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

Question Presented:

Whether the Federal Circuit’s issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent and Trademark Office violates 35 U.S.C. §144’s requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals.

The question is identical to that presented by the pending Petitions for writ of certiorari in Celgard, LLC v. Lancu (No. 16-1526) (question #2); C-Cation Tech., LLC v. Arris Group, Inc., et al. (No. 17-617) (question #2); Integrated Claims Sys., LLC v. Travelers Lloyds of Texas Ins. Co., et al. (No. 17-330) (question #2); and Stambler v. Mastercard International Inc. (No. 17-1140) (question #2).

Cert. petition filed 4/16/18, conference 6/21/18. Petition denied 6/25/18.

CAFC Opinion, CAFC Argument

Questions Presented:

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

Cert. petition filed 3/6/18, waiver of Shell Oil Company filed 4/5/18, conference 6/21/18. Petition denied 6/25/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes review—an adversarial process statutorily created in 2011 and used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury, especially for patents granted before inter partes review was created.

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

Cert. petition filed 3/16/18, petition dismissed pursuant to Rule 46 on 6/18/18.

CAFC Opinion, CAFC Argument

Questions Presented:

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

Cert. petition filed 1/25/18, waiver of respondent Coleman Cable, LLC filed 2/27/18, response requested 3/7/18, conference 6/14/18. Petition denied 6/18/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

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

Cert. petition filed 4/9/18, waiver of respondent Owens Corning filed 5/10/18, conference 6/7/18. Petition denied 6/11/18.

CAFC Opinion, CAFC Argument

Questions Presented:

The Supreme Court decision in Merck v. Integra, 125 S. Ct. 2372 (2005) left uncertainty as to the enforceability of research tools under 35 U.S.C. § 271(e)(1). The Supreme Court commented in Footnote 7 on p. 2382, “We therefore need not and do not-express a view about whether, or to what extent, 35 U.S.C. §271(e)(1) exempts from infringement the use of ‘research tools’ in the development of information for the regulatory process.” The CAFC has come to different conclusions on research tools used after marketing approval. Two CAFC panels arrived at opposite rulings (Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc., 686 F.3d 1348 (Fed. Cir. 2012), (Momenta Pharm., Inc. v. Teva Pharm. USA, Inc., 809 F.3d 610, 620 (Fed. Cir. 2015). In the current case the two separate CAFC panels came to a different opinion on the applicability of Telectronics Pacing Sys. v. Ventritex, Inc., 982 F.2d 1520, 1523-24 (Fed. Cir. 1992) to a research tool.

In the current case, in contrast to Momenta, the court ruled use of the research tool was “non-routine” and raises different questions than Momenta:

1. The CAFC has developed a litmus test to determine when 35 U.S.C. § 271(e)(1) applies to research tools used after marketing approval. The litmus test was introduced in Classen Immunotherapies, Inc. v. Biogen IDEC, 659 F.3d 1057 (Fed. Cir. 2011) “The statute does not apply to information that may be routinely reported to the FDA, long after marketing approval has been obtained. Id. at 1070.” In subsequent cases including the current case the CAFC has struggled with defining what constitutes “non-routinely” reported and thus protected by the safe harbor. The litmus test classifies something as “routine” if it is FDA required for ongoing FDA approval but “non-routine” if the post marketing use is not required by the FDA. Is the CAFC’s litmus test for research tools consistent with the law?
2. In this case, as opposed to Momenta’s case, the court granted safe harbor because Elan’s submissions to the FDA were deemed “non-routine” because they were necessary to update the Skelaxin product label and to change the FDA-approval process for generic versions of Skelaxin (Appx. 42a). What if the FDA recommends but does not require its use, is use still “routine”? Is this arbitrary?
3. As written and intended by Congress the safe harbor of 35 U.S.C. § 271(e)(1) is applied when (the whole) “invention” is used to for submission of data to the FDA. Is the CAFC’s decision in this case to extend the safe harbor under 35 U.S.C. § 271(e)(1), to inventions where one or more but not all steps of an invention creates or uses data submitted to the FDA, consistent with the law?
4. Is the CAFC’s decision to extend the safe harbor in this case to sale of product, where the product is claimed by process claims and where the process may utilize data submitted to the FDA, consistent with the law?

Cert. petition filed 3/26/18, conference 6/7/18. Petition denied 6/11/18.

CAFC Opinion, CAFC Argument

Questions Presented:

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

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

The questions presented are:

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

Cert. petition filed 1/16/18, waiver of respondent True Health Diagnostics LLC filed 2/16/18, response requested 3/7/18, conference 6/7/18. Petition denied 6/11/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

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

Cert. petition filed 3/6/18, waiver of respondent Homeland Housewares, LLC filed 3/12/18, response requested 3/27/18, conference 5/31/18. Petition denied 6/4/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

Whether interpartes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

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

Cert. petition filed 2/9/18, waiver of respondent SteadyMed Ltd. Filed 2/16/18, response requested 3/7/18, petition dismissed pursuant to Rule 46 on 6/4/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

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

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

Cert. petition filed 3/12/18. Petition denied 5/21/18.

CAFC Opinion, CAFC Argument

Questions Presented:

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

The questions presented are:

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

Cert. petition filed 1/16/18. Petition denied 5/14/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether the Patent and Trademark Office's decision invalidating Petitioner's patent in interpartes review violates the Reexamination Clause of the Seventh Amendment by overturning a jury's findings of facts in the prior district court action, Personal Audio, LLC v. CBS Corp., C.A. No. 2:13-cv-270 (E.D. Tex. Apr. 11, 2013).
2. Whether interpartes review—an adversarial process used by the Patent and Trademark Office to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 1/30/18, waiver of respondent Electronic Frontier Foundation filed 2/15/18, response requested 3/6/18. Petition denied 5/14/18.

CAFC Opinion, CAFC Argument

Questions Presented:

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

Cert. petition filed 3/26/18, waiver of right of respondents SNF, Inc., et al. filed 4/3/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

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

Cert. petition filed 1/22/18, conference 3/29/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

Cert. petition filed 1/19/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

Cert. petition filed 11/27/17, response requested 1/19/18, conference 3/23/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

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

Cert. petition filed 11/21/17, waiver of respondent Alliance of Rare-Earth Permanent Magnet Industry filed 12/13/17, response requested 12/29/17, conference 3/2/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Questions Presented:

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

Cert. petition filed 11/20/17, waiver of respondent Zhongshan Broad Ocean Motor Co., et al. filed 12/8/17, conference 2/23/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

Cert. petition filed 11/3/17, waiver of respondent DOT Hill Systems, Corp. filed 12/14/17, response requested 1/2/18, conference 4/13/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

Cert. petition filed 11/3/17, response requested 1/3/18, conference 4/13/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

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

Cert. petition filed 10/23/17, waiver of respondent Mitchell International, Inc. filed 11/27/17, response requested 12/11/17, conference 2/16/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether inter partes review - an adversarial process used by the Patent and Trademark Office (USPTO) to analyze the validity of existing patents - violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
2. Whether the Federal Circuit's issuance of Rule 36 judgments without opinions for the disposition of appeals from the USPTO violates 35 U.S.C. § 144's requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals.

The first question is identical to that presented in Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017). The second question is identical to that presented in In re: Celgard, LLC, No. 16-1526 (question #2, petition pending).

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

Cert. petition filed 10/24/17, conference 1/5/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

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

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

Whether covered business method review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

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

Cert. petition filed 10/10/17, motion to defer consideration of the petition filed by petitioner 10/10/17, waiver of respondent VigiLink, Inc., Skimlinks, Inc., and Skimbit, Ltd. Filed 12/12/17, conference 1/5/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether covered business method review—an adversarial process used by the Patent Trial and Appeal Board of the Patent and Trademark Office to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 10/10/17, conference 1/12/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

Cert. petition filed 9/14/17, conference 1/5/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

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

Cert. petition filed 9/5/17, conference 1/5/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Questions Presented:

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

Cert. petition filed 9/1/17, conference 1/5/18, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented (same Question Presented in each petition):

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

Cert. petition filed 8/7/17, waiver of respondent Ford Motor Co. filed 9/6/17, response requested 9/26/17, conference 12/8/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

Whether a reexamination proceeding—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 8/3/17, conference 12/1/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

Whether a reexamination proceeding—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 8/3/17, conference 12/1/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

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

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

Cert. petition filed 8/2/17, conference 1/5/18, conference 4/27/18. Petition denied 4/30/18.

No CAFC Opinion, No CAFC Argument

Question Presented:

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

Cert. petition filed 7/28/17, conference 11/3/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17, conference 12/8/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17, conference 12/8/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17, conference 12/8/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17, conference 12/8/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

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

Cert. petition filed 7/14/17, conference 10/27/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

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

Cert. petition filed 7/14/17, waiver of respondent Samsung Electronics Co., et al. filed 8/14/17, response requested 8/17/17, conference 11/21/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

Cert. petition filed 7/21/17, conference 10/27/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

Whether inter partes reexamination—an adversarial process used by the Patent Trial and Appeal Board (PTAB) of the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 7/5/17, conference 10/6/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Questions Presented:

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

Cert. petition filed 6/19/17, conference 9/25/17, conference 4/27/18. Petition denied 4/30/18.

CAFC Opinion, CAFC Argument

Question Presented:

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

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

The question presented is:

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

Cert. petition filed 3/5/18, waiver of respondent United States filed 4/2/18, waiver of respondents Jeremy clark, et al. filed 4/3/18, conference 4/20/18. Petition denied 4/23/18.

CAFC Opinion, CAFC Argument

Questions Presented:

This Petition presents the following questions:

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

Cert. petition filed 2/20/18, waiver of respondent NBA Media Ventures, et al. filed 3/29/18, conference 4/20/18. Petition denied 4/23/18.

CAFC Opinion, CAFC Argument

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