United States: Patent Law And The Supreme Court: Patent Certiorari Petitions Granted (April 2016)

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.

Samsung Electronics Co., Ltd. v. Apple Inc., No. 15-777

Questions Presented:

Design patents are limited to "any new, original and ornamental design for an article of manufacture." 35 U.S.C. 171. A design-patent holder may elect infringer's profits as a remedy under 35 U.S.C. 289, which provides that one who "applies the patented design . . . to any article of manufacture . . . shall be liable to the owner to the extent of his total profit, . . . but [the owner] shall not twice recover the profit made from the infringement."

The Federal Circuit held that a district court need not exclude unprotected conceptual or functional features from a design patent's protected ornamental scope. The court also held that a design-patent holder is entitled to an infringer's entire profits from sales of any product found to contain a patented design, without any regard to the design's contribution to that product's value or sales. The combined effect of these two holdings is to reward design patents far beyond the value of any inventive contribution. The questions presented are:

1. Where a design patent includes unprotected non-ornamental features, should a district court be required to limit that patent to its protected ornamental scope?

2. Where a design patent is applied to only a component of a product, should an award of infringer's profits be limited to those profits attributable to the component?

Cert. petition filed 12/14/15, conference 3/4/16, conference 3/18/16, cert. petition granted, limited to Question 2, 3/21/16.

CAFC Opinion, CAFC Argument

WilmerHale represents respondent Apple Inc.

Medtronic Sofamor Danek USA, Inc. v. NuVasive, Inc., No. 15-85

Questions Presented:

In this case, the Federal Circuit affirmed a judgment of indirect infringement, solely on the ground that defendant Medtronic was aware of the patent and instructed doctors to use its products in a manner that was later determined to be infringing. The Federal Circuit did not discuss whether Medtronic's reading of the patent claims—under which it did not infringe—was reasonable.

Two months later, this Court decided Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (2015). That decision rejected the proposition that "even if the defendant reads the patent's claims differently from the plaintiff, and that reading is reasonable, he would still be liable because he knew the acts might infringe," and held that a plaintiff asserting a claim of indirect infringement must provide "proof the defendant knew the acts were infringing."

The question presented is:

Whether the Court should grant the petition, vacate the judgment below, and remand to the Federal Circuit for further consideration in light of Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (2015).

Cert. petition filed 7/17/15, waiver of respondent NuVasive, Inc. filed 8/19/15, response requested 9/14/15, GVR 1/19/16.

CAFC Opinion, CAFC Argument

Cuozzo Speed Technologies, LLC v. Lee, No. 15-446

Questions Presented:

In 2011, Congress enacted the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, which established a new post-grant adjudicatory process for challenges to the validity of patents. The Act created a body within the Patent and Trademark Office, called the Patent Trial and Appeal Board (Board), to hear those challenges as a quick and cost-effective alternative to litigation. One of the new types of adjudicative proceedings, inter partes review (IPR), has been both unexpectedly popular and surprisingly lethal. Since the inception of IPR, patent challengers have filed over 3,400 petitions, and nearly 85% of the IPR proceedings to date have resulted in the cancellation of some or all claims in the patent under review.

A primary reason for the high cancellation rate is that, although IPR was expressly designed to be a surrogate for litigation, the Board does not use the same claim construction standard as federal courts. Rather than construe the claim in an issued patent according to its plain and ordinary meaning, as a federal court would be required to do, the Board gives the claim its broadest reasonable interpretation, which is a protocol used by examiners in reviewing patent applications. Of course, the broader the interpretation of the claim, the more extensive the array of relevant prior art—and in turn the more likely that the claim will be held invalid in light of that prior art. Consequently, the Board's broad interpretation allows for differing determinations of validity in IPR proceedings and litigation.

Over a dissent by Judge Newman, a divided panel of the Federal Circuit affirmed the Board's use of the broadest-reasonable-interpretation standard for claim construction. The panel majority also held that, even if the Board had exceeded its statutory authority in instituting an IPR proceeding in the first place, the Board's decision to institute was judicially unreviewable. The court of appeals denied rehearing by a vote of 6-5, over a joint dissent by Chief Judge Prost and Judges Newman, Moore, O'Malley, and Reyna, as well as a separate dissent by Judge Newman. The five dissenting judges addressed the merits of, and would have rejected, the Board's claim construction standard.

The questions presented are as follows:

  1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
  2. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board's decision whether to institute an IPR proceeding is judicially unreviewable.

Cert. petition filed 10/6/15, conference 1/8/16, conference 1/15/16, cert. petition granted 1/15/16, set for argument on 4/25/16.

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