United States: Patent Law And The Supreme Court: Certiorari Petitions Denied

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. 

Aspex Eyewear, Inc., et al. v. Altair Eyewear, Inc., No. 12-1120

Question Presented:

Under 35 U.S.C. § 103(a), a claimed invention is patentable if it would not have been "obvious" at the time it was made to a person having ordinary skill in the art. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), this Court held that obviousness is determined by looking "to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all to determine whether there was an apparent reason to combine known elements in the fashion claimed by the patent at issue." KSR, 550 U.S. at 418. The question presented here is:

Whether the Federal Circuit effectively eliminated the standard articulated in KSR by substituting the trial court's own determination of "common sense," a standardless and unpredictable standard.

Cert petition filed 3/13/13, waiver of respondent Altair Eyewear filed 3/21/13, conference 4/12/13. Petition denied 4/15/13.

CAFC Opinion, CAFC Argument

Andrews Arts & Sciences Law, LLC, et al. v. Snowizard, Inc., No. 12-974

Question Presented:

Where patent litigation is pending in federal court, the patent-holding defendant sued the plaintiffs' attorney in state court for defamation and unfair practices for publishing an essay about the federal litigation, alleging an attempt to taint the jury pool and gain unfair advantage in the federal litigation, identifying the federal case numbers, and using the word "patent" 16 times:

Do state courts have subject-matter jurisdiction of defamation and unfair-practices collateral lawsuits against the attorney for opponents in federal-court patent litigation, which allege the attorney's actions related to the patent litigation?

Court of Appeal of Louisiana, Fifth Circuit, opinion not available.
Court of Appeal of Louisiana, Fifth Circuit, argument transcript not available.

Cert. petition filed 2/4/13, waiver of respondent SnoWizard, Inc. filed 2/11/13, conference 3/15/13. Petition denied 3/18/13.

McKesson Technologies, Inc. v. Epic Systems Corp., No. 12-970

Question Presented:

Under what circumstances is a person who performs some of the steps of a patented method, in combination with another's performance of the remaining steps, liable for direct infringement of the patent?

Conditional cross petition for cert. filed 2/4/13. Petition dismissed-Rule 46 3/11/13.

CAFC Opinion, CAFC Argument

Epic Systems Corp. v. McKesson Technologies, Inc., No. 12-800

Question Presented:

Whether a defendant may be held liable for inducing infringement of a patent that no one is liable for infringing.

Cert. petition filed 12/28/12. Petition dismissed-Rule 46 3/11/13.

CAFC Opinion, CAFC Argument

Ninestar Technology Co., Inc., et al. v. ITC, et al., No. 12-552

Question Presented:

"The longstanding doctrine of patent exhaustion provides that the initial authorized sale of a patented item terminates all patent rights to that item." Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 625 (2008). In Holiday v. Mattheson, 24 F. 185, 185 (C.C.S.D.N.Y. 1885), the court held that foreign sales authorized by U.S. patentees exhaust U.S. patent rights. That decision was followed for more than a century. In Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094, 1105 (Fed. Cir. 2001), however, the Federal Circuit concluded that foreign sales do not exhaust U.S. patent rights. The question presented is:

Whether the initial authorized sale outside the United States of a patented item terminates all patent rights to that item.

Cert. petition filed 11/2/12, conference 3/15/13, conference 3/22/13. Petition denied 3/25/13.

CAFC Opinion, CAFC Argument

Computer Packages, Inc. v. WhitServe, LLC, et al., No. 12-833

Question Presented:

1. Whether 35 U.S.C. § 101, which defines the subject matter that is eligible for a patent, is a jurisdictional statute.
2. Whether a federal court must address whether a patent claims abstract ideas or mental steps, outside the scope of patentable subject matter defined by 35 U.S.C. § 101, whenever the issue comes to the court's attention.
3. Whether Respondents' U.S. Patent Nos. 5,895,468, 6,049,801 and 6,182,078, which patent looking up due dates and notifying clients of them, claim unpatentable abstract ideas or mental steps under 35 U.S.C. § 101.

Cert. petition filed 1/4/13, waiver of respondent WhitServe, LLC filed 1/10/13, conference 2/15/13. Petition denied 2/19/13.

CAFC Opinion, CAFC Argument 

Beineke v. Kappos, No. 12-580

Question Presented:

Does the plant patent statute, 35 U.S.C. §161, require that the plant be created by man?

Cert. petition filed 11/5/12, conference 1/11/13, conference 2/15/13. Petition denied 2/19/13.

CAFC Opinion, CAFC Argument

Jia Jewelry Imports of America, Inc. v. Pandora Jewelry, LLC, No. 12-577

Question Presented:

Does Article III's grant of jurisdiction of "all Cases ... arising under ... the Laws of the United States," implemented in the €Üactual controversy' requirement of the Declaratory Judgment Act, §28 U.S.C. 2201(a), require the patent holder to have direct communication with the potential patent infringer before that infringer may sue to declare the patent invalid or not infringed?

Cert. petition filed 11/6/12, conference 2/15/13. Petition denied 2/19/13.

CAFC Opinion, CAFC Argument

Regents of the University of California, et al. v. Caldera Pharm., Inc., No. 12-570

Questions Presented:

1. Are a patent licensee's contract and tort claims against its licensor claims that arise under federal patent law such that they are within the exclusive jurisdiction of the federal courts when:
   1. those claims depend upon proof of infringement of a claim of a licensed patent or patent application;
   2. the patent license measures the allegedly breached obligations by reference to provisions of the federal patent laws and regulations governing practice before the United States Patent and Trademark Office; or,
   3. the licensee's claims seek to impose duties upon licensed practitioners conducting patent prosecution before the United States Patent and Trademark Office?
2. In determining whether a patent license dispute arises under federal patent law and is within the exclusive jurisdiction of the federal courts, should the court consider the license and actual elements of proof necessary for the plaintiff to prevail on its claims?

Cert. petition filed 11/5/12, conference 2/15/13. Petition denied 2/25/13.

Cal. Supreme Court opinion not available.
Cal. Supreme Court oral argument not available.

Wang v. Plasmart Inc., No. 12-616

Question Presented:

Did the Federal Circuit have power to go outside the record to override the contrary factual findings of the United States Patent and Trademark Office and invalidate a patent solely based on its own unarticulated and unexplained view of "common sense"?

Cert. petition filed 11/13/12, waiver of federal respondent filed 12/7/12, conference 1/18/13. Petition denied 1/22/13.

CAFC Opinion, CAFC Argument

Transaction Holdings, Ltd., et al. v. Kappos, No. 12-674

Question Presented:

1. Whether the Federal Circuit erred in affirming a decision based on a definition of the term "Internet" for purposes of patent protection as consisting solely of a "public network" and not including private networks.
2. Whether the Federal Circuit erred in affirming a decision of the Board of Patent Appeals and Interferences based on grounds which were different from those found by patent examiners and which petitioner has therefore never had an opportunity to address or rebut.

Cert. petition filed 11/29/12, waiver by respondent David Kappos filed 12/11/12, conference 1/11/13. Petition denied 1/14/13.

CAFC Opinion, CAFC Argument

Apotex Inc., et al. v. Otsuka Pharma Co., Ltd., No. 12-571

Question Presented:

Under the Patent Act, "a patent may not be obtained" if its subject matter would have been "obvious" when viewed in light of the prior art. 35 U.S.C. § 103. This statutory patentability standard invalidates any patent claim that would have been obvious in view of any prior art, regardless of the technology at issue. In recent years, and continuing even after this Court's decision in KSR Int'l v. Teleflex, Inc., 550 U.S. 398 (2007), the Federal Circuit has applied a restrictive "lead compound" test for determining the obviousness of pharmaceutical compounds, which limits the scope of the prior art against which the obviousness of pharmaceutical compounds are evaluated to one or more "lead compound[s]," on the ground that a "lead compound" is "a natural choice and "most promising" ... "for further development efforts". The question presented is whether the "lead compound" requirement is consistent with the statutory command that all obvious variations of the prior art be denied patent protection, given that there will be cases in which the structural similarity between the patented compound and a prior art compound, even if not a lead, rendered the patented compound obvious.

Cert. petition filed 11/5/12, waiver of respondent Sun Pharma. Industries, Ltd. Filed 11/26/12, waiver of respondent Sandoz, Inc. filed 12/5/12, conference 1/11/13. Petition denied 1/14/13.

CAFC Opinion, CAFC Argument

Mylan Pharm. Inc., et al. v. Eurand, Inc., nka Aptalis Pharmatech, Inc., et al., No. 12-514

Question Presented:

The Patent Act provides that "[a] patent may not be obtained ... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."35 U.S.C. § 103(a). In reviewing patent claims covering a "therapeutically effective" drug, which is a combination of a prior FDA-approved immediate-release drug and a well-known extended-release drug delivery system, the Federal Circuit, in reversing a district court holding of obviousness, held that such claims would not have been "obvious." Specifically, the Federal Circuit created a "PK/ PD relationship" requirement to hold that one skilled in the art would have "no reasonable expectation of success" that the claimed drug was "therapeutically-effective" even though it was bioequivalent to the prior FDA-approved drug. The questions presented are:

1. Whether the Federal Circuit erred in finding the "therapeutically effective" claims not obvious under 35 U.S.C. § 103(a) for a drug that combined a prior FDA-approved immediate-release drug and a well-known extended-release drug delivery system to create a bioequivalent extended-release formulation.
2. Whether the court of appeals improperly relied on its newly-minted "PK/PD relationship" requirement to substitute de novo review for clear error review in order to give its finding of non-obviousness additional support.  

Cert. petition filed 10/23/12, conference 1/11/13. Petition denied 1/14/13.

CAFC Opinion, CAFC Argument

W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., No. 12-458

Question Presented:

Title 35 U.S.C. § 116 requires two or more persons who make an invention jointly to apply for any patent jointly and provides that "[i]nventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent." Here the patented invention is a vascular prosthesis made of a novel material. Together with his staff, the developer of the material, having overseen substantial experimentation to narrow the field of potentially useful material characteristics, made a small number of sample tubes for use as prostheses. Expecting at least one of those samples to be successful for its intended purpose - but not yet aware of the exact microscopic properties that allow success - he supplied those few samples to an experimenter who confirmed one sample's success and identified its microscopic structure.

The question presented is:

Whether it is consistent with Section 116 to deny joint-inventor status to the maker of the successful material, and instead deem the experimenter the sole inventor, on the ground that the maker did not communicate to the experimenter the exact property that turned out to be key.

Cert. petition file 10/12/12, conference 1/11/13. Petition denied 1/14/13.

CAFC Opinion, CAFC Argument

Rates Technology Inc. v. Speakeasy, Inc., et al., No. 12-402

Question Presented:

1. Does the strong federal policy favoring settlements, including of patent disputes, outweigh the public's interest in challenges to allegedly invalid patents such that the rationale behind the holding in Lear, Inc. v. Adkins, 395 U.S. 653 (1969), which case rejected implied-at-law "licensee estoppel" defenses to patent invalidity challenges, does not mandate invalidation of "no-challenge" provisions in settlement agreements even where they are clear and unambiguous, and resolve bona fide infringement claims without litigation?
2. Does the Second Circuit's decision sought to be reviewed create a conflict with the most recent decisions of the Federal Circuit recognizing the enforceability of clear and unambiguous "no-challenge" provisions in agreements settling patent infringement claims prior to and in avoidance of patent invalidity litigation, and should that conflict be resolved in favor of the Federal Circuit's view that such provisions may be enforced?
3. To the extent that the rationale expressed 43 years ago in Lear was applied correctly by the Second Circuit, do considerations of vital public interest, including especially the strong federal policy favoring settlement, warrant reconsideration of Lear's policy articulations to the limited extent necessary to permit enforcement of clear and unambiguous "no-challenge" provisions in agreements settling bona fide patent infringement claims without litigation?

Cert. petition filed 9/28/12, waiver by respondent MegaPath, Inc. filed 10/16/12, waiver by respondent Speakeasy, Inc. filed 10/23/12, response requested 11/7/12, conference 1/11/13. Petition denied 1/14/13.

CA2 Opinion, CA2 Argument Not Available

GlaxoSmithKline v. Classen Immunotherapies, Inc., No. 11-1078

Question Presented:

Congress has created a statutory safe harbor from patent-infringement liability for otherwise-infringing conduct that is "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). In this case, the Federal Circuit concluded that this safe harbor "is limited to activities conducted to obtain pre-marketing approval of generic counterparts." Pet. App. 27a. The question presented is:

Whether the Federal Circuit's interpretation of § 271(e)(1), which arbitrarily restricts the safe harbor to preapproval activities, is faithful to statutory text that contains no such limitation, and decisions of this Court rejecting similar efforts to impose extra-textual limitations on the statute.

Cert. petition filed 2/28/12, response requested 4/23/12, conference 6/21/12, CVSG 6/25/12, conference 1/11/13. Petition denied 1/14/13.

CAFC Opinion, CAFC Argument

Leader Technologies, Inc. v. Facebook, Inc., No. 12-617

Question Presented:

The United States Court of Appeals for the Federal Circuit stepped outside the boundaries of its appellate role, as it has done with alarming frequency the past few years, and assumed the role as fact-finder in adjudicating Leader Technologies, Inc.'s patent invalid. As an intermediate federal appellate court, the Federal Circuit is not a trial court, but nonetheless acted as one in the present case and engaged in a form of decision-making at odds with traditional notions of appellate review. The proper role of an appellate court is to decide appeals from the lower court, and should do so based on the decision below and on the arguments presented by the parties below. In far too many instances, however, the Federal Circuit, as it did in this case, takes upon itself to consider evidence not argued to the lower court, disregard the fact-finding below, disregard binding precedent of this Court, and goes beyond the factual record presented to the proper trier of fact in order to engage in its own fact-finding, evidentiary weighing, and advocacy. Not only does this type of appellant court advocacy encourage litigants to retry cases at the appellate level, but more importantly, it denies litigants their due process rights.

The questions presented are:

1. Whether the Federal Circuit violates a litigant's procedural due process rights when it steps outside its appellant role and engages in independent fact-finding, and to what extent it can ignore Rule 52(a) in substituting its view of the factual issues for that of the district courts.
2. Whether the Federal Circuit can disregard Supreme Court precedent on interpretation of verb tense when applied to patent law, or alternatively, construe patent-related Supreme Court precedent in such a way to vitiate this Court's holdings.

Cert. petition filed 11/14/12, waiver by respondent Facebook, Inc. filed 11/19/12, conference 1/4/13. Petition denied 1/7/13.

CAFC Opinion, CAFC Argument

Trans Video Electronics, Ltd. v. Sony Electronics Inc., et al., No. 12-575

Question Presented:

1. Whether 35 U.S.C. § 112, first paragraph, which requires that the sufficiency of a patent claim's written description is to be assessed from the perspective of a person of skill in the art, nevertheless warrants, as a matter of law, excluding a disclosed embodiment within a patent, including any pertinent figure and accompanying disclosure, from the source of potential written description for the claim on the grounds that the embodiment lacks each and every feature recited in the claim.
2. If the subject matter of a claim is the combination of two or more disclosed embodiments that would have been obvious to one of ordinary skill in the art from the disclosed embodiments, is written description satisfied?

Cert. petition filed 11/6/12, waiver by respondent Sony Electronics, et al. filed 11/30/12, conference 1/4/13. Petition denied 1/7/13.

CAFC Opinion, CAFC Argument

Three-Dimensional Media Group, Ltd. v. Kappos, No. 12-48

Question Presented:

In Markman v. Westview Instruments, this Court afforded the power of construing the meaning of patent claim terms to judges. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). The justification for this Court's decision in Markman was in large part to provide uniformity and consistency to the interpretation of a patent's exclusive rights. Id. at 390-91. Unfortunately, the United States Court of Appeals for the Federal Circuit has failed in this endeavor, wreaking confusion and uncertainty on the patent system. In particular, the Federal Circuit refused to elaborate the proper standard for when and to what extent it is appropriate to limit the scope of a claim based upon the specification.

The Federal Circuit's abdication of its role is particularly salient here, where the court simply refused to consider the claim construction issue, notwithstanding inconsistent interpretations of the same patent by the Patent Examiner, the Board of Patent Appeals and Interferences, and a district court in a related litigation.

The questions thus presented are:

1. when and to what extent is it appropriate to narrow the scope of a patent claim based upon the specification and
2. has the Federal Circuit's failure to clarify the reach of the Broadest Reasonable Interpretation standard led to an unwarranted expansion of the standard's application by the Board of Patent Appeals and Interferences?

Cert. petition filed 7/9/12, waiver by respondent Kappos filed 8/6/12, response requested 8/14/12, conference 11/20/12, conference 1/4/13. Petition denied 1/7/13.

CAFC Opinion, CAFC Argument

Becton Dickinson and Co. v. Retractable Technologies, Inc., No. 11-1278 (Vide 11-1154)

Question Presented:

Retractable Technologies, Inc. and Thomas J. Shaw (collectively, "RTI") have filed a petition for a writ of certiorari seeking review of the method that the United States Court of Appeals for the Federal Circuit used to construe the term "body" in patents owned by RTI. Specifically, RTI argues that the clear statements in the specification defining the "invention" as having a "one piece hollow outer body," criticizing the "two-piece" designs in the prior art, and touting the benefits of a one-piece design were not sufficient to show that the term "body," as used in the patent claims, refers to a one-piece body.

If RTI's petition is granted, the Court should also consider the following questions, which provide alternative grounds for affirmance:

1. Whether the Federal Circuit's construction of the "lodging" limitation should be reversed because, at RTI's urging, the Federal Circuit deviated from the term's clear meaning on far weaker grounds than the court relied on to construe the ambiguous term "body."
2. Whether the Federal Circuit's construction of the "retainer member" limitation should be reversed because, at RTI's urging, the Federal Circuit deviated from the term's clear meaning on far weaker grounds than the court relied on to construe the ambiguous term "body."
3. Whether the Federal Circuit's holding that the asserted claims cover devices that work by cutting should be reversed because, at RTI's urging, the Federal Circuit disregarded a clear disclaimer of claim scope on far weaker grounds than the court relied on to construe the ambiguous term "body."

Cert. petition filed 4/23/12, conference 6/21/12, conference 6/28/12, conference 1/4/13. Petition denied 1/7/13.

CAFC Opinion, CAFC Argument

Retractable Technologies, Inc. v. Becton, Dickinson & Co., No. 11-1154 (Vide 11-1278)

Question Presented:

1. Whether a court may depart from the plain and ordinary meaning of a term in a patent claim based on language in the patent specification, where the patentee has neither expressly disavowed the plain meaning of the claim term nor expressly defined the term in a way that differs from its plain meaning.
2. Whether claim construction, including underlying factual issues that are integral to claim construction, is a purely legal question subject to de novo review on appeal.

Cert. petition filed 3/20/12, conference 6/21/12, conference 6/28/12, CVSG 6/29/12, conference 1/4/13. Petition denied 1/7/13.

CAFC Opinion, CAFC Argument

WilmerHale represents respondent Becton Dickinson.

Montgomery, et al. v. Kappos, No. 12-182

Question Presented:

Undisputed facts produce either of two contradictory outcomes at The Court of Appeals for the Federal Circuit because different judges apply conflicting rules for "inherent anticipation." The Circuit acknowledges this intra-Circuit conflict, yet has rebuffed every request to resolve the conflict en banc. Petitioner thus asks this Court to do so. The question presented is:

Whether a research proposal which was never in fact performed can, as a matter of law, inherently anticipate a patent claim under Tilghman v. Proctor, 102 U.S. 707 (1880)?

Cert. petition filed 8/6/12, conference 12/7/12. Petition denied 12/10/12.

CAFC Opinion, CAFC Argument

Picture Patents LLC, et al. v. Aeropostale, Inc., et al., No. 12-339

Question Presented:

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" 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 question presented is whether FilmTec's "automatic assignment" rule should be overruled given the doubts about its validity expressed by three Justices of the United States Supreme Court in Bd. of Trustees of the Leland Stanford Jr. University v. Roche Molecular Sys., Inc., 131 S. Ct. 2188, 2199 & 2203 (2011), and in light of the reservation of that issue by the Court's Opinion therein. Id. at 2194, n.2.

Cert. petition filed 9/17/12, conference 11/20/12. Petition denied 11/26/12.

CAFC Opinion, CAFC Argument

The California Table Grape Commission v. Delano Farms Company, et al., No. 11-1371

Question Presented:

The United States Court of Appeals for the Federal Circuit held that the waiver of sovereign immunity in the Administrative Procedure Act, 5 U.S.C. § 702, applies to a declaratory judgment action under the Patent Act that challenges the validity of patents owned by the United States. The question presented is:

Does the waiver of sovereign immunity in 5 U.S.C. § 702 apply to a claim that does not challenge the legality of "agency action" or "final agency action" within the meaning of the Administrative Procedure Act - or even any government action or inaction of any kind - but instead challenges the validity of government owned property based solely on actions by private parties?

Cert. petition filed 5/11/12, waiver of respondent Delano Farms Company filed 6/11/12, respond requested 9/18/12, conference 11/20/12. Petition denied 11/26/12.

CAFC Opinion, CAFC Argument.

WilmerHale represents petitioner California Table Grape Commission.

Allergan, Inc., et al. v. Watson Laboratories, Inc., et al., No. 12-342

Question Presented:

Under 35 U.S.C. § 103(a), an invention is patentable unless the differences between the invention and what was known in the prior art are such that the invention would have been "obvious" at the time it was made to a person having ordinary skill in the art.

The Federal Circuit has held that for an invention to have been obvious, the prior art must have given the skilled artisan a "reasonable expectation" that he would succeed at achieving the claimed invention, and it has treated the question of whether such a "reasonable expectation" existed as a question of fact. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007).

In Graham v. John Deere Co., 383 U.S. 1 (1966), this Court held "the ultimate question of patent validity is one of law" that depends on several "basic factual inquiries." In Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238 (2011), three Justices stressed the importance of "separating [the] factual and legal aspects of an invalidity claim." Id. at 2253 (Breyer, J., concurring).

The question presented is as follows:

Is it a question of law whether a given likelihood that an invention would succeed is sufficient to establish the invention was obvious, and, if so, what factors may be considered in determining whether that likelihood is sufficient to show obviousness in a given case?

Cert. petition filed 9/17/12, waiver by respondents Sandoz, Inc. filed 9/25/12, waiver by respondents Watson Labs., Inc.-Florida filed 9/25/12, waiver by respondents Paddock Labs filed 9/25/12, conference 10/12/12. Petition denied 10/15/12.

CAFC Opinion, CAFC Argument

Nova Chemicals Corp. (Canada), et al. v. The Dow Chemical Co., No. 12-243

Questions Presented:

1. Whether the Federal Circuit improperly created a special rule in patent infringement cases that shifts to the defendant the burden of proof to disprove standing.
2. Whether the Federal Circuit's test for patent indefiniteness, which upholds claims as long as their meaning " ۆis discernible [by a reviewing court], even though the task may be formidable and the conclusion may be one over which reason-able persons will disagree,' " effectively eliminates the Patent Act's requirement that claims be definite and this Court's longstanding precedent that patent claim descriptions be neither vague nor ambiguous.

Cert. petition filed 8/23/12, conference 10/26/12. Petition denied 10/29/12.

CAFC Opinion, CAFC Argument

WilmerHale represents petitioner Nova Chemicals Corp.

ClearValue, Inc., et al. v. Pearl River Polymers, Inc., et al., No 12-212

Question Presented:

Section 282 of the Patent Act provides that "[a] patent shall be presumed valid." 35 U.S.C. § 282. This Court held in Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238 (2011), that this presumption is not merely a procedural device to shift the burden of proof, but is substantive in nature and requires proof of invalidity by clear and convincing evidence. The jury in this case found Petitioners' patent valid. Despite § 282, the court of appeals nullified that finding and invalidated the patent, holding that there was no "substantial evidence" to support the jury's finding. The question presented is:

Whether 35 U.S.C. § 282 and the Seventh Amendment require conclusive proof of invalidity as a matter of law in order to overturn a jury's finding upholding the patent, or whether a lesser showing will suffice.

Cert. petition filed 8/16/12, waiver by respondent Pearl River Polymers filed 8/24/12, response requested 9/6/12, conference 11/9/12. Petition denied 11/13/12.

CAFC Opinion, CAFC Argument

John Mezzalingua Associates, Inc. (dba PPC) v. ITC, No. 11-1427

Questions Presented:

1. Whether the ITC acted cursorily and capriciously in finding that PPC's substantial investment in engineering, research and development for the EX product was minimally attributable to its design patent, U.S. Pat. No. D440, 539 ("the '539 patent"), thus precluding satisfaction of the domestic industry requirement under 19 U.S.C. Sec. 1337 (a)(3)(C) and, thereby, arbitrarily diminishing the availability of Section 337 relief, including for design patents generally?
2. Whether the ITC's interpretation of "exploitation" in section 337(a)(3)(C) was unduly narrow and manifestly contrary to the plain meaning of the language of that statute which compels this term to be read broadly in accordance with its text, thereby artificially and arbitrarily narrowing the domestic industry requirement to the detriment of PPC and other patent owners similarly situated?
3. Whether it was error for the ITC, in its capacity as an administrator of an important intellectual property statute, 19 U.S.C. Sec. 1337, to place an undue expectation of trade-related or production-related activity upon PPC's '539 patent when analyzing the domestic industry requirement, thereby improperly limiting section 337 relief including for patents generally?
4. Whether litigation, undertaken to enforce patent rights and enhance the value of a patent or pave the way for a stronger competitive advantage, constitutes a substantial investment in exploitation under section 337(a)(3)(C), regardless of that activity's relationship to licensing, engineering, research or production, such that it was error for the ITC to exclude PPC's litigation costs untethered to licensing when considering whether PPC had established a domestic industry for the '539 patent?
5. Whether litigation activities alone can support a finding of a substantial investment in exploitation under section 337(a)(3)(C)?

Cert. petition filed 3/7/12, waiver of respondent ITC filed 6/6/12, conference 9/24/12, response requested 7/6/12, conference 10/5/12. Petition denied 10/9/12.

CAFC Opinion

Collins, et al. v. Kappos, No. 12-57

Questions Presented:

The patent system provides for the protection of inventions to promote the progress of science and the useful arts. In order for the proper scope of an invention to be protected, the United States Patent and Trademark Office (hereinafter "USPTO") and U.S. Court of Appeals (hereinafter "Federal Circuit") must explain why a patent claim has been rejected. The Federal Circuit has explicitly stated that the USPTO has not properly rejected the patent claims in this case, yet affirmed the rejection of the claims without providing any reason.

This situation highlights a lack of due process afforded inventors.

The questions presented, therefore, are:

1. Whether denying an inventor a patent claim without explanation is a violation of due process?
2. Whether a rejection of a claim for one reason by the USPTO or Board of Patent Appeals and Interferences of the USPTO (hereinafter "Board") may be affirmed for a completely different reason by the Federal Circuit?
3. Whether using a "capable of" standard is proper when rejecting a claim?

Cert. petition filed 7/10/12, waiver by respondent Kappos filed 7/23/12, conference 9/24/12. Petition denied 10/1/12.

CAFC Opinion, CAFC Argument

Rudy v. Kappos, No. 11-1408

Questions Presented:

Utility patent claims are composed of parts, i.e., elements, which, taken together, define the invention patented or, during examination before the Patent and Trademark Office (PTO), sought to be patented. The claims of most if not all patented articles of manufacture are new combinations of old elements, features or principles. Combinations that are obvious over the prior art are not patentable.

The questions presented are as follows:

1. Whether the Federal Circuit's rule of obviousness that a claimed invention, which includes as elements "printed matter" and a substrate on which the "printed matter" resides, cannot be granted a utility patent under 35 USC 103(a) if the sole difference between the prior art and the claim is the "printed matter," unless the "printed matter" bears a functional, mechanical relationship to the substrate, violates the statute.
2. Whether a claimed combination including a substrate and "printed matter" not bearing a functional, mechanical relationship to the substrate, yet providing more together than either the substrate or "printed matter" element alone provides in view of the prior art, is not obvious and therefore, taken as a whole, is patentable under 35 USC 103(a).

Cert. petition filed 5/21/12, conference 9/24/12. Petition denied 10/1/12.

CAFC Opinion, CAFC Agrument.

R. J. Reynolds Tobacco Co., et al. v. Star Scientific, Inc., No. 11-1182

Question Presented:

The Patent Act requires that a patent application include claims "particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112 ¶ 2. This Court has made clear that this definiteness requirement demands that a valid patent inform the public during the life of the patent of the limits of the monopoly asserted - that is, what may be safely used or manufactured without a license. Such practical notice of the patent's claim limits is necessary, inter alia, to avoid chilling the inventive creativity of others.

In recent years, the Federal Circuit has adopted a definiteness standard demanding only that patent claims not be "insolubly ambiguous," which test it has often found satisfied if the claims are "amenable to construction," however difficult the task or debatable the result. The question presented is:

Whether the Federal Circuit's insolubly ambiguous/amenable-to-construction test for patent definiteness, which upholds patents whose construed claims fail to inform a skilled artisan of the outer limits of the claimed monopoly, faithfully implements § 112 ¶ 2 as interpreted by the decisions of this Court.

Cert. petition filed 3/28/12, conference 9/24/12. Petition dismissed-Rule 46 9/21/12.

CAFC Opinion, CAFC Argument

Memorylink Corp. v. Motorola, Inc., et al., No. 11-1356

Questions Presented:

For over 70 years, federal courts hearing state-law claims must apply state law, even if even if it is irrational or bad public policy. Erie Railroad Co. v. Tompkins, 304 U.S. 64, 58 S. Ct. 817, 82 L. Ed. 1188 (1938). Here, the Federal Circuit Court of Appeals - the only federal appellate court without diversity jurisdiction - upheld the dismissal of a state-law claim without opinion, while the district court's 12(b)(6) dismissal on the pleadings ignored the controlling Illinois Supreme Court authority. This Petition presents two questions:

1. Does the Federal Circuit's jurisdictional grab over state-law patent-attorney malpractice claims comply with this Court's federalism analysis in Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (1988) and its progeny?[FN1] FN1. The question of "arising under" federal jurisdiction also is presented in a certiorari petition to the Texas Supreme Court pending before this Court in No. 11-1118, Gunn et al. v. Minton (Docketed 13 March 2012).
2. Did the Federal Circuit's lack of experience with federalism analysis result in a violation of Petitioner's Constitutional Rights under Erie Railroad?

Cert. petition filed 4/26/12, waiver by respondents Motorola, Inc., et al filed 5/14/12, conference 5/31/12. Petition denied 6/4/12.

CAFC Opinion, CAFC Argument.

Tessera, Inc. v. ITC, et al., No. 11-903

Questions Presented:

Whether a patent license may make the subsequent payment of royalties by the licensee a condition of the licensee's authority to sell infringing products.

Cert. petition filed 12/28/11, conference 5/24/12. Petition denied 5/29/12.

CAFC Opinion, CAFC Argument

Saint-Gobain Ceramics & Plastics, Inc. v. Siemens Medical Solutions USA, Inc., No. 11-301

Questions Presented:

1. Whether the Patent and Trademark Office's (PTO) presumptively valid finding that an invention is not obvious and is thus patentable over a prior art patent is impermissibly nullified or undermined when a jury is allowed to find, by a mere preponderance of the evidence, that the patented invention is "insubstantially different" from the very same prior art patent, and thus infringes that prior art patent under the "doctrine of equivalents."
2. Whether, as the dissent below warned, the Federal Circuit's failure to impose a heightened evidentiary standard to ensure that juries do not use the doctrine of equivalents to override the PTO's presumptively valid non-obvious determinations undermines the reasonable reliance of competitors and investors on such PTO determinations, thereby intolerably increasing uncertainty over claim scope, fostering litigation, "deter[ring] innovation and hamper[ing] legitimate competition." App. 89a (Dyk, J., dissenting from the denial of rehearing en banc).

Cert petition filed 9/6/11.

Conference 11/4/11, CVSG 11/7/11, brief amicuscuriae of United States filed 4/25/12, conference 5/24/12. Petition denied 5/29/12.

CAFC Opinion, CAFC Argument

Yufa v. Kappos, No. 11-1253

Questions Presented:

1. Whether the United States Court of Appeals for the Federal Circuit has erred in holding that a claimed invention can be held "obvious", and thus unpatentable under 35 U.S.C. § 103(a), on the grounds of a combination of the subject matter, described in the embodiment section of a single prior art reference, with the subject matter criticized and discredited as a "drawback" in the background section of the same single prior art reference?
2. Whether the United States Court of Appeals for the Federal Circuit has erred in holding that a claimed invention can be held "obvious", and thus unpatentable under 35 U.S.C. § 103(a), on the grounds of the reasoning of "obviousness", wherein said reasoning with its own words "criticizes, discredits, or otherwise discourages" the claimed invention?

Cert. petition filed 4/17/12, waiver by respondent David J. Kappos, Director Patent & Trademark Office, filed 4/25/12, conference 5/17/12. Petition denied 5/21/12.

CAFC Opinion

Research & Diagnostic Systems, Inc., et al., v. Streck, Inc., No. 11-1212

Questions Presented:

When a party chooses to appeal a decision in an interference by the Board of Patent Appeals and Interferences ("Board"), it may choose to seek review either directly to the United States Court of Appeals for the Federal Circuit ("Federal Circuit") under 35 U.S.C. § 141 ("Section 141"), or to a United States District Court, under 35 U.S.C. § 146 ("Section 146"). When the appeal is taken directly to the Federal Circuit under Section 141, the appeal is decided strictly on the administrative record. However, when the review is sought in a district court under Section 146, the statute permits the parties to introduce additional evidence which was not presented before the Board. The questions presented are as follows:

1. Whether, when any new evidence is introduced under Section 146, "the district court may decide de novo the factual questions to which the evidence pertains, without giving deference to the prior decision of the PTO." See Kappos v. Hyatt, No. 10-1219 (second question presented, argued on January 9, 2012, presently awaiting decision, but relating to parallel 35 U.S.C. § 145 ("Section 145") rather than Section 146).
2. Whether, when new evidence is introduced in an action under Section 146 that does not conflict with the record before the Board, the district court must give deference to the Board's factual findings and apply the Administrative Procedure Act's substantial evidence standard of review.

Cert. petition filed 4/9/12, waiver by respondent Streck, Inc. filed 4/23/12, conference 5/17/12. Petition denied 5/21/12.

CAFC Opinion, CAFC Argument

Gardner v. Kappos, No. 11-1195

Question Presented:

Whether the Federal Circuit has erred in holding a combination of pre-existing elements unpatentable under 35 U.S.C. § 103(a) providing a synergistic result, an effect greater than the sum of several effects taken separately while solely and consistently being limited to applying the vague standard of what would be obvious to the hypothetical "person having ordinary skill in the art" without regard to the importance of secondary evidence relative to the issue of obviousness where petitioner has established a nexus between the merits of the claimed invention and the proffered evidence of secondary considerations.

Cert. petition filed 1/23/12, waiver by respondent David Kappos filed 4/11/12, conference 5/10/12. Petition denied 5/14/12.

CAFC Opinion

Zimmerman v. Flagstar Bancorp, No. 11-1112

Question Presented:

Did the Federal Circuit err in construing the patent claim terms in this case because it employs different methodologies to construe claims rather than employing a single methodology providing the uniformity required by this Court's decision in Markman, et al. v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)?

Cert. petition filed 1/9/12, waiver by respondent Flagstar Bancorp filed 4/10/12, conference 5/10/12. Petition denied 5/14/12.

CAFC Opinion, CAFC Agrument

Kim v. The Earthgrains Company, No. 11-1106

Questions Presented:

1. Whether applicable law by Justice Souter and ruling in Phillips is adopted to construe the claim construction of RE36,355 F1 patent by the Court of Appeals' Decision.
2. Whether the courts' decision taking away the jury verdict is in violation of petitioner's Seventh Amendment Constitutional Right by making the completely unsupported and erroneous fact finding that potassium bromate replacer is a substitute in the production of bread as potassium bromate.
3. Whether extensive objective evidence was introduced to prove PBR as a functional replacement for PB, but the courts have failed to grasp the technical subject matter, reaching a determination as to non-infringement and further failing to secure inventors the exclusive rights to their respective discoveries as our Constitution rightly states, U.S. Constitution, Article 1, Section 8, and Clause 8.
4. Whether the Appeals and District courts have further deprived the petitioner of due process by relying on the clearly erroneous fact finding to rule that the change in this transitional phrase was required by the Reexaminer to overcome prior art.
5. Whether the Court of Appeals granted defendant's motion on Applicable Damages Period by ruling that the use of "consisting of" or "present" narrowed the claim scope of RE36,355 F1 patent.

Cert. petition filed 3/7/12, waiver filed by respondent The Earthgrains Co. 4/3/12, conference 4/27/12. Petition denied 4/30/12.

CAFC Opinion

Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., No. 11-1079

Question Presented:

In a dramatic shift from established principles of patent law, the Federal Circuit upheld the validity of Respondent's patent claims based on a feature that was discovered by third parties, long after the patent application was filed, and was neither disclosed nor claimed by the patentee at the time of the invention.

Petitioner owns a patent related to cloning synthetic blood clotting proteins, and sued to have later, overlapping patent claims issued to Respondent declared invalid. Over a vigorous dissent by Judge Dyk, a divided panel of the Federal Circuit held that Respondent's patented claims were not obvious in light of Petitioner's claims. The majority credited Respondent with a discovery on the basis of "unexpected results" based on a feature that was not expressly or inherently disclosed or claimed and was discovered by others long after Respondent applied for its patents. That holding disregards fundamental principles of patent law, including that an invention must not have "been obvious at the time the invention was made," 35 U.S.C. 103(a), that the elements of the invention must be set forth in the claims, and that only the person responsible for the underlying discovery may obtain a patent for that discovery. U.S. Const. art. I, § 8, cl. 8; 35 U.S.C. 101.

The question presented is:

Whether a patentee may rely, as evidence of the nonobviousness of his invention, on an undisclosed and unclaimed feature that does not flow inherently from the claims, which he did not and could not know at the time of the patent application's filing, and which was discovered separately, years after the patent application was filed, from research conducted by others.

Cert. petition filed 2/28/12, conference 4/13/12. Petition denied 4/16/12.

CAFC Opinion, CAFC Argument

GEO Foundation, Ltd. v. Costco Wholesale Corp., et al., No. 11-984

Question Presented:

Whether the unclean-hands doctrine empowers a federal court to nullify valid patent-property rights asserted by an innocent transferee, rather than merely deny relief to the party with unclean hands.

Cert. petition filed 2/8/12, conference 4/13/12. Petition denied 4/16/12.

Waiver filed by respondent Ikea Illinois, LLC 3/8/12, waiver filed by respondent Wal-Mart Stores, Inc. 3/8/12, waiver filed by respondent Costco Wholesale Corp. 3/8/12, waiver filed by respondent Lowes Home Centers, Inc. 3/14/12.

CAFC Opinion, CAFC Argument

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