WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently pending petitions, organized in reverse chronological order by date of certiorari petition.
Lighting Ballast Control LLC v. Universal Lighting Technologies, Inc., No. 13-1536Questions Presented:
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Classen Immunotherapies, Inc. v. Somaxon Pharmaceuticals, No. 13-1508Questions Presented: If some of the steps of a method claim are protected, however additional subsequently performed steps fall outside of the safe harbor, is the claim excluded by the § 271(e)(1)? Does the Safe Harbor protection of 35 U.S.C. § 271(e)(1) extend to commercial activity which relies upon information previously submitted to the FDA but carries no additional reporting requirement? Does the assertion of infringement by a product made by a process under 35 U.S.C. § 271(g) survive even if the process is protected by § 271(e)(1)? Can steps performed as acts of infringement under 35 U.S.C. § 154 be combined with steps performed as acts of infringement under 35 U.S.C. § 271? Cert. petition filed 6/11/14, waiver of respondent Somaxon Pharmaceuticals filed 6/20/14. |
Galderma Laboratories, L.P. v. Tolmar, Inc., No. 13-1350Question 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. |
Stephen Kimble, et al. v. Marvel Enterprises, Inc., No. 13-720Questions Presented: Petitioners are individuals who assigned a patent and conveyed other intellectual property rights to Respondent. The court of appeals "reluctantly" held that Respondent, a large business concern, was absolved of its remaining financial obligations to Petitioners because of "a technical detail that both parties regarded as insignificant at the time of the agreement." App. 2-3; 23. Specifically, because royalty payments under the parties' contract extended undiminished beyond the expiration date of the assigned patent, Respondent's obligation to pay was excused under Brulotte v. Thys Co., 379 U.S. 29, 32 (1964), which had held that "a patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se." A product of a bygone era, Brulotte is the most widely criticized of this Court's intellectual property and competition law decisions. Three panels of the courts of appeals (including the panel below), the Justice Department, the Federal Trade Commission, and virtually every treatise and article in the field have called on this Court to reconsider Brulotte, and to replace its rigid per se prohibition on post-expiration patent royalties with a contextualized rule of reason analysis. The question presented is: Whether this Court should overrule Brulotte v.Thys Co., 379 U.S. 29 (1964) WilmerHale represents respondent Marvel Enterprises, Inc. Cert. petition filed 12/13/13, response requested 1/23/14, conference 5/29/14, CVSG 6/2/14. CAFC Opinion, CAFC Argument |
Advanced Biological Laboratories, SA, et al. v. SmartGene, Inc., No. 13-1299Question Presented: Whether claims to a computerized expert system and method for evaluating treatment options for complex medical conditions which necessarily requires the use of computer, are patent eligible since they do not preempt all practical applications of an abstract idea of "guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition." Cert. petition filed 4/24/14, waiver of respondent SmartGene, Inc. filed 5/2/14, conference 6/5/14, response requested 6/2/14. |
Gevo, Inc. v. Butamax Advanced Biofuels LLC, No. 13-1286Question Presented: Rule 52(a) of the Federal Rules of Civil Procedure provides that
in matters tried to a district court, the court's
"[f]indings of fact . . . must not be set aside unless clearly
erroneous." Cert. petition filed 4/22/14, conference 6/26/14. |
Pronova Biopharma Norge AS v. Teva Pharmaceutical USA, Inc., No. 13-1251Question Presented: The Patent Act provides that a person shall be entitled to a
patent unless the invention was "in public use" in the
United States more than one year before the filing of a U.S. patent
application. 35 U.S.C. § 102(b) (2006). In Egbert v.
Lippmann, this Court held that to constitute an invalidating
public use, an invention must be used without restriction "for
the purpose and in the manner designed by the inventor." The
Federal Circuit applied Egbert in Motionless Keyboard Co. v.
Microsoft Corp., holding that the public-use bar of section
102(b) requires a use of the invention "for its intended
purpose." Cert. petition filed 4/16/14. |
Watkins v. Kajima Intern., Inc., No. 13-1200Question Presented:
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. |
Cisco Systems, Inc. v. Commil USA, LLC, No. 13-1044, vide 13-896Question Presented: When a court sets aside a jury verdict and orders a new trial, the Seventh Amendment requires that all issues be retried "unless it clearly appears that the issue to be retried is so distinct and separable from the others that a trial of it alone may be had without injustice." Gasoline Prods. Co. v. Champlin Ref. Co., 283 U.S. 494, 500 (1931). In this case, the Federal Circuit directed a retrial of Commil's claim that Cisco induced infringement of its patent, but forbade retrial of Cisco's claim that the patent was invalid, even though - as the Federal Circuit held - Cisco's good-faith belief of the patent's invalidity can negate the requisite intent for induced infringement. The question presented is: Whether, and in what circumstances, the Seventh Amendment permits a court to order a partial retrial of induced patent infringement without also retrying the related question of patent invalidity. Cert. petition filed 2/27/14, conference 5/22/14, CVSG 5/27/14. WilmerHale represents cross-petitioner Cisco Systems, Inc. |
Commil USA, LLC v. Cisco Systems, Inc., No. 13-896, vide 13-1044Questions Presented: Commil holds a patent teaching a method to implement short-range wireless networks. At trial, the jury returned a verdict that Commil's patent was valid, that Cisco directly infringed but did not induce infringement, and awarded damages. Because Cisco's counsel invoked stereotypes about Commil's Jewish owner and inventors during trial, the district court found the verdict "inconsistent with substantial justice" and ordered a new trial on inducement and damages only. At the second trial, the jury returned a verdict that Cisco induced infringement and awarded damages. The Federal Circuit reversed and remanded for a third trial on two grounds. First, although Commil's patent is valid, the Federal Circuit held that Cisco's "good faith belief" that the patent was invalid is a defense to induced infringement. Second, although Cisco had actual knowledge of Commil's patent, the Federal Circuit held that this Court's opinion in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), rendered erroneous and prejudicial the jury instruction based on DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006). The questions presented are:
Cert. petition filed 1/23/14, conference 5/22/14, CVSG 5/27/14. |
LG Electronics, Inc., et al. v. InterDigital Communications, LLC, et al., No. 13-796Questions Presented:
Cert. petition filed 12/31/13, waiver of respondent International Trade Commission filed 3/19/14, conference 4/18/14. |
The Association for Molecular Pathology, et al. v. Myriad Genetics, Inc., et al., No. 11-725Questions Presented:
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). The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances. |