This page contains a consolidated list of all recently pending petitions, organized in reverse chronological order by date of certiorari petition.

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.

CAFC Opinion, CAFC Argument

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.

CAFC Opinion, CAFC Argument

Public Patent Foundation, Inc. v. McNeil-PPC, Inc., et al., No. 13-161

Question Presented:

The Patent Act has long forbidden falsely marking and advertising unpatented articles as patented. The false marking statute, 35 U.S.C. § 292, also long provided a qui tam cause of action for any member of the public to pursue violators on the government's behalf. In June 2009, Petitioner filed such an action against Respondent. In September 2011, more than two years after Petitioner filed this case, Congress passed the Leahy-Smith America Invents Act (AIA) that contained amendments to the false marking statute. One such amendment eliminated qui tam standing for members of the public to bring false marking claims. The AIA applied its changes to the false marking statute retroactively and, as a result, the district court dismissed Petitioner's case because Petitioner no longer had standing under the retroactively amended version of the statute. The Court of Appeals summarily affirmed.

Does the retroactive application of the AIA's changes to the false marking statute to this case violate Petitioner's Due Process under the Fifth Amendment?

Cert. petition filed 8/1/13, waiver of respondent United States filed 8/22/13.

CAFC Opinion, CAFC Argument

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. 

CAFC Opinion, CAFC Argument

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, conference 9/30/13, response requested 8/5/13.

CAFC Opinion, CAFC Argument

Broadcom Corp. v. Azure Networks, LLC, et al., No. 12-1475

Questions Presented:

  1. 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)?
  2. 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.

Intema Ltd. v. Perkinelmer, Inc., No. 12-1372

Questions Presented:

The Federal Circuit reversed the District Court and held the claims of Intema's patent ineligible under 35 U.S.C. §101 by misapplying Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) in a manner that creates erroneous, rigid rules for determining patent ineligibility in cases involving laws of nature. If the Judgment of the Federal Circuit is not reversed, it will have the practical effect of rendering most diagnostic, screening and personal medicine tests unpatentable.

The questions presented by this Petition for a Writ of Certiorari are:

  1. Is a useful, novel and non-obvious diagnostic, screening or personal medicine test patent eligible under 35 U.S.C. §101 if:
    1. the inventive concept is in the selection, combination and timing of the data collected in the data-gathering steps; and/or
    2. the final step is calculating a new and useful test result from data collected by novel data-gathering steps, but does not involve a physical activity?
  2. Did this Court in Mayo establish the rigid rules for patent eligibility of claims involving a law of nature found by the Federal Circuit, namely that:
    1. data-gathering steps, even if they include new and non-obvious combinations of known steps, may not be considered all or part of the "inventive concept" that ensures that the patent is significantly more than the natural law itself; and/or
    2. a claimed method that provides test results that determine a course of action must include a final step that involves physical activity?
  3. Should the determination of patent eligibility under Section 101 be based on a Markman claim construction as the District Court did, as opposed to an inaccurate paraphrase of the claim as used by the Federal Circuit?

Cert. petition filed 5/16/13, conference 9/30/13.

CAFC Opinion, CAFC Argument

Raylon, LLC v. Complus Data Innovations, Inc., et al., No. 12-1354

Questions Presented:

The Federal Circuit reversed a Trial Court's denial of sanctions based on its de novo finding that the Plaintiff's patent case was frivolous in violation of Fed. R. Civ. P. Rule 11. In its ruling, the Federal Circuit gave no deference to the Trial Court findings and created a formalistic rule that evidence of non-trivial settlements cannot be considered to determine objective reasonableness of the lawsuit under Rule 11, which conflicts with several other circuits.

The Federal Circuit found that settlement evidence "has no place in the Rule 11 analysis," which ignores the widely-recognized relevance such evidence has in showing the views of objective litigants (e.g. settling Defendants) as to whether the underlying lawsuit was reasonably calculated to elicit a favorable outcome. Petitioner respectfully requests that the Supreme Court grant this Petition for a Writ of Certiorari on the following questions.

  1. Whether the Federal Circuit erred in creating a de facto rule that past non-trivial settlements cannot be considered in objective reasonableness determinations for Fed. R. Civ. P. Rule 11 sanctions, which is a departure from precedent in at least four other Circuits finding that settlements can be considered for objective reasonableness and Rule 11 analysis.
  2. Whether the Federal Circuit erred in finding an abuse of discretion by a Trial Court's consideration of non-trivial settlement evidence in a sanctions determination when such evidence is relevant in demonstrating the views of objective litigants (e.g. settling Defendants) as to whether the Plaintiff's case was reasonable.
  3. Whether the Federal Circuit's lower level of deference given to Trial Court determinations, as shown by its extraordinary reversal rates in patent cases and its adoption of an expanded de novo standard of review, conflicts with the higher level of deference shown to Trial Court determinations by the other circuit courts, especially those courts reviewing Trial Court sanctions determinations.
  4. Whether the Federal Circuit erred in making a de novo determination that the Plaintiff's entire case was "frivolous" without analyzing all the relevant facts normally considered when reviewing the merits of a patent lawsuit, including: (1) the prior Federal Circuit precedent supporting the objective reasonableness of Plaintiff's claim interpretations, (2) the Plaintiff's alternate infringement theories embodied in doctrine of equivalents infringement claims, (3) disagreements among the various Defendants (and with the Plaintiff) regarding the contested claim construction, and (4) the technical and patent law expert opinions supporting the objective reasonableness of the Plaintiff's case.

Cert. petition filed 5/10/13, conference 9/30/13.

CAFC Opinion, CAFC Argument

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:

  1. Whether the "domestic industry" requirement of section 337 is satisfied by "licensing alone" despite the absence of proof of "articles protected by the patent."
  2. 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. 

CAFC Opinion, CAFC Argument

CoreValve Inc. v. Lifesciences AG, No. 12-1325

Questions Presented:

The "enablement" provision of the Patent Act, 35 U.S.C. § 112(a), states that a patent "shall contain a written description of the invention *** in such full, clear, concise, and exact terms as to enable any person skilled in the art *** to make and use the same." The Federal Circuit's cases are in conflict over the meaning and application of this core patentability requirement. The patent at issue claims a collapsible prosthetic valve attached to a stent "for implantation in a body channel." The specification describes the claimed invention as directed primarily to a valve implanted by catheter in the human heart. Yet the specification does not disclose how to make a valve that is small and stable enough to achieve that purpose. Engineers attempting to apply the patent could not make a valve suitable for human implantation despite many years of effort, and no experimental animal survived implantation for more than a few hours. The questions presented are:

  1. Whether a claimed invention is enabled within the meaning of 35 U.S.C. § 112(a) where the patent does not describe how to make and use it and engineers could not do so despite years of effort.
  2. Whether the Federal Circuit's holding that an injunction is presumptively warranted after a verdict of infringement conflicts with this Court's decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).

Cert. petition filed 5/6/13, waiver of respondent Edwards Lifesciences AG filed 5/9/13, response requested 5/20/13, conference 9/30/13.

CAFC Opinion, CAFC Argument

Technology Patents LLC v. T-Mobile (UK) Ltd., et al., No. 12-1292

Questions Presented:

  1. Whether a court of appeals may refuse to decide if an appealed dismissal of a party for lack of jurisdiction was proper, and instead make rulings on the merits regarding that party including factual findings on issues not addressed by the district court without first establishing jurisdiction over that party.
  2. Did the court of appeals err in conducting a de novo review of a summary judgment by not believing the declaration submitted by non-movant and by not drawing inferences in non-movant's favor?

Cert. petition filed 4/26/13, waiver of respondent AT&T Mobility, LLC filed 5/13/13, waivers of respondents T-Mobile (UK) Ltd., H3G S.P.A., Advanced Info Service PLC, et al., PCCW Mobile HK Ltd, KDDI, Corp. filed 5/28/13, waiver of respondent TMN – Telecomunicacoes moveis Nacionais, S.A. filed 5/29/13, conference 9/30/13.

CAFC Opinion, CAFC Argument

Finjan, Inc. v. Patent and Trademark Office, No. 12-1245

Question Presented:

Whether all prior art should be presumed enabled in the United States Patent and Trademark Office.

Cert. petition filed 4/11/13, conference 9/30/13.

CAFC Opinion, CAFC Argument

Octane Fitness, LLC v. Icon Health & Fitness, Inc., No. 12-1184

Question Presented:

Does the Federal Circuit's promulgation of a rigid and exclusive two-part test for determining whether a case is "exceptional" under 35 U.S.C. § 285 improperly appropriate a district court's discretionary authority to award attorney fees to prevailing accused infringers in contravention of statutory intent and this Court's precedent, thereby raising the standard for accused infringers (but not patentees) to recoup fees and encouraging patent plaintiffs to bring spurious patent cases to cause competitive harm or coerce unwarranted settlements from defendants?

Cert. petition filed 3/27/13, conference 6/20/13, conference 9/30/13.

CAFC Opinion, CAFC Argument

Highmark Inc. v. Allcare Health Management Systems, Inc., No. 12-1163

Question Presented:

IThe Patent Act provides that a "court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285. A case is "exceptional" if it is objectively baseless and brought in bad faith. After living with this case for more than six years, the District Court found that it was objectively baseless and brought in bad faith, and it awarded fees. Over a strong dissent, a Federal Circuit panel reversed, holding that a district court's objective baselessness determination is reviewed "without deference." Pet. App. 9a. The Federal Circuit denied rehearing en banc by a vote of six to five. One of the two pointed dissents from that denial accurately observed that the decision below "deviates from precedent *** and establishes a review standard for exceptional case findings in patent cases that is squarely at odds with the highly deferential review adopted by every regional circuit and the Supreme Court in other areas of law." Pet. App. 191a. The question presented is:

Whether a district court's exceptional-case finding under 35 U.S.C. § 285, based on its judgment that a suit is objectively baseless, is entitled to deference.

Cert petition filed 3/25/13, conference 5/23/13, response requested 5/14/13, conference 9/30/13.

CAFC Opinion, CAFC Argument

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." 

  1. 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?
  2. 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.

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.

CAFC Opinion, CAFC Argument

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

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

The Association for Molecular Pathology, et al. v. Myriad Genetics, Inc., et al., No. 11-725

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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