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

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

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

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

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

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

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

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

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

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

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

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