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.

Watkins v. Kajima Intern., Inc., No. 13-1200

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.

No CA6 opinion available.

Cisco Systems, Inc. v. TecSec, Inc., No. 13-1165

Question Presented:

Whether alternative holdings, each independently sufficient to sustain a judgment, all have preclusive effect in subsequent proceedings, as the Second, Third, Ninth, Eleventh, and D.C. Circuits hold, or whether none of them do, as the Fourth, Seventh, Tenth, and Federal Circuits hold.

Whether the mandate rule bars a party from relitigating an issue in the same case that was within the scope of a decision that was unequivocally affirmed.

Cert. petition filed 3/21/14.

CAFC Opinion, CAFC Argument
Thomas v. Pippin, No. 13-1151

Question Presented:

The Patent Act provides that "[a] patent shall be presumed valid" and that "[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity." 35 U.S.C. § 282. The United States Court of Appeals for the Federal Circuit held below that the Patent Trial and Appeal Board of the United States Patent and Trademark Office ("USPTO") did not commit legal error when it required Thomas, the patent holder, to prove that its own patents were valid over the prior art during an interference proceeding in which priority of invention was undisputed. The question presented is:

Whether the court of appeals erred in holding that Thomas, the patent holder, must carry the burden of persuasion against an invalidity challenge to his patents.

Cert. petition filed 3/21/14.

CAFC Opinion, CAFC Argument
Baxter Intern. Inc. v. Fresenius USA, Inc., No. 13-1071

Questions Presented:

Fresenius brought a declaratory judgment action challenging the validity of patents owned by Baxter, and Baxter counterclaimed for infringement. The district court held that Baxter's patents were valid and infringed, and entered judgment awarding past damages, an injunction, and a transitional royalty. The U.S. Court of Appeals for the Federal Circuit affirmed in part and reversed in part. The Federal Circuit held that claims 26-31 of U.S. Patent No. 5,247,434 are not invalid. But because it invalidated other claims of Baxter's patents, the court remanded solely for recalculation of the transitional royalty and reconsideration of the injunction. On remand, the district court recalculated the transitional royalty and again entered judgment for Baxter.

While Fresenius's second appeal was pending, the U.S. Patent and Trademark Office cancelled claims 26-31 of the '434 patent based on an ex parte reexamination requested by Fresenius. Over the dissent of four judges who would have granted rehearing en banc, the Federal Circuit held that the PTO's decision required reversal of the judgments against Fresenius.

The questions presented are:

  1. Whether an Article III court's final judgment may be reversed based on the decision of an administrative agency.
  2. Whether a final determination of liability that has been affirmed on appeal may be reversed based on the decision of an administrative agency merely because an appeal regarding the post-verdict remedy is pending.
Cert. petition filed 3/5/14.

CAFC Opinion, CAFC Argument

WilmerHale represents petitioner Baxter International Inc.
Rudolph Technologies, Inc. v. Integrated Technology, et al., No. 13-1062

Questions Presented:

  1. Whether issues of law impacting patent damages should be reviewed de novo - like all other issues of law - or whether they should be reviewed under the deferential substantial evidence standard.
  2. Whether a patentee may obtain "lost profits" damages under a "two-supplier market" theory even when there are non-infringing alternatives.
Cert. petition filed 3/4/14, waiver by respondents Integrated Technology Corp., et al. filed 4/1/14, conference 4/25/14.

CAFC Opinion, CAFC Argument
Cisco Systems, Inc. v. Commil USA, LLC, No. 13-1044

Question 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.

CAFC Opinion, CAFC Argument

WilmerHale represents cross-petitioner Cisco Systems, Inc.
Voda v. Medtronic, Inc., No. 13-992

Questions Presented:

Section 284 of the Patent Act provides that "the court may increase the damages up to three times the amount found or assessed" in a patent case (35 U.S.C. § 284) while Section 285 of the Patent Act provides that "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285. Current patent common law requires a finding of willful patent infringement before an enhanced damages assessment is made or, absent litigation misconduct, attorneys' fees are awarded to a prevailing patentee. The questions presented are as follows:

  1. Whether a jury's finding that a party's litigating position is illegitimate or incredible for purposes of finding willfulness is subject to de novo review; and
  2. Whether a determination that a defendant's litigation position is illegitimate or incredible suffices for a patentee to establish an exceptional case in the absence of litigation misconduct?
Cert. petition filed 2/18/14, conference 4/18/14.

CAFC Opinion, CAFC Argument

WilmerHale represents respondent Medtronic, Inc.
Caret, et al. v. The University of Utah, No. 13-947

Questions Presented:

  1. Whether the Federal Circuit correctly held that a dispute between two States over ownership of patent rights may be adjudicated in a federal district court, despite this Court's exclusive jurisdiction over suits between States, as long as (1) the plaintiff-State sues only officials of the other State in their official capacity, and (2) the district court determines that the case does not implicate the core sovereign interests of the two States.
  2. Whether a State can utilize the Ex parte Young doctrine to circumvent this Court's original and exclusive jurisdiction over controversies between States by amending its complaint to drop the defendant-State and add in its place state officials against whom the plaintiff-State seeks no relief, where the dispute concerns which State is the owner of disputed patent rights
Cert. petition filed 2/7/14, waiver by respondent University of Utah filed 3/19/14, response requested 3/31/14.

CAFC Opinion, CAFC Argument
Accenture Global Services, GmbH v. Guidewire Software, Inc., No. 13-918

Question Presented:

Whether claims to computer-implemented inventions are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101?

Cert. petition filed 1/31/14, conference 5/2/14.

CAFC Opinion, CAFC Argument
Commil USA, LLC v. Cisco Systems, Inc., No. 13-896

Questions 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:

  1. Whether the Federal Circuit erred in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).
  2. Whether the Federal Circuit erred in holding that Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), required retrial on the issue of intent under 35 U.S.C. § 271(b) where the jury (1) found the defendant had actual knowledge of the patent and (2) was instructed that "[i]nducing third-party infringement cannot occur unintentionally."
Cert. petition filed 1/23/14.

CAFC Opinion, CAFC Argument
Kobe Properties Sarl, et al. v. Checkpoint Systems, Inc., No. 13-788

Questions Presented:

The Patent Act provides that a "court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285. Recent decisions by the Federal Circuit have held that, in the absence of litigation misconduct or misconduct in securing the patent, a case can be deemed "exceptional" if it is both objectively baseless and brought in bad faith. After living with this case for more than ten years, including overseeing a two-week jury trial, the District Court found that this case was objectively baseless and brought in bad faith, and awarded the defendants all of their fees. In its very first application of its decision in Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., 687 F.3d 1300 (Fed. Cir. 2012), the Federal Circuit panel gave no deference to the District Court's objective baselessness and exceptional case determinations and reversed. App. 15. The Federal Circuit subsequently denied rehearing and rehearing en banc.

The questions presented are:[FN1]

FN1. These are the same questions presented in the petitions for writ of certiorari filed in Highmark, supra, and in Octane Fitness, LLC v. Icon Health & Fitness, Inc., No. 12-1184. This Court granted certiorari in both of those cases on October 1, 2013, 134 S. Ct. 48 (2013), 134 S. Ct. 49 (2013), and they are now pending before this Court.

  1. 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.
  2. More broadly, whether the Federal Circuit's above-described two-part test for determining whether a case is exceptional under 35 U.S.C. § 285 improperly appropriates 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 to recoup their fees and encouraging patent plaintiffs to bring spurious patent cases to cause competitive harm or for other improper purposes.

Cert. petition filed 12/30/13, conference 4/18/14.

CAFC Opinion, CAFC Argument
LG Electronics, Inc., et al. v. InterDigital Communications, LLC, et al., No. 13-796

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
Minemyer v. R-BOC Representatives, Inc., et al., No. 13-708

Questions Presented:

Section 284 of the Patent Act, 35 U.S.C. § 284, provides that in cases of patent infringement "the court may increase the damages up to three times the amount found or assessed." This Court has never interpreted this statute but the Federal Circuit has held that such enhanced damages may be awarded in cases of "willful" infringement, and in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007), it promulgated a two-part test to decide which cases qualify, a test that it says is identical to the one it uses to decide what cases qualify as "exceptional" for purposes of the attorneys' fee-shifting provision in section 285 of the Act, 35 U.S.C. § 285, now under consideration by this Court.

Does the Seagate test satisfy the statute's purpose when it has confused both the Federal Circuit itself and the district courts required to apply it, district courts have sometimes expressly declined to follow it, and it has so restrictively limited the class of cases warranting enhanced damages that the district court in this case felt compelled to vacate - in its own word, "sadly" - a jury's express finding of "willfulness," even though the infringement resulted from what the court agreed was "blatant, deliberate and slavish" copying of the patented product and no meaningful defenses were raised?

Cert. petition filed 12/12/13, conference 3/21/14.

CAFC Opinion, CAFC Argument
Bancorp Services, LLC v. Sun Life Assurance Co. of Canada (U.S.), et al., No. 13-584

Question Presented:

  1. Whether claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—redirected to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?
Cert. petition filed 11/8/13, conference 2/21/14.

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, waiver by respondent Ultramercial, LLC filed 11/6/13, conference 12/6/13, response requested 12/6/13, conference 1/24/14.

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, conference 9/30/13, CVSG 10/7/13.

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, brief of amicus United States filed 12/10/13, conference 1/10/14.

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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