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Patent Law and the Supreme Court: Patent Certiorari Petitions Denied in 2018

April 2018

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

Recently pending, granted and denied certiorari petitions

Petter Investments v. Hydro Engineering, No. 17-1055

Question Presented:

Whether it is a denial of due process under the Fifth Amendment to the United States Constitution for the United States Court of Appeals for the Federal Circuit, on issues requiring de novo review, to affirm summarily in a one-word per curiam judgment under Federal Circuit Rule 36 a district court judgment which itself included no reasoning or explanation, concerning intellectual property rights including patent rights.

Cert. petition filed 1/18/18, conference 3/29/18. Petition denied 4/2/18.

CAFC Opinion, CAFC Argument

R+L Carriers, Inc. v. Intermec Technologies Corp., No. 17-980

Questions Presented:

  1. May a court determine that a patent claim is “directed to” an abstract idea under Step 1 of Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014) without analyzing the requirements of the individual claim steps?
  2. Do Fed. R. Civ. P. 56(c), Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986) and Celotex Corp. v. Catrett, 477 U.S. 317 (1986) prohibit a court from entering a summary judgment finding that an invention is ineligible for patent protection when the record contains uncontroverted, relevant evidence establishing that there is at least a genuine issue of material fact as to whether the claim is “directed to” an abstract idea?

Cert. petition filed 1/9/18, waiver of respondent Intermec Technologies Corp. filed 3/9/18, conference 3/29/18. Petition denied 4/2/18.

CAFC Opinion, CAFC Argument

In re Chudik, No. 17-1072

Question Presented:

Was the petitioner, an applicant for a patent, denied a patent without due process of law, contrary to the doctrine of stare decisis and contrary to the deprivation of property provision in the United States Constitution's Fifth Amendment.

(1) when the United States Patent and Trademark Office and the Court of Appeals for the Federal Circuit held that a prior development described in a French patent application was capable of being modified, and thus corresponded to and vitiated the petitioner's claims to his invention, despite directly contrary holdings in Topliff v. Topliff, 145 U.S. 156 (1892), In re Wells, 53 F.2d 537 (C.C.P.A., 1931) and In re , 851 F.3d 1365 (Fed. Cir. 2017), and

(2) when the Court of Appeals also, in rejecting the claims in the petitioner's patent application, relied upon a paragraph of the application describing a different invention and thus departed from the holding in In re Man Mach. Interface Tech. LLC, 822 F.3d 1282 (Fed. Cir. 2016) that the terms in an inventor's patent claims should not be construed in a manner which contradicts the detailed description of the claimed invention in the inventor's written specification, and

(3) when the Court of Appeals also, in rejecting the claims in the petitioner's patent application, relied upon an irrelevant portion of its opinion in Catalina Marketing International, Inc. v. Coolsaving.com, 289 F.3d 801, 809, 810-811 (Fed. Cir. 2002), instead of following the relevant portion which approved the form of the petitioner's claims, and

(4) no reason was given for disregarding these authorities?

Cert. petition filed 1/30/18, waiver of respondent Joseph Matal, Interim Director, United States Patent and Trademark Office filed 2/14/18, conference 3/16/18. Petition denied 3/19/18.

CAFC Opinion, CAFC Argument

David Netzer Consulting Engineer LLC v. Shell Oil Co., No. 17-946

Questions Presented:

State action that is wholly arbitrary or irrational is a violation of the due process clause of the Fourteenth Amendment. Statute 28 U.S.C. § 1631 provides that it is mandatory and in the interest of justice that the Fifth Circuit must transfer a case once it determines that it does not have jurisdiction.  Since the congress conferred the mandatory right of transfer, the Fifth Circuit cannot arbitrarily and capriciously decide not to transfer an appeal without providing reasoned analysis.  In the present case, the Fifth Circuit failed to automatically transfer the appeal to the proper jurisdiction or provide a reasoned analysis. The lack of a reasoned analysis severely undermines petitioners procedural and substantive due process rights under the constitution.

The petition for a writ of certiorari presents the following issues:

  1. Whether the application of the statute by the Fifth Circuit amount to a deprivation of property interest without due process of law?
  2. Whether there is a Conflict of Law between the mandatory provision and the interest of justice provision of statute?

Cert. petition filed 12/29/17, waiver of respondent Shell Oil Company filed 2/2/18, conference 2/23/18. Petition denied 2/26/18.

No CA5 Opinion, No CA5 Argument

Wyeth LLC v. Rite Aid Corp., No. 17-771

Question Presented:

In FTC v. Actavis, Inc., 133 S. Ct. 2223 (2013), this Court held that a patentee who settles an infringement suit by making a “large” and “unexplained” payment to an alleged infringer in exchange for the competitor's agreement to refrain from entering the market is not protected by the antitrust immunity patentees otherwise enjoy. Actavis made clear, however, that its holding should not be construed as impinging upon any other “right” that the patent laws grant patentees, “whether expressly or by fair implication.” Id. at 2233. 

One such right granted by the patent laws is the right to grant a competitor an exclusive license—i.e., an authorization allowing the competitor to enter the market before patent expiry in exchange for payment from the competitor. See 35 U.S.C. §261. Despite Actavis' clear admonition that such rights should be respected, and notwithstanding the obvious differences between an exclusive license and the kind of “reverse payment” Actavis addressed, the Third Circuit held that a patente's decision to settle patent litigation by granting an exclusive license to the alleged infringer may trigger antitrust scrutiny, even when the license allows the competitor to enter the market before patent expiry, and even when the competitor provides robust consideration in exchange for its license.

The question presented is:

Whether a patentee's grant of an exclusive license to settle a single patent dispute may give rise to antitrust liability notwithstanding 35 U.S.C. §261. 

Cert. petition filed 11/20/17, waiver of respondent Rochester Drug Co-operative, Inc. filed 12/4/17, waiver of respondent Professional Drug Company, Inc. filed 12/13/17, conference 2/16/18. Petition denied 2/20/18.

CA3 Opinion, CA3 Argument

Pfizer Inc. v. Rite Aid Corp., No. 17-752

Question Presented:

In FTC v. Actavis, Inc., 133 S. Ct. 2223, 2233 (2013), this Court held that settlement agreements in which patentees make “large” and “unjustified” reverse payments to patent challengers “purely” to induce them to “give up the patent fight” may violate the antitrust laws.  But Actavis explained that “commonplace” and “traditional” patent settlements should not be subject to antitrust scrutiny, specifically identifying settlements where parties resolve competing damages claims through compromise or where a patentee grants a patent challenger early entry into a market.  In the decision below, the Third Circuit held that a settlement agreement resolving multiple disputes between a patentee and patent challenger, including the mutual compromise of an infringement claim and counterclaim for damages, should be subject to antitrust scrutiny.  In the Third Circuit's view, it was enough that a single term in the agreement, viewed in isolation, purportedly transferred value from the patentee to the patent challenger—regardless of consideration that was concededly also transferred in the opposite direction (to patentee) as part of the same settlement.

The question presented is:

Whether an antitrust complaint alleging a “large” and “unjustified” reverse payment settlement agreement states a plausible claim for relief when it cherry-picks among pieces of a larger agreement to conjure a purported transfer of value from a patentee to patent challenger, but does not account for the net flow of consideration.

Cert. petition filed 11/20/17, waiver of respondent American Sales Company, Inc. and Professional Drug Company, Inc. filed 12/13/17, conference 2/16/18. Petition denied 2/20/18.

CA3 Opinion, CA3 Argument

Mirowski Family Ventures, LLC v. Medtronic, Inc., No. 17-625

Question Presented:

Contracts—particularly corporate agreements—frequently provide for the prevailing party to receive its attorney's fees in the event of litigation. Federal Rule of Civil Procedure 54(d)(2)(A) provides: “A claim for attorney's fees . . . must be made by motion,” unless “require[d]” by the substantive law “to be proved at trial as an element of damages.” Such a “motion must[] be filed no later than 14 days after the entry of judgment,” unless a statute or order provides otherwise. Fed. R. Civ. P. 54(d)(2)(B)(i).

The Question Presented, about which the courts of appeals are deeply divided, is:

May a party seek contractual prevailing-party attorney's fees without filing a timely post-judgment motion under Rule 54(d)(2)? 

Cert. petition filed 10/27/17, waiver of respondent Medtronic et al. filed 11/1/17, response requested 11/16/17, waiver of respondents Boston Scientific Corp. and Guidant Corp. filed 11/27/17, conference 1/12/18. Petition denied 1/16/18.

CAFC Opinion, CAFC Argument

Li v. Matal, No. 17-761

Question Presented:

Whether the Extraterritoriality Doctrine of Dormant Commerce Clause is applicable for a state or a federal agent to directly regulate professional service wholly out of the state's or agent's territories. Professionals include, but not limited to accountants, architects, economists, engineers, medical doctors, nurses, lawyers, morticians, optometrists, real estate brokers, scientists, and surveyors. 

Cert. petition filed 11/6/17, waiver of respondent Joseph Matal filed 12/4/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, No CAFC Argument

Prism Technologies LLC v. T-Mobile USA, Inc., No. 17-716

Question Presented:

Whether a district court's factual findings in support of its holding that claims are directed to patent eligible subject matter may be reviewed de novo, as the Federal Circuit requires (and as the panel did in this case), or only for clear error, as Rule 52(a) and corollary Supreme Court precedent require.  

Cert. petition filed 11/9/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, CAFC Argument

Smartflash LLC v. Apple Inc., No. 17-697

Question Presented:

Whether patents that claim a specific arrangement of technological elements, claiming apparatuses and specific methods providing a technological solution to the problem of Internet data piracy, are patent eligible under 35 U.S.C. § 101 when they do not preempt alternative technological solutions. 

Cert. petition filed 11/9/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, CAFC Argument

Ali v. Carnegie Inst. of Washington, No. 17-655

Questions Presented:

  1. In Florida Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S. 627, 640 (1999), this Court struck down the Patent Remedy Act which held States liable for patent infringement and did so noting that “Congress identified no pattern of . . .constitutional violations” to show such legislation is warranted to force waiver of a state's Eleventh Amendment sovereign immunity. In the Federal Circuit case of Xechem Int'l, Inc. v. Univ. of Tex. M.D. Anderson Cancer Ctr., 382 F.3d 1324,1335 (Fed. Cir. 2004), cert. denied 543 U.S. 1149, (2005), that court held that states have sovereign immunity to inventorship corrective suit under 35 U.S.C. § 256, but Judge Newman noted in additional views that the States' increasing use of sovereign immunity was creating “an increasing urgency, as the states enter the private competitive arena governed by the laws of intellectual property, to establish fair relationships and just recourse.” In this action, the Federal Circuit affirmed the dismissal of a suit under 35 U.S.C. § 256 by an omitted inventor to correct inventorship on patents jointly owned by the state-entity University of Massachusetts and the private Carnegie Institution of Washington, with sovereign immunity for UMass barring joinder for the inventor to maintain the action against Carnegie. Both the lower District of Columbia District Court and Federal Circuit noted that the current law does not provide the omitted inventor with the possibility of “complete relief” due to UMass' sovereign immunity, providing the Petitioner no recourse. At what point do patent-owning States waive their sovereign immunity when they voluntarily participate in the patent system?
  2. The limited monopoly an inventor gains with the issuance of a patent is a right in equity without a monetary equivalent. By holding that States and their private patent co‑owners are immune to inventor-corrective suit under § 256, an omitted inventor has no way to obtain the equitable right to which he is entitled, and no state can provide the federal rights of a patent to the wronged inventor as compensatory damages for an unlawful taking. If Eleventh Amendment sovereign immunity is extended to allow patent-owning states to escape suits under § 256, how is this not a taking from wrongfully omitted inventors and a violation of due process of law under the Fourteenth Amendment?
  3. Carnegie is a private entity and does not have Eleventh Amendment sovereign immunity. If a State is allowed to essentially extend its sovereign immunity privilege to a private entity who co-owns a patent, how is this not a State granting a privileged status to select citizens and violative of the equal protection clause of the Fourteenth Amendment?
  4. The Constitution states at Art. 1, Sec. 8, that, “The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” 35 U.S.C. § 256 embodies this power of Congress and was specifically enacted to provide a judicial mechanism to correct inventorship in patents. Can Eleventh Amendment sovereign immunity subjugate Congress' express power under Art. 1, Sec. 8? 

Cert. petition filed 10/18/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, No CAFC Argument

RecogniCorp, LLC v. Nintendo Co., Ltd., No. 17-645

Questions Presented:

In Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), the Court set forth a two-step test for determining whether computer-implemented inventions claim patentable subject matter under 35 U.S.C. § 101. First, a court must determine whether the claims at issue are “directed to” an abstract idea. Second, if the claims are “directed to” an abstract idea, the court must then determine whether the claims recite inventive concepts—elements which ensure that the patent amounts to significantly more than a patent upon the abstract idea itself. 

The questions presented are:

  1. Whether computer-implemented inventions that provide specific improvements to existing technological processes for encoding or decoding data are patent-eligible under the first step of the Alice test, even if those inventions involve or make use of abstract ideas.
  2. Whether the use of new mathematical algorithms to improve existing technological processes by reducing bandwidth and memory usage can constitute “inventive concepts” under the second step of the Alice test.

Cert. petition filed 11/1/17, waiver of respondent Nintendo Co., Ltd. Filed 12/4/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, CAFC Argument

Kobe Properties SARL v. Checkpoint Systems, Inc., No. 17-519

Question Presented:

Does the Federal Circuit's sole post-Octane Fitness precedential decision reversing a trial court's discretionary fee award against a patent holder creating four new rigid tests conflict with this Court's clear directives in Octane Fitness and Highmark? Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014); Highmark Inc. v. Allcare Health Mgmt. Sys., 134 S. Ct. 1178 (2014).

Cert. petition filed 10/3/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, CAFC Argument

Chan v. Yang, No. 17-311

Questions Presented:

The Questions Presented by this Petition are:

  1. Whether the USPTO had exceeded its statutory authority in declaring and conducting an interference proceeding based on claims in a pending patent application that were neither directed to patent eligible subject matter under 35 U.S.C. § 101 nor in allowable form?
  2. Whether the Federal Circuit's affirmance without opinion in appeals from USPTO's decision violates 35 U.S.C. § 144? Should the determination of which USPTO appeals require a written opinion rather than a Fed. Cir. Rule 36 Judgment depend primarily on whether the written opinion might benefit further proceedings in the case in the USPTO?
  3. Whether the USPTO's practice to cancel the claims of an issued patent in an interference proceeding is unconstitutional, violating the Seventh Amendment and Article III?

Cert. petition filed 8/25/17, waiver of respondent Baizhen Yang, et al. filed 9/27/17, response requested 10/18/17, conference 1/5/18. Petition denied 1/8/18.

CAFC Opinion, CAFC Argument

  

Patent certiorari petitions denied in: 2017, 2016,  2015, 2014, 2013, 2012, 2011, 2010, 2009

For more information on this or other patent appeal matters, contact:

Joseph J. Mueller   +1 617 526 6396   joseph.mueller@wilmerhale.com
Thomas G. Saunders   +1 202 663 6536   thomas.saunders@wilmerhale.com
Leslie Pearlson   +1 617 526 6809   leslie.pearlson@wilmerhale.com