United States: Patent Law And The Supreme Court: Certiorari Petitions Granted (July 2014)

WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently granted petitions, organized in reverse chronological order by date of certiorari petition.

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, conference 6/26/14, GVR 6/30/14.

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, conference 5/2/14, GVR 5/5/14.

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, GVR 4/21/14.

CAFC Opinion, CAFC Argument

Teva Pharmaceuticals USA, Inc. et al., v. Sandoz, Inc., et al., No. 13-854

Question Presented:

Rule 52(a) of the Federal Rules of Civil Procedure provides that in matters tried to a district court, the court's "[f]indings of fact ... must not be set aside unless clearly erroneous."

The question presented is as follows:

Whether a district court's factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.

Cert. petition filed 1/10/14, conference 3/7/14, conference 3/21/14, conference 3/28/14, cert. petition granted 3/31/14.

CAFC Opinion, CAFC Argument

Amicus Briefs

Brief for the American Bar Association in Support of Neither Party
Brief for the Fédération Internationale des Conseils en Propriété Intellectuelle (FICPI) in Support of Neither Party
Brief for Intellectual Property Owners Association in Support of Neither Party
Brief for Professors Peter S. Menell, J. Jonas Anderson, and Arti K. Rai in Support of Neither Party
Brief for the United States in Support of Neither Party

Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369

Questions Presented:

  1. Does the Federal Circuit's acceptance of ambiguous patent claims with multiple reasonable interpretations - so long as the ambiguity is not "insoluble" by a court - defeat the statutory requirement of particular and distinct patent claiming?
  2. Does the presumption of validity dilute the requirement of particular and distinct patent claiming?
Cert. petition filed 9/21/13, conference 1/10/14, cert. petition granted 1/10/14, argument set for 4/28/14, argued 4/28/14 (transcript here), vacated and remanded 6/2/14 (opinion here).

CAFC Opinion, CAFC Argument

Merits Briefs

Brief for Petitioner, Nautilus, Inc.
Brief for Respondent, Biosig Instruments, Inc.
Reply Brief for Petitioner, Nautilus, Inc.

Amicus Briefs

Brief for AARP in Support of Petitioner
Brief for Amazon.com, Inc., Cisco Systems, Inc., Dell Inc., ESRI, Garmin International, Inc., Google Inc., J.C. Penney Corporation, Inc., Limelight Networks, Inc., Netflix, Inc., Newegg Inc., Red Hat, Inc., SAP America, Inc., SAS Institute Inc., and Verizon Communications Inc. in Support of Petitioner
Brief for Electronic Frontier Foundation and Public Knowledge in Support of Petitioner
Brief for Microsoft Corporation in Support of Petitioner
Brief for Nova Chemicals Inc., Aetna Inc., Micron Technology, Inc., General Motors LLC, EMC Corporation, Intel Corporation, and Thermo Fisher Scientific Inc. in Support of Petitioner
Brief for Biotechnology Industry Organization in Support of Respondent
Brief for Interval Licensing LLC in Support of Respondent
Brief for Nokia Corporation and Nokia USA Inc. in Support of Respondent
Brief for the American Bar Association in Support of Neither Party
Brief for American Intellectual Property Law Association in Support of Neither Party
Brief for the Intellectual Property Law Association of Chicago in Support of Neither Party
Brief for Intellectual Property Owners Association in Support of Neither Party
Brief for Professor Peter S. Menell in Support of Neither Party
Brief for Sigram Schindler Beteiligungsgesellschaft mbh, in Support of Neither Party
Brief for Yahoo! Inc. in Support of Reversal
Motion for Leave to File Brief Out of Time and Brief of Ananda M. Chakrabarty, Ph.D., in Support of Petitioner
Brief for the United States in Support of Respondent

Limelight Networks, Inc. v. Akamai Technologies, Inc., et al., No. 12-786, vide 12-800

Question Presented:

Akamai holds a patent claiming a method involving redirecting requests for Internet content and selecting optimal servers. The Federal Circuit acknowledged that neither Limelight nor customers using Limelight's service directly infringe Akamai's patent under 35 U.S.C. § 271(a) because no one performs all the steps of the patented method. App. 6a, 30a. The Federal Circuit nevertheless held that Limelight could be liable, under 35 U.S.C. § 271(b), for inducing infringement if (1) it knew of Akamai's patent; (2) it performed all but one of the steps of the method; (3) it induced its customers to perform the final step of the claimed method; and (4) the customers performed that step. App. 30a. The question presented is:

Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a).

Cert. petition filed 12/28/12, conference 6/6/13, conference 6/13/13, conference 6/20/13, CVSG 6/24/13, brief of amicus United States filed 12/10/13, conference 1/10/14, cert. petition granted 1/10/14, argued 4/30/14 (transcript here), reversed and remanded 6/2/14 (opinion here).

CAFC Opinion, CAFC Argument


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