Nautilus, Inc. v. Biosig
Instruments, Inc., No. 13-369
Questions Presented:
Does the Federal Circuit's acceptance of ambiguous patent
claims with multiple reasonable interpretations - so long as the
ambiguity is not "insoluble" by a court - defeat the
statutory requirement of particular and distinct patent
claiming?
Does the presumption of validity dilute the requirement of
particular and distinct patent claiming?
Cert. petition filed 9/21/13.
CAFC Opinion, CAFC Argument
Organic Seed Growers and Trade
Association, et al. v. Monsanto Company, et al., No.
13-303
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.
CAFC Opinion, CAFC Argument
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Alice Corp. Pty. Ltd. v. CLS
Bank International, et al., No. 13-298
Question Presented:
Whether claims to computer-implemented inventions - including
claims to systems and machines, processes, and items of manufacture
- are directed to patent-eligible subject matter within the meaning
of 35 U.S.C. § 101 as interpreted by this Court?
Cert. petition filed 9/4/13, conference 12/6/13.
CAFC Opinion, CAFC Argument
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Arthrex, Inc. v. Smith &
Nephew, Inc., No. 13-290
Question Presented:
In Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct.
2060 (2011), this Court held that, to be liable under a
"willful blindness" theory of intent, "(1) the
defendant must subjectively believe that there is a high
probability that a fact exists and (2) the defendant must take
deliberate actions to avoid learning of that fact."
Id. at 2070. The Court explained that "willful
blindness" is a rigorous standard that "surpasses
recklessness and negligence." Ibid. In Safeco
Insurance Co. of America v. Burr, 551 U.S. 47 (2007), the
Court held that a defendant cannot be found to have committed a
violation under the lesser "recklessness" standard if its
actions were consistent with an understanding of legal requirements
that was "not objectively unreasonable," "whatever
[its] subjective intent may have been." Id. at 70
& n.20. The question presented is:
Whether a defendant may be held liable under the "willful
blindness" standard where its actions were consistent with an
understanding of relevant legal requirements that was not
objectively unreasonable.
Cert. petition filed 8/30/13, conference 12/6/13.
CAFC Opinion, CAFC Argument
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Power Integration, Inc. v.
Fairchild Semiconductor Int'l, Inc., No. 13-269
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.
CAFC Opinion, CAFC Argument
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WildTangent, Inc. v.
Ultramercial, LLC, et al., No. 13-255
Question Presented:
When is a patent's reference to a computer, or
computer-implemented service like the Internet, sufficient to make
an unpatentable abstract concept patent eligible under 35 U.S.C. § 101?
Cert. petition filed 8/23/13, waiver by respondent Ultramercial,
LLC filed 11/6/13, conference 12/6/13.
CAFC Opinion, CAFC Argument
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Maersk Drilling USA, Inc. v.
Transocean Offshore Deepwater Drilling, Inc., No.
13-43
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.
CAFC Opinion, CAFC Argument
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The Fox Group, Inc. v. Cree,
Inc., No. 12-1378
Question Presented:
The Federal Circuit's opinion below, for the first time in
American jurisprudence, invalidated a patent based on a prior
"invention" that provided no benefit to the public,
because the prior inventor concealed how to make the invention, did
not commercialize it, and did not apply for a patent. The Federal
Circuit based its holding on a distinction between
"process" and "product" patents that does not
exist in the plain language of the relevant statute, 35 USC §
102. Did the Federal Circuit err in interpreting § 102(g)(2)
to allow non-enabling disclosures to invalidate product patents, a
result that will create significant uncertainty in litigation
involving product patents and penalize patent holders who publicly
shared their inventions?
Cert. petition filed 5/21/13, waiver of respondent Cree, Inc.
filed 6/14/13, response requested 8/5/13, conference 9/30/13,
conference 10/11/13.
CAFC Opinion, CAFC Argument
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Broadcom Corp. v. Azure
Networks, LLC, et al., No. 12-1475
Questions Presented:
- Did the Court's decision in Stewart Organization, Inc. v.
Ricoh Corp., 487 U.S. 22 (1988), change the standard for
enforcement of clauses that designate an alternative federal forum,
limiting review of such clauses to a discretionary,
balancing-of-conveniences analysis under 28 U.S.C. §
1404(a)?
- If so, how should district courts allocate the burdens of proof
among parties seeking to enforce or to avoid a forum-selection
clause?
Cert. petition filed 6/19/13, conference 9/30/13.
CAFC Opinion
WilmerHale represents petitioner Broadcom
Corp.
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Nokia Inc., et al. v. ITC,
No. 12-1352
Questions Presented:
Section 337 of the Tariff Act of 1930 permits
the International Trade Commission to exclude from entry into the
United States an article that infringes a valid and enforceable
patent. Under what is known as the "domestic industry"
requirement, however, it may do so only when a complainant
establishes that there is "an industry in the United States,
relating to the articles protected by the patent."
Respondent InterDigital asserted that petitioner
Nokia violated section 337 by importing cellular handsets into the
United States that allegedly infringed InterDigital's patents.
After a five-day evidentiary hearing, a judge concluded that no
infringement had occurred. In a divided opinion, the Federal
Circuit, employing de novo review, concluded that the patent claims
had been erroneously construed and reversed the non-infringement
determination. The court also held that "licensing alone"
is sufficient to satisfy the domestic industry requirement. In
denying rehearing, the panel majority reiterated that licensing
alone satisfies the domestic industry requirement as long as the
patent concerns "the article that is the subject of the
exclusion proceeding." The questions presented are:
- Whether the "domestic industry" requirement of
section 337 is satisfied by "licensing alone" despite the
absence of proof of "articles protected by the
patent."
- Whether underlying factual determinations in a patent claim
construction ruling should be subject to deferential review by the
Federal Circuit.
Cert. petition filed 5/10/13, conference
10/11/13.
CAFC Opinion, CAFC Argument
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Mirowski Family Ventures, LLC
v. Medtronic, Inc., et al., No. 12-1116, vide 12-1128
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."
- 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?
- 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.
CAFC Opinion, CAFC Argument
WilmerHale represents respondent Medtronic, Inc.
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Sony Computer Entertainment
America LLC, et al. v. 1st Media, LLC, No. 12-1086
Question Presented:
Did the Court of Appeals for the Federal Circuit err in
restricting district courts' equitable discretion in evaluating
patent unenforceability, contrary to this Court's precedent in
Keystone Driller, Hazel-Atlas, and Precision Instrument, by
applying a rigid test that (a) forecloses district courts from
considering the entire circumstantial record; and (b) precludes
district courts from granting equitable remedies where a patent
applicant has violated the PTO's duty of candor.
Cert. petition filed 3/4/13, conference 5/9/13, CVSG 5/13/13,
conference 10/11/13.
CAFC Opinion, CAFC Argument
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Akamai, et al. v. Limelight
Networks, Inc., No. 12-960, vided 12-786 and 12-800
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.
CAFC Opinion, CAFC Argument
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Limelight Networks, Inc. v.
Akamai Technologies, Inc., et al., No. 12-786
Question Presented:
Akamai holds a patent claiming a method involving redirecting
requests for Internet content and selecting optimal servers. The
Federal Circuit acknowledged that neither Limelight nor customers
using Limelight's service directly infringe Akamai's patent
under 35 U.S.C. § 271(a) because no one performs all the steps
of the patented method. App. 6a, 30a. The Federal Circuit
nevertheless held that Limelight could be liable, under 35 U.S.C.
§ 271(b), for inducing infringement if (1) it knew of
Akamai's patent; (2) it performed all but one of the steps of
the method; (3) it induced its customers to perform the final step
of the claimed method; and (4) the customers performed that step.
App. 30a. The question presented is:
Whether the Federal Circuit erred in holding that a defendant may
be held liable for inducing patent infringement under 35 U.S.C.
§ 271(b) even though no one has committed direct infringement
under § 271(a).
Cert. petition filed 12/28/12, conference 6/6/13, conference
6/13/13, conference 6/20/13, CVSG 6/24/13.
CAFC Opinion, CAFC Argument
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The Association for Molecular
Pathology, et al. v. Myriad Genetics, Inc., et al., No.
11-725
Questions Presented:
- Are human genes patentable?
- Did the court of appeas err in adopting a new and inflexible
rule, contrary to normal standing rules and this Court's
decision in MedImmune, Inc. v. Genentech, Inc., 549 U.S.
118 (2007), that petitioners who have been indisputably deterred by
Myriad's "active enforcement" of its patent rights
nonetheless lack standing to challenge those patents absent
evidence that they have been personally and directly threatened
with an infringement action?
Cert. petition filed 12/7/11, conference 2/17/12, likely being
held, perhaps for Mayo Collaborative Services v. Prometheus
Laboratories, Inc., No. 10-1150. Cert. petition granted on
3/26/12; judgment vacated and case remanded for further
consideration in light of Mayo Collaborative Services v.
Prometheus Laboratories, Inc., 500 U.S.__(2012).
CAFC Opinion, CAFC Argument
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