Question Presented:

In SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, 137 S. Ct. 954 (2017), this Court recently examined 35 U.S.C. § 282(b), which enumerates the defenses that may be raised in a patent litigation, and held that laches, which is not recited in § 282(b), is not a defense to patent damages within the statute of limitations set forth in 35 U.S.C. § 286. This case again requires the Court to examine § 282(b) in order to determine whether patent ineligibility under 35 U.S.C. § 101, which, like laches, is not recited in § 282(b), is similarly not a defense that may be raised in a patent litigation.

The question presented is:

1. Is patent ineligibility under 35 U.S.C. § 101, which Congress did not codify in 35 U.S.C. § 282(b), not a cognizable defense in a patent litigation?

Cert. petition filed 11/6/17, conference 12/8/17. Petition denied 12/11/17.

CAFC Opinion, CAFC Argument

Questions Presented:

In Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), this Court sought to clarify the proper approach to issues of “abstractness” under Section 101 of the Patent Act, while emphasizing the need to “tread carefully in construing this exclusionary principle lest it swallow all of patent law.” Id. at 2354. Unfortunately, many district courts—including in this case—have interpreted Alice as authorizing invalidation of issued patents on abstractness grounds based solely on the pleadings, even where the invalidation rests on resolution of a disputed issue of fact or of claim construction or scope. Although this over-reading of Alice has been widely criticized by patent commentators, it has often been abetted, as here, by the Federal Circuit.

The questions presented are:

1. Whether Alice authorizes a district court to invalidate a patent solely on the pleadings based on an abstractness argument that depends upon one view of a disputed question of fact—notwithstanding the presumption of patent validity in Section 282 of the Act and settled procedural and Seventh Amendment safeguards that ordinarily prevent the resolution of such questions on the pleadings.
2. Whether Alice and its predecessors authorize a court to invalidate a patent on the pleadings based on one view of a disputed question of claim construction or scope—including (in Alice's words) what the claims “are directed to”—notwithstanding the presumption of patent validity and the general principle that, on a motion to dismiss, any legal instrument must be construed in the light most favorable to the non-moving party. 

Cert. petition filed 10/23/17, waiver of respondent Sprint Nextel Corp. et al. filed 10/31/17, conference 12/1/17. Petition denied 12/4/17.

CAFC Opinion, CAFC Argument

Question Presented:

The United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards (the “New York Convention”), as incorporated into Chapter 2 of the Federal Arbitration Act (“FAA”), 9 U.S.C. 201 et seq., authorizes a U.S. court to decline recognition and enforcement of an arbitral award that “would be contrary to the public policy” of the United States. Here, recognition and enforcement of a $455 million arbitral award based on duplicative and expired patents is contrary to the U.S. public policy that patents are granted only for “limited Times.” But the Federal Circuit held that award enforceable, ruling that a court may not entertain a public-policy challenge in the absence of a prior judicial decision on nearly identical facts.

The question presented is:

Whether a federal court must independently determine whether recognition and enforcement of an arbitral award under the New York Convention would be contrary to the public policy of the United States.

Cert. petition filed 9/11/17, conference 12/1/17. Petition denied 12/4/17.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether, in reviewing an award of attorneys' fees under 35 U.S.C. § 285, the Federal Circuit improperly created a rigid distinction between subjective and objective factors by refusing to consider a company's diligent investigation and receipt of advice that it had plausible claims as evidence not only showing good faith but also bearing on whether its claims were exceptionally meritless.
2. Whether the Federal Circuit improperly diluted the “exceptionally meritless” standard for awarding attorneys' fees established by Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014), effectively permitting fee awards as a matter of course in fraud actions, and thus deterring litigants from uncovering misconduct.

Cert. petition filed 10/13/17, waiver of respondent Dow Chemical Co. filed 10/20/17, conference 11/21/17. Petition denied 11/27/17.

CAFC Opinion, CAFC Argument

WilmerHale represents petitioner Nova Chemicals Corp. (Canada).

Questions Presented:

1. Whether is it lawful to apply the same evidence in the same case twice, once as true and next as false, wherein the Federal Circuit conflicts the USPTO Appeal Board which has concurred with certain evidence as true (grants patent rights in one of the claims) and the Federal Circuit cites the same evidence as false when ruled on combined teachings, short of the Board overruling its own decision?
2.  Whether the Federal Circuit err outlandishly claiming that an apparatus employed as a relay (to receive and retransmit) is able to initiate a commercial transaction and in fact is relay able to initiate anything, period? 

Cert. petition filed 10/5/17, waiver of respondent Joseph Matal filed 10/23/17, conference 11/21/17. Petition denied 11/27/17.

CAFC Opinion, No CAFC Argument

Question Presented:

To be patent eligible, a patent must claim “the means or method of producing a certain result, or effect, and not [the] result or effect produced.”  Corning v. Burden, 56 U.S. 252, 267-68 (1854). This principle has driven this Court's patentable subject matter jurisprudence for over 150 years, including most recently the “search for an inventive concept” described in the second step of the Alice/Mayo framework. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014) (quoting Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 72 (2012)). Because a patent's claims define the scope of the invention, this Court stated in both Alice and Mayo that this second step of the eligibility analysis turns on what is “in the claims.” 134 S. Ct. at 2355; 566 U.S. at 78.

The question presented is: Whether the Federal Circuit erred by looking beyond the claims to the patent specification to assess patent eligibility?

Cert. petition filed 7/24/17, conference 11/21/17. Petition denied 11/27/17.

CAFC Opinion, CAFC Argument

WilmerHale represents respondents Amdocs Ltd.  

Question Presented:

Whether the burden of establishing damages for patent infringement under a cost-savings theory can be placed on the defendant rather than the patentee, contrary to the decisions of this Court and earlier decisions of the US Court of Appeals for the Federal Circuit.

Cert. petition filed 9/21/17, waiver of respondent Prism Technologies LLC filed 10/6/17, conference 11/3/17. Petition denied 11/6/17.

CAFC Opinion, CAFC Argument

Questions Presented:

This petition presents three questions of great importance to patent law that arise from the decisions of a deeply divided Federal Circuit:

1. Do this Court''s decisions in Graham v. John Deere Co., 383 U.S. 1 (1966), and KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), require a court to hold patents obvious as a matter of law under 35 U.S.C. § 103 where the patents make at most trivial advances over technologies well-known to a person of skill in the art?
2. Does this Court''s decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), require application of the four-factor test for injunctions in accordance with traditional equitable principles, and therefore require more than merely “some connection” between an infringing feature and asserted irreparable harm to support issuance of an injunction for patent infringement?
3. Does this Court''s decision in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), require evidence that an accused product meets all elements of the relevant claim to support entry of a judgment of patent infringement?

Cert. petition filed 3/10/17, CVSG 6/26/17, conference 11/3/17. Petition denied 11/6/17.

WilmerHale represents respondent Apple Inc.

CAFC Opinion, CAFC Argument

Questions Presented:

35 U.S.C. § 112, ¶ 6 (now § 112(f)) and the Doctrine of Equivalents both involve similar tests for equivalence to determine patent infringement. In Warner-Jenkinson Co. v. Hilton Davis Chem. Co., this Court provided governing principles for determining equivalence, including consideration of (i) the “known interchangeability” of the accused and claimed elements as an “important factor,” and (ii) “the role played by each element in the context of the specific patent claim.” 520 U.S. 17, 25, 36, 40 (1997). In this case, the Federal Circuit has disregarded those principles, (i) holding that a court need not consider evidence of “known interchangeability,” and (ii) analyzing equivalence not in the context of the patent claim, but based on features in the accused product unrelated to the claimed invention. The questions presented are:

1. Whether the Federal Circuit erred in holding that there is no requirement that a court consider evidence in the record of known interchangeability when evaluating equivalence under 35 U.S.C. § 112, ¶ 6 (now § 112(f)) and the Doctrine of Equivalents in light of this Court's instruction that known interchangeability is an “important factor” in such a determination.
2. Whether the Federal Circuit erred in evaluating equivalence based on differences between the structures of an accused device and patented device whose sole significance relates to performing unclaimed functions.

Cert. petition filed 8/22/17, waiver of respondent Nintendo Co., Ltd. filed 9/5/17, conference 9/25/17. Petition denied 10/2/17.

CAFC Opinion, CAFC Argument

Questions Presented:

A long-standing feature of both copyright and patent law is that liability extends not only to those who make infringing goods, but to those who commercially exploit them as well. This makes sense, given that the actual creators of infringing goods are frequently unknown or are otherwise beyond the reach of United States courts. Extending liability to those who profit from infringing sales ensures that innocent victims of copyright and/or patent infringement are not left helpless while others reap the benefit of their creations.

To protect authors and inventors from such injustice, Congress long ago enacted appropriate legislation. In the case of authors, Title 17 U.S.C. § 106(3) grants copyright owners the exclusive right “to distribute copies . . . of the copyrighted work to the public by sale or other transfer of ownership.” In the case of inventors, Title 35 U.S.C. § 271(a) imposes patent infringement liability on “whoever makes, uses, offers to sell, or sells any patented invention . . . or imports into the United States any patented invention . . . .”

In the case below, both the District Court for the Western District of Washington, and the Federal Circuit, held that Amazon.com, Inc.,—often described as one of the “world's largest retailers”—faced no liability for otherwise admitted Copyright and Patent infringement on the basis that it does not actually sell anything or offer anything for sale. In particular, the Federal Circuit held that, because Amazon.com does not hold legal title to the infringing goods that appear for sale on its website, it does not “offer,” “sell” or “distribute” them within the context of applicable copyright and patent law.

The questions presented are:

1. Whether for purposes of copyright and patent law, one must hold actual legal title to goods in order to “sell,” “offer to sell,” “transfer ownership” or “distribute” such goods within the meaning of 17 U.S.C. § 106(3) and 35 U.S.C. § 271(a).
2. Whether Internet retailers can properly escape liability for otherwise admitted copyright and patent infringement on the basis that they only “facilitate” sales and never actually “sell,” “offer to sell,” “distribute” or otherwise “transfer ownership” of infringing goods.

Cert. petition filed 8/21/17, waiver of respondent Amazon.com filed 9/7/17, conference 10/6/17. Petition denied 10/10/17.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Did the Federal Circuit fail to follow Supreme Court precedent in finding a disclaimer where the alleged disavowal is ambiguous?
2. Did the Federal Circuit fail to follow Supreme Court precedent by elevating and misinterpreting inventor comments from the prosecution history over express language in the specification and claims?

Cert. petition filed 8/10/17, waiver of respondent Ford Motor Co. filed 8/21/17, conference 9/25/17. Petition denied 10/2/17.

CAFC Opinion, CAFC Argument

Questions Presented:

Arising from perhaps the largest factual and testimonial record compiled to date at the Patent Trial and Appeal Board (“PTAB”), the highly unusual factual and procedural record of this case presents a rare opportunity for the United States Supreme Court to address the following questions:

1. Does the Federal Circuit Court of Appeals necessarily exceed the scope of its limited appellate jurisdiction when it affirms a PTAB inter partes review (“IPR”) decision that rests upon a plain and egregious error, such as a PTAB claim construction that literally strikes a key word from the claims that was added during prosecution to distinguish the scope of the claims from prior art?
2. On appeal of an IPR decision by the PTAB to invalidate a patent or patent claim, when is the Federal Circuit required to provide a statement of its reasons for affirming—in order to safeguard constitutional limits on the Federal Circuit's administrative appellate jurisdiction (S.E.C. v. Chenery Corp., 318 U.S. 80 (1943)), and/or to comply with statutory requirements such as 35 U.S.C. § 144 and 5 U.S.C. §§ 702, 704, and 706.
3.  On appeal of an IPR decision by the PTAB to invalidate a patent or patent claim, when does the Federal Circuit violate a patent owner's constitutional due process rights by considering and affirming based on arguments that were not previously considered by the PTAB, and/or for reasons apart from those stated by the PTAB itself in its written decision?

Cert. petition filed 8/1/17, conference 10/6/17. Petition denied 10/10/17.

CAFC Opinion, No CAFC Argument

Questions Presented:

The following important question of federal law is presented:

Whether direct infringement under 35 U.S.C. § 271(a) occurs as a necessary result when multiple independent entities each perform one or more steps of a patented method in the practice thereof without authority? 

The Petitioner answers this question in the affirmative.  This Court on certiorari in Limelight Networks, Inc. v. Akamai Technologies, Inc., 134 S. Ct. 2111 (2014) reversed and remanded the Federal Circuit decision in Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1319 (Fed. Cir. 2012) (“Akamai II”) noting that “the Federal Circuit will have the opportunity to revisit the § 271(a) question if it so chooses”. On remand the Federal Circuit en banc in Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 102 (Fed. Cir. 2015) (“Akamai IV”), ultimately overruled the single-entity precedents: Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008); and BMC Resources, Inc. V. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007).  However, it appears as a necessary conclusion that the Federal Circuit has adhered to those overruled single-entity precedents in affirming without opinion the district court's denial of relief from a judgment declaration of non-infringement.

Cert. petition filed 6/13/17, conference 9/25/17. Petition denied 10/2/17.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether the Legislative ultra vires America Invents Act (AIA)'s Repugnant Authorization to Quash Patent Grants once Given in USPTO's “Material Breach of Contract” with Inventors usurps the “Separation of Powers” clause in the U.S. Constitution [Where no social or economic circumstances exist.] by de facto overruling U.S. Supreme Court “First Impression” Constitutional res judicata decision by Chief Justice Marshall's finding in Fletcher v. Peck in 1810, prohibiting the Government from quashing or rescinding grants once given.
2. Whether the stated intent of the America Invents Act (ALA) was a Legislative ruse coloring the PTAB's preexisting quashing of Government grants with wanton ignorance and indifference to Chief Justice Marshall's “First Impression” Contract finding on Government Grants in Fletcher v. Peck in 1810; with, supplemental Legislative authority to continue quashing issued grants patently in willful compromise of individual Professional Oaths of Office and USPTO Mission in contempt of individual duty to protect and uphold the Constitution and Laws of the Land established by the U.S. Supreme Court; constitute, treason on the Constitution itself.
3. Whether USPTO and District and Appellate Courts standing in Breach of Contract with Inventors in support of the America Invents Act (ALA), denying a fair hearing to Inventors every step of the way to the Supreme Court demonstrates professional contempt for Chief Justice Marshall's “First Impression” Constitutional precedent in Fletcher v. Peck in 1810, prohibiting the Government from quashing or rescinding *ii grants once given, for which they should be held professionally accountable.
4. Whether USPTO and District and Appellate Courts standing in support of the America Invents Act (AIA) in USPTO's “Material Breach of Contract” with Inventors violates an Inventor's rights to Constitutional Res Judicata of the Law of the Land.

Cert. petition filed 5/25/17, waiver of respondent SAP America, Inc. filed 6/15/17, conference 9/25/17. Petition denied 10/2/17.

No CAFC Opinion (appeal dismissed), No CAFC Argument

Questions Presented:

Should this Court exercise its supervisory power to reverse Federal Circuit's affirmance without an opinion of a non-infringement decision which was based on district court's patent claim construction that departed from several well-established fundamental principles of patent law, namely that:

• claims are construed from the perspective of one of ordinary skill in the pertinent art;
• limitations may not be imported into the claims from the specification;
• limitations not disclosed in the patent may not be imported into the claims; and,
• claim construction should not exclude the preferred embodiment;
• where the faulty construction led to an absurd result of excluding from the claims the process disclosed in the patent specification; and,
• where the Federal Circuit was established, inter alia, to increase uniformity in the application of patent law

Cert. petition filed 5/30/17, waiver of respondent General Electric Company filed 6/9/17, conference 9/25/17. Petition denied 10/2/17.

No CAFC Opinion, CAFC Argument

Questions Presented:

In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Court reaffirmed the 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.  Here, a panel of the Federal Circuit held that in determining whether a patent is directed to an abstract idea, a court must ignore the specification and evaluate only the express limitations in the claims.  The panel further held that the accused patents failed the second step of Alice because the claims do not explicitly call for involvement of a computer and therefore could not be characterized as an improvement to computers.

The questions presented are:

1. Whether the § 101 inquiry requires courts to ignore the specification, as the Federal Circuit held, or whether courts should ascertain the true scope of the claims in light of the specification and intrinsic record in determining whether they are drawn to a patent-ineligible concept.
2. Whether an otherwise revolutionary technological breakthrough is not an “inventive concept” under the second step of Alice merely because the court believed the breakthrough could theoretically be implemented without a computer.

Cert. petition filed 4/27/17, conference 9/25/17. Petition denied 10/2/17.

CAFC Opinion, CAFC Argument

Questions Presented:

Is the Federal Circuit's review of decisions of the Patent Office subject to the traditional principles of administrative agency review?

What is the proper standard for applying the harmless error doctrine in appeals from administrative agencies in light of SEC v. Chenery Corp., 332 U.S. 194, 196 (1947)?

May the recognized procedural protections of the Administrative Procedures Act and this Court's precedent be disregarded by reviewing courts under the guise of the harmless error doctrine to adopt new theories on appeal when doing so deprives a party from an opportunity to introduce relevant evidence to the administrative agency or the court?

Cert. petition filed 5/22/17, waiver of respondent Alien Technology, LLC filed 6/6/17, conference 6/22/17. Petition denied 6/26/17.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Are patents claims directed to new and useful computing systems, as here, abstract ideas and ineligible for patenting under 35 U.S.C. § 101?
2. May a district court properly find a patent claim ineligible under 35 U.S.C. § 101, as here, without requiring the challenger to prove by clear and convincing evidence that the claim is ineligible?
3. May a district court properly dismiss a complaint for patent infringement under Fed. R. Civ. P. 12(b)(6) for lack of patent eligibility under 35 U.S.C. § 101 when the complaint contains well-pled facts supporting eligibility?

Cert. petition filed 5/11/17, waiver of respondent Amazon.com, Inc. filed 5/25/17, conference 6/22/17. Petition denied 6/26/17.

CAFC Opinion, CAFC Argument

Question Presented:

The exclusive rights granted to a patent holder are defined by the patent's claims. 35 U.S.C. 112; Burns v. Meyer, 100 U.S. (10 Otto) 671, 672 (1879).  May a court impose a limitation on a patent claim that is contrary to the claim's plain meaning, based on the court's inferences from the patent's specification and prosecution history? 

Cert. petition filed 3/16/17, conference 6/15/17. Petition denied 6/19/17.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Under this Court's precedents, “[e]ach element contained in a patent claim is deemed material to defining the scope of the patented invention.”  Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997).  This Court and the Federal Circuit apply this rule to claim construction and to numerous Patent Act provisions, including 35 U.S.C. §§ 101 (patent-eligible subject matter), 102 (anticipation), 103 (obviousness), and 112, ¶ (best mode, etc.).
    
   The first question is: Does the general rule that each element in a patent claim is material to the invention''s scope apply to analysis of a claim's definiteness under 35 U.S.C. § 112, ¶ 2 (now § 112(b))?
    
2. Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), held that patents that claim a generic structure for performing recited functions— - e.g., a “means for” performing the functions— - are indefinite under 35 U.S.C. § 112, ¶ 2 and earlier decisions of this Court that bar pure functional claiming of inventions generally.  Congress responded by enacting a law stating: “An element in a claim for a combination may be expressed as a means or step for performing a specified function,” but “such [a] claim shall be construed to cover the corresponding structure . . .… described in the specification.”  35 U.S.C. § 112, ¶ 6 (now § 112(f)).  The patent claims here recite only a generic structure (a “processing system”) to perform software-implemented functions. All agree that the claims do not invoke § 112, ¶ 6, which “targeted” the “specific problem” in Halliburton. Warner-Jenkinson, 520 U.S. at 28.
    
   The second question is: Do Halliburton and other decisions of this Court that bar pure functional claiming still control where § 112, ¶ 6 does not apply?

Cert. petition filed 3/13/17, conference 6/15/17. Petition denied 6/19/17.

CAFC Opinion, CAFC Argument

Questions Presented:

This Court has fashioned a two-part test for determining whether the subject matter of a patent is ineligible, under 35 U.S.C. § 101, because it claims a law of nature, natural phenomenon, or abstract idea. “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice Corp. Pty Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347, 2355 (2014). If so, a court must nonetheless ask whether the patent involves an “'inventive concept'—i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'” Id. (quoting Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 1294 (2012)). This case raises three questions under that framework:

1. May patentable subject matter under § 101 properly be assessed by over-generalizing patent claims to a “gist”?
2. May a district court properly assess patent-ability under § 101 prior to authoritatively construing the patent's claims?
3. May a district court adjudicating a motion for judgment on the pleadings on § 101 patentability grounds properly consider questions of patent enablement under 35 U.S.C. § 112? 

Cert. petition filed 4/6/17, waiver of respondent Google Inc. filed 5/12/17, conference 5/23/17, conference 6/8/17. Petition denied 6/12/17.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether the lower courts' and USPTO's denial of fundamental rights by collusively blocking access to justice and refusing to enforce this Court's Chief Justice Marshall's Ruling on First Impression Constitutional Res Judicata on Grants violates the free speech and property rights of the First and Fifth Amendments.
2. Whether the America Invents Act is void in view of this Court's ruling on First Impression Constitutional Res Judicata on Grants.
3. Whether the act of transferring patent property to the public without compensation is in the nature of the legislative power of the AIA or judicial power of a court, in violation of this Court's Justice Marshall's 1810 ruling on Grants.
4. Whether the lower courts' and PTAB's rulings are estopped by this Court's ruling on First Impression Constitutional Res Judicata on Patent Grants and/or Patent Prosecution History Estoppel.
5. Whether judges' and the USPTO's failure to enforce this Court's ruling on First Impression Constitutional Res Judicata on Grants as applied to patents and Patent Prosecution History Estoppel, defaulting in contractual fiduciary duty by fraudulent scheme of reexamination of issued patents, honest public services fraud, perjury and contempt for equal protections of law, to aid and abet anti-trust violation, in breach of the takings clause of the Fifth Amendment without valuable consideration voids the judgments of the courts. 

Cert. petition filed 3/28/17, conference 6/1/17. Petition denied 6/5/17.

CA3 Opinion, No CA3 Argument

WilmerHale represents petitioner Medtronic, Inc.

Questions Presented:

In 35 U.S.C. § 144, Congress mandated that for determinations on “appeal[s] taken on the record before the Patent and Trademark Office,” the Court of Appeals for the Federal Circuit “shall issue to the Director its mandate and opinion.” Such mandate and opinion thereafter “shall” be entered of record in the Patent and Trademark Office (PTO) and “shall” govern any further proceedings in the case. For more than half of its rulings on appeals taken from PTO rulings on patentability, the Federal Circuit has issued summary affirmances without opinion under Federal Circuit Rule 36 (Fed. Cir. R. 36). Such summary affirmances never address the issues raised by appellants, who have the statutory right to appeal. Instead, the summary affirmances return the cases to the examiners or PTO with neither an opinion nor a mandate that governs further proceedings.

The Questions Presented by this Petition are:

1. Does the Federal Circuit's affirmance without opinion of the PTO's rejection of Petitioner's patent application violate 35 U.S.C. § 144?
2. Does the statute's requirement that the Federal Circuit issue a “mandate and opinion” govern over Federal Rule of Appellate Procedure 36's general permission for appellate courts to render judgment without opinion?
3. Assuming that the Federal Circuit can issue an affirmance without opinion despite the language of § 144, does the Federal Circuit act within its discretion by issuing an affirmance without opinion that does not meet any of the criteria listed in Fed. Cir. R. 36(a)-(e)? 

Cert. petition filed 4/13/17, waiver of respondent Michelle K. Lee, Director, United States Patent and Trademark Office filed 5/1/17, conference 5/25/17. Petition denied 5/30/17.

CAFC Opinion, CAFC Argument

Questions Presented:

Petitioner Medtronic sought, and the US Patent and Trademark Office (“PTO”) instituted, inter partes review (IPR) proceedings regarding claims of two patents held by Respondent Robert Bosch Healthcare Systems. One month before the oral hearing, however, the PTO's Patent Trial and Appeal Board (PTAB) erroneously ruled that Medtronic should have named its wholly owned subsidiary Cardiocom as a real party in interest. The PTAB refused to allow Medtronic to amend its petitions nunc pro tunc to add Cardiocom and terminated the IPR proceedings, in a ruling that was arbitrary, capricious, and contrary to law, and deprived Medtronic of due process. The Federal Circuit ruled that it lacked jurisdiction to hear Medtronic's appeal and refused to grant mandamus.

The questions presented are:

1. Whether 28 U.S.C. § 1295(a)(4)(A), which gives the Federal Circuit exclusive jurisdiction “of an appeal from a decision of … the [PTAB] with respect to … inter partes review under title 35,” gives that court jurisdiction to review a final PTAB decision terminating an already-instituted inter partes review on grounds unrelated to the patent merits that are arbitrary and capricious, contrary to statute, and/or contrary to due process.
2. Whether the Federal Circuit erred by requiring a mandamus petitioner to show not only a right to the relief sought, but also an independent basis for Federal Circuit review of the challenged decision—a requirement that would make mandamus superfluous.

Cert. petition filed 3/17/17, waiver of respondent Robert Bosch Healthcare Systems, Inc. filed 4/20/17. Petition dismissed pursuant to Rule 46 5/8/17.

CAFC Opinion, No CAFC Argument

WilmerHale represents petitioner Medtronic, Inc.

Question Presented:

Petitioner Medtronic sought, and the US Patent and Trademark Office (PTO) instituted, inter partes review (IPR) of claims of two patents. One month before the oral hearing, however, the PTO's Patent Trial and Appeal Board (PTAB) dismissed the proceedings, ruling erroneously that Medtronic should have named its wholly owned subsidiary Cardiocom as a real party in interest. The PTAB refused to allow Medtronic to amend its petitions nunc pro tunc to add Cardiocom and terminated the IPR proceedings.

Medtronic filed a complaint under the Administrative Procedure Act (APA), 5 U.S.C. §§ 701-706, explaining that the PTAB's decision should be set aside as arbitrary and capricious, contrary to law, and contrary to due process. On the government's motion, the district court ruled that it lacked jurisdiction to review the PTAB decision. Medtronic's appeal has been docketed in the Federal Circuit.

Medtronic is separately filing a petition for certiorari seeking review of a precedential Federal Circuit decision holding that the Federal Circuit lacks jurisdiction to hear a direct appeal of the PTAB's decision and refusing to grant mandamus. This petition is submitted to permit this Court to consider at once all possible grounds for judicial review of the agency's decision.

The question presented is:

Whether a federal district court has jurisdiction to decide an APA claim challenging—as arbitrary and capricious, contrary to law, and contrary to due process—a final PTAB decision terminating already-instituted inter partes reviews on grounds unrelated to the patent merits.

Petition for cert. before judgment filed 3/17/17. Petition dismissed pursuant to Rule 46 5/8/17.

No CAFC Opinion, No CAFC Argument

WilmerHale represents petitioner Medtronic, Inc.

Questions Presented:

1. Whether and to what extent this Court's decision in Diamond v. Diehr, 450 U.S. 175 (1981), which confirms that patents directed to the acquisition of data are directed to patent-eligible subject matter, can be harmonized with the decision in Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014).
2. Whether a district court may properly invalidate a duly issued United States Patent on a motion for judgment on the pleadings, without having considered all of the evidence adduced by the patentee in support of the validity of the patent.

Cert. petition filed 3/10/17, waiver of respondent AmeriTrak Fleet Solutions, LLC dba AmeriTrak to respond filed 3/1/17, conference 4/13/17. Petition denied 4/17/17.

CAFC Opinion, CAFC Argument

Questions Presented:

In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) and then again in Alice v. CLS Bank Int''l, 134 S. Ct. 2347 (2014), this Court set out a two part test for determining the statutory eligibility to patenting under 35 U.S.C. § 101. Since then, the Court of Appeals for the Federal Circuit and district courts have struggled in applying that framework for determining what constitutes an “abstract idea,” causing confusion and decisions that are seemingly at odds with each other. Some courts have concluded that long-standing, fundamental evidentiary rules, and principles that apply in regard to all other patent validity challenges, no longer apply in deciding motions brought challenging patent claims under § 101.  Petitioner respectfully requests consideration of the following questions to help resolve the confusion in the courts:

The questions presented are:

1. This Court has found the “abstract idea” exception to § 101 to be a doctrine of restraint, limited so far to mathematical algorithms and some business methods directed to fundamental economic practices. The '085 patent claims a new and novel, tangible and concrete media management system for accessing and managing media content on a portable handheld device over a streaming connection.  Are patent claims directed to concrete and tangible inventions—which are neither directed to a mathematical algorithm nor a business method—eligible subject matter under step one of the Mayo/Alice framework?
2. Courts are required to draw all factual inferences in the favor of the non-movant in a Rule 12(c) motion for judgment on the pleadings.  The second step of the Mayo/Alice analysis examines the factual issue of what was conventional and routine at the time of invention, which can overlap with issues of novelty under 35 U.S.C. § 102.  Is disregarding limitations of patent claims relating to implementation parameters, or dismissing them as conventional or routine without citing any evidence of such as of the time of the invention, improper in determining whether a claim constitutes an “abstract idea” under the Mayo/Alice analysis, particularly at a stage of the case when all factual inferences must be drawn in favor of the patentee?
3. The two-step analysis in Mayo/Alice is a question of law based on underlying issues of fact.  Each patent claim is a separate property right.  This Court requires proof by clear-and-convincing evidence to invalidate each claim in an issued US patent.  Does an accused infringer bear the burden of proving each patent claim asserted against it is ineligible under 35 U.S.C. § 101 by clear and convincing evidence? 

Cert. petition filed 2/28/17, waiver of respondent Amazon.com, Inc. filed 3/21/17, conference 4/13/17. Petition denied 4/17/17.

CAFC Opinion, CAFC Argument

Questions Presented:

In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) and then again in Alice v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), this Court set out a two part test for determining the statutory eligibility to patenting under 35 U.S.C. § 101.  Since then, the Court of Appeals for the Federal Circuit and district courts have struggled in applying that framework for determining what constitutes an “abstract idea,” causing confusion and decisions that are seemingly at odds with each other.  Some courts have concluded that long-standing, fundamental evidentiary rules, and principles that apply in regard to all other patent validity challenges, no longer apply in deciding motions brought challenging patent claims under § 101. Petitioner respectfully requests consideration of the following questions to help resolve the confusion in the courts:

The questions presented are:

1. This Court has found the “abstract idea” exception to § 101 to be a doctrine of restraint, limited so far to mathematical algorithms and some business methods directed to fundamental economic practices. The ′379 patent claims a new and novel, tangible and concrete broadcast system that includes an over-the-air downloadable application.  Are patent claims directed to concrete and tangible inventions—which are neither directed to a mathematical algorithm nor a business method—eligible subject matter under step one of the Mayo/Alice framework?
2. Courts are required to draw all factual inferences in the favor of the non-movant in a Rule 12(b)(6) motion to dismiss. The second step of the Mayo /Alice analysis examines the factual issue of what was conventional and routine at the time of invention, which can overlap with issues of novelty under 35 U.S.C. § 102. Is disregarding limitations of patent claims relating to implementation parameters, or dismissing them as conventional or routine without citing any evidence of such as of the time of the invention, improper in determining whether a claim constitutes an “abstract idea” under the Mayo/Alice analysis, particularly at a stage of the case when all factual inferences must be drawn in favor of the patentee?
3. The two-step analysis in Mayo/Alice is a question of law based on underlying issues of fact. Each patent claim is a separate property right. This Court requires proof by clear-and-convincing evidence to invalidate each claim in an issued US patent. Does an accused infringer bear the burden of proving each patent claim asserted against it is ineligible under 35 U.S.C. § 101 by clear and convincing evidence? 

Cert. petition filed 2/27/17, waivers of respondents DIRECTV, LLC, DIRECTV Digital, LLC, MLB Advanced Media, Inc. and MLB Advanced Media, L. P. filed 3/17/17, waiver of respondents NBA Media Ventures, LLC; Turner Digital Basketball Services, Inc.; NHL Interactive Cyber Enterprises, LLC; NHL Enterprises, Inc., NHL Enterprises, L.P. filed 3/20/17, conference 4/13/17. Petition denied 4/17/17.

CAFC Opinion, CAFC Argument

Questions Presented:

Whether the Federal Circuit erred by stating that the construction of a claim term under Phillips cannot be narrower than that under the incorrect broadest reasonable interpretation standard, despite the fact that a district court's Markman decision in a previous litigation applied Phillips and accepted a narrower construction of such claim term.

Whether the Federal Circuit erred by ignoring multiple references in a patent's specification that demonstrate the patentee's clear intent to limit a claim term, therefore including an additional aspect to the construction of a claim term and rejecting the patent based upon this inclusion.

Cert. petition filed 2/13/17, waiver of respondent Michelle K. Lee, Director, United States Patent and Trademark Office filed 3/6/17, conference 3/24/17. Petition denied 3/27/17.

CAFC Opinion, CAFC Argument

Question Presented:

Congress broadly provided in the Patent Act that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor . . . .” 35 U.S.C. § 101. This Court's 2014 decision in Alice v. CLS Bank requires courts, in their Section 101 analysis, to consider the effect of the patent in practice and if the patent merely claims well-understood, routine conventional activities previously known to the industry.

In that analysis, the Federal Circuit does not consider evidence of copying, unmet need, commercial success, and failure of others—often referred to as secondary considerations evidence in patent law. Ignoring that evidence has caused the Federal Circuit to hold ineligible groundbreaking, valuable inventions, such as the patents in this case. Should this Court grant certiorari and hold that a court must consider secondary considerations evidence in its Section 101 analysis?

Cert. petition filed 1/11/17, waiver of respondent Fiserv., Inc. filed 2/1/17, waiver of respondent Michelle Lee, Director, U.S. Patent and Trademark Office filed 2/8/17, waiver of respondent Jack Henry & Associates, Inc. filed 2/9/17, waiver of respondent Fidelity National Information Services, Inc. filed 2/9/17, conference 3/17/17. Petition denied 3/20/17.

CAFC Opinion, CAFC Argument

Questions Presented:

In 2011, Congress enacted the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”) which established new post-grant adjudicatory processes for challenges to the validity of patents. One of those processes created by the Act is an inter partes review. The Act also created a body within the Patent and Trademark Office, called the Patent Trial and Appeal Board (“Board”), to hear those challenges as a quick and cost-effective alternative to litigation. The decisions of the Board are subject to review by the Court of Appeals for the Federal Circuit and, as such, are subject to its precedents. 28 U.S.C. § 1295(a)(4)(A).

The Respondents Seoul Semiconductor Co. Ltd. et al. initiated an inter partes review (IPR2014-00605) of United States Patent No. 7,348,723 (“the '723 Patent”). At the conclusion of the IPR, the Board entered a Final Written Decision, finding the subject claims of the ′'723 Patent invalid as anticipated under 35 U.S.C. § 102 by U.S. Patent No. 5,577,493 (“Parkyn”).

The law of anticipation clearly requires that each and every element be found, expressly or inherently, in the prior art. 35 U.S.C. § 102; see, e.g., Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008); Summit 6, LLC v. Samsung Electronics Co., Ltd., 802 F.3d 1283, 1294 (Fed. Cir. 2015). Precedent requires the Board to make specific findings of fact in order to facilitate appellate review. Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) (“[W]e hold that the Board is required to set forth in its opinions specific findings of fact and conclusions of law adequate to form a basis for our review.”). With respect to anticipation, such specific findings must include a limitation by limitation analysis. Id. (“In particular, we expect that the Board's anticipation analysis be conducted on a limitation by limitation basis, with specific fact findings for each contested limitation and satisfactory explanations for such findings.”).

In this case, however, the Board failed to perform such a limitation by limitation analysis and, in turn, failed to make the requisite findings required to support a conclusion that the claims of the '723 Patent are invalid as anticipated under 35 U.S.C. § 102.  Petitioner appealed the Board's Final Written Decision to the Court of Appeals for the Federal Circuit on grounds including, inter alia, the Board's failure to make the requisite findings of fact and, further, that the Board could not have made the requisite findings because the relied upon prior art fails to disclose each and every element of the claims of the '723 Patent.  In particular, Parkyn fails to disclose the claim element requiring two recited conditions for light emitted within the entire “half-intensity-angular-range.”

It is undisputed that the Board's Final Written Decision fails to make any finding concerning the “half-intensity-angular-range.” Thus, the Board's Final Written Decision is prima facie defective under the controlling law. At the oral argument on appeal, Respondents' counsel conceded that Parkyn does not even discuss the “half-intensity-angular-range.” Thus, the Board's Final  Written Decision is per se in conflict with controlling law. The Appellate Court's failure to follow its own precedents creates a conflict of law necessitating this Court's resolution.

Accordingly, Petitioner Enplas presents the following questions:

1. Whether the Board is required to make specific findings of fact in support of its Final Written Decision?
2. Whether a finding of anticipation under 35 U.S.C. § 102 must be supported by findings that each and every element of the subject patent claim is disclosed in the prior art?
3. Whether the Board erred in finding the subject claims anticipated under 35 U.S.C. § § 102 by a reference that admittedly fails to disclose each and every element of said claims?
4. Whether the Federal Circuit committed a legal and/or procedural error by affirming the decision of the Board finding the '723 Patent invalid as anticipated under 35 U.S.C. § § 102, when (a) the Board's opinion failed to set forth evidence to satisfy the requirement that all elements were in fact present in the prior art, and (b) substantial evidence demonstrated those omitted claim elements were not present in the prior art?

Cert. petition filed 1/9/17, conference 3/17/17. Petition denied 3/20/17.

CAFC Opinion, CAFC Argument

Question Presented:

In KSR International Co. v. Teleflex, Inc., this Court rejected the Federal Circuit's "rigid" approach to analyzing the obviousness of patent claims in favor of the "expansive and flexible" approach of the Court's own cases. 550 U.S. 398, 415 (2007). The Court stressed that "[r]igid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it." Id. at 421.

In this case, the Patent Trial and Appeal Board relied on the common sense of a skilled artisan in determining that it was obvious to search a database for duplicate entries before adding new information to the database. In making that finding, the Board cited expert testimony on both sides, including respondent Arendi's expert's concession that checking for duplicates before adding items to databases was commonplace. The Federal Circuit reversed, however, limiting KSR to cases involving the motivation to combine two prior-art references and holding that common sense could not supply a non-"peripheral" "missing limitation."

Did the Federal Circuit err in restricting the Board's ability to rely on the common sense and common knowledge of skilled artisans to establish the obviousness of patent claims?

Cert. petition filed 11/8/16, waiver of respondent Arendi S A.R.L. filed 11/21/16, waiver of respondent Apple, Inc. file 12/8/16, response requested 12/12/16, conference 3/17/17. Petition denied 3/20/17.

CAFC Opinion, CAFC Argument

Question Presented:

Whether an issued patent for a software implemented industrial process that regulates and controls the operation of an oil rig, which is patentable subject matter under this Court's interpretation of 35 U.S.C. § 101 in Diamond v. Diehr, 450 U.S. 175 (1981), is rendered unpatentable subject matter after this Court's decision in Alice v. CLS Bank, 134 S.Ct. 2347 (2014)? 

Cert. petition filed 1/13/17, waiver of respondent AKM Enterprise, Inc., dba Moblize, Inc. filed 1/31/17, conference 3/3/17. Petition denied 3/6/17.

CAFC Opinion, CAFC Argument

Questions Presented:

In Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), the Court explained that a patent claim is that “portion of the patent document that defines the scope of the patentee's rights.” Id. at 372. The Court held that “the construction of a patent, including terms of art within its claim,” is not for a jury but “exclusively” for “the court” to determine. Id.

In the years since Markman, however, inconsistent standards and approaches have been applied when construing patent claims, leading to substantial debate and controversy. Competing approaches have created uncertainty regarding infringement and validity of patent rights.

In Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), for example, the Court considered whether the Patent Office may apply the “broadest reasonable construction” in determining claim scope for inter partes review of the validity of a patent in litigation rather than the “ordinary meaning as understood by a person of skill in the art” used by the federal court in determining the exact same issue. Id. at 2142.

An equally important and related dispute with respect to the “ordinary meaning standard” has also emerged in the last decade, where a fundamental split has developed within the Federal Circuit as to whether claim terms used to define the metes and bounds of an invention are generally given their “plain and ordinary meaning,” or are redefined (limited) to match the scope of the exemplary embodiments provided in the specification.

Many judges and commentators have been outspoken on the need for uniformity on this claim construction issue to strengthen intellectual property rights for innovators (who expect a period of exclusivity to enable a return on their investment) and reduce litigation. Indeed, in the past several years, this Court has received over a dozen certiorari petitions on this fundamental issue. Infra note 3.

This case presents the Federal Circuit's fundamental split over the claim construction standard to be used by federal courts. The questions presented are as follows:

1. Does claim construction presume that the ordinary meaning as understood by a person of skill in the art is the correct construction for claim terms, absent a redefinition or disclaimer in the patent specification?

2. Does the specification limit the scope of claim terms to capture the “actual invention” as implemented in the exemplary embodiments provided in the specification?

Cert. petition filed 12/22/16, waiver of respondent Apple Inc. filed 2/1/17, conference 2/24/17. Petition denied 2/27/17.

CAFC Opinion, CAFC Argument

Question Presented:

Where an invention is comprised of a combination of elements previously existing in the prior art, this Court's precedent requires that the proper test for assessing obviousness under 35 U.S.C. § 103 examines whether one skilled in the art would have been motivated to make the combination and could have predicted or expected that the combination would be successful. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Further, pursuant to the Seventh Amendment to the U.S. Constitution, disputed issues of fact cannot be resolved on summary judgment but must be resolved by a jury. The question presented is:

Where there are disputed factual issues as to (1) whether a skilled artisan would have been motivated to make the claimed combination, and (2) whether the skilled artisan could have expected or predicted success in so doing, does the Seventh Amendment to the Constitution and this Court's decision in KSR allow a court to find the claimed invention obvious on summary judgment because elements of the claimed invention may have existed in the prior art?

Cert. petition filed 1/18/17, waiver of respondent MacDermid Printing Solutions, LLC filed 1/23/17, conference 2/17/17. Petition denied 2/21/17.

CAFC Opinion, CAFC Argument

Question Presented:

The US Constitution's Seventh Amendment guarantees the right to trial by jury if timely requested.

There is division and uncertainty among the circuit courts of appeals regarding the evidentiary-weight standard applicable to prove waiver of the right to a jury trial.

The proper evidentiary-weight standard should require explicit, clear, and unequivocal evidence of a waiver of this fundamental, constitutional right.

The Federal Circuit Court of Appeals erred by not applying the evidentiary-weight standard requiring waiver of a constitutional right to be explicit, clear, and unequivocal.

Thus, the question presented is:

Can a party forfeit a properly demanded trial by jury without an explicit, clear, and unequivocal waiver?

Cert. petition filed 1/11/17, waiver of respondent Vapor Point, LLC filed 1/30/17, conference 2/17/17. Petition denied 2/21/17.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Can patent claims be invalidated under 35 U.S.C. § 101 by finding under Alice step two that they involve the conventional implementation of an abstract concept, where the only evidence of record is that the ordered combinations of hardware in the claims are unconventional apparatuses with novel applications?
2. Can claims be invalidated under 35 U.S.C. § 101 by declaring them to be directed to an abstract idea based on statements of purpose in the patent specification without considering whether the claims are directed to improvements to computer functionality rather than to economic or other tasks for which a computer is used in its ordinary capacity?

Cert. petition filed 1/5/17, waiver of respondent Microsoft Corp. filed 1/9/17, conference 2/17/17. Petition denied 2/21/17.

CAFC Opinion, CAFC Argument

Question Presented:

In Christianson v. Colt Industries, 486 U.S. 800 (1988), this Court held that the Court of Appeals for the Federal Circuit does not have appellate jurisdiction under 28 U.S.C. § 1295(a)(1) when the claims of a well-pleaded complaint do not “arise under federal patent law.” The Petitioner filed an action in district court under the Administrative Procedure Act (APA) seeking to have specific evidentiary admission decisions by the Director of the United States Patent and Trademark Office (USPTO) during patent reexaminations overturned as violating due process, and the complaint was dismissed. The Court of Appeals for the Ninth Circuit transferred the appeal of the dismissal to the Federal Circuit over the objection of the Petitioner, even though all parties agreed that Ninth Circuit law governed the only claim of the complaint.  Can the Federal Circuit impute a patent law claim into a complaint that does not explicitly contain a claim arising under patent law in order to exert appellate jurisdiction?

Cert. petition filed 10/10/16, waiver of respondent Michelle K. Lee, Director, United States Patent and Trademark Office et al. filed 10/19/16, response requested 10/28/16, conference 2/17/17. Petition denied 2/21/17.

CAFC Opinion, CAFC Argument

Question Presented:

Whether the court below, in deciding federal patent questions that are necessarily implicated by state law claims, contravened this Court's direction in Gunn v. Minton, 133 S. Ct. 1059 (2013), to “hew closely to the pertinent federal precedents,” by (1) failing to perform necessary patent claim construction, (2) disregarding the settled meaning of the term “covered by” in patent jurisprudence, and (3) ignoring the fundamental distinction between method and apparatus claims, as established by the Federal Circuit.

Cert. petition filed 10/7/16, waiver of respondent Mirowski Family Ventures, LLC filed 10/17/16, response requested 11/10/16, conference 2/17/17. Petition denied 2/21/17.

Maryland Ct. of Special Appeals Opinion, No Maryland Ct. of Special Appeals Argument Available

Questions Presented:

Fed. R. Civ. P. 60(b)(3) authorizes a losing party to seek to reopen a final judgment based on a showing of “fraud . . . , misrepresentation, or misconduct by an opposing party” that has denied the movant a full and fair opportunity to present its case.  The circuits are sharply split on the burden of proof required for such relief, the showing that is necessary to meet the burden, the identity of the party that must bear the burden under particular circumstances, the meaning of “an opposing party,” and what constitutes “misconduct.” The questions presented are:

1. Whether a movant must show that it has been denied a full and fair opportunity to present its case by “clear and convincing evidence,” as the Third, Fifth, Seventh, Eighth, and Eleventh Circuits have held; or must the movant instead show “substantial interference” in the presentation of its case, as the Ninth, Tenth, and D.C. Circuits have held; or does the burden on this issue shift under certain circumstances to the party opposing a Rule 60(b)(3) motion, as the First and Sixth Circuits have held; or is there no requirement to show any real effect on the proceeding at all, as the Federal Circuit has held here.
2. Whether “misrepresentations . . . of an opposing party” under Fed. R. Civ. P. 60(b)(3) include misrepresentations by an expert witness, unknown to the party or its counsel, as the Federal and Eleventh Circuits have held, or cannot be attributed to the party without the complicity of the party or its counsel, as the Seventh and D.C. Circuits have held.
3. Whether “misconduct” under Fed. R. Civ. P. 60(b)(3) includes purely accidental and unintentional omissions in the course of discovery, as the First, Fifth, Eleventh and Federal Circuits have held, or requires a showing of improper or wrongful behavior, as the Sixth Circuit has held.

Cert. petition filed 10/7/16, conference 1/13/17. Petition denied 1/17/17.

CAFC Opinion, CAFC Argument

Question Presented:

In Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), the Court held that the Leahy-Smith America Invents Act of 2011, Pub. L. No. 11229, 125 Stat. 284, in most instances precludes judicial review of the Patent Trial and Appeal Board's (“Board”) decision to institute review of challenged patent claims. The Court emphasized, however, that “we do not categorically preclude review of a final decision where a petition fails to give 'sufficient notice' such that there is a due process problem with the entire proceeding, nor does our interpretation enable the agency to act outside its statutory limits . . . .” Cuozzo, 136 S. Ct. at 2141. The Court reasoned that any such errors would, like other final agency actions, remain subject to review under the Administrative Procedure Act. Id. at 2142.

Notwithstanding this Court's admonition in Cuozzo, the Federal Circuit has imposed a categorical ban on review of the Board's decision to initiate review—in the present case, refusing post-Cuozzo to examine whether the Board provided the patent owner with “sufficient notice” of the assertions levied against its patents, or whether the Board is acting in an arbitrary and capricious manner in disregarding its own regulations in moving forward with review on a ground never asserted by any party. The result here is that patents were improperly invalidated without fair notice on a basis the party challenging the patent did not even deem worthy of advancing. This is the case contemplated in Cuozzo: a due process violation that requires judicial review.

The question presented is: When does “a petition fail[] to give 'sufficient notice' such that there is a due process problem with the entire proceeding,” and what constitutes the Board “act[ing] outside its statutory limits,” to permit judicial review the Board's decisions under Cuozzo?

Cert. petition filed 10/11/16, waiver of Federal Respondent filed 10/27/16, conference 1/13/17. Petition denied 1/17/17.

CAFC Opinion, CAFC Argument

Questions Presented:

The bedrock principle of claim construction is that patents are written to one skilled in the art. It is well-established principle that a court may not import limitations from the written description into the claims.” See Electro Med. Sys. v. Cooper Life Scis., Inc., 34 34 F.3d 1048, 1054 (Fed. Cir. 1994). Claims are not to be interpreted by adding limitations appearing only in the specification.” See Hill-Rom Servs., Inc. v. Stryker Corp., No. 2013-1450, 755 F.3d 1367, 2014 WL 2898495, at *2 (Fed. Cir. June 27, 2014).

Rule 52(a)(1) of The Federal Rules of Civil Procedure provides that in matters tried without a jury, the district court “must find the facts specially and state its conclusions of law separately.”

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

1. Is it legal error for the district court to arbitrarily define a factually disputed technical term of art without performing claim construction and then import limitations from the specifications into the claims to avoid patent infringement?
2. Whether the federal circuit can review de novo a factually disputed technical claim term of art when the record is devoid of factual underpinnings in violation of Rule 52(a)(1)?
3. Would court failing in (1) and/or (2) above constitute a violation of petitioner's “due process”?

Cert. petition filed 11/23/16, waiver of respondent Shell Oil Company et al. filed 12/16/16, conference 1/6/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether, as a matter of statutory construction, the absence of the term “means” in a patent claim gives rise to a “strong presumption” that means-plus-function claiming under 35 U.S.C. § 112, 6 is not invoked, which was the standard prior to the Federal Circuit's recent Williamson decision?
2. Whether the new Williamson standard for determining when 35 U.S.C. § 112, 6 is invoked contravenes this Court's precedent and also violates the due process clause of the Fifth Amendment?

Cert. petition filed 11/14/16, waiver of respondent Apple Inc. filed 11/18/16, conference 1/6/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument

Question Presented:

In Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 546 U.S. 394 (2006), this Court held that absent a motion under Fed. R. Civ. P. 50(b), a court of appeals is without power to set aside a jury verdict and order entry of judgment as a matter of law (JMOL). In Ortiz v. Jordan, 562 U.S. 180 (2011), the Court expanded on that ruling by explaining that a court similarly lacks power to order JMOL on the basis of an argument raised at summary judgment, but not renewed in a Rule 50 motion. However, Ortiz left undecided whether that prohibition applies to "purely legal" arguments, a question upon which the courts of appeals were then, and continue to be, deeply divided.

The issue arises with particularly clarity in the Federal Circuit in the context of claim construction. The Federal Circuit has asserted the power to order JMOL on the basis of a claim construction never presented in any Rule 50 motion, on the theory that claim construction presents a pure question of law that the Federal Circuit must determine independently. See, e.g., Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1560 (Fed. Cir. 1995). The Question Presented is:

Whether the Federal Circuit erred in ordering entry of judgment as a matter of law on a ground not presented in a Rule 50 motion in the district court, even though the ground presented a purely legal question.

Cert. petition filed 10/21/16, conference 1/6/17. Petition denied 1/9/17.

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 or on sale in this country, more than one year prior to the date of the application” for the patent.  35 U.S.C. § 102(b) (2006).

The question presented is:

Whether the “on sale” bar found in § 102(b) applies only to sales or offers of sale made available to the public, as Congress, this Court, and the United States have all made clear, or whether it also applies to non-public sales or offers of sale, as the Federal Circuit has held.

Cert. petition filed 10/12/16, conference 1/6/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument

Question Presented:

The Leahy-Smith America Invents Act, following established principles of administrative law, sets up a scheme in its newly established inter partes patent challenge proceedings that requires separate decisions to be made for institution and adjudication by two different decision makers: The Act provides that “[t]he Director” of the U.S. Patent and Trademark Office “shall determine whether to institute an inter partes review under this chapter,” 35 U.S.C. § 314(b), and that “[t]he Patent Trial and Appeal Board shall . . . conduct each inter partes review instituted under this chapter,” id. § 316(c).

The Director subsequently promulgated a regulation providing that “[t]he Board institutes the trial on behalf of the Director.” 37 C.F.R. § 42.4(a). As a result, the separate statutory functions in sections 314 and 316(c) are now combined before a single panel of the Board, which first decides whether to institute inter partes review and then rules on the merits.

The question presented is:

Whether the Leahy-Smith America Invents Act permits the Patent Trial and Appeal Board instead of the Director to make inter partes review institution decisions.

Cert. petition filed 9/20/16, conference 1/6/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument

Question Presented:

The Leahy-Smith America Invents Act, following established principles of administrative law, sets up a scheme in its newly established inter partes patent challenge proceedings that requires separate decisions to be made for institution and adjudication by two different decision makers: The Act provides that “[t]he Director” of the U.S. Patent and Trademark Office “shall determine whether to institute an inter partes review under this chapter,” 35 U.S.C. § 314(b), and that “[t]he Patent Trial and Appeal Board shall . . . conduct each inter partes review instituted under this chapter,” id. § 316(c).

The Director subsequently promulgated a regulation providing that “[t]he Board institutes the trial on behalf of the Director.” 37 C.F.R. § 42.4(a). As a result, the separate statutory functions in sections 314 and 316(c) are now combined before a single panel of the Board, which first decides whether to institute inter partes review and then rules on the merits.

The question presented is:

Whether the Leahy-Smith America Invents Act permits the Patent Trial and Appeal Board instead of the Director to make inter partes review institution decisions.

Cert. petition filed 9/20/16, conference 1/6/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument

Question Presented:

Under the Hatch-Waxman Act, before a generic pharmaceutical manufacturer can market a generic version of a brand-name drug, it must file an abbreviated new drug application (ANDA) with the Food and Drug Administration in Maryland. That filing generally constitutes an act of patent infringement, giving the brand-name manufacturer an immediate right to sue the generic manufacturer for patent infringement. Mylan prepared the ANDAs here in West Virginia and filed them in Maryland. Mylan was then sued for patent infringement in Delaware, despite the absence of any affirmative steps towards marketing the generic drugs there or any other suit-related contacts between Mylan and Delaware. Such Delaware ANDA-prompted suits were common, under a general jurisdiction theory, before this Court's decision in Daimler AG v. Bauman, 134 S. Ct. 746 (2014). In the decision below, however, the Federal Circuit authorized such suits to be filed in Delaware (or virtually anywhere else) on a theory of specific personal jurisdiction because the ANDA “reliably indicate[s] plans to engage in marketing of the proposed generic drugs,” including in Delaware. Thus, the decision below resurrects the pre-Daimler regime under a rubric of nationwide specific personal jurisdiction.

The question presented is:

Whether the mere filing of an abbreviated new drug application by a generic pharmaceutical manufacturer is sufficient to subject the manufacturer to specific personal jurisdiction in any state where it might someday market the drug.

Cert. petition filed 9/19/16, conference 1/9/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument

Questions Presented:

1. When construing an ambiguous patent claim, should courts generally consider the record of the patent's prosecution as relevant context, or is prosecution history relevant only if it clearly and unmistakably disavows claim scope?
2. When a patent applicant has amended a claim to overcome the Patent and Trademark Office's earlier disallowance of the claim, should a court strictly construe the amended claim language against the applicant, as this Court has held, or consider the amendment history to be relevant only to the extent that it clearly and unambiguously disavows claim scope, as the Federal Circuit has held?

Cert. petition filed 8/10/16, waiver of respondent Alfonso Cioffi et al., filed 8/31/16, response requested 9/12/16, conference 1/6/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument