United States: Patent Law And The Supreme Court: Patent Certiorari Petitions Pending (April 2016)

Questions Presented:

In Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966), this Court recognized the relevance of "objective indicia" of nonobviousness (also known as "secondary considerations")—including the long-felt need for the patented invention, the failure of others to arrive at the invention, and the invention's subsequent commercial success—in determining whether a patent's claims were obvious to a person of ordinary skill in the art. In this case, the district court created, and the Federal Circuit affirmed, two categorical limitations on the consideration of objective indicia of nonobviousness that exist nowhere in the Patent Act or this Court's jurisprudence.

The questions presented are:

1. Whether a court may categorically disregard objective indicia of a patent's nonobviousness merely because the considerations apply to one commercial embodiment of a patented invention, rather than all embodiments.
2. Whether a court may categorically disregard objective evidence of a long-felt need for a patented invention merely because the need is not expressly recited in the patent claims.

Cert. petition filed 3/28/16.

CAFC Opinion, CAFC Argument

WilmerHale represents petitioner Cubist Pharmaceuticals, Inc.

Question Presented:

Did the United States Court of Appeals for the Federal Circuit have jurisdiction over an appeal from the United States District Court for the Eastern District of Texas rather than transferring the case to the Fifth Circuit, where that appeal presented only questions of state trade secret law, and the appeal therefore was not a "civil action arising under . . . any Act of Congress relating to patents" as required by 28 U.S.C. § 1295(a)(1) as amended by the AIA?

Cert. petition filed 3/22/16, waiver of respondent Sabatino Bianco filed 3/28/16, conference 4/22/16.

CAFC Opinion, CAFC Argument

Questions Presented:

Vehicle Intelligence and Safety LLC respectfully petitions for a writ of certiorari to review the judgment of the United States Court of Appeals for the Federal Circuit, that while quoting the test in Alice Corp. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014) in deciding patent eligibility under 35 U.S.C. § 101, has however in actual practice, multiple-mutated this test into a universal pesticide to kill and invalidate virtually all patents. The first mutation makes every invention's inevitable use or application of an abstract idea (as a tool or stepping stone for a greater goal) in a claim element automatic, conclusive proof of preemption of the abstract idea by the entire patent claim. The second mutation demands teaching all the invention implementation details, which implicitly requires that every patent and every patent claim go back and re-teach in a vacuum the already known prior art all over again in order to have any qualifying inventive concepts for Alice test patent eligibility.

1. Does the Supreme Court's Alice test for 35 U.S.C. § 101 patent eligibility, or 35 U.S.C. § 101, actually state that use or application of an abstract idea is automatic, conclusive proof of preemption of the abstract idea?
2. Does the Supreme Court's Alice test for 35 U.S.C. § 101 patent eligibility actually require any patent which improves on already known prior art technology, to re-teach in a vacuum the already known prior art technology all over again in the specification and in each claim in order to have any inventive concepts that qualify for court recognition to satisfy the second step of the Supreme Court's Alice test?
3. Doesn't a patent satisfy step two of the Supreme Court's Alice test for 35 U.S.C. § 101 patent eligibility by having independent patent claims that include multiple explicitly-stated inventive concepts?

Cert. petition filed 3/24/16.

CAFC Opinion, No CAFC Argument

Questions Presented:

The "patent exhaustion doctrine"—also known as the "first sale doctrine"—holds that "the initial authorized sale of a patented item terminates all patent rights to that item." Quanta Computer, Inc. v. LG Electronics, Inc., 553 U.S. 617, 625 (2008). This case presents two questions of great practical significance regarding the scope of this doctrine on which the en banc Federal Circuit divided below:

1. Whether a "conditional sale" that transfers title to the patented item while specifying post-sale restrictions on the article's use or resale avoids application of the patent exhaustion doctrine and therefore permits the enforcement of such post-sale restrictions through the patent law's infringement remedy.
2. Whether, in light of this Court's holding in Kirtsaeng v. John Wiley & Sons, Inc., 133 S. Ct. 1351, 1363 (2013), that the common law doctrine barring restraints on alienation that is the basis of exhaustion doctrine "makes no geographical distinctions," a sale of a patented article—authorized by the US patentee—that takes place outside of the United States exhausts the US patent rights in that article.

Cert. petition filed 3/21/16.

CAFC Opinion, CAFC Argument

Question Presented:

Can the Patent and Trademark Office appropriately apply the "broadest reasonable interpretation" standard rather than the plain and ordinary meaning standard used by the federal courts in construing patent claims in inter partes reviews challenging patent validity?

Cert. petition filed 3/14/16.

CAFC Opinion, CAFC Argument

Question Presented:

In 1996, two doctors discovered cell-free fetal DNA (cffDNA) circulating in maternal plasma. They used that discovery to invent a test for detecting fetal genetic conditions in early pregnancy that avoided dangerous, invasive techniques. Their patent teaches technicians to take a maternal blood sample, keep the non-cellular portion (which was "previously discarded as medical waste"), amplify the genetic material within (which they alone knew about), and identify paternally inherited sequences as a means of distinguishing fetal and maternal DNA. Notably, this method does not preempt other demonstrated uses of cffDNA.

The Federal Circuit "agree[d]" that this invention "combined and utilized man-made tools of biotechnology in a new way that revolutionized prenatal care." Pet. App. 18a. But it still held that Mayo Collaborative Servs. v. Prometheus Labs., 132 S. Ct. 1289 (2012), makes all such inventions patent-ineligible as a matter of law if their new combination involves only a "natural phenomenon" and techniques that were "routine" or "conventional" on their own. Multiple judges wrote separately below to explain that while this result was probably not intended by Mayo, it controlled, and only this Court could now "clarify" Mayo's reach to prevent a "crisis" in life-science innovation.

The Question Presented is:

Whether a novel method is patent-eligible where: (1) a researcher is the first to discover a natural phenomenon; (2) that unique knowledge motivates him to apply a new combination of known techniques to that discovery; and (3) he thereby achieves a previously impossible result without preempting other uses of the discovery?

Cert. petition filed 3/21/16.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether the decision below violates Article 1, section 8 of the Constitution by ignoring the scope of patent eligibility adopted by Congress in 35 U.S.C. § 101 as interpreted by this Court?
2. Whether the lower courts incorrectly applied both steps of the Alice Corporation v. CLS Bank framework for Section 101 to the patent claims at issue in contravention of this Court's jurisprudence on patent-eligibility, as well as 35 U.S.C. § 103, and related precedent of the Court on patent validity, including Graham v. John Deere?
3. Whether the Federal Circuit's application of its modified Federal Rule of Appellate Procedure 36 to affirm a trial court decision based on Alice effectively eliminate Cloud Satchel's right to appeal as set forth in 28 U.S.C. § 1295(a)?

Cert. petition filed 3/16/16, waiver of respondent Amazon.com filed 3/22/16, waiver of respondent Barnes & Noble, Inc. filed 3/23/16, conference 4/22/16.

CAFC Opinion, CAFC Argument

Question Presented:

Whether factual findings underlying a district court's determination on the definiteness of a patent claim under the Patent Act, 35 U.S.C. 112, like a district court's factual findings underlying construction of a patent claim, are subject to appellate review only for clear error or substantial evidence rather than de novo review.

Cert. petition filed 3/16/16.

CAFC Opinion, CAFC Argument

Questions Presented:

The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) ("AIA"), created a new post-grant procedure at the US Patent and Trademark Office to address "the validity of covered business method patents." Id. § 18(a)(1). The AIA defines a "covered business method patent" ("CBM") as "a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service." Id. § 18(d)(1). The statute exempts "patents for technological inventions" from CBM review. Ibid. The questions presented are:

1. Whether the phrase "covered business method patent"—and "financial product or service"—encompasses any patent claim that is "incidental to" or "complementary to a financial activity and relates to monetary matters."
2. Whether the Federal Circuit's standard for identifying patents falling within the "technological inventions" exception departs from statutory text by looking to whether the patent is valid, as opposed to whether it is "technological."
3. Whether a software-related invention that improves the performance of computer operations is patent-eligible subject matter.
4. Whether, as this Court will decide in Cuozzo Speed Technologies, LLC v. Lee, No. 15-446, the Patent Trial and Appeal Board should give claim terms their broadest reasonable construction in post-grant adjudicatory proceedings, or should instead give them their best construction.

Cert. petition filed 3/15/16.

CAFC Opinion, CAFC Argument

Questions Presented:

This Court has held that, by its terms, 35 U.S.C. § 271(f) is an "exception" to "the general rule under United States patent law that no infringement occurs when a patented product is made and sold in another country." Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 441 (2007). Section 271(f) defines acts of patent infringement by reference to extraterritorial conduct: if certain requirements are met, infringement occurs where components of a patented invention are exported abroad for combination "outside of the United States in a manner that would infringe the patent if such combination occurred within the United States."

Here, despite affirming that Respondent was liable for infringement under § 271(f), the court of appeals nullified all the Petitioner's lost-profit damages awarded because those damages were based on so-called "foreign lost profits." The court of appeals based its ruling on an understanding of the presumption against extraterritoriality that neither this Court nor any other has adopted and did so over the dissent of three circuit judges. The court of appeals held that even when Congress has overridden the presumption in creating liability, the presumption must be applied a second time to restrict damages. That approach guts Congress's enactment of § 271(f), which was specifically adopted to overrule this Court's decision in Deepsouth Packaging Co. v. Laitram Corp., 406 U.S. 518 (1972).

Separately, the court of appeals also affirmed the district court's decision not to enhance damages under 35 U.S.C. § 284, by applying the restrictive view of that statute currently under review this Term in Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513, and Stryker Corp. v. Zimmer, Inc., No. 14-1520.

The questions presented are:

1. Whether the court of appeals erred in holding that damages based on a patentee's so called "foreign lost profits" are categorically unavailable in cases of patent infringement under 35 U.S.C. § 271(f).
2. Whether the Court should hold this Petition for Halo and Stryker.

Cert. petition filed 2/26/16.

CAFC Opinion, CAFC Argument

Questions Presented:

This Petition presents two questions raised in two previous petitions for writs of certiorari. With respect to the first question presented here, this Court has granted certiorari in Cuozzo Speed Technologies, LLC v. Lee, No. 15-466 (S. Ct. Jan. 15, 2016), and the second question presented here is currently pending in another petition before this Court, Achates Reference Publ'g, Inc. v. Apple Inc. and Lee, No. 15-842 (S. Ct. Dec. 29, 2015).

In 2011, Congress enacted the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284, creating post-grant adjudicatory proceedings for challenging patentability of patents. Among other types of proceedings, the AIA created inter partes review (IPR) proceedings, which are heard by the newly-established Patent Trial and Appeal Board (Board) in the United States Patent and Trademark Office (PTO). Since the inception of IPR proceedings, the number of challengers has increased at an unexpected and unparalleled rate, with roughly 4,000 petitions being filed to date. The Board has instituted review in over two-thirds of its IPR institution decisions, and roughly 87% of cases proceeding to final written decisions have resulted in the cancellation of some or all claims under review. Based on these success rates, the proceedings have quickly become the venue of choice for entities wishing to challenge patent validity.

In Cuozzo, Achates, and this case, the Federal Circuit held that it lacks jurisdiction to review claims that the Board exceeded its statutory authority in instituting their respective IPRs. In each case, the Federal Circuit denied review without due consideration of the strong presumption of judicial review of agency action. In Cuozzo, the Federal Circuit denied review of the institution decision itself, and this Court has granted certiorari to determine whether a Board institution decision made in excess of its statutory authority is judicially reviewable. In Achates, the Federal Circuit denied judicial review of a decision made in excess of its statutory authority both at the institution phase and in the Board's final written decision, for which the AIA affords judicial review under 35 U.S.C. § 319 and § 141(c). This case has analogous issues to those in Cuozzo and Achates, as the board exceeded its statutory authority at both institution and in its final written decision. Judicial review is available under § 319 and § 141(c) to determine whether the Board exceeded its statutory authority by instituting IPR and issuing its final written decision, notwithstanding that the patent challenger was served with a complaint alleging infringement of the patent more than one year before filing its petition for IPR in direct violation of 35 U.S.C. § 315(b).

The questions presented are as follows:

1. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board's decision whether to institute an IPR proceeding is judicially unreviewable.
2. Whether the court of appeals erred in holding that, even if the Board expressly decided in its final written decision that it had statutory authority to institute the proceeding, the Board's decision is judicially unreviewable.

Cert. petition filed 2/10/16, waiver of respondents Ingenio, Inc. and Yellowpages, LLC filed 4/11/16.

CAFC Opinion, No CAFC Argument

Question Presented:

In Petrella v. Metro-Goldwyn-Mayer, this Court ruled that if a damages claim is timely under the relevant statute of limitations, judges cannot bar the claim by invoking the defense of laches. 134 S. Ct. 1962 (2014). The timeliness of the claim depends on "Congress' judgment," not the discretion of judges exercising their equitable powers. Id. at 1967.

In this case, the Federal Circuit affirmed the use of laches to dismiss damages claims that were timely under the Patent Act's statute of limitations. The Federal Circuit relied on a 6-5 en banc decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Prods., LLC, 807 F.3d 1311 (Fed. Cir. 2015), that disregarded Petrella's admonition that "courts are not at liberty to jettison Congress' judgment on the timeliness of suit." 134 S. Ct. at 1967. Rather than following Petrella, the Federal Circuit created an exception for damages claims in patent cases.

The question presented is:

May judges use the equitable defense of laches to bar legal claims for damages that are timely under the express terms of the Patent Act.

Cert. petition filed 2/2/16, conference 4/22/16.

CAFC Opinion was unpublished, No CAFC Argument

Question Presented:

Nearly 30 years have passed since this Court last applied Article III Separation of Powers principles to declare the authority of Congress to empower an executive agency to adjudicate a private dispute. More recently in a non-agency context, in Stern v. Marshall, 131 S. Ct. 2594 (2011), Justice Scalia's concurring opinion questioned the "multifactors relied upon today [that] seem to have entered our [public rights] jurisprudence almost randomly."  Id. at 2621 (Scalia, J., concurring). The two other Stern opinions (majority and dissent) have all members of this Court expressing dissatisfaction with the clarity of Article III public rights jurisprudence: either it "has not been entirely consistent," id. at 2611 (majority), or preceding cases "do not admit of easy synthesis." Id. at 2624 (dissent) (citation omitted). Congress continues to pass laws against this murky backdrop, risking inappropriate expansion of the administrative state.

The question presented is whether 35 U.S.C. §318(b) violates Article III of the United States Constitution, to the extent that it empowers an executive agency tribunal to assert judicial power canceling private property rights amongst private parties embroiled in a private federal dispute of a type known in the common law courts of 1789, rather than merely issue an advisory opinion as an adjunct to a trial court.

Cert. petition filed 1/21/16.

CAFC Opinion was unpublished, No CAFC Argument

Question Presented:

In Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (2014), the Court held that the defense of laches cannot be used to shorten the three-year copyright limitations period set forth in 17 U.S.C. § 507(b), observing that "we have never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period." 134 S. Ct. at 1974. In reaching its decision, the Court noted that the Federal Circuit follows a contrary rule in the patent setting, applying laches to bar infringement claims accruing within the six-year limitations period prescribed in 35 U.S.C. § 286, but stated: "[w]e have not had occasion to review the Federal Circuit's position." Petrella, 134 S. Ct. at 1974 n.15 (discussing A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc)).

Following Petrella, the Federal Circuit convened en banc in this matter to consider the conflict between Petrella and Aukerman. All judges of the court agreed that there is "no substantive distinction material to the Petrella analysis" between the copyright and patent limitations periods. Pet. App. 18a. Nevertheless, in a 6-5 decision, the court reaffirmed its position in Aukerman and held that laches may be used to bar patent infringement claims accruing within the six-year limitations period.

The question presented is:

Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act's six-year statutory limitations period, 35 U.S.C. § 286.

Cert. petition filed 1/19/16, conference 4/22/16.

CAFC Opinion, CAFC Argument

Question Presented:

Can the Patent and Trademark Office appropriately apply the "broadest reasonable interpretation" standard in construing patent claims in post-grant validity challenges?

Cert. petition filed 11/27/15, conference 4/15/16.

CAFC Opinion, CAFC Argument

Questions Presented:

1. Whether the Federal Circuit erred by applying a rigid, two-part test for willful patent infringement and the enhancement of damages under 35 U.S.C. § 284, which is the same rigid, two-part test this Court rejected in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) for an award of attorney fees under 35 U.S.C. § 285, a statute with very similar wording as Section 284.

2. Whether a district court has discretion to enhance damages under 35 U.S.C. § 284 (similar to the "exceptional case" abuse-of-discretion standard for 35 U.S.C. § 285, as set forth in Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014)), where the infringer, one of the world's largest toy companies, intentionally copied the patented game of a competitor, a small three-person toy company, and made no attempt to avoid infringement of the smaller company's valid patent.

Cert. petition filed 11/10/15, conference 1/15/16.

CAFC Opinion, CAFC Argument

Questions Presented:

35 U.S.C. § 271(f)(1) provides that it is an act of patent infringement to "suppl[y] . . . in or from the United States all or a substantial portion of the components of a patented invention, . . . in such manner as to actively induce the combination of such components outside the United States." Despite this Court's clear dictate that section 271(f) should be construed narrowly, Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007), the Federal Circuit held that Life Technologies is liable for patent infringement for worldwide sales of a multi-component kit made abroad because just a single, commodity component of the kit was shipped from its U.S. facility to its own foreign facility. The questions presented are:

1. Whether the Federal Circuit erred in holding that a single entity can "actively induce" itself to infringe a patent under 35 U.S.C. § 271(f)(1).
2. Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all worldwide sales

Cert. petition filed 6/26/15, conference 9/28/15, CVSG 10/5/15.

CAFC Opinion, CAFC Argument

WilmerHale represents respondent Promega Corporation

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