WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently denied petitions, organized in reverse chronological order by date of certiorari petition.
Essociate, Inc. v. Clickbooth.com, LLC, No. 16-195
A patent claiming simply an instruction to implement an abstract idea on a computer is ineligible for protection under 35 U.S.C. § 101. The courts below, and hundreds of other decisions, have broadened that holding to find abstract ideas and lack of inventive concepts even in patents that solve specific technological problems using new processes. Should this Court clarify the meanings of "abstract idea" and "inventive process"?
Cert. petition filed 8/8/16, waiver of respondent Kjell Olmarker filed 7/18/16, conference 9/26/16. Petition denied 10/3/16.
Genetic Technologies Ltd. v. Merial L.L.C., No. 15-1518
As of the priority date for U.S. Patent No. 5,612,179 in 1989, scientists identified DNA haplotypes through the direct identification of allelic variants within coding DNA regions. Scientists ignored non-coding DNA because they believed those regions were merely accumulated debris or "junk DNA." Dr. Malcolm Simons discovered that, in the DNA of unrelated individuals, a polymorphism in a non-coding DNA region and a coding region allele could be inherited together. This natural phenomenon is known as "linkage disequilibrium." The discovery prompted Dr. Simons to invent a new and useful process for detecting a coding region allele of a multi-allelic genetic locus by interrogating a non-coding DNA sequence that is in linkage disequilibrium with that multi-allelic genetic locus. Dr. Simons' invention, as reflected in claim 1 of the '179 patent, was advantageous for a number of reasons, including that it was more reliable and quicker than prior art identification processes that used direct identification of allelic variants.
On de novo review, a Federal Circuit panel evaluated the patent-eligibility of claim 1 in response to a Rule 12(b)(6) motion and under the framework established by Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012), and Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014). The panel found that claim 1 is directed to a "natural law" comprising both: (1) "the relationship between non-coding and coding sequences in linkage disequilibrium"—undisputedly a naturally occurring phenomenon; and (2) "the tendency of such non-coding sequences to be representative of the linked coding sequences"—which the parties disputed as a matter of fact, and GTG argued was Dr. Simons' application of the natural occurring phenomenon to achieve his intended purpose.
The panel also found the claimed laboratory techniques to be used in a routine and conventional manner, although it recognized "that at the time the '179 patent was filed, no one was 'using the non-coding sequence as a surrogate marker for the coding region allele . . .' [and claim 1] was found by the patent examiner to be novel over the prior art and survived multiple rounds of reexamination."
The panel then affirmed the Delaware District Court's judgment that claim 1 is patent-ineligible under 35 U.S.C. § 101.
The questions presented are:
- Whether the Federal Circuit properly concluded—in conflict with other decisions of the Federal Circuit and this Court—that the definition of a patent-ineligible concept under the Mayo/Alice framework may include both a natural phenomenon and an inventor's ingenuity in applying that natural phenomenon to a new and useful purpose?
- Whether a Rule 12(b)(6) motion may be properly granted based on patent-ineligibility—as the Federal Circuit determined below in conflict with other Federal Circuit decisions—when the record plausibly demonstrates that the claimed process inventively applies a natural phenomenon for a new and useful purpose, the claimed process does not improperly preempt the natural phenomenon, and the claimed process is not routine and conventional?
Cert. petition filed 8/8/16, waiver of respondent Bristol-Myers Squibb Co. filed 8/15/16, waiver of respondents Merial L.L.C., et al. filed 8/15/16, conference 9/26/16. Petition denied 10/3/16.
In re Tobinick, No. 15-1544
- In an interference, whether the Patent Trial and appeal board can deny a Party's compelling request to file a motion and actual evidence showing that the opposing party committed inequitable conduct by submitting unmistakably false expert witness testimony.
- Whether, despite determining that the "inequitable conduct may be revisited," the Patent Trial and appeal board erred in denying Tobinick's Motion 5 to exclude evidence (four affidavits by Olmarker's expert, Dr. Andersson) explaining that the unmistakably false testimony was submitted intentionally and as part of a deliberate scheme to mislead the Patent Trial and appeal board.
Cert. petition filed 6/6/16, waiver of respondent Kjell Olmarker filed 7/18/16, conference 9/26/16. Petition denied 10/3/16.
Driessen v. Sony Music Ent., No. 15-1518
The federal courts in this case evaluated the plaintiffs' patent claims using a corollary to the inter partes review called a "mini-Markman hearing." This type of trial proceeding has become a shortened alternative to fully litigated infringement disputes. In mini Markman proceedings, courts construe the meaning of claim terms prior to fact discovery without consideration of prior art, field of endeavor, anticipation of invention, or infringement. Some judges and patent lawyers have called it an "early claim dispositive" hearing with the goal of "quick" and "cost-effective" conclusion to the litigation. A characteristic of the proceeding is that any meaning that can be imparted from the claim terms or phrases themselves can be weighed contra preferentem against the patent holder.
Unlike the broadest reasonable interpretation standard as used in inter partes review, mini-Markman proceedings use what is known as the acontextual branch of the plain and ordinary meaning standard. Procedural removal of the prior art field of endeavor from consideration while at the same time maintaining the rule against importation of limitations from the specification, by its very design, produces an imbalance between the meaning of claim terms in the claim itself and the meaning imparted by the invention. The guarding against importation of limitations from the specification stands alone and the invention carries no effect on the meaning of the claim terms.
In a quick decision styled "non-precedential" the Federal Circuit affirmed the early claim dispositive mini-Markman proceedings, withdrawing from the rule that we construe claim terms in light of the field of invention according to the understanding of a person having ordinary skill in the art. The result is that any and all dictionary definitions that could be implied from the claim itself will impart meaning to the claim. Federal Circuit approval will facilitate more mini-Markman proceedings, giving rise to the questions presented as follows:
- Whether the court of appeals erred in affirming the exclusion of the invention and field of endeavor from consideration of claim context during early dispositive claim construction proceedings using the plain and ordinary meaning standard?
- If eliminating the invention and art field from consideration of claim context during early dispositive claim construction is appropriate, whether the court of appeals erred in affirming the construing the scope of claims contra preferentem based on unreasonable dictionary implications when the doctrine of claim differentiation and reasonable implications gleaned from the specification and drawings give the claim terms meaning in light of the invention, while avoiding the importation of limitations from the specification?
- Whether the Court should hold the petition without action until an opinion may be delivered in Cuozzo Speed Techs. v. Lee, U.S. 15-446 and/or grant the petition, vacate the judgment below, and remand to the Federal Circuit for further consideration in light of a decision in Cuozzo Speed Techs. v. Lee?
Cert. petition filed 6/15/16, waiver of respondent Sony Music Entertainment, et al. filed 7/15/16, conference 9/26/16. Petition denied 10/3/16.
CAFC Opinion, No CAFC Argument
Trading Techs. Intern. Inc. v. Lee, No. 15-1516
Did the court of appeals err in denying mandamus and allowing the Patent Trial and Appeal Board ("PTAB") to conduct a trial outside of its jurisdiction in a covered business method ("CBM") review on a patent that is clearly and indisputably not a CBM patent, in contravention of the Leahy-Smith America Invents Act ("ALA")?
Cert. petition filed 6/16/16, waiver of respondent Michelle K. Lee, Director, United States Patent and Trademark Office filed 6/30/16, conference 9/26/16. Petition denied 10/3/16.
No CAFC Opinion (appeal is from denial of write of mandamus), No CAFC Argument
Jericho Sys. Corp. v. Axiomatics, Inc., No. 15-1502
Whether, under this Court's precedent in Alice Corp. Party Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), and Mayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S. Ct. 1289 (2012), a patent may be invalidated as an "abstract idea" under 35 U.S.C. § 101 when it claims a specific implementation and does not preempt other uses of the abstract idea.
Cert. petition filed 6/10/16, waiver of respondents Axiomatics, Inc. filed 6/15/16, conference 9/26/16. Petition denied 10/3/16.
MacDermid Printing Solutions, LLC v. E.I. DuPont De Nemours & Co., No. 15-1499
Whether the Federal Circuit has erred in holding that there "must" be a proven "reasonable expectation of success" in a claimed combination invention in order for it to be held "obvious" under 35 U.S.C. § 103(a).
Cert. petition filed 6/9/16, waiver of right of respondent E.I. DuPont de Nemours & Company filed 6/14/16, conference 9/26/16. Petition denied 10/3/16.
Commil USA, LLC v. Cisco Sys., Inc., No. 15-1446
- Must the Federal Circuit follow this Court's holding in Reeves v. Sanderson Plumbing Products, Inc., 530 U.S. 133 (2000), a non-patent case, regarding which evidence must be disregarded and which evidence must be credited when reviewing a decision on judgment as a matter of law regarding patent infringement?
- Whether, and under what circumstances, the Seventh Amendment permits the Federal Circuit to refuse to credit the technical testimony of qualified expert—unchallenged under Daubert v. Merrell Dow Pharmaceuticals, 509 U.S. 579 (1993)—when overturning a jury's verdict on the factual issue of direct infringement.
- Whether, and under what circumstances, the Seventh Amendment permits the Federal Circuit to reject the evidentiary support for a qualified technical expert's testimony that the Accused Products operate in an infringing manner under the applicable claim construction and overturn a jury's verdict of infringement supported by that testimony.
Cert. petition filed 5/27/16, waiver of respondent Cisco Systems, Inc. filed 6/2/16, response requested 6/15/16, conference 9/26/16. Petition denied 10/3/16.
Amphastar Pharmaceuticals, Inc. v. Momenta Pharmaceuticals, Inc., No. 15-1402
The Hatch-Waxman Act safe harbor provides that "[i]t shall not be an act of infringement to . . . use . . . a patented invention . . . solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs[.]" 35 U.S.C. § 271(e)(1). The question presented is:
Whether the safe harbor protects a generic drug manufacturer's bioequivalence testing that is performed only as a condition of maintaining FDA approval and is documented in records that must be submitted to the FDA upon request.
Cert. petition filed 5/17/16, waiver of respondent Momenta Pharmaceuticals, Inc. filed 5/23/16, conference 6/9/16, response requested 5/31/16, conference 9/26/16. Petition denied 10/3/16.
Commonwealth Scientific and Indus. Research Organisation v. Cisco Sys., Inc., No. 15-1440
The Patent Act provides that a "[u]pon finding for the claimant the court shall award the claimant damages adequate to compensate for the infringement . . . ." 35 U.S.C. § 284. In contravention of this broad language, the Federal Circuit has erected a rigid set of legal rules to control the determination of damages by triers of fact. As a result, the Federal Circuit now exercises de novo review over inherently factual questions, resulting in routine reversals.
This Court has held with regard to another patent remedies provision that it is improper for the Federal Circuit to "superimposed an inflexible framework onto statutory text that is inherently flexible." Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014). And this Court is considering related questions in relation to another portion of section 284 in Stryker Corp. v. Zimmer, Inc., No. 14-1520, and Halo Electronics, Inc. v. Pulse Electronics, Inc., 14-1513 (argued Feb. 23, 2016).
The question presented is:
Is the Federal Circuit's promulgation of rigid legal rules to control the weight to be given by the trier of fact to evidence of patent infringement damages proper under 35 U.S.C. § 284?
Cert. petition filed 5/25/16, waiver of respondent Cisco Systems, Inc. filed 6/3/16, conference 6/26/16. Petition denied 6/27/16.
Interval Licensing LLC v. Lee, No. 15-716
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, conference 6/26/16. Petition denied 6/27/16.
Versata Dev. Group, Inc. v. SAP Am., Inc., No. 15-1145
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. Id. The questions presented are:
- 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."
- 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."
- Whether a software-related invention that improves the performance of computer operations is patent-eligible subject matter.
- Whether, as this Court will decide in Cuozzo Speed Techs., 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, conference 6/23/16. Petition denied 6/27/16.
Sequenom, Inc. v. Ariosa Diagnostics, Inc., No. 15-1182
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, conference 6/23/16. Petition denied 6/27/16.
Stephenson v. Game Show Network, LLC, No. 15-1187
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, conference 5/26/16, conference 6/23/16. Petition denied 6/27/16.
Shukh v. Seagate Technology, LLC, No. 15-1285
In FilmTec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), the Federal Circuit ruled without explanation that an agreement for the assignment of inventions that uses the words "hereby assign" automatically effects a present assignment of future inventions even though those inventions have not been conceived and do not exist at the time the agreement is signed. The unexplained rationale, contrary to ancient rules of patent law and equity, was that such an assignment surrenders all concrete interests in an invention, thus depriving inventors of standing under 35 U.S.C. § 256 to correct inventorship of patents for those inventions from which they have wrongfully been omitted, and preventing the inventors from regaining their default ownership of the inventions and patents.
The question presented is whether FilmTec's "automatic assignment" rule should be overruled because it extinguishes inventors' constitutional and statutory rights to inventorship and ownership, especially in view of criticisms expressed by three Justices of this Court in Bd. of Trs. of theLeland Stanford Jr. University v. Roche Molecular Sys., Inc., 131 S. Ct. 2188, 2199 & 2203 (2011) (Stanford), and the reservation of that issue by the Court. Id. at 2194, n.2.
Cert. petition filed 3/16/16, conference 6/23/16. Petition denied 6/27/16.
Automotive Body Parts Ass'n v. Ford Global Technologies, LLC, No. 15-1314
Whether a court order can be amended under Federal Rule of Civil Procedure 60(a) based solely on the issuing judge's subsequent statement of intent when there is no contemporaneous record evidence or other circumstance supporting the issuing judge's subsequent statement of intent and a party's reliance interests are adversely affected by the amendment.
Cert. petition filed 4/21/16, waiver of respondent Ford Global Technologies, LLC filed 5/13/16, conference 6/23/16. Petition denied 6/27/16.
No CAFC Opinion, No CAFC Argument
Samsung Electronics Co., Ltd. v. Apple Inc., No. 15-1386
Should the Court grant the petition, vacate the judgment below, and remand to dismiss the appeal as moot, in accordance with United States v. Munsingwear, Inc., 340 U.S. 36 (1950), where the Federal Circuit's opinion requiring a permanent injunction is mooted by a later Federal Circuit opinion eliminating all basis for liability by holding two of the three patents at issue invalid and the other one not infringed?
Cert. petition filed 5/13/16, conference 6/23/16. Petition denied 6/27/16.
Globus Medical, Inc. v. Bianco, No. 15-1203
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, respond requested 4/18/16, conference 6/16/16. Petition denied 6/20/16.
Newegg Inc. v. MacroSolve, Inc., No. 15-1369
- Whether, in resolving a motion for attorneys' fees under 35 U.S.C. § 285 brought by a defendant, the Eastern District of Texas and the Federal Circuit may disregard this Court's analytical framework provided in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749, 1756 (2014) ("Octane"), and create and apply a special, heightened burden of proof whenever the patent plaintiff avoids adjudication on the merits by unilaterally dismissing its case before judgment?
- Whether the Eastern District of Texas rule requiring proof by clear and convincing evidence that a lawsuit is frivolous improperly limits or circumvents Octane, in which this Court rejected both requirements?
Cert. petition filed 5/9/16, waiver of respondent MacroSolve, Inc. filed 5/16/16, conference 6/9/16. Petition denied 6/13/16.
Cubist Pharmaceuticals, Inc. v. Hospira, Inc., No. 15-1210
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:
- 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.
- 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, conference 5/26/16. Petition denied 5/31/16.
WilmerHale represents petitioner Cubist Pharmaceuticals, Inc.
Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC, No. 15-1201
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.
- 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?
- 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?
- 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, conference 5/26/16. Petition denied 5/31/16.
CAFC Opinion, No CAFC Argument
Dow Chemical Co. v. Nova Chemicals Corp. (Canada), No. 15-1160
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, conference 5/19/16. Petition denied 5/23/16.
Cloud Satchel, LLC v. Barnes & Noble, Inc., No. 15-1161
- Whether the decision below violates Article I, 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?
- 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?
- 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. Petition denied 4/25/16.
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