Patent Law and the Supreme Court: Certiorari Petitions Pending

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

ParkerVision Inc. v. Qualcomm Incorporated, No. 15-1092Question Presented:Whether and under what circumstances an inconsistency in expert testimony permits a court to set aside a jury verdict and grant the losing party judgment as a matter of law.Cert. petition filed 2/29/16, waiver of respondent Qualcomm Incorporated filed 3/8/16, conference 3/25/16.CAFC Opinion, CAFC ArgumentTaş v. Beachy, No. 15-1089Questions Presented:Concerning a patent application claiming a new drug treatment of tumor-bearing human that produces a specific effect in the tumor cells and shrinkage or disappearance of the tumor, the Patent Trial and Appeal Board (PTAB) decided that the statement of a paragraph copied from patent disclosures of others about uses of different compounds provides written description despite no evidence in the specification of the application for the claimed treatment and despite express teaching against the claimed effect on the basis of the described findings that teach also against the claimed therapeutic results. PTAB held that stating a disease as being treatable by administering a drug compound without evidence for the treatment and without specifying the conditions under which the claimed therapeutic results can be produced can satisfy 35 U.S.C. § 112, paragraph 1. On appeal Federal Circuit held that PTAB correctly decided.The question presented is:Is not a patent claiming a new drug treatment required to provide evidence for that treatment, and is not a drug treatment patent without evidence of it at discord with the requirement of factual evidence for a proposed new drug treatment under 21 U.S.C. § 355 for its approval and with the required supplying of patent information about it by 21 U.S.C. § 355 and also impediment to the development of the new drug treatments prescribed by the statute?Cert. petition filed 2/25/16.CAFC Opinion, No CAFC ArgumentWesternGeco LLC v. ION Geophysical Corp., No. 15-1085Questions 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: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).Whether the Court should hold this Petition for Halo and Stryker.Cert. petition filed 2/26/16.CAFC Opinion, CAFC ArgumentHemopet v. Hill's Pet Nutrition, Inc., No. 15-1062Questions Presented:Section 101 of Title 35 defines patentable subject matter to include “any new and useful process . . . or any new and useful improvement thereof.” Other provisions of Title 35 set forth specific conditions and requirements for the issuance of the patent itself, including that the description in the patent be sufficient “to enable any person skilled in the art to which it pertains” to make and use the invention. 35 U.S.C. § 112(a). The invention at issue in this case is a novel method for identifying, formulating, and producing pet food tailored to the genomic characteristics and gene expression of individual dogs and cats.The questions presented are:Is an invented method of producing a new class of products patent-eligible under § 101 where it applies a groundbreaking insight of the inventor by using techniques in a novel and previously unknown combination to produce a previously unknown result?Whether the courts below erroneously conflated the patent-eligibility requirements of § 101 with the “enablement” requirements of § 112(a), thereby avoiding the more detailed analysis required under § 112 and denying overall patent eligibility on grounds not consistent with § 101 or this Court's precedents?Cert. petition filed 2/18/16.CAFC Opinion, CAFC ArgumentBriartek IP, Inc. v. Delorme Pub. Co. Inc., No. 15-1025Question Presented:Congress has empowered three different entities to resolve patent disputes: the United States Patent and Trademark Office (PTO), the International Trade Commission (ITC), and the federal district courts. Although all three venues are open to a party ab initio, proceedings before a given venue may limit a party's options throughout all three bodies. Critically, ITC investigations are often resolved through the entry of consent orders that limit how a party may challenge a patent's validity going forward.The question presented is as follows:Whether a binding consent order, entered between the federal government, the ITC, and an ITC respondent, deprives federal district courts of jurisdiction over a declaratory judgment action, seeking to invalidate the patent at issue, filed by the ITC respondent not against the ITC but rather against the patent holder: a non-party to the consent order.Cert. petition filed 2/10/16, waiver of respondent DeLorme Publishing Company, Inc. filed 2/17/16, conference 3/18/16.CAFC Opinion, CAFC ArgumentClick-To-Call Technologies, LP v. Oracle Corporation, No. 15-1014Questions 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: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.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.CAFC Opinion, No CAFC ArgumentMedinol Ltd. v. Cordis Corp., No. 15-998Question 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.CAFC Opinion was unpublished, No CAFC ArgumentLimelight Networks, Inc. v. Akamai Technologies, Inc. , No. 15-993Question Presented:In Limelight Networks, Inc. v. Akamai Technologies, Inc., 134 S. Ct. 2111 (2014), this Court noted that, under existing Federal Circuit law, “a method's steps have not all been performed as claimed by the patent unless they are all attributable to the same defendant, either because the defendant actually performed those steps or because he directed or controlled others who performed them.” Id. at 2117. This Court then held that, on the assumption that rule was correct, “there has simply been no infringement of the method [at issue in this case], because the performance of all the patent's steps is not attributable to any one person.” Id.After remand, the en banc Federal Circuit reiterated that “[d]irect infringement under § 271(a) occurs where all steps of a claimed method are performed by or attributable to a single entity.” App. 25a. But it nevertheless unanimously held that Limelight could be held liable for direct infringement of Akamai's method patent—despite this Court's prior holding and even though nine out of the ten en banc court judges had previously held that Limelight could not be held liable under that rule. In so ruling, the Federal Circuit adopted a patent-specific conduct-attribution rule divorced from traditional vicarious-liability standards.The question presented is:Whether the Federal Circuit erred in holding that a defendant may be held liable for directly infringing a method patent based on the collective performance of method steps by multiple independent parties, even though the performance of all the steps of the method patent is “not attributable to any one person” under traditional vicarious-liability standards. Limelight, 134 S. Ct. at 2117.Cert. petition filed 1/26/16.CAFC Opinion, CAFC ArgumentWilmerHale represents respondents Akamai Technologies, Inc. et al.MPHJ Technology Investments, LLC v. State of Vermont , No. 15-988Question Presented:Whether, pursuant to this Court's precedent in Ruhrgas Ag v. Marathon Oil Co., 526 U.S. 574 (1999) this case should be dismissed for lack of personal jurisdiction.Conditional cross-petition filed 1/29/16.CAFC Opinion, CAFC ArgumentJoao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc. , No. 15-974Questions Presented:Did the District Court and Federal Circuit err by not identifying any abstract idea to which the claims-in-suit were directed, thereby misapplying step one of the Mayo/Alice test for patentability under 35 U.S.C. § 101?Did the District Court and Federal Circuit err by failing to consider the components recited in the claims-in-suit as an ordered combination, thereby misapplying step two of the Mayo/Alice test for patentability under 35 U.S.C. § 101?Did the District Court and Federal Circuit err by ignoring unrebutted evidence that the elements of the claims-in-suit recited specific components that, when viewed in combination at the time of the application, comprised a non-conventional solution to a problem created by internet banking, thereby misapplying steps one and two of the Mayo/Alice test for patentability under 35 U.S.C. § 101?Did the District Court and Federal Circuit err by ignoring unrebutted evidence that the inventions of the claims-in-suit do not monopolize any abstract idea, thereby undermining the fundamental premise of the Mayo/Alice test for patentability under 35 U.S.C. § 101?Cert. petition filed 1/11/16, waiver of respondent Jack Henry & Associates filed 2/22/16, conference 3/18/16.CAFC Opinion, CAFC ArgumentCooper v. Lee , No. 15-955Question Presented:Nearly 30 years have passed since this Court last applied Article III Separation of Powers principles to declare the authority of Congress to empower an executive agency to adjudicate a private dispute. More recently in a non-agency context, in Stern v. Marshall, 131 S. Ct. 2594 (2011), Justice Scalia's concurring opinion questioned the “multifactors relied upon today [that] seem to have entered our [public rights] jurisprudence almost randomly.” Id. at 2621 (Scalia, J., concurring). The two other Stern opinions (majority and dissent) have all members of this Court expressing dissatisfaction with the clarity of Article III public rights jurisprudence: either it “has not been entirely consistent,” id. at 2611 (majority), or preceding cases “do not admit of easy synthesis.” Id. at 2624 (dissent) (citation omitted). Congress continues to pass laws against this murky backdrop, risking inappropriate expansion of the administrative state.The question presented is whether 35 U.S.C. §318(b) violates Article III of the United States Constitution, to the extent that it empowers an executive agency tribunal to assert judicial power canceling private property rights amongst private parties embroiled in a private federal dispute of a type known in the common law courts of 1789, rather than merely issue an advisory opinion as an adjunct to a trial court.Cert. petition filed 1/21/16.CAFC Opinion was unpublished, No CAFC ArgumentSCA Hygiene Products v. First Quality Baby Products, LLC , No. 15-927Question 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.CAFC Opinion, CAFC ArgumentMorales v. Square, Inc., No. 15-896Questions Presented:Whether, The Due Process clause of the Fifth Amendment requires judges to recuse themselves not only when actual bias has been demonstrated or when the judges have an economic interest in the outcome of the case, but also when extreme facts create a probability of bias, or create a probability of incompetence to rule.Whether, The patent claim in this case should be used to constrain the freedom of interpretation of Alice Corp. Pty. Ltd. [v. CLS Bank Int'l, 134 S. Ct. 2347 (2014)], to find a claim to be invalid under §101.Cert. petition filed 12/11/15, conference 3/18/16.CAFC Opinion, No CAFC ArgumentState of Vermont v. MPHJ Technology Investments, LLC, No. 15-838Question Presented:In the America Invents Act, Congress amended the jurisdictional statutes relating to patent cases in response to this Court's decision in Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 U.S. 826 (2002). In Holmes Group, the Court held that a defendant's compulsory counterclaim for patent infringement did not establish “arising under” jurisdiction for purposes of the Federal Circuit's appellate jurisdiction under 28 U.S.C. § 1295. The America Invents Act amended § 1295(a) to provide Federal Circuit jurisdiction over an appeal from a final decision of a district court “in any civil action arising under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents.” Here, the Federal Circuit considered whether § 1295(a) afforded jurisdiction over an appeal from a district court order remanding this consumer-protection case to state court for the second time. The Federal Circuit interpreted § 1295(a) to provide jurisdiction based solely on a “counterclaim” that asserts federal preemption as a defense to the State's claim. The Federal Circuit reached—and wrongly decided—this jurisdictional issue despite holding that there were no grounds for the defendant's second removal to federal court. The question presented is:Did the Federal Circuit erroneously take jurisdiction over this appeal of the remand order?Cert. petition filed 12/28/15.CAFC Opinion, CAFC ArgumentSamsung Electronics Co., Ltd. v. Apple Inc., No. 15-777Questions 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.CAFC Opinion, CAFC ArgumentWilmerHale represents respondent Apple Inc.Interval Licensing LLC v. Lee, No. 15-716Question Presented:Can the Patent and Trademark Office appropriately apply the “broadest reasonable interpretation” standard in construing patent claims in post-grant validity challenges?Cert. petition filed 11/27/15.CAFC Opinion, CAFC ArgumentDaiichi Sankyo Co., Ltd. v. Lee, No. 15-652Questions Presented:1. Whether the Patent and Trademark Office could properly rely on the limitations period for judicial review in denying administrative review to correct its own acknowledged errors, resulting in the loss of rights guaranteed by Congress.2. Whether the limitations period for judicial review of the Patent and Trademark Office's final agency action is the six-year period made generally applicable by the Administrative Procedure Act, or a 180-day period that Congress established for review of an interim decision..Cert. petition filed 11/13/15, conference 3/25/16.CAFC Opinion, CAFC ArgumentInnovention Toys, LLC v. MGA Entertainment, Inc., No. 15-635Questions 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.CAFC Opinion, CAFC ArgumentBiogen MA, Inc. v. Japanese Foundation for Cancer Research, No. 15-607Question Presented:Whether the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), eliminated federal district courts' jurisdiction over patent interference actions under 35 U.S.C. § 146.Cert. petition filed 11/9/15, conference 3/18/16.CAFC Opinion, CAFC ArgumentWilmerHale represents respondents Japanese Foundation for Cancer ResearchRetirement Capital Access Management Co. LLC v. U.S. Bancorp, No. 15-591Questions Presented:In 2011, Congress enacted the Leahy-Smith America Invents Act (hereinafter “AIA” or “the Act”), Pub. L. No. 112-29, 125 Stat. 284 (2011). The Act created three new post-grant administrative proceedings for challenging the validity of patents. It also created within the Patent and Trademark Office (“PTO”) a new tribunal called the Patent Trial and Appeal Board (hereinafter the “Board”) to preside over these new proceedings. One of the newly created proceedings is the transitional post-grant review, also known as “covered business method” or “CBM” review, for patents directed to a financial product or service. The AIA limits the Board's jurisdiction with respect to CBM review to challenges based on any ground that could be raised under paragraph (2) or (3) of 35 U.S.C. § 282(b). Paragraph 2 provides that a party may seek to invalidate a patent or claim on any ground specified in part II of Title 35 as a condition for patentability.The questions presented arise from the Federal Circuit affirming, without comment, the Board's holding that 35 U.S.C. § 101 is a ground specified in part II of Title 35 as a condition for patentability and therefore constitutes a proper basis for review in a CBM proceeding, and from the Federal Circuit affirming the Board's application of § 101 to the patent claims at issue. They are:1. Whether subject matter eligibility under 35 U.S.C. § 101 is a ground specified as a condition for patentability under 35 U.S.C. § 282(b)(2).2. Whether the Board errs when it invalidates issued patent claims posing no risk of preemption under the abstract idea exception to patent eligibility.Cert. petition filed 11/5/15.CAFC Opinion, CAFC ArgumentLife Technologies Corp. v. Promega Corp., No. 14-1538Questions 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: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).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 salesCert. petition filed 6/26/15, conference 9/28/15, CVSG 10/5/15.CAFC Opinion, CAFC ArgumentWilmerHale represents respondent Promega Corporation

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