Patent Law and the Supreme Court: Patent Certiorari Petitions Denied in 2014

Question Presented:

This petition presents the same question as is presented in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., No. 13-854, currently pending before this Court:

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

Cert. petition filed 10/30/14, waiver of respondent Novel Laboratories, Inc. filed 11/5/14, conference 12/5/14. Petition denied 12/8/14.

CAFC Opinion, CAFC Argument

Question Presented:

Does the U.S. Constitution, in legal decisions based on 35 U.S.C. §§ 101/102/103/112,

• require instantly avoiding the inevitable legal errors in construing incomplete and vague classical claim constructions – especially for “emerging technology claim(ed invention)s, ET CIs” – by construing for them the complete/concise refined claim constructions of the Supreme Court's KSR/Bilski/Mayo/Myriad/Biosig/Alice line of unanimous precedents framework,

 

or does the U.S. Constitution for such decisions

• entitle any public institution to refrain, for ET CIs, for a time it feels feasible, from proceeding as these Supreme Court precedents require – or meeting its requirements just by some lip-service – and in the meantime to construe incomplete classical claim constructions, notwithstanding their implied legal errors?

Cert. petition filed 10/6/14, conference 12/5/14. Petition denied 12/8/14.

CAFC Opinion, CAFC Argument

Question Presented:

The patent statute states that the “patentee” shall have a remedy for patent infringement (35 U.S.C. § 281), and that an interest in a patent may be assigned by “an instrument in writing.” 35 U.S.C. § 261. Here, the Federal Circuit held that the U.S. distributor of a patented product had standing to recover lost profits damages for infringement on the ground that it was an “implied” exclusive licensee, even though no written or oral agreement conveyed to that entity any interest in the patent in suit.

The question presented is whether a distributor of a patented product, to which no interest in the patent has been assigned, has standing to recover damages for infringement.

Cert. petition filed 10/6/14, waiver of respondents Abbott GmbH & Co. KG, Abbott Laboratories filed 11/4/14, waiver of respondents Sanofi-Aventis Deutschland GmbH, et al. filed 11/6/14, conference 12/5/14. Petition denied 12/8/14.

CAFC Opinion, CAFC Argument

Question Presented:

The Federal Circuit below, relying on Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), declared that it reviews patent claim construction determinations without any deference. In accordance with that standard, the appellate court reversed the District Court's claim construction without deferring to its evaluation of extrinsic evidence and resolution of competing expert testimony. And the Federal Circuit ignored not only the District Court's analysis but also the parties' framing of the issues, employing de novo review to embrace a claim construction that Respondents had explicitly abandoned on appeal.

After the Federal Circuit issued its decision, this Court granted the petition for certiorari in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., No. 13-854 (Mar. 31, 2014), to consider the proper standard of appellate review for claim construction determinations.

The question presented is:

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

Cert. petition filed 8/22/14, conference 11/25/14. Petition denied 12/1/14.

CAFC Opinion, CAFC Argument

Question Presented:

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

The question presented is as follows:

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

Cert. petition filed 9/23/14, conference 11/25/14. Petition denied 12/1/14.

CAFC Opinion, CAFC Argument

Questions Presented:

This is a specific personal jurisdiction case in which the Respondents, Kabo Tool Company and Chih-Ching Hsieh (collectively “Plaintiffs”), alleged a single claim of patent infringement of a wrench design (U.S. Patent No. 7,066,057) against Petitioners, Porauto Industrial Co., Ltd; Accuaire Corp.; and Chih-Hsiang Hsu (collectively “Defendants”). Although Plaintiffs and Defendants are both based in Taiwan, where Plaintiffs have maintained a parallel litigation involving the same wrench design, the Federal Circuit refused to intervene and dismiss Defendants from a Nevada Federal District Court lawsuit due to a lack of specific personal jurisdiction. The parties agree that there is no general personal jurisdiction over Defendants.

The questions presented are:

1. Whether affidavits of counsel cannot provide a sufficient basis to subject Defendants to specific personal jurisdiction in Nevada for a case alleging patent infringement.
2. Whether the controlling Federal Circuit reasonable factors for determining specific personal jurisdiction in cases alleging patent infringement are limited by the stream of commerce theory set forth by the plurality opinion in Asahi Metal Industry Co., Ltd. v. Superior Court, 480 U.S. 102, 107 S. Ct. 1026 (1987).

Cert. petition filed 9/18/14, conference 11/25/14. Petition denied 12/1/14.

CAFC Opinion, CAFC Argument Not Available

Question Presented:

When a court sets aside a jury verdict and orders a new trial, the Seventh Amendment requires that all issues be retried "unless it clearly appears that the issue to be retried is so distinct and separable from the others that a trial of it alone may be had without injustice." Gasoline Prods. Co. v. Champlin Ref. Co., 283 U.S. 494, 500 (1931).

In this case, the Federal Circuit directed a retrial of Commil's claim that Cisco induced infringement of its patent, but forbade retrial of Cisco's claim that the patent was invalid, even though - as the Federal Circuit held - Cisco's good-faith belief of the patent's invalidity can negate the requisite intent for induced infringement.

The question presented is:

Whether, and in what circumstances, the Seventh Amendment permits a court to order a partial retrial of induced patent infringement without also retrying the related question of patent invalidity.

Cert. petition filed 2/27/14, conference 5/22/14, CVSG 5/27/14, brief amicus curiae of United States filed 10/16/14, conference 11/25/14. Petition denied 12/1/14.

CAFC Opinion, CAFC Argument

WilmerHale represents cross-petitioner Cisco Systems, Inc.

Questions Presented:

1. Whether the United States Court of Appeals for the Federal Circuit erred in finding that claim 9 of United States Patent No. 6,494,457 (the '457 patent) failed because it would have been obvious.
2. Whether the United States Court of Appeals for the Federal Circuit erred in finding that the district court did not abuse its discretion in refusing to permit plaintiffs to amend the complaint to include claim 1 of the '457 patent.

Cert. petition filed 9/9/14, conference 11/14/14. Petition denied 11/17/14.

CAFC Opinion, CAFC Argument

Question Presented:

The Declaratory Judgment Act, 28 U.S.C. § 2201, confers jurisdiction on the federal district courts to undertake early resolution of certain disputes in “case[s] of actual controversy.” For decades, this Court has taken a pragmatic approach in assessing the existence of an “actual controversy” of “sufficient immediacy and reality,” by considering “ 'all the circumstances.' ” MedImmune, Inc., v. Genentech, Inc., 549 U.S. 118, 126-27 (2007) (quoting Md. Cas. Co. v. Pac. Coal & Oil Co., 312 U.S. 270, 273 (1941)). The question presented is:

Whether the decision below, like other recent Federal Circuit decisions, unduly restricts Declaratory Judgment Act jurisdiction by refusing to consider extrinsic evidence demonstrating an actual controversy—including a defendant's answer and deposition testimony—and instead determining jurisdiction based solely on a hyper-technical reading of the complaint.

Cert. petition filed 9/12/14, waiver of respondent David Gillman, et al. filed 10/7/14, conference 11/7/14. Petition denied 11/10/14.

CAFC Opinion, CAFC Argument

Question Presented:

Does the U.S. Constitution, for a legal decision based on 35 U.S.C. §§ 101/102/103/112,

• require using the uniform refined claim construction framework set forth by the Supreme Court's line of KSR/Bilski/Mayo/Myriad/Biosig/Alice decisions, which overcomes the shortcomings of the classical claim construction as to emerging technology inventions, or does it
• entitle any one of the institutions PTO, district court, and CAFC to continue using the classical claim construction and its “broadest reasonable interpretation, BRIpto” of a claim, including refining both on its own – for meeting, as suitable for its business, emerging technology inventions' needs just 'in the light' of the above Supreme Court decisions.

 

Cert. petition filed 8/25/14, waiver of respondent Cisco Systems, Inc. filed 9/10/14, waiver of Federal respondent filed 9/11/14, conference 10/10/14. Petition denied 10/14/14.

CAFC Opinion, CAFC Argument

Question Presented:

In this patent case, the district court and the Federal Circuit combined to create a new way to summarily dismiss any patent case without having to review any of its merits.

After the submission of extensive post-trial briefing, the district court sua sponte found a new reason (not suggested by Medtronic) to support its Daubert conclusion that MFV's infringement expert was not “reliable” and, therefore, his trial testimony had to be stricken in its entirety.

However, the district court erred. Its supposed new reason was non-existent. MFV appealed, pointing this out. Medtronic did not disagree. (The new reason was that MFV's infringement expert supposedly had not covered in his report a claim element (a sense amplifier) that Medtronic did not even assert was not present in its accused products.)

Nonetheless, the Federal Circuit affirmed because, supposedly, it was within the district court's Daubert discretion to rely upon a non-existent reason to dismiss MFV's infringement case.

Question – Is a district court's Daubert discretion so unlimited that it can summarily dismiss a patentee's infringement case on the basis of a non-existent reason? If so, any patent infringement case can be similarly and summarily dismissed.

Cert. petition filed 7/6/14, waiver of respondents Medtronic, Inc. filed 8/13/14, waiver of respondents Boston Scientific Corp. and Guidant Corp. filed 8/20/14, conference 10/10/14. Petition denied 10/14/14.

CAFC Opinion, CAFC Argument

WilmerHale represents respondent Medtronic.

Questions Presented:

1. Did the United States Court of Appeals for the Federal Circuit err when, in reviewing claim construction for the underlying putative inventor matter on Patent No. 6,921,985, they ignored and contradicted the findings from their prior ruling on the same Patent No. 6,921,985 in the matter of Gen'l Electric Co. v. Int'l Trade Commission, 670 F.3d 1206 (Fed. Cir. 2012)?
2. Should the standard articulated by the Appellate Court – that in a Patent Inventor case, the fact-finding court need not review any third-party or corroborating evidence or apply the Rule of Reason test if it can first be found by a Judge that an inventor's testimony is not credible – be allowed to sit as the new standard in Patent Inventorship matters?
3. Does the judicial system demonstrate legitimacy in law where a lack of judicial accountability, as demonstrated in the underlying matter, allowed a disqualified federal judge to reinsert himself into the matter, even while the federal judge had an admitted financial interest in the party to whom the disqualified federal judge found in favor?
4. Does the judicial system demonstrate legitimacy in law where a lack of judicial accountability, as demonstrated in the underlying matter, allowed a disqualified federal judge to re-insert himself into a matter at the cronyistic behest of named local counsel, even while that federal judge had worked for and was recommended to the bench by the local counsel, and where the disqualified Judge is presiding over the subject matter where the named local council [sic] is a named defendant?

 

Cert. petition filed 8/6/14, waiver of respondents General Electric Co. filed 8/26/14, conference 9/29/14. Petition denied 10/7/14.

CAFC Opinion, CAFC Argument

WilmerHale represents respondent General Electric Co.

Questions Presented:

A district court may transfer an action to another venue for “the convenience of parties and witnesses, in the interest of justice.” 28 U.S.C. § 1404(a). In this case, as in many patent cases, the plaintiff filed suit in the Eastern District of Texas even though most of the relevant witnesses and evidence are located elsewhere.

The questions presented are:

1. Should a district court order a case transferred when most witnesses and evidence are located in the transferee venue?
2. Should an appellate court grant a writ of mandamus to correct an erroneous transfer of venue decision?

Cert. petition filed 7/11/14, waiver of respondent United States District Court for the Eastern District of Texas filed 7/24/14, conference 9/29/14. Petition denied 10/7/14.

CAFC Opinion, No CAFC Argument Available

Question Presented:

Rule 50 regulates challenges to sufficiency of the evidence. Petitioner, however, intended to appeal only legal issues. Because Rule 50 does not require filing of a JMOL motion to obtain de novo review of legal issues, he filed no such motion. Nonetheless, the Federal Circuit – after indicating JMOL motions are a precondition for de novo review – summarily affirmed the judgment. Did that court err in requiring Petitioner to file a JMOL motion – although Rule 50 establishes no such requirement – to obtain de novo review of his legal questions?

Cert. petition filed 7/7/14, conference 9/29/14. Petition denied 10/7/14.

CAFC Opinion, CAFC Argument

Question Presented:

The question presented is whether the principle set forth by this Court in KSR Int'l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), that when making an obviousness determination under 35 U.S.C. § 103 a court must provide an explicit analysis regarding whether there was an apparent reason to combine the known elements in the fashion claimed by the patent, also applies to design patents.

Cert. petition filed 7/1/14, conference 9/29/14. Petition denied 10/7/14.

CAFC Opinion, CAFC Argument

Questions Presented:

If some of the steps of a method claim are protected, however additional subsequently performed steps fall outside of the safe harbor, is the claim excluded by the § 271(e)(1)?

Does the Safe Harbor protection of 35 U.S.C. § 271(e)(1) extend to commercial activity which relies upon information previously submitted to the FDA but carries no additional reporting requirement?

Does the assertion of infringement by a product made by a process under 35 U.S.C. § 271(g) survive even if the process is protected by § 271(e)(1)?

Can steps performed as acts of infringement under 35 U.S.C. § 154 be combined with steps performed as acts of infringement under 35 U.S.C. § 271?

Cert. petition filed 6/20/14, waiver of respondent Somaxon Pharmaceuticals filed 7/2/14, conference 9/29/14. Petition denied 10/7/14.

CAFC Opinion, CAFC Argument

Question Presented:

The Patent Act provides that a person shall be entitled to a patent unless the invention was “in public use” in the United States more than one year before the filing of a U.S. patent application. 35 U.S.C. § 102(b) (2006). In Egbert v. Lippmann, this Court held that to constitute an invalidating public use, an invention must be used without restriction “for the purpose and in the manner designed by the inventor.” The Federal Circuit applied Egbert in Motionless Keyboard Co. v. Microsoft Corp., holding that the public-use bar of section 102(b) requires a use of the invention “for its intended purpose.”

In this case, the Federal Circuit interpreted “public use” as “public access,” holding that any disclosure that makes an invention “publicly accessible” triggers the public-use statutory bar to a U.S. patent. The court thus concluded that because Pronova provided samples of a chemical composition to a U.S. medical researcher, the patent in suit was invalid on public-use grounds irrespective of any actual “use” of the invention for its claimed and intended purpose as a pharmaceutical.

The question presented is whether the statutory bar for “public use” of an invention under section 102(b) (2006) (pre-AIA) (current version at 35 U.S.C. § 102(a)(1) (2012)) broadly bars a patent when an innovator company allows any public access to its invention even if the invention is not actually used in public for its intended purpose.

Cert. petition filed 4/16/14, conference 9/29/14. Petition denied 10/7/14.

CAFC Opinion, CAFC Argument

Question Presented:

Whether claims to a computerized expert system and method for evaluating treatment options for complex medical conditions which necessarily requires the use of computer, are patent eligible since they do not preempt all practical applications of an abstract idea of “guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition.”

Cert. petition filed 4/24/14, waiver of respondent SmartGene, Inc. filed 5/2/14, conference 6/5/14, response requested 6/2/14, conference 9/29/14. Petition denied 10/7/14.

CAFC Opinion, CAFC Argument

Question Presented:

35 U.S.C. § 103 and controlling precedent mandate that obviousness be assessed “at the time the invention was made” and that the scope and content of the prior art as a whole be evaluated in determining obviousness. 35 U.S.C. § 282 and controlling precedent further mandate that the patent challenger must prove obviousness by clear and convincing evidence, a burden that remains always on the challenger. Accordingly, the question presented is:

Whether the Federal Circuit, without considering the state of the prior art as of the patent's filing date, may presume that a lawfully issued patent is presumptively obvious under 35 U.S.C. § 103 and then place the burden of proof on the patentee to prove otherwise?

Cert. petition filed 5/7/14, waiver filed by respondent Tolmar, Inc. 5/12/14, conference 6/5/14. Petition denied 6/9/14.

CAFC Opinion, CAFC Argument

Question Presented:

1. 6th Circuit: Will this court solve the confusion of pleadings in a patent case? Is there more that has to be in the pleadings of a patent case or do the lower courts have to abide by the decision in:

 

Bell Atlantic Corp. v. Twombly, --- U.S. ----, 127 S.Ct. 1955, 1965, 167 L.Ed.2d 929 (2007) (quoting Conley v. Gibson, 355 U.S. 41, 47, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957)) ("Bell Atlantic") 4; see also Fed. R. Civ. P. Form 16 (2006) (setting forth a sample complaint for patent infringement that includes only the following elements: 1) an allegation of jurisdiction; 2) a statement that the plaintiff owns the patent; 3) a statement that defendant has been infringing the patent "by making, selling, and using [the device] embodying the patent"; 4) a statement that the plaintiff has given the defendant notice of its infringement; and 5) a demand for an injunction and damages); Conley, 355 U.S. at 47, 78 S.Ct. 99 (stating that "[the] illustrative forms appended to the Rules plainly demonstrate [the pleading requirements]"). It logically follows that a patentee need only plead facts sufficient to place the alleged infringer on notice as to what he must defend. See Bell Atlantic, 127 S.Ct. at 1971 n. 10 (stating "[a] defendant wishing to prepare an answer in the simple fact pattern laid out in Form 9 [in the Federal Rules of Civil Procedure] would know what to answer; a defendant seeking to respond to plaintiffs' conclusory allegations would have little idea where to begin."). Thus, a plaintiff in a patent infringement suit is not required to specifically include each element of the claims of the asserted patent.

Maty v. Grasselli Chemical Co., 303 U.S. 197 (1938)

"Pleadings are intended to serve as a means of arriving at fair and just settlements of controversies between litigants. They should not raise barriers which prevent the achievement of that end. Proper pleading is important, but its importance consists in its effectiveness as a means to accomplish the end of a just judgment."

Many [m]otions to dismiss or to strike could be avoided if the parties confer in good faith (as they are required to do under L. R. 7-3), especially for perceived defects in a complaint, answer or counterclaim which could be corrected by amendment. See: Chang v. Chen, 80 F. 3d 1293, 1296 (9th Cir. 1996) (where a motion to dismiss is granted, a district court should provide leave to amend).

Moreover, where a party has amended his Complaint once or a responsive pleading has been served, the Federal Rules provide that leave to amend should be "freely given when justice so requires." F[ed]. R. Civ. P. 15(a). The Federal Circuits require that this policy favoring amendment be applied with "extreme liberality." Morongo Band of Mission Indians v. Rose, 893 F.2d 1074, 1079 (9th Cir. 1990) [(e]mphasis added[).] Especially where there is a pro se litigant involved, the court must show how that the pro[ ]se litigant arguments are incorrect AND INSTRUCT THE PRO SE LITIGANT ON HOW TO REPAIR PLEADING. Sims v. Aherns, 271 S.W. 720 (1925) [(e)mphasis added[);] Roadway Express v. Pipe, 447 U.S. 752 at 757 (1982).

"Due to sloth, inattention or desire to seize tactical advantage, lawyers have long engaged in dilatory practices… [T]he glacial pace of much litigation breeds frustration with the Federal Courts and ultimately, disrespect for the law." Many [l]awyers have expressed to Petitioner of the confusion between the circuit courts on this issue. Also Petitioner's had quoted this case on a motion to amend the complaint to comply with the above and District court refused.

2. 6th Circuit: Especially when Petitioners actually requested it can the lower courts dismiss a case without telling the Plaintiff when in pro[ ]se what he has to add to the claim when dismissing for failure to state a claim and court refusing to address the question of supplemental jurisdiction and without allowing him to amend the complaint or does the lower courts have to comply with this court[']s decision in:

Conley v. Gibson, 355 U.S. 41 at 48 (1957)

"Following the simple guide of [R]ule 8(f) that all pleadings shall be so construed as to do substantial justice"… "The federal rules reject the approach that pleading is a game of skill in which one misstep by counsel may be decisive to the outcome and accept the principle that the purpose of pleading is to facilitate a proper decision on the merits." The court also cited Rule 8(f) FRCP, which holds that all pleadings shall be construed to do substantial justice.

Maty v. Grasselli Chemical Co., 303 U.S. 197 (1938)

"Pleadings are intended to serve as a means of arriving at fair and just settlements of controversies between litigants. They should not raise barriers which prevent the achievement of that end. Proper pleading is important, but its importance consists in its effectiveness as a means to accomplish the end of a just judgment."

Many [m]otions to dismiss or to strike could be avoided if the parties confer in good faith (as they are required to do under L. R. 7-3), especially for perceived defects in a complaint, answer or counterclaim which could be corrected by amendment. See: Chang v. Chen, 80 F. 3d 1293, 1296 (9th Cir. 1996) (where a motion to dismiss is granted, a district court should provide leave to amend).

Moreover, where a party has amended his Complaint once or a responsive pleading has been served, the Federal Rules provide that leave to amend should be "freely given when justice so requires." F[ed]. R. Civ. P. 15(a). The Federal Circuits require that this policy favoring amendment be applied with "extreme liberality." Morongo Band of Mission Indians v. Rose, 893 F.2d 1074, 1079 (9th Cir. 1990) [(e)mphasis added[). W]here there is a pro se litigant involved, the court must show how that the pro[ ]se litigant arguments are incorrect AND INSTRUCT THE PRO SE LITIGANT ON HOW TO REPAIR PLEADING. Sims v. Aherns, 271 S.W. 720 (1925) [(e]mphasis added[);] Roadway Express v. Pipe, 447 U.S. 752 at 757 (1982).

"Due to sloth, inattention or desire to seize tactical advantage, lawyers have long engaged in dilatory practices … [T]he glacial pace of much litigation breeds frustration with the Federal Courts and ultimately, disrespect for the law."

This question was asked because Petitioners had motioned the court to tell Petitioners what was missing in the complaint to state a claim and had motioned the court to amend the complaint where Judge Campbell stated that he was not required to tell Petitioners what was missing and refused to let Petitioners amend the complaint.

3. 11th Circuit. Here the question is about the Rooker[-F]eldmen doctrine. There was a ruling by the 11th [C]ircuit that was the opposite of the 6th [C]ircuit when it comes to the Rooker[-F]eldman doctrine and how does the court not violate the constitutional right of due process when Plaintiff paid the fee on appeal in the 11th [C]ircuit and then the docket stated the default was cured and then the court turned around and stated that they got the money late or does the court have to abide by the decision of this court:

Conley v. Gibson, 355 U.S. 41 at 48 (1957)

"Following the simple guide of [R]ule 8(f) that all pleadings shall be so construed as to do substantial justice"… "The federal rules reject the approach that pleading is a game of skill in which one misstep by counsel may be decisive to the outcome and accept the principle that the purpose of pleading is to facilitate a proper decision on the merits." The court also cited Rule 8(f) FRCP, which holds that all pleadings shall be construed to do substantial justice.

Cert. petition filed 1/6/14, conference 6/5/14. Petition denied 6/9/14.

No CA6 opinion available.

Question Presented:

Whether alternative holdings, each independently sufficient to sustain a judgment, all have preclusive effect in subsequent proceedings, as the Second, Third, Ninth, Eleventh, and D.C. Circuits hold, or whether none of them do, as the Fourth, Seventh, Tenth, and Federal Circuits hold.

Whether the mandate rule bars a party from relitigating an issue in the same case that was within the scope of a decision that was unequivocally affirmed.

Cert. petition filed 3/21/14, conference 5/29/14. Petition denied 6/2/14.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether issues of law impacting patent damages should be reviewed de novo - like all other issues of law - or whether they should be reviewed under the deferential substantial evidence standard.
2. Whether a patentee may obtain "lost profits" damages under a "two-supplier market" theory even when there are non-infringing alternatives.

Cert. petition filed 3/4/14, waiver by respondents Integrated Technology Corp., et al. filed 4/1/14, conference 4/25/14, response requested 4/22/14, conference 6/26/14. Petition denied 6/30/14.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether the Federal Circuit correctly held that a dispute between two States over ownership of patent rights may be adjudicated in a federal district court, despite this Court's exclusive jurisdiction over suits between States, as long as (1) the plaintiff-State sues only officials of the other State in their official capacity, and (2) the district court determines that the case does not implicate the core sovereign interests of the two States.
2. Whether a State can utilize the Ex parte Young doctrine to circumvent this Court's original and exclusive jurisdiction over controversies between States by amending its complaint to drop the defendant-State and add in its place state officials against whom the plaintiff-State seeks no relief, where the dispute concerns which State is the owner of disputed patent rights

Cert. petition filed 2/7/14, waiver by respondent University of Utah filed 3/19/14, response requested 3/31/14, conference 6/12/14. Petition denied 6/16/14.

CAFC Opinion, CAFC Argument

Question Presented:

Whether claims to computer-implemented inventions are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101?

Cert. petition filed 1/31/14, conference 5/2/14, conference 6/26/14. Petition denied 6/30/14.

CAFC Opinion, CAFC Argument

Question Presented:

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

Cert. petition filed 11/8/13, conference 2/21/14, conference 6/26/14. Petition denied 6/30/14.

CAFC Opinion, CAFC Argument

Question Presented:

Cross-petitioners Akamai Technologies, Inc. and the Massachusetts Institute of Technology (collectively, “Akamai”) respectfully file this conditional cross-petition for a writ of certiorari to review the judgment of the United States Court of Appeals for the Federal Circuit in this case. The Court should deny the petition for a writ of certiorari in No. 12-786 and, if the Court does so, it need not consider this cross-petition. If the Court grants that petition, however, it should also grant this conditional cross-petition so the Court can fully consider the question of liability for joint infringement, not just under one provision of the patent infringement statute (35 U.S.C. § 271(b)) as Limelight requests, but under all relevant provisions of that statute. The question presented by this conditional cross-petition is:

Whether a party may be liable for infringement under either 35 U.S.C. § 271(a) or § 271(b) where two or more entities join together to perform all of the steps of a process claim?

Cross-petition for cert. filed 2/1/13, conference 6/6/13, conference 6/13/13, conference 6/20/13, CVSG 6/24/13, brief of amicus United States filed 12/10/13, conference 1/10/14, conference 6/5/14. Petition denied 6/9/14.

CAFC Opinion, CAFC Argument

Question Presented:

Direct infringement of a U.S. patent occurs when a person “makes, uses, offers to sell, or sells any patented invention, within the United States,” or “imports into the United States any patented invention.” 35 U.S.C. § 271(a). Petitioner offered, negotiated, and agreed in Scandinavia to provide a Norwegian oil company with drilling services using Petitioner's oil rig. Consistent with the contract's express terms, before bringing the rig into or using it in U.S. waters, Petitioner modified it so that it did not infringe any U.S. patent.

The Federal Circuit nonetheless held that Petitioner offered to sell and sold an infringing rig “within the United States.” Although all of the relevant negotiations occurred overseas and Petitioner modified the rig to avoid any infringement in U.S. waters, the Federal Circuit held that entry into a service contract in Scandinavia violated U.S. patent law because the parties were U.S. companies and the contract contemplated performance in the United States. The Federal Circuit also extended U.S. patent law by deeming an offer to provide services using a rig to be an “offer to sell” or “sale” of the rig itself.

The question presented is:

Whether offering, negotiating, and entering into a contract in Scandinavia to provide services using a potentially patented device constitutes an “offer to sell” or “sale” of an actually patented device “within the United States,” under 35 U.S.C. § 271(a).

Cert. petition filed 7/8/13, conference 9/30/13, CVSG 10/7/13, petition dismissed, Rule 46, 5/21/14.

CAFC Opinion, CAFC Argument

Questions Presented:

Fresenius brought a declaratory judgment action challenging the validity of patents owned by Baxter, and Baxter counterclaimed for infringement. The district court held that Baxter's patents were valid and infringed, and entered judgment awarding past damages, an injunction, and a transitional royalty. The U.S. Court of Appeals for the Federal Circuit affirmed in part and reversed in part. The Federal Circuit held that claims 26-31 of U.S. Patent No. 5,247,434 are not invalid. But because it invalidated other claims of Baxter's patents, the court remanded solely for recalculation of the transitional royalty and reconsideration of the injunction. On remand, the district court recalculated the transitional royalty and again entered judgment for Baxter.

While Fresenius's second appeal was pending, the U.S. Patent and Trademark Office cancelled claims 26-31 of the '434 patent based on an ex parte reexamination requested by Fresenius. Over the dissent of four judges who would have granted rehearing en banc, the Federal Circuit held that the PTO's decision required reversal of the judgments against Fresenius.

The questions presented are:

1. Whether an Article III court's final judgment may be reversed based on the decision of an administrative agency.
2. Whether a final determination of liability that has been affirmed on appeal may be reversed based on the decision of an administrative agency merely because an appeal regarding the post-verdict remedy is pending.

Cert. petition filed 3/5/14, conference 5/15/14. Petition denied 5/19/14.

CAFC Opinion, CAFC Argument

WilmerHale represents petitioner Baxter International Inc.

Questions Presented:

Section 284 of the Patent Act provides that "the court may increase the damages up to three times the amount found or assessed" in a patent case (35 U.S.C. § 284) while Section 285 of the Patent Act provides that "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285. Current patent common law requires a finding of willful patent infringement before an enhanced damages assessment is made or, absent litigation misconduct, attorneys' fees are awarded to a prevailing patentee. The questions presented are as follows:

1. Whether a jury's finding that a party's litigating position is illegitimate or incredible for purposes of finding willfulness is subject to de novo review; and
2. Whether a determination that a defendant's litigation position is illegitimate or incredible suffices for a patentee to establish an exceptional case in the absence of litigation misconduct?

Cert. petition filed 2/18/14, conference 4/18/14, conference 5/2/14. Petition denied 5/5/14.

CAFC Opinion, CAFC Argument

WilmerHale represents respondent Medtronic, Inc.

Question Presented:

The Patent Act provides that "[a] patent shall be presumed valid" and that "[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity." 35 U.S.C. § 282. The United States Court of Appeals for the Federal Circuit held below that the Patent Trial and Appeal Board of the United States Patent and Trademark Office ("USPTO") did not commit legal error when it required Thomas, the patent holder, to prove that its own patents were valid over the prior art during an interference proceeding in which priority of invention was undisputed. The question presented is:

Whether the court of appeals erred in holding that Thomas, the patent holder, must carry the burden of persuasion against an invalidity challenge to his patents.

Cert. petition filed 3/21/14, waiver of respondent Pippin filed 4/2/14, conference 4/18/14. Petition denied 4/21/14.

CAFC Opinion, CAFC Argument

WilmerHale represents respondent Jack Pippin.

Questions Presented:

The Patent Act provides that a patent may not be obtained for a claimed invention that is "obvious." 35 U.S.C. § 103. The Federal Circuit held it was obvious to combine in a single bottle two eye-drop medications commonly used together and thus invalidated one patent. But it then went on to hold it not obvious to use that same combination as it was intended to be used because a result of such use was purportedly "unexpected." That sole "unexpected result" was the unremarkable fact that the combination outperformed one of its component medications taken alone, allowing for less frequent dosing. That was the only basis for nonobviousness.

Having upheld that method-of-use claim, the Federal Circuit then refused to decide the invalidity counterclaims of two additional patents that are virtually indistinguishable from the patent it already had invalidated. Even though these separate counterclaims had been appealed as of right and would rid the marketplace of two invalid patents, the Federal Circuit deemed it "unnecessary to address" them because their resolution would not affect the termination date of the injunction.

The questions presented are:

1. Whether and to what extent identification of an "unexpected result" of using an obvious composition, by itself, can render that use patentable.
2. Whether a court of appeals may sua sponte decline to decide appealed independent judgments as to counterclaims of patent invalidity.

 

Cert. petition filed 1/22/14, waiver of respondent Apotex, Inc. and Apotex Corp. filed 2/26/14, conference 3/28/14. Petition denied 3/31/14.

CAFC Opinion, CAFC Argument

Question Presented:

The district court construed the relevant cheese processing vat patent claim terms, including the terms "a plurality of sharp cutting edges disposed in a generally common first plane" and "a plurality of blunt stirring edges disposed in a generally common second plane" on cross motions for summary judgment and held as a matter of law that the accused devices did not literally satisfy those limitations, but that they were satisfied under the doctrine of equivalents. The district court also held as a matter of law that the relevant claims were not invalid, either on grounds of indefiniteness or prior art. On appeal the Federal Circuit supplanted what it characterized as the district court's "unduly limited" interpretation of the "generally common plane" limitations. Based on the Federal Circuit's broader interpretation of the claim language, and without permitting Petitioner to offer evidence or argument directed to the new, broadened construction, the panel held that the accused devices literally satisfied the "generally common plane" limitation, raising two issues:

1. Whether the United States Court of Appeals for the Federal Circuit exceeded its authority by adopting a broader claim interpretation than the district court, resulting in a broader scope of protection for the patentee, without the patentee having filed a cross-appeal directed to the district court's claim construction.
2. Whether the United States Court of Appeals for the Federal Circuit denied Petitioners' fundamental right to due process under the Fifth Amendment to the Constitution by holding that the accused device literally satisfies the "generally common plane" limitation based on its broadened interpretation of the claim language without affording Petitioners a meaningful opportunity to address the issues of literal infringement or indefiniteness in light of the panel's broadened claim construction.

 

Cert. petition filed 1/6/14, conference 3/21/14. Petition denied 3/24/14.

CAFC Opinion, CAFC Argument

Questions Presented:

This Court has repeatedly held that, to comply with Federal Rule of Civil Procedure 8(a), a plaintiff must plead a “plausible claim” for relief, including factual allegations sufficient to “allow[] the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678, 685 (2009); see Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). That standard, the Court has ruled, applies in “'all civil actions.'” Iqbal, 556 U.S. at 684 (quoting Fed. R. Civ. P. 1).

The Federal Circuit in this case held that a different standard applies to complaints alleging direct patent infringement. Under that standard, courts evaluate such complaints “by reference to Form 18 of the Appendix of Forms to the Federal Rules of Civil Procedure.” Form 18—a sample complaint added to the appendix of Forms in 1938—includes only five conclusory assertions: (1) the court has jurisdiction; (2) plaintiff owns a specified patent; (3) defendant has been infringing that patent by making, selling, and using a specified device embodying the patent; (4) plaintiff has notified the defendant of the infringement; and (5) plaintiff seeks specified relief.

The questions presented are:

1. Whether the court of appeals erred in holding that Form 18 “control[s]” over the pleading standard announced in Iqbal and Twombly.
2. If Form 18 does “control,” whether a complaint that omits and contradicts allegations required by Form 18 states a claim.

Cert. petition filed 11/18/13, conference 1/24/14. Petition denied 1/27/14.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Following a civil jury's verdict, whether the Court of Appeals for the Federal Circuit, in direct contravention of relevant precedent, may reverse the district court's denial of a motion for judgment as a matter of law of patent non-obviousness without applying the regional circuit's standard of review and in so doing, rely only upon contested evidence implicitly rejected by the jury and ignore substantial evidence supporting the jury's verdict, thereby depriving the jury verdict winner of its right to a jury trial under the Seventh Amendment.
2. With respect to commercial success as a secondary indicia of patent non-obviousness, whether a nexus is presumed between a patented invention and commercially successful products covered by the patent where the patent's claims are coextensive with the commercially successful products.
3. Whether, and to what extent, a court of appeals may review the sufficiency of the evidence supporting a civil jury verdict where the party requesting review made a motion for judgment as a matter of law under Rule 50(b) of the Federal Rules of Civil Procedure after the jury's verdict that had not been made by the party under Rule 50(a) before submission of the case to the jury.
4. Where a jury instruction was erroneous, may a court of appeals reverse a district court's finding that the erroneous instruction had no prejudicial effect, where the evidence cited by the district court showed that the issue addressed by the instruction was not contested at trial.

 

Cert. petition filed 11/5/13, conference 1/10/14. Petition denied 1/13/14.

CAFC Opinion, CAFC Argument

Question Presented:

In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966), this Court held that "[w]hile the ultimate question of patent validity is one of law," that question is premised on "several basic factual inquiries." Those inquiries include "the scope and content of the prior art" and the "differences between the prior art and the claims at issue." Id. In KSR International Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007), this Court reaffirmed that the Graham factual questions "continue to define the inquiry that controls" the determination of obviousness. The Federal Circuit in this case resolved disputes about these "basic factual inquiries" under the guise of determining the ultimate legal question.

The question presented is:

Whether the Federal Circuit's effective redefinition of obviousness as a pure question of law, allowing it to resolve disputed factual questions in the first instance on appeal, violates the Seventh Amendment and this Court's precedent.

Cert. petition filed 10/16/13, conference 1/10/14. Petition denied 1/13/14.

CAFC Opinion, CAFC Argument

WilmerHale represents petitioner Soverain Software LLC.

Questions Presented:

Based on the district court's constructions of the patent claim terms, a jury found that Cordis infringed Dr. Saffran's patent. A fractured panel of the Federal Circuit did not afford the district court's claim constructions deference, changed those constructions, and reversed the judgment of infringement. At the same time, the en banc Federal Circuit decided to reconsider the appropriate level of deference to district court claim constructions. See Lighting Ballast Control LLC v. Philips Elecs.N. Am. Corp., 500 F. App'x 951 (Fed. Cir. 2013). Dr. Saffran sought to have his case held or reconsidered in conjunction with Lighting Ballast, but the Federal Circuit refused. The questions presented are:

1. Whether the Federal Circuit should have given deference to the district court's factual findings in construing the patent claims.
2. Whether the Federal Circuit erred in arbitrarily subjecting two similar, concurrently pending cases to potentially different standards of review.

 

Cert. petition filed 9/30/13, conference 11/15/13, response requested 11/12/13, conference 1/24/14. Petition denied 1/27/14.

CAFC Opinion, CAFC Argument

Question Presented:

Petitioners are farmers and seed dealers who wish to avoid using or selling genetically engineered (GE) seed but are at an immediate and real risk of being contaminated by Respondents' patented GE seed and then accused of patent infringement by Respondents. This risk of being sued for patent infringement has compelled Petitioners to forgo full use of their land and adopt burdensome genetic testing in order to avoid being contaminated. To alleviate the need to undertake those precautions, Petitioners filed this action seeking a declaration that being contaminated by Respondents' GE seed does not render them liable for patent infringement. Petitioners also requested, but Respondents refused to grant, a covenant not to sue. The District Court dismissed, believing Petitioners must be at risk of suit to have standing. The Court of Appeals affirmed after finding Respondents mooted the case by making “binding assurances” to not make patent infringement claims against Petitioners contaminated up to 1%. However, Petitioners risk being contaminated in amounts much greater than 1%, and thus remain compelled to forgo full use of their land and adopt genetic testing of their seed supplies in order to avoid being accused of patent infringement by Respondents.

Given that non-GE farmers and seed dealers will inevitably be contaminated by Respondents' GE seed, and given Respondents' aggressive assertion of its patents on GE seed and refusal to grant Petitioners a covenant not to sue, do Petitioners have standing to seek a declaratory judgment that they will not be liable as infringers of Respondents' patents when contaminated?

Cert. petition filed 9/5/13, conference 1/10/14. Petition denied 1/13/14.

CAFC Opinion, CAFC Argument

Question Presented:

In this case, a jury found that respondent Fairchild Semiconductor committed patent infringement and induced infringement by others—in the United States—after it reverse-engineered and mass produced petitioner Power Integrations' patented technology for controller chips that are used in power supplies (or chargers) for consumer electronic devices such as smart phones. The jury also found that this U.S.-based infringement directly and foreseeably caused Power Integrations to lose sales of its chips worldwide, and the jury awarded $34 million in damages based on these lost profits and other injuries. The Federal Circuit set aside the jury's damages award, concluding that under the “presumption against extraterritoriality” patent damages can never be based on lost foreign sales of an infringing product, even when such lost sales are the direct and foreseeable result of patent infringement inside the United States.

The question presented is whether the Federal Circuit erroneously rejected the jury's damages verdict after holding—in direct conflict with the decisions of this Court—that a patent owner is barred from obtaining damages under 35 U.S.C. § 284 for lost sales outside the United States, even where those lost sales are the direct and foreseeable result of patent infringement inside the United States.

Cert. petition filed 8/23/13, response requested 9/19/13, conference 1/10/14. Petition denied 1/13/14.

CAFC Opinion, CAFC Argument

Question Presented:

“Claim construction is the single most important event in the course of a patent litigation. It … is often the difference between infringement and non-infringement, or validity and invalidity. Despite the crucial role that claim construction plays in patent litigation, our rules are still ill-defined and inconsistently applied, even by us. Commentators have observed that claim construction appeals are 'panel dependent' which leads to frustrating and unpredictable results for both the litigants and the trial court.” Retractable Techs., Inc. v. Becton, Dickinson & Co., 659 F.3d 1369, 1370 (Fed. Cir. 2011) (en banc) (Moore, Circuit Judge, with whom Rader, Chief Judge, joins, dissenting from the denial of the petition for rehearing en banc).

Each of the two questions presented below are directed to this “single most important event.”

1. Where a district court has resolved conflicting expert testimony to decide a claim construction issue, should this decision be reviewed on appeal with no deference?
2. Should the words of a patent claim be construed by their ordinary meaning (with a narrow exception) as the Federal Circuit holds or should they be construed according to the patent's specification as this Court has long held?

Cert. petition filed 3/4/13, conference 5/16/13, conference 1/24/14. Petition denied 1/27/14.

CAFC Opinion, CAFC Argument

WilmerHale represents respondent Medtronic, Inc.