories, SA in Support of Petitioner
Brief for Dale R. Cook, Pro Se, in Support of Petitioner
Brief for Trading Technologies International, Inc., Cantor Fitzgerald, L.P., Cummins Inc., Scientific Games Corporation, Align Technology, Inc., et al., in Support of Petitioner
Brief for the American Antitrust Institute in Support of Respondents
Brief for the American Civil Liberties Union in Support of Respondents
Brief for BSA the Software Alliance in Support of Respondent
Brief for Checkpoint Software, Inc., Collateral Analytics, LLC, Daily Motion, Inc., Github, Inc., Guidewire Software, Inc., Hipmunk, Inc., Jive Software, Inc., Linkedin, Inc., Message Systems, Inc., Netflix, Inc., Newegg, Inc., Quantum Corporation, Rackspace, Inc., Ring Central, Inc., Trulia, Inc., Twitter, Inc., and Yelp Inc. in Support of Respondents
Brief for the Clearing House Association L.L.C. and Financial Services Roundtable in Support of Respondents
Brief for Computer & Communications Industry Association in Support of Respondents
Brief for Electronic Frontier Foundation in Support of Respondents
Brief for Google Inc., Amazon.com Inc., American Association of Advertising Agencies, Dell Inc., Facebook, Inc., Intuit Inc., Linkedin Corp., Netflix, Inc., Rackspace Hosting, Inc., Verizon Communications Inc., and Zynga Inc. in Support of Respondents
Brief for the Juhasz Law Firm, P.C. in Support of Respondents
Brief for Law, Business, and Economics Scholars in Support of Respondents
Brief for Professors Peter S. Menell and Jeffrey A. Lefstin in Support of Respondents
Brief for Public Knowledge and the Application Developers Alliance in Support of Respondents
Brief for Red Hat, Inc., in Support of Respondents
Brief for Richrelevance, Inc., Coupa Software, Inc., and Trulia, Inc., in Support of Respondents
Brief for Software Freedom Law Center, Free Software Foundation, and Open Source Initiative in Support of Respondents
Brief for Tony Dutra in Support of Respondents
Brief for the United States in Support of Respondents
Brief for the American Intellectual Property Law Association in Support of Neither Party
Brief for the Association of the Bar of the City of New York in Support of Neither Party
Brief for Brian R. Galvin in Support of Neither Party
Brief for Conejo Valley Bar Association in Support of Neither Party
Brief for IEEE-USA in Support of Neither Party
Brief for the Intellectual Property Law Association of Chicago in Support of Neither Party
Brief for Intellectual Property Owners Association in Support of Neither Party
Brief for International Association for the Protection of Intellectual Property (Association Internationale Pour La Protection De La Propriete Intellectuelle) in Support of Neither Party
Brief for International Business Machines Corporation in Support of Neither Party
Brief for James B. Lampert and David A. Chavous in Support of Neither Party
Brief for Margo Livesay, Ph.D., in Support of Neither Party, and Suggesting Reversal
Brief for the New York Intellectual Property Law Association in Support of Neither Party
Brief for Paul R. Michel in Support of Neither Party
Brief for Professor Lee Hollaar and Peter K. Trzyna in Support of Neither Party
Brief for Professor Robin Feldman and the U.C. Hastings Institute for Innovation Law in Support of Neither Party
Brief for Proove Biosciences, Inc. in Support of Neither Party
Brief for Retailers in Support of Neither Party
Brief for Ronald M. Benrey in Support of Neither Party
Brief for SHFL Entertainment, Inc. in Support of Neither Party
Brief for Sigram Schindler Beteiligungsgesellschaft Mbh, in Support of Neither Party
Brief for Microsoft Corporation, Adobe Systems Inc., and Hewlett-Packard Company in Support of Affirmance

Octane Fitness, LLC v. Icon Health & Fitness, Inc., No. 12-1184

Question Presented:

Does the Federal Circuit's promulgation of a rigid and exclusive two-part test for determining whether a case is “exceptional” under 35 U.S.C. § 285 improperly appropriate a district court's discretionary authority to award attorney fees to prevailing accused infringers in contravention of statutory intent and this Court's precedent, thereby raising the standard for accused infringers (but not patentees) to recoup fees and encouraging patent plaintiffs to bring spurious patent cases to cause competitive harm or coerce unwarranted settlements from defendants?

Cert. petition filed 3/27/13, conference 6/20/13, conference 9/30/13, cert. petition granted 10/1/13, argued 2/26/14 ( transcript here), reversed and remanded 4/29/14 ( opinion here).

CAFC Opinion, CAFC Argument

Merit Briefs

Brief for Petitioner, Octane Fitness, LLC
Brief for Respondent, ICON Health & Fitness, Inc.
Reply Brief for Petitioner, Octane Fitness, LLC

Amicus Briefs

Brief for 3M Co., General Electric Co., the Procter & Gamble Company, and Johnson & Johnson in Support of Petitioner
Brief for BSA, the Software Alliance in Support of Petitioner
Brief for Computer & Communications Industry Association; Newegg, Inc.; Pinterest; Quantum Corporation; and Ringcentral, Inc. in Support of Petitioner
Brief for Electronic Frontier Foundation, Application Developers Alliance, Engine Advocacy, and Public Knowledge in Support of Petitioner
Brief for the Food Marketing Institute in Support of Petitioner
Brief for Intellectual Property Owners Association in Support of Petitioner
Brief for United States in Support of Petitioner
Brief for Vermont, Nebraska, Alabama, Alaska, Arizona, Arkansas, Florida, Georgia, Hawaii, Iowa, Indiana, Kansas, Louisiana, Maine, Massachusetts, Maryland, Michigan, Minnesota, Mississippi, Missouri, Montana, New Mexico, North Dakota, Ohio, Oregon, Pennsylvania, South Dakota, Utah, Washington and Wyoming in Support of Petitioner
Brief for Apple, Inc. in Support of Neither Party
Brief for Google Inc., Cisco Systems, Inc., Facebook, Inc., HTC Corp., Intel Corporation, Linkedin Corp., Motorola Mobility LLC, Netflix, Newegg Inc., Rackspace Hosting, Inc., Salesforce.Com, Inc., T-Mobile USA, Inc., Verizon Communications Inc., and Vizio, Inc., in Support of Neither Party
Brief for the Intellectual Property Law Association of Chicago in Support of Neither Party
Brief for Professor Robin Feldman and the U.C. Hastings Institute for Innovation Law in Support of Neither Party
Brief for Yahoo! Inc., the New York Times Company, Netapp, Inc., Medtronic, Inc., General Mills, Inc., EMC Corporation, and Boston Scientific Corporation in Support of Petitioners
Brief for American Intellectual Property Law Association in Support of Neither Party
Brief for Apple, Inc. in Support of Neither Party

Highmark Inc. v. Allcare Health Management Systems, Inc., No. 12-1163

Question Presented:

IThe Patent Act provides that a “court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285. A case is “exceptional” if it is objectively baseless and brought in bad faith. After living with this case for more than six years, the District Court found that it was objectively baseless and brought in bad faith, and it awarded fees. Over a strong dissent, a Federal Circuit panel reversed, holding that a district court's objective baselessness determination is reviewed “without deference.” Pet. App. 9a. The Federal Circuit denied rehearing en banc by a vote of six to five. One of the two pointed dissents from that denial accurately observed that the decision below “deviates from precedent *** and establishes a review standard for exceptional case findings in patent cases that is squarely at odds with the highly deferential review adopted by every regional circuit and the Supreme Court in other areas of law.” Pet. App. 191a. The question presented is:

Whether a district court's exceptional-case finding under 35 U.S.C. § 285, based on its judgment that a suit is objectively baseless, is entitled to deference.

Cert petition filed 3/25/13, conference 5/23/13, response requested 5/14/13, conference 9/30/13, cert. petition granted 10/1/13, argued 2/26/14 ( transcript here), vacated and remanded 4/29/14 ( opinion here).

CAFC Opinion, CAFC Argument

Merit Briefs

Brief for Petitioner, Highmark, Inc.
Brief for Respondent, Allcare Health Management System, Inc.
Reply Brief for Petitioner, Highmark, Inc.

Amicus Briefs

Brief for United States in Support of Petitioner
Brief for American Intellectual Property Law Association in Support of Neither Party
Brief for Apple, Inc. in Support of Neither Party
Brief for Google Inc., Cisco Systems, Inc., Facebook, Inc., HTC Corp., Intel Corporation, Linkedin Corp., Motorola Mobility LLC, Netflix, Newegg Inc., Rackspace Hosting, Inc., Salesforce.Com, Inc., T-Mobile USA, Inc., Verizon Communications Inc., and Vizio, Inc., in Support of Neither Party
Brief for New York Intellectual Property Law Association in Support of Neither Party
Brief for Blue Cross Blue Shield Association in Support of Petitioner
Brief for Yahoo! Inc., the New York Times Company, Netapp, Inc., Medtronic, Inc., General Mills, Inc., EMC Corporation, and Boston Scientific Corporation in Support of Petitioners
Brief for Boston Patent Law Association in Support of Respondent
Brief for BSA The Software Alliance in Support of Respondent
Brief for Intellectual Property Owners Association in Support of Respondent
Brief for American Intellectual Property Law Association in Support of Neither Party

Medtronic, Inc. v. Boston Scientific Corp., et al., No. 12-1128

Question Presented:

In MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 137 (2007), this Court ruled that a patent licensee that believes that its products do not infringe the patent and accordingly are not subject to royalty payments is “not required … to break or terminate its … license agreement before seeking a declaratory judgment in federal court that the underlying patent is … not infringed.” The question presented is:

Whether, in such a declaratory judgment action brought by a licensee under MedImmune, the licensee has the burden to prove that its products do not infringe the patent, or whether (as is the case in all other patent litigation, including other declaratory judgment actions), the patentee must prove infringement.

Vided 12-1116, cert petition filed 3/14/13, conference 5/16/13, cert. petition granted 5/20/13, argument set for 11/5/13 ( transcript here), reversed and remanded 1/22/14.

CAFC Opinion, CAFC Argument

Merit Briefs

Brief for Petitioner, Medtronic, Inc.

Amicus Briefs

Brief for Legal Scholars in Support of Petitioner
Brief for the United States in Support of Petitioner
Brief for Tessera Technologies, Inc. in Support of Neither Party Suggesting Vacatur and Remand on Subject-Matter Jurisdictional Grounds
Brief of Koninklijke Philips, N.V., in Support of Respondents
Brief for Intellectual Property Owners Association in Support of Respondents

WilmerHale represents petitioner Medtronic, Inc.

Broadcom Corp. v. Azure Networks, LLC, et al., No. 12-1475

Questions Presented:

  1. Did the Court's decision in Stewart Organization, Inc. v. Ricoh Corp., 487 U.S. 22 (1988), change the standard for enforcement of clauses that designate an alternative federal forum, limiting review of such clauses to a discretionary, balancing-of-conveniences analysis under 28 U.S.C. § 1404(a)?
  2. If so, how should district courts allocate the burdens of proof among parties seeking to enforce or to avoid a forum-selection clause?
Cert. petition filed 6/19/13, conference 9/30/13, GVR 12/9/13.

CAFC Opinion
WilmerHale respresents petitioner Broadcom Corp.
Upsher-Smith Laboratories, Inc. v. Louisiana Wholesale Drug Co., Inc. et al., No. 12-265
 

Question Presented:

Whether the Third Circuit erred by holding, contrary to the Second, Eleventh, and Federal Circuits, that an agreement settling patent litigation that does not restrict competition outside the scope of the exclusionary right granted by the patent itself may presumptively violate the antitrust laws. 

Vided 12-245, cert petition filed 8/29/12, conference 12/7/12, GVR in light of FTC v. Actavis 6/24/13.

CA3 Opinion, CA3 Argument: Part 1, CA3 Argument: Part 2

 
Merck & Co., Inc. v. Louisiana Wholesale Drug Co., Inc., et al., No. 12-245
Question Presented:

Whether the federal antitrust laws permit a brand name manufacturer that holds the patent for a drug to enter into a settlement of patent litigation with a prospective generic manufacturer, where the settlement includes a payment from the brand manufacturer to the generic manufacturer but does not exclude competition beyond the scope of the patent.

Cert. petition filed 8/24/12, conference 12/7/12.

CA3 Opinion, CA3 Argument: Part 1, CA3 Argument: Part 2

 
Bowman v. Monsanto Co., No. 11-796

Question Presented:

Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies?

Cert. petition filed 12/20/11, response requested 1/26/12, conference 3/30/12, CVSG 4/2/12, conference 9/24/12, conference 10/5/12, cert. petition granted 10/5/12, argued 2/19/13 ( transcript here), affirmed 5/13/13 ( opinion here), rehearing petition filed 6/7/13.

CAFC Opinion, CAFC Argument

MeritBriefs

Brief for Petitioner Vernon Hugh Bowman
Brief for Respondents Monsanto Company, et al.
Reply Brief for Petitioner, Vernon Hugh Bowman

Amicus Briefs

Brief for the American Antitrust Institute, National Farmers Union, Food & Water Watch, Organization for Competitive Markets, and National Family Farm Coalition in Support of Petitioner
Brief for Automotive Aftermarket Industry Association, Automotive Parts Remanufacturers Association, and International Imaging Technology Council in Support of Petitioner
Brief for the Center for Food Safety and Save Our Seeds in Support of Petitioner
Brief for Knowledge Ecology International in Support of Petitioner
Brief for the Public Patent Foundation in Support of Petitioner
Brief for Agilent Technologies, Inc., Illumina, Inc., Life Technologies Corp., Promega Corp., Qiagen N.V., and Roche Molecular Systems, Inc. in Support of Respondents
Brief for American Soybean Association, Illinois Soybean Association, Indiana Soybean Alliance, Iowa Soybean Association, Kansas Soybean Association, Kentucky Soybean Association, Michigan Soybean Association, Minnesota Soybean Growers Association, Mississippi Soybean Association, Missouri Soybean Association, Nebraska Soybean Association, North Dakota Soybean Growers Association, Ohio Soybean Association, Tennessee Soybean Association, Virginia Soybean Association, And Wisconsin Soybean Association, National Corn Growers Association, National Association of Wheat Growers, American Sugarbeet Growers Association, and Growers For Biotechnology in Support of Respondents
Brief for the American Seed Trade Association in Support of Respondents
Brief for the Biotechnology Industry Organization in Support of Respondents
Brief for BSA | The Software Alliance in Support of Respondents
Brief for CHS Inc. in Support of Respondents
Brief for CropLife International in Support of Respondents
Brief for Economists in Support of Respondents
Brief for Intellectual Property Owners Association in Support of Respondents
Brief for Law Professor Christopher M. Holman in Support of Respondents
Brief for the New York Intellectual Property Law Association in Support of Respondents
Brief for Pioneer Hi-Bred International, Inc. in Support of Respondents Monsanto Company, Et Al.
Brief for Washington Legal Foundation in Support of Respondents
Brief for CropLife America in Support of Affirmance
Brief for the American Intellectual Property law Association in Support of Affirmance
Brief for the United States in Support of Affirmance
Brief for ABayhdole25, Inc. in Support of Affirmance
Brief for Wisconsin Alumni Research Foundation et al. in Support of Affirming the Federal Circuit

WilmerHale represents respondent Monsanto.

Gunn v. Minton, No. 11-1118

Questions Presented:

Did the Federal Circuit depart from the standard this Court articulated in Grable & Sons Metal Products, Inc. v. Darue Eng'g & Mfg., 545 U.S. 308 (2005 ), for “arising under” jurisdiction of the federal courts under 28 U.S.C. § 1338, when it held that state law legal malpractice claims against trial lawyers for their handling of underlying patent matters come within the exclusive jurisdiction of the federal courts? Because the Federal Circuit has exclusive jurisdiction over appeals involving patents, are state courts and federal courts strictly following the Federal Circuit's mistaken standard, thereby magnifying its jurisdictional error and sweeping broad swaths of state law claims - which involve no actual patents and have no impact on actual patent rights - into the federal courts?

Cert. petition filed 3/9/12, waiver of respondent Vernon Minton filed 3/23/12, response requested 4/12/12, conference 10/5/12, cert. petition granted 10/5/12, argued 1/16/13 ( transcript here), reversed and remanded 2/20/13 ( decision here).

Texas Supreme Court Opinion, Texas Supreme Court Argument

Merit Briefs

Brief for Petitioners Jerry W. Gunn, Individually; Williams Squires & Wren, L.L.P.; James E. Wren, Individually; Slusser & Frost, L.L.P.; William C. Slusser, Individually; Slusser Wilson & Partridge, L.L.P.; and Michael E. Wilson, Individually
Brief for Respondent Vernon F. Minton
Reply Brief for PetitionersJerry W. Gunn, Individually; Williams Squires & Wren, L.L.P.; James E. Wren, Individually; Slusser & Frost, L.L.P.; William C. Slusser, Individually; Slusser Wilson & Partridge, L.L.P.; and Michael E. Wilson, Individually

Amicus Briefs

Brief for American Intellectual Property Law Association in Support of Petitioners
Brief for Law Professors in Support of Petitioners
Brief for Ronald E. Mallen in Support of Petitioners
Brief for the Intellectual Property Law Association of Chicago in Support of Respondent
Brief for Los Alamos National Security, LLC; the Regents of the University of California; UChicago Argonne, LLC; the Alliance for Sustainable Energy, Llc; Battelle Memorial Institute; Sandia Corporation; Ut-Battelle, LLC; and Lawrence Livermore National Security, LLC in Support of Respondent
Brief for Wood, Herron & Evans, LLP in Support of Respondent

The Ass'n for Molecular Pathology, et al. v. Myriad Genetics, Inc., et al., No. 12-398

Questions Presented:

Many patients seek genetic testing to see if they have mutations in their genes that are associated with a significantly increased risk of breast or ovarian cancer. Respondent Myriad Genetics obtained patents on two human genes that correlate to this risk, known as BRCA1 and BRCA2. These patents claim every naturally-occurring version of those genes, including mutations, on the theory that Myriad invented something patent-eligible simply by removing (“isolating”) the genes from the body. Petitioners are primarily medical professionals who regularly use routine, conventional genetic testing methods to examine genes, but are prohibited from examining the human genes that Myriad claims to own. This case therefore presents the following questions:

  1. Are human genes patentable?
  2. Did the court of appeals err in upholding a method claim by Myriad that is irreconcilable with this Court's ruling in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)?
  3. Did the court of appeals err in adopting a new and inflexible rule, contrary to normal standing rules and this Court's decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), that petitioners who have been indisputably deterred by Myriad's “active enforcement” of its patent rights nonetheless lack standing to challenge those patents absent evidence that they have been personally threatened with an infringement action?

Cert. petition filed 9/25/12, conference 11/30/12, cert. petition granted 11/30/12 (limited to question 1), argued 4/15/13 ( transcript here), affirmed in part, reversed in part 6/13/13 ( decision here).

CAFC Opinion, CAFC Argument

Merit Brief

Brief for Petitioners, the Association for Molecular Pathology, et al.
Brief for Respondents, Myriad Genetics, Inc.

Amicus Briefs

Brief for AARP in Support of Petitioners
Brief for American Medical Association, American Society of Human Genetics, American College of Obstetricians and Gynecologists, American Osteopathic Association, American College of Legal Medicine, and the Medical Society of the State of New York in Support of Petitioners
Brief for Canavan Foundation, Claire Altman Heine Foundation, March of Dimes Foundation, Facing Our Risk of Cancer Empowered, National Association for Pseudoxanthoma Elasticum, and Ovarian Cancer National Alliance in Support of Petitioners
Brief for the Ethics & Religious Liberty Commission of the Southern Baptist Convention and Prof. D. Brian Scarnecchia in Support of Petitioners
Brief for Fifteen Law Professors in Support of Petitioners
Brief for Genedx and Law Professors in Support of Petitioners
Brief for Genformatic LLC in Support of Petitioners
Brief for International Center for Technology Assessment, Council for Responsible Genetics, Greenpeace, Indigenous People Council on Biocolonialism, Friends of the Earth, and Center for Environmental Health in Support of Petitioners
Brief for Invitae Corporation in Support of Petitioners
Brief for Kali N. Murray and Erika R. George in Support of Petitioners
Brief for Knowledge Ecology International in Support of Petitioners
Brief for the National Women's Health Network, Reproductive Health Technologies Project, Disability Rights Legal Center, Forward Together, the Center for Genetics and Society, the Pro-Choice Alliance for Responsible Research, Alliance for Humane Biotechnology, G. Michael Roybal, Md, Mph, and Anne L. Peters, Md in Support of Petitioners
Brief for Professor Eileen M. Kane in Support of Petitioners
Brief for Academics in Law, Medicine, Health Policy and Clinical Genetics in Support of Neither Party
Brief for the American Intellectual Property Law Association in Support of Affirmance but in Support of Neither Party
Brief for CLS Bank International in Support of Neither Party
Brief for the Institute of Professional Representatives Before the European Patent Office (EPI) in Support of Neither Party
Brief for the Juhasz Law Firm, P.C. in Support of Neither Party
Brief for Eric S. Lander in Support of Neither Party
Brief for Fédération Internationale Des Conseils en Propriété Intellectuelle in Support of Neither Party
Brief for Sigram Schindler Beteiligungsgesellschaft mbH in Support of Neither Party
Brief for the United States in Support of Neither Party
Brief for James D. Watson, Ph.D. in Support of Neither Party
Brief for the American Bar Association in Support of Respondents
Brief for Animal Health Institute and Merial Limited in Support of Respondents
Brief for the Biotechnology Industry Organization in Support of Respondents
Brief for the Boston Patent Law Association in Support of Respondents
Brief for the Coalition for 21st Century Medicine in Support of Respondents
Brief for Dr. Ananda Mohan Chakrabarty in Support of Respondents
Brief for Drs. Larry Geier, William Harb, Adam Ofer, and Donald Aptekar in Support of Respondents
Brief for Croplife International in Support of Respondents
Brief for Federal Circuit Bar Association in Support of Respondents
Brief for the Nanobusiness Commercialization Association in Support of Respondents
Brief for Genentech, Inc.; Roche Molecular Systems, Inc.; Ventana Medical Systems, Inc.; Roche Diagnostics Operations, Inc.; Roche Diagnostics Corporation; and Hoffmann-La Roche Inc. in Support of Respondents
Brief for Gilead Sciences, Inc., Elan Pharmaceuticals, Inc. Confluence Life Sciences, Inc., Euclises Pharmaceuticals, Inc. & Biogenerator, in Support of Respondents
Brief for InHouse Patent Counsel LLC in Support of Respondents
Brief for Immatics Biotechnologies, Gmbh in Support of Respondents
Brief for the Intellectual Property Amicus Brief Clinic of the Franklin Pierce Center for Intellectual Property at the University of New Hampshire School of Law in Support of Respondents
Brief for Intellectual Property Owners Association in Support of Respondents
Brief for Lynch Syndrome International in Support of Respondents
Brief for MPEG LA, LLC in Support of Respondents
Brief for National Venture Capital Association in Support of Respondents
Brief for the New York Intellectual Property Law Association in Support of Respondents
Brief for the Pharmaceutical Research and Manufacturers of America in Support of Respondents
Brief for the Philadelphia Intellectual Property Law Association in Support of Respondent
Brief for Professor Jeffrey A. Lefstin in Support of Respondents
Brief for University of Baltimore/Johns Hopkins University Center for Medicine & Law, and Law Professors Gregory Dolin, M.D., et al. in Support of Respondents
Brief for Target Discovery, Inc. in Support of Affirmance

FTC v. Actavis, Inc., et al., No. 12-416

Question Presented:

Federal competition law generally prohibits an incumbent firm from agreeing to pay a potential competitor to stay out of the market. See Palmer v. BRG of Ga., Inc., 498 U.S. 46, 49-50 (1990). This case concerns agreements between (1) the manufacturer of a brand-name drug on which the manufacturer assertedly holds a patent, and (2) potential generic competitors who, in response to patent-infringement litigation brought against them by the manufacturer, defended on the grounds that their products would not infringe the patent and that the patent was invalid. The patent litigation culminated in a settlement through which the seller of the brand-name drug agreed to pay its would-be generic competitors tens of millions of dollars annually, and those competitors agreed not to sell competing generic drugs for a number of years. Settlements containing that combination of terms are commonly known as “reverse payment” agreements. The question presented is as follows:

Whether reverse-payment agreements are per se lawful unless the underlying patent litigation was a sham or the patent was obtained by fraud (as the court below held), or instead are presumptively anticompetitive and unlawful (as the Third Circuit has held).

Cert. petition filed 10/4/12, conference 12/7/12, cert. petition granted 12/7/12, argued 3/25/13 ( transcript here), reversed and remanded 6/17/13 ( decision here).

CA11 Opinion, CA11 Argument not available.

Merit Briefs

Brief for the Petitioner, FTC
Brief for Respondent, Actavis, inc
Brief for Respondent, Par/Paddock
Brief for Respondent, Solvay Pharmaceuticals, Inc.
Reply Brief for the Petitioner, FTC

Amicus Briefs

Brief for 118 Law, Economics, and Business Professors and the American Antitrust Institute in Support of Petitioner
Brief for AARP, American Medical Association, National Legislative Association for Prescription Drug Prices and U.S. Public Interest Research Groups in Support of Petitioner
Brief for America's Health Insurance Plans in Support of Petitioner
Brief for Apotex, Inc. in Support of Petitioner
Brief for Louisiana Wholesale Drug Company, Inc., CCS Pharmacy, Inc., Rite Aid Corporation, Walgreen Co., Eckerd Corporation, the Kroger Co., Safeway Inc., Albertson'S, Inc., Hy-Vee, Inc., and Maxi Drug, Inc. D/B/A Brooks Pharmacy in Support of Petitioner
Brief for Knowledge Ecology International in Support of Petitioner
Brief for the National Association of Chain Drug Stores in Support of Petitioner
Brief for Representative Henry A. Waxman in Support of Petitioner
Brief for the Public Patent Foundation in Support of Petitioner
Brief for the States of New York, Arizona, Arkansas, California, Colorado, Connecticut, Delaware, Hawaii, Idaho, Illinois, Iowa, Kentucky, Louisiana, Maine, Maryland, Massachusetts, Michigan, Minnesota, Mississippi, Missouri, Nevada, New Hampshire, New Mexico, North Carolina, North Dakota, Ohio, Oregon, Pennsylvania, Rhode Island, South Carolina, South Dakota, Tennessee, Utah, Vermont, Washington, And Wyoming, the District of Columbia, and the Commonwealth of Puerto Rico in Support of Petitioners
Brief for the American Intellectual Property Law Association in Support of Respondents
Brief for Antitrust Economists in Support of Respondents
Brief for Bayer AG and Bayer Corp. in Support of Respondents
Brief for David W. Opderbeck and Erik Lillquist in Support of Respondents
Brief for Enavail, Llc in Support of Respondents
Brief for Generic Manufacturers Upsher-Smith Laboratories, Inc.; Teva Pharmaceuticals Usa, Inc.; Ranbaxy Pharmaceuticals, Inc.; Mylan Pharmaceuticals Inc.; and Impax Laboratories, Inc. in Support of Respondents
Brief for the Generic Pharmaceutical Association in Support of Respondents
Brief for Health Economics and Law Professors in Support of Respondents
Brief for Law Professors Gregory Dolin, Kent Bernard, Et Al. in Support of Respondents
Brief for Mediation and Negotiation Professionals in Support of Respondents
Brief for Merck & Co., Inc. in Support of Respondents
Brief for National Association of Manufacturers in Support of Respondents
Brief for New York Intellectual Property Law Association in Support of Respondents
Brief for Pharmaceutical Research and Manufacturers of America (Phrma) in Support of Respondents
Brief for Shire PLC in Support of Respondents
Brief for Washington Legal Foundation in Support of Respondents

Byrne v. Wood, Herron & Evans, LLP, et al., No. 11-1497

Questions Presented:

Did the Federal Circuit depart from the standard this Court articulated in Grable & Sons Metal Products, Inc. v. Darue Eng'g & Mfg., 545 U.S. 308 (2005), for “arising under” jurisdiction of the federal courts under 28 U.S.C. § 1338, when it held that state law legal malpractice tort claims which involve no actual patents and have no impact on actual patent rights come within the exclusive jurisdiction of the federal courts because a patent was involved in underlying litigation?

Has the Federal Circuit's overly broad and mistaken standard caused a conflict among state courts and federal courts regarding federal jurisdiction with some other courts declining to assume federal jurisdiction of these state law tort cases?

Cert petition filed 6/8/12, conference 10/5/12, conference 2/22/13, GVR in light of Gunn v. Minton, 2/25/13.

CAFC Opinion, CAFC Argument

USPPS, Ltd. v. Avery Dennison Corp., et al., No. 12-539

Questions Presented:

  1. When a federal circuit court of appeals accepts jurisdiction in an original appeal does the jurisdictional decision become “law-of-the-case” and final in a subsequent appeal in the same case unless the decision was not plausible?
  2. Does section 1338 sweep any state law claim involving malpractice, breach of fiduciary duty or fraud that touches on patent law irrevocably into federal court?
  3. Does the federal circuit's decision in this case disregard the Fifth Circuit's decision in the first appeal in this case and the Texas Supreme Court decisions that to start running of limitations in fraud and breach of fiduciary cases the plaintiff must discover wrongful conduct on the part of the defendants rising to the level of breach of fiduciary duty and fraud?
Cert. petition filed 9/13/12, response requested 1/3/13, conference 4/12/13, GVR in light of Gunn v. Minton 4/15/13.

CAFC Opinion, CAFC Argument

WildTangent, Inc. v. Ultramercial, LLC, et al., No. 11-962

Question Presented:

Whether, or in what circumstances, a patent's general and indeterminate references to “over the Internet” or at “an Internet website” are sufficient to transform an unpatentable abstract idea into a patentable process for purposes of 35 U.S.C. § 101.

Cert. petition filed 2/2/12, waiver filed by respondent Ultramercial, LLC 3/22/12, response requested 3/30/12, conference 5/17/12, GVR 5/21/12.

CAFC Opinion, CAFC Argument

Caraco Pharm. Laboratories, Ltd., et al. v. Novo Nordisk A/S, et al., No. 10-844

Question Presented:

Whether the counterclaim provision of the Hatch-Waxman Act, 21 U.S.C. § 355(j)(5)(C)(ii)(I), applies where (1) there is “an approved method of using the drug” that “the patent does not claim,” and (2) the brand submits “patent information” to the FDA that misstates the patent's scope, requiring “correct[ion].”

Cert. petition filed 12/23/10.

Conference 3/25/11; CVSG 3/28/11; conference 6/23/11; cert. petition granted 6/27/11; motion of the Solicitor General for leave to participate in oral arguments as amicus curiae and for divided argument granted on 11/7/11, argued 12/5/11, reversed 4/17/12.

CAFC Opinion, CAFC Argument, Supreme Court Argument, Supreme Court Opinion

Opinion Below

United States Amicus Brief ISO Cert., Mylan Pharmaceuticals Inc. Amicus Brief ISO Cert., Generic Pharmaceutical Association Amicus Brief ISO Cert., AARP and U.S. Public Interest Research Group Amicus Brief ISO Cert., Rep. Henry A. Waxman Amicus Brief ISO Cert., Brief of Petitioners Caraco Pharmaceutical Lab., et al, The Pharmaceutical Research and Manufacturers of America Amicus Brief, Brief of Respondents Novo Nordisk.

Kappos v. Hyatt, No. 10-1219

Questions Presented:

When the U.S. Patent and Trademark Office (PTO) denies an application for a patent, the applicant may seek judicial review of the agency's final action through either of two avenues. The applicant may obtain direct review of the agency's determination in the Federal Circuit under 35 U.S.C. § 141. Alternatively, the applicant may commence a civil action against the Director of the PTO in federal district court under 35 U.S.C. § 145. In a Section 145 action, the applicant may in certain circumstances introduce evidence of patentability that was not presented to the agency. The questions presented are as follows:

  1. Whether the plaintiff in a Section 145 action may introduce new evidence that could have been presented to the agency in the first instance.
  2. Whether, when new evidence is introduced under Section 145, the district court may decide de novo the factual questions to which the evidence pertains, without giving deference to the prior decision of the PTO.

Cert. petition filed 4/7/11.

Conference 6/23/11; cert. petition granted 6/27/11, argued 1/9/12, affirmed and remanded 4/18/12.

CAFC Argument, Supreme Court Argument, Supreme Court Opinion

Opinion Below

Intel Corporation Amicus Brief ISO Cert., IEEE-USA Amicus Brief, Verizon Communications Inc., Google Inc., Hewlett-Packard Co., HTC Corp. Amicus Brief, NY Intellectual Property Law Association Amicus Brief, Intellectual Property Owners Association Amicus Brief

The Association for Molecular Pathology, et al. v. Myriad Genetics, Inc., et al., No. 11-725

Questions Presented:

  1. Are human genes patentable?
  2. Did the court of appeals err in adopting a new and inflexible rule, contrary to normal standing rules and this Court's decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), that petitioners who have been indisputably deterred by Myriad's “active enforcement” of its patent rights nonetheless lack standing to challenge those patents absent evidence that they have been personally and directly threatened with an infringement action?

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

CAFC Opinion, CAFC Argument

Mayo Collaborative Services, dba Mayo Medical Laboratories, et al. v. Prometheus Labs., Inc., No. 10-1150

Question Presented:

Whether 35 U.S.C. § 101 satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occuring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve "transformations" of body chemistry.

Cert. petition filed 3/17/11.

Conference 6/16/11; cert. petition granted 7/20/11; motion of the Solicitor General for leave to participate in oral argument as amicus curiae and for divided argument granted on 11/22/11, argued 12/7/11. Reversed 3/20/12.

CAFC Argument, Supreme Court Argument, Supreme Court Opinion

Opinion Below

Verizon Communications Inc. and Hewlett-Packard Co. Amicus Brief ISO Cert., United States Amicus Brief, Microsoft Co., EMC Co. and Intel Co. Amicus Brief, Internationale Pour La Protection De La Propriété Intellectuelle and International Association for the Protection of Intellectual Property (U.S.) Amicus Brief

WilmerHale filed an amicus brief in support of neither party on behalf of Roche Molecular Systems, Inc., et al.

Eisai Co. Ltd. v. Teva Pharm.USA, Inc., No. 10-1070

Questions Presented:

When a case becomes moot by the happenstance of a third party's independent action after the court of appeals issues a judgment but while a petition for rehearsing is still pending, should the court of appeals vacate the judgment upon the request of the aggrieved party?

Cert. petition filed 2/25/11.

Waiver filed 3/11/11; conference 4/15/11; response requested 3/30/11; conference 5/26/11; conference 6/2/11; conference 6/9/11; GVR (mootness) 6/13/11.

Opinion Below

Microsoft Corp. v. i4i Ltd. P'ship, No. 10-290

Question Presented:

Whether the court of appeals erred in holding that Microsoft's invalidity defense must be proved by clear and convincing evidence.

Cert. petition filed 8/27/10.

Conference 11/23/10; cert. petition granted 11/29/10; argument 4/18/11; affirmed 6/9/11.

Opinion Below

WilmerHale represents respondent i4i Limited Partnership, et al.

Board of Trustees of the Leland Stanford Junior University v. Roche Molecular System., Roche Diagnostics Corporation, Roche Diagnostics Operations, Inc., No. 09-1159

Question Presented:

Whether a federal contractor university's statutory right under the Bayh-Dole Act, 35 U.S.C. §§ 200-212, in inventions arising from federally funded research can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor's rights to a third party?

Cert. petition filed 3/22/10.

Conference 6/24/10; CVSG 6/28/10; conference 10/29/10; cert. petition granted 11/1/10; argument 2/28/11; affirmed 6/9/11.

Opinion Below

WilmerHale represents respondent Roche Molecular Systems, Inc., et al.

Global-Tech Apppliances and Pentalpha Enterprises, Ltd., v. SEB S.A., No. 10-6

Question Presented:

Whether the legal standard for the state of mind element of a claim for actively inducing infringement under 35 U.S.C. § 271(b) is "deliberate indifference of a known risk" that an infringement may occur, as the Court of Appeals for the Federal Circuit held, or "purposeful, culpable expression and conduct" to encourage an infringement, as this Court taught in MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 937, 125 S. Ct. 2764, 2780, 162 L. Ed. 2d 781, 801 (2005)?

Cert. petition filed on 6/23/10.

Conference 10/8/10; cert. petition granted 10/12/10; argument 2/23/11; affirmed 5/31/11.

Opinion Below

WilmerHale filed an amicus brief in support of petitioner on behalf of Cisco Systems, Inc., et al.

Mayo Collaborative Services (d/b/a Mayo Medical Laboratories) and Mayo Clinic Rochester v. Prometheus Laboratories, Inc., No. 09-490

Question Presented:

Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between patient test results and patient health, so that the claim effectively preempts all uses of these naturally occurring correlations?

Cert. petition filed on 10/22/09.

Conference 1/22/10; cert. petition granted on 6/29/10; judgment vacated and case remanded for further consideration in light of Bilski v. Kappos, 561 U.S. __ (2010).

Classen Immunotherapies, Inc.,v. Biogen Idec, Glaxosmithkline and Merck & Co, Inc., No. 08-1509

Question Presented:

Is the CAFC's test for patentability under 35 U.S.C. §101, as defined in Bilski, the "machine or transformation test" appropriate for determining patentability of a method of using pharmaceuticals and "medical activities"? Do pharmaceuticals including vaccines fall under the definition of an apparatus? Does medical treatment including immunization constitute transformation. Are methods of diagnosing disease or assays for detecting drug adverse events patentable under Bilski and if not is Bilski too narrow or should it not apply to medical activities? (If the court accepts cert in Bilski, this petition for cert should be stayed pending the outcome of Bilski).

Cert. petition filed on 5/11/09.

Conference 11/24/09; cert. petition granted on 6/29/10; judgment vacated and case remanded for further consideration in light of Bilski v. Kappos, 561 U.S. __ (2010).

Bernard L. Bilski and Rand A. Warsaw v. John J. Doll, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of The United States Patent and Trademark Office, No. 08-964

Questions Presented:

  1. Whether the Federal Circuit erred by holding that a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for "any" new and useful process beyond excluding patents for "laws of nature, physical phenomena, and abstract ideas."?
  2. Whether the Federal Circuit's "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business.” 35 U.S.C. § 273 ?

Cert. petition filed on 1/28/09.

Government Opposition filed 5/1/09, available here; cert. petition granted on 6/1/09, argument 11/9/09, affirmed 6/28/10.

     

  

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