United States: Patent Law And The Supreme Court: Certiorari Petitions Pending (May 2015)

Question Presented:

Did the United States Court of Appeals for the Federal Circuit err in using a de novo standard of review in considering evidence and making new factual findings, instead of using a "clear error" standard of review in reviewing the factual findings underlying the United States District Court for the Eastern District of Texas's claim construction of the term "virtual machine" as used in U.S. Pats. Nos. 6,934,945 and 7,302,683?

Cert. petition filed 3/23/15.

CAFC Opinion, CAFC Argument

Question Presented:

Despite no evidence of a known problem in the prior art, the Court of Appeals for the Federal Circuit ruled below that evidence "implicitly" showing a "potential" problem is sufficient to combine references is an obviousness determination. Never before has any court held that a person of ordinary skill would have been prompted to make a combination based on "an implicit" "potential" problem. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2006), this Court reaffirmed that patent "obviousness" depends on whether evidence shows that persons of ordinary skill in the art had a "reason to combine" earlier technologies into the claimed invention, such as to address a "known problem." Since all inventions necessarily had the "potential" to have been made, the KSR standard supplies rigor to prevent nontechnical judges and juries from using hindsight, or using standardless yardsticks tantamount to "the length of the chancellor's foot." A majority of the divided panel in this case rejected the balance and rigor of the KSR test in favor of tautological standard that asks whether a "potential" (not "known") problem existed in the art.

The question presented is:

Whether an "implicit" acknowledgment of a "potential" problem or "concern," which Judge Moore, in dissent, declared "according to all of the evidence on record, never actually existed," is consistent with this Court's anti-hindsight jurisprudence requiring substantial evidence of a "known problem" to provide a reason for combining references for an obviousness determination.

Cert. petition filed 3/19/15.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether the Federal Circuit has erred in affirming the District Court's summary judgment, believing only in the movant's non-evidentiary and unsupported arguments made in favor of the movant, conclusory stating a non-infringement, without applying, discussing or at least mentioning in the Federal Circuit decision of the movant's statement on record made in favor of nonmovant, evidentiary proving the use of the patented technology in the accused products, thereby creating a genuine evidentiary dispute of the admissible triable evidentiary material fact additionally to other admissible triable evidentiary material facts, including electrical schematic diagram, all of which have been clearly specified and supplied by non-movant for Federal Circuit.
2. Whether the Federal Circuit has erred in affirming the District Court's summary judgment, believing only in the movant's non-evidentiary and unsupported conclusory arguments and in the movant's "amended" interrogatory answer under oath, denying the use of the patented technology, instead of believing in the movant's original interrogatory answer under oath, confirming the use of the patented technology, and in the nonmovant's other evidences, as it is strictly enforced by the common laws requiring that the Courts "must believe the nonmoving party's evidence, and must draw all reasonable inferences in the nonmovant's favor."

Cert. petition filed 3/9/15.

CAFC Opinion, No CAFC Argument

Question Presented:

Section 271(a) of the Patent Act provides that "whoever ... sells any patented invention, within the United States ... infringes the patent." The question presented is whether sales of an infringing product that occur within the United States are beyond the reach of the Patent Act because the products are manufactured and initially shipped overseas, even though they are ultimately imported into and used in the United States.

Cert. petition filed 2/23/15.

CAFC Opinion, CAFC Argument

Question Presented:

Under controlling Supreme Court precedent, a patentee seeking to recover for patent infringement "must in every case give evidence tending to separate or apportion the defendant's profits and the patentee's damages between the patented feature and the unpatented features." Here, in conflict with that important precedent, the District Court, over the Petitioners' objections, permitted the patentee to obtain royalties on both patented and unpatented features, holding that, because the patentee's expert "used the smallest salable unit as his royalty base, additional apportionment is unwarranted and the narrow exception of the entire market value rule is inapplicable." On appeal, the Federal Circuit affirmed the damages award based on that model. Was it proper for the Federal Circuit to sanction a damages award that is in direct conflict with this Court's controlling precedent?

Cert. petition filed 1/23/15.

CAFC Opinion, CAFC Argument

Questions Presented:

Under controlling law in the court below, motions to transfer venue pursuant to 28 U.S.C. § 1404(a) are governed by an application of the "Gilbert" factors used in forum non conveniens determinations as established in Gulf Oil Corp. v. Gilbert, 330 U.S. 501 (1947). The questions presented are:

1. Is a writ of mandamus appropriate to review a trial court's exercise of discretion to deny a transfer motion pursuant to 28 U.S.C. § 1404(a)?
2. 2. Did the Federal Circuit err by issuing a writ of mandamus to reverse the district court's denial of transfer based solely on the Federal Circuit's disagreement with the manner in which the district court applied the Gilbert factors?

Cert. petition filed 2/12/15, waiver of respondent Apple Inc. filed 1/23/15.

CAFC Opinion

Questions Presented:

1. Can the Federal Circuit affirm an administrative agency decision on a novel procedural ground that the agency did not consider?
2. Can the United States Patent and Trademark Office use a standard that this Court expressly rejected in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), to decide whether patent claims violate the definiteness requirement of 35 U.S.C. § 112(b)?

WilmerHale represents petitioner Thomas G. Packard.

Cert. petition filed 12/2/14, conference 5/14/15.

CAFC Opinion, CAFC Argument

Question Presented:

When an applicant for a patent amends a claim to overcome the Patent and Trademark Office's earlier disallowance of the claim, should a court (i) presume that the amendment narrowed the claim and strictly construe the amended claim language against the applicant, as this Court has held; or (ii) presume that the claim scope remained the same and require that any narrowing be clear and unmistakable, as the Federal Circuit has held?Cert. petition filed 12/4/14.

Cert. petition filed 10/16/14, conference 1/9/15, CVSG 1/12/14.

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.

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.

No CA6 opinion available.

Questions Presented:

1. Does a court have jurisdiction to review an agency action omitted from a statute's detailed list of reviewable actions, because (a) the presumption favoring judicial review overrides the statutory text, or (b) the agency action purportedly has the same "operative effect, in terms of economic impact," as actions the statute specifies as reviewable?
2. Where the parties indisputably agreed to arbitrate issues of arbitrability, should a court conduct its own inquiry into the merits of the arbitrability issue before referring the matter to arbitration?

Cert. petition filed 12/31/13, waiver of respondent International Trade Commission filed 3/19/14, conference 4/18/14.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Are human genes patentable?
2. 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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