WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently granted petitions, organized in reverse chronological order by date of certiorari petition.
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Medtronic, Inc. v. Boston
Scientific Corp., et al., No. 12-1128
Question Presented: In MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 137 (2007),
this Court ruled that a patent licensee that believes that its
products do not infringe the patent and accordingly are not subject
to royalty payments is "not required ... to break or terminate
its ... license agreement before seeking a declaratory judgment in
federal court that the underlying patent is ... not
infringed." The question presented is: Merit Briefs Brief for Petitioner, Medtronic, Inc. Amicus Briefs Brief for Legal Scholars in Support of
Petitioner |
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Upsher-Smith
Laboratories, Inc. v. Louisiana Wholesale Drug Co., Inc. et
al., No. 12-265
Question Presented: Whether the Third Circuit erred by holding, contrary to the
Second, Eleventh, and Federal Circuits, that an agreement settling
patent litigation that does not restrict competition outside the
scope of the exclusionary right granted by the patent itself may
presumptively violate the antitrust laws. |
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Merck &
Co., Inc. v. Louisiana Wholesale Drug Co., Inc., et al., No.
12-245
Question Presented: CA3 Opinion, CA3 Argument: Part 1, CA3 Argument: Part 2 |
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Bowman v. Monsanto Co.,
No. 11-796
Question Presented: Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies? Cert. petition filed 12/20/11, response requested 1/26/12, conference 3/30/12, CVSG 4/2/12, conference 9/24/12, conference 10/5/12, cert. petition granted 10/5/12, argued 2/19/13 (transcript here), affirmed 5/13/13 (opinion here), rehearing petition filed 6/7/13. Merit Briefs Brief for Petitioner Vernon Hugh Bowman Amicus Briefs Brief for the American Antitrust Institute,
National Farmers Union, Food & Water Watch, Organization for
Competitive Markets, and National Family Farm Coalition in Support
of Petitioner WilmerHale represents respondent Monsanto. |
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Gunn v. Minton, No.
11-1118
Questions Presented: Did the Federal Circuit depart from the standard this Court articulated in Grable & Sons Metal Products, Inc. v. Darue Eng'g & Mfg., 545 U.S. 308 (2005 ), for "arising under" jurisdiction of the federal courts under 28 U.S.C. § 1338, when it held that state law legal malpractice claims against trial lawyers for their handling of underlying patent matters come within the exclusive jurisdiction of the federal courts? Because the Federal Circuit has exclusive jurisdiction over appeals involving patents, are state courts and federal courts strictly following the Federal Circuit's mistaken standard, thereby magnifying its jurisdictional error and sweeping broad swaths of state law claims - which involve no actual patents and have no impact on actual patent rights - into the federal courts? Cert. petition filed 3/9/12, waiver of respondent Vernon Minton filed 3/23/12, response requested 4/12/12, conference 10/5/12, cert. petition granted 10/5/12, argued 1/16/13 (transcript here), reversed and remanded 2/20/13 (decision here). Texas Supreme Court Opinion, Texas Supreme Court Argument Merit Briefs Brief for Petitioners Jerry W. Gunn, Individually;
Williams Squires & Wren, L.L.P.; James E. Wren, Individually;
Slusser & Frost, L.L.P.; William C. Slusser, Individually;
Slusser Wilson & Partridge, L.L.P.; and Michael E. Wilson,
Individually Amicus Briefs Brief for American Intellectual Property Law
Association in Support of Petitioners |
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The Ass'n for Molecular
Pathology, et al. v. Myriad Genetics, Inc., et al., No.
12-398
Questions Presented: Many patients seek genetic testing to see if they have mutations in their genes that are associated with a significantly increased risk of breast or ovarian cancer. Respondent Myriad Genetics obtained patents on two human genes that correlate to this risk, known as BRCA1 and BRCA2. These patents claim every naturally-occurring version of those genes, including mutations, on the theory that Myriad invented something patent-eligible simply by removing ("isolating") the genes from the body. Petitioners are primarily medical professionals who regularly use routine, conventional genetic testing methods to examine genes, but are prohibited from examining the human genes that Myriad claims to own. This case therefore presents the following questions:
Cert. petition filed 9/25/12, conference 11/30/12, cert. petition granted 11/30/12 (limited to question 1), argued 4/15/13 (transcript here), affirmed in part, reversed in part 6/13/13 (decision here). Merit Brief Brief for Petitioners, the Association for
Molecular Pathology, et al. Amicus Briefs Brief for AARP in Support of Petitioners |
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FTC v. Actavis, Inc., et
al., No. 12-416
Question Presented: Federal competition law generally prohibits an incumbent firm from agreeing to pay a potential competitor to stay out of the market. See Palmer v. BRG of Ga., Inc., 498 U.S. 46, 49-50 (1990). This case concerns agreements between (1) the manufacturer of a brand-name drug on which the manufacturer assertedly holds a patent, and (2) potential generic competitors who, in response to patent-infringement litigation brought against them by the manufacturer, defended on the grounds that their products would not infringe the patent and that the patent was invalid. The patent litigation culminated in a settlement through which the seller of the brand-name drug agreed to pay its would-be generic competitors tens of millions of dollars annually, and those competitors agreed not to sell competing generic drugs for a number of years. Settlements containing that combination of terms are commonly known as "reverse payment" agreements. The question presented is as follows: Whether reverse-payment agreements are per se lawful unless the underlying patent litigation was a sham or the patent was obtained by fraud (as the court below held), or instead are presumptively anticompetitive and unlawful (as the Third Circuit has held). Cert. petition filed 10/4/12, conference 12/7/12, cert. petition granted 12/7/12, argued 3/25/13 (transcript here), reversed and remanded 6/17/13 (decision here). CA11 Opinion, CA11 Argument not available. Merit Briefs Brief for the Petitioner, FTC Amicus Briefs Brief for 118 Law, Economics, and Business
Professors and the American Antitrust Institute in Support of
Petitioner |
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Byrne v. Wood, Herron &
Evans, LLP, et al., No. 11-1497
Questions Presented: Did the Federal Circuit depart from the standard this Court articulated in Grable & Sons Metal Products, Inc. v. Darue Eng'g & Mfg., 545 U.S. 308 (2005), for "arising under" jurisdiction of the federal courts under 28 U.S.C. § 1338, when it held that state law legal malpractice tort claims which involve no actual patents and have no impact on actual patent rights come within the exclusive jurisdiction of the federal courts because a patent was involved in underlying litigation? Has the Federal Circuit's overly broad and mistaken standard caused a conflict among state courts and federal courts regarding federal jurisdiction with some other courts declining to assume federal jurisdiction of these state law tort cases? Cert petition filed 6/8/12, conference 10/5/12, conference 2/22/13, GVR in light of Gunn v. Minton, 2/25/13. |
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USPPS, Ltd. v. Avery Dennison
Corp., et al., No. 12-539
Questions Presented:
Cert. petition filed 9/13/12, response requested 1/3/13, conference 4/12/13, GVR in light of Gunn v. Minton 4/15/13. |
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WildTangent, Inc. v.
Ultramercial, LLC, et al., No. 11-962
Question Presented: Whether, or in what circumstances, a patent's general and indeterminate references to "over the Internet" or at "an Internet website" are sufficient to transform an unpatentable abstract idea into a patentable process for purposes of 35 U.S.C. § 101. Cert. petition filed 2/2/12, waiver filed by respondent Ultramercial, LLC 3/22/12, response requested 3/30/12, conference 5/17/12, GVR 5/21/12. |
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Caraco Pharm. Laboratories,
Ltd., et al. v. Novo Nordisk A/S, et al., No. 10-844
Question Presented: Whether the counterclaim provision of the Hatch-Waxman Act, 21 U.S.C. § 355(j)(5)(C)(ii)(I), applies where (1) there is "an approved method of using the drug" that "the patent does not claim," and (2) the brand submits "patent information" to the FDA that misstates the patent's scope, requiring "correct[ion]." Cert. petition filed 12/23/10. Conference 3/25/11; CVSG 3/28/11; conference 6/23/11; cert. petition granted 6/27/11; motion of the Solicitor General for leave to participate in oral arguments as amicus curiae and for divided argument granted on 11/7/11, argued 12/5/11, reversed 4/17/12. CAFC Opinion, CAFC Argument, Supreme Court Argument, Supreme Court Opinion United States Amicus Brief ISO Cert., Mylan Pharmaceuticals Inc. Amicus Brief ISO Cert., Generic Pharmaceutical Association Amicus Brief ISO Cert., AARP and U.S. Public Interest Research Group Amicus Brief ISO Cert., Rep. Henry A. Waxman Amicus Brief ISO Cert., Brief of Petitioners Caraco Pharmaceutical Lab., et al, The Pharmaceutical Research and Manufacturers of America Amicus Brief, Brief of Respondents Novo Nordisk. |
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Kappos v. Hyatt, No.
10-1219
Questions Presented: When the U.S. Patent and Trademark Office (PTO) denies an application for a patent, the applicant may seek judicial review of the agency's final action through either of two avenues. The applicant may obtain direct review of the agency's determination in the Federal Circuit under 35 U.S.C. § 141. Alternatively, the applicant may commence a civil action against the Director of the PTO in federal district court under 35 U.S.C. § 145. In a Section 145 action, the applicant may in certain circumstances introduce evidence of patentability that was not presented to the agency. The questions presented are as follows:
Cert. petition filed 4/7/11. Conference 6/23/11; cert. petition granted 6/27/11, argued 1/9/12, affirmed and remanded 4/18/12. CAFC Argument, Supreme Court Argument, Supreme Court Opinion Intel Corporation Amicus Brief ISO Cert., IEEE-USA Amicus Brief, Verizon Communications Inc., Google Inc., Hewlett-Packard Co., HTC Corp. Amicus Brief, NY Intellectual Property Law Association Amicus Brief, Intellectual Property Owners Association Amicus Brief |
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Mayo Collaborative Services,
dba Mayo Medical Laboratories, et al. v. Prometheus Labs.,
Inc., No. 10-1150
Question Presented: Whether 35 U.S.C. § 101 satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occuring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve "transformations" of body chemistry. Cert. petition filed 3/17/11. Conference 6/16/11; cert. petition granted 7/20/11; motion of the Solicitor General for leave to participate in oral argument as amicus curiae and for divided argument granted on 11/22/11, argued 12/7/11. Reversed 3/20/12. CAFC Argument, Supreme Court Argument, Supreme Court Opinion Verizon Communications Inc. and Hewlett-Packard Co. Amicus Brief ISO Cert., United States Amicus Brief, Microsoft Co., EMC Co. and Intel Co. Amicus Brief, Internationale Pour La Protection De La Propriété Intellectuelle and International Association for the Protection of Intellectual Property (U.S.) Amicus Brief WilmerHale filed an amicus brief in support of neither party on behalf of Roche Molecular Systems, Inc., et al. |
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Eisai Co. Ltd. v. Teva
Pharm.USA, Inc., No. 10-1070
Questions Presented: When a case becomes moot by the happenstance of a third party's independent action after the court of appeals issues a judgment but while a petition for rehearsing is still pending, should the court of appeals vacate the judgment upon the request of the aggrieved party? Cert. petition filed 2/25/11. Waiver filed 3/11/11; conference 4/15/11; response requested 3/30/11; conference 5/26/11; conference 6/2/11; conference 6/9/11; GVR (mootness) 6/13/11. |
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Microsoft Corp. v. i4i Ltd.
P'ship, No. 10-290
Question Presented: Whether the court of appeals erred in holding that Microsoft's invalidity defense must be proved by clear and convincing evidence. Cert. petition filed 8/27/10. Conference 11/23/10; cert. petition granted 11/29/10; argument 4/18/11; affirmed 6/9/11. WilmerHale represents respondent i4i Limited Partnership, et al. |
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Board of Trustees of the Leland
Stanford Junior University v. Roche Molecular System., Roche
Diagnostics Corporation, Roche Diagnostics Operations, Inc.,
No. 09-1159
Question Presented: Whether a federal contractor university's statutory right under the Bayh-Dole Act, 35 U.S.C. §§ 200-212, in inventions arising from federally funded research can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor's rights to a third party? Cert. petition filed 3/22/10. Conference 6/24/10; CVSG 6/28/10; conference 10/29/10; cert. petition granted 11/1/10; argument 2/28/11; affirmed 6/9/11. WilmerHale represents respondent Roche Molecular Systems, Inc., et al. |
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Global-Tech Apppliances and
Pentalpha Enterprises, Ltd., v. SEB S.A., No. 10-6
Question Presented: Whether the legal standard for the state of mind element of a claim for actively inducing infringement under 35 U.S.C. § 271(b) is "deliberate indifference of a known risk" that an infringement may occur, as the Court of Appeals for the Federal Circuit held, or "purposeful, culpable expression and conduct" to encourage an infringement, as this Court taught in MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 937, 125 S. Ct. 2764, 2780, 162 L. Ed. 2d 781, 801 (2005)? Cert. petition filed on 6/23/10. Conference 10/8/10; cert. petition granted 10/12/10; argument 2/23/11; affirmed 5/31/11. WilmerHale filed an amicus brief in support of petitioner on behalf of Cisco Systems, Inc., et al. |
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Mayo Collaborative Services
(d/b/a Mayo Medical Laboratories) and Mayo Clinic Rochester v.
Prometheus Laboratories, Inc., No. 09-490
Question Presented: Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between patient test results and patient health, so that the claim effectively preempts all uses of these naturally occurring correlations? Cert. petition filed on 10/22/09. Conference 1/22/10; cert. petition granted on 6/29/10; judgment vacated and case remanded for further consideration in light of Bilski v. Kappos, 561 U.S. __ (2010). |
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Classen Immunotherapies,
Inc.,v. Biogen Idec, Glaxosmithkline and Merck & Co, Inc.,
No. 08-1509
Question Presented: Is the CAFC's test for patentability under 35 U.S.C. §101, as defined in Bilski, the "machine or transformation test" appropriate for determining patentability of a method of using pharmaceuticals and "medical activities"? Do pharmaceuticals including vaccines fall under the definition of an apparatus? Does medical treatment including immunization constitute transformation. Are methods of diagnosing disease or assays for detecting drug adverse events patentable under Bilski and if not is Bilski too narrow or should it not apply to medical activities? (If the court accepts cert in Bilski, this petition for cert should be stayed pending the outcome of Bilski). Cert. petition filed on 5/11/09. Conference 11/24/09; cert. petition granted on 6/29/10; judgment vacated and case remanded for further consideration in light of Bilski v. Kappos, 561 U.S. __ (2010). |
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Bernard L. Bilski and Rand A.
Warsaw v. John J. Doll, Acting Under Secretary of Commerce for
Intellectual Property and Acting Director of The United States
Patent and Trademark Office, No. 08-964
Questions Presented:
Cert. petition filed on 1/28/09. Government Opposition filed 5/1/09, available here; cert. petition granted on 6/1/09, argument 11/9/09, affirmed 6/28/10. |
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