United States: Patent Law And The Supreme Court: Patent Certiorari Petitions Granted (October 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.

Recently pending, granted and denied certiorari petitions

Click-To-Call Technologies, LP v. Oracle Corporation, No. 15-1014

Questions Presented:

This Petition presents two questions raised in two previous petitions for writs of certiorari. With respect to the first question presented here, this Court has granted certiorari in Cuozzo Speed Technologies, LLC v. Lee, No. 15-466 (S. Ct. Jan. 15, 2016), and the second question presented here is currently pending in another petition before this Court, Achates Reference Publ'g, Inc. v. Apple Inc. and Lee, No. 15-842 (S. Ct. Dec. 29, 2015).

In 2011, Congress enacted the Leahy-Smith America Invents Act (AIA), Pub. L. No. 112-29, 125 Stat. 284, creating post-grant adjudicatory proceedings for challenging patentability of patents. Among other types of proceedings, the AIA created inter partes review (IPR) proceedings, which are heard by the newly-established Patent Trial and Appeal Board (Board) in the United States Patent and Trademark Office (PTO). Since the inception of IPR proceedings, the number of challengers has increased at an unexpected and unparalleled rate, with roughly 4,000 petitions being filed to date. The Board has instituted review in over two-thirds of its IPR institution decisions, and roughly 87% of cases proceeding to final written decisions have resulted in the cancellation of some or all claims under review. Based on these success rates, the proceedings have quickly become the venue of choice for entities wishing to challenge patent validity.

In Cuozzo, Achates, and this case, the Federal Circuit held that it lacks jurisdiction to review claims that the Board exceeded its statutory authority in instituting their respective IPRs. In each case, the Federal Circuit denied review without due consideration of the strong presumption of judicial review of agency action. In Cuozzo, the Federal Circuit denied review of the institution decision itself, and this Court has granted certiorari to determine whether a Board institution decision made in excess of its statutory authority is judicially reviewable. In Achates, the Federal Circuit denied judicial review of a decision made in excess of its statutory authority both at the institution phase and in the Board's final written decision, for which the AIA affords judicial review under 35 U.S.C. § 319 and § 141(c). This case has analogous issues to those in Cuozzo and Achates, as the board exceeded its statutory authority at both institution and in its final written decision. Judicial review is available under § 319 and § 141(c) to determine whether the Board exceeded its statutory authority by instituting IPR and issuing its final written decision, notwithstanding that the patent challenger was served with a complaint alleging infringement of the patent more than one year before filing its petition for IPR in direct violation of 35 U.S.C. § 315(b).

The questions presented are as follows:

  1. 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.
  2. Whether the court of appeals erred in holding that, even if the Board expressly decided in its final written decision that it had statutory authority to institute the proceeding, the Board's decision is judicially unreviewable.

Cert. petition filed 2/10/16, waiver of respondents Ingenio, Inc. and Yellowpages, LLC filed 4/11/16, conference 6/23/16, GVR 6/27/16.

CAFC Opinion, No CAFC Argument

Life Technologies Corp. v. Promega Corp., No. 14-1538

Questions Presented:

35 U.S.C. § 271(f)(1) provides that it is an act of patent infringement to "suppl[y] . . . in or from the United States all or a substantial portion of the components of a patented invention, . . . in such manner as to actively induce the combination of such components outside the United States." Despite this Court's clear dictate that section 271(f) should be construed narrowly, Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007), the Federal Circuit held that Life Technologies is liable for patent infringement for worldwide sales of a multi-component kit made abroad because just a single, commodity component of the kit was shipped from its U.S. facility to its own foreign facility. The questions presented are:

  1. Whether the Federal Circuit erred in holding that a single entity can "actively induce" itself to infringe a patent under 35 U.S.C. § 271(f)(1).
  2. Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all worldwide sales

Cert. petition filed 6/26/15, conference 9/28/15, CVSG 10/5/15, SG brief filed 5/11/16, conference 6/16/16, conference 6/23/16, granted limited to question 2 6/27/16.

Merits Briefs

Amicus Briefs

In Support of Petitioner

In Support of Neither Party

CAFC Opinion, CAFC Argument

WilmerHale represents respondent Promega Corporation

WesternGeco LLC v. ION Geophysical Corp., No. 15-1085

Questions Presented:

This Court has held that, by its terms, 35 U.S.C. § 271(f) is an "exception" to "the general rule under United States patent law that no infringement occurs when a patented product is made and sold in another country." Microsoft Corp. v. AT&T Corp., 550 U.S. 437, 441 (2007). Section 271(f) defines acts of patent infringement by reference to extraterritorial conduct: if certain requirements are met, infringement occurs where components of a patented invention are exported abroad for combination "outside of the United States in a manner that would infringe the patent if such combination occurred within the United States."

Here, despite affirming that Respondent was liable for infringement under § 271(f), the court of appeals nullified all the Petitioner's lost-profit damages awarded because those damages were based on so-called "foreign lost profits." The court of appeals based its ruling on an understanding of the presumption against extraterritoriality that neither this Court nor any other has adopted and did so over the dissent of three circuit judges. The court of appeals held that even when Congress has overridden the presumption in creating liability, the presumption must be applied a second time to restrict damages. That approach guts Congress's enactment of § 271(f), which was specifically adopted to overrule this Court's decision in Deepsouth Packaging Co. v. Laitram Corp., 406 U.S. 518 (1972).

Separately, the court of appeals also affirmed the district court's decision not to enhance damages under 35 U.S.C. § 284, by applying the restrictive view of that statute currently under review this Term in Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513, and Stryker Corp. v. Zimmer, Inc., No. 14-1520.

The questions presented are:

  1. Whether the court of appeals erred in holding that damages based on a patentee's so called "foreign lost profits" are categorically unavailable in cases of patent infringement under 35 U.S.C. § 271(f).
  2. Whether the Court should hold this Petition for Halo and Stryker.

Cert. petition filed 2/26/16, conference 6/2/16, conference 6/16/16, GVR 6/20/16.

CAFC Opinion, CAFC Argument

Innovention Toys, LLC v. MGA Entertainment, Inc., No. 15-635

Questions Presented:

1. Whether the Federal Circuit erred by applying a rigid, two-part test for willful patent infringement and the enhancement of damages under 35 U.S.C. § 284, which is the same rigid, two-part test this Court rejected in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) for an award of attorney fees under 35 U.S.C. § 285, a statute with very similar wording as Section 284.

2. Whether a district court has discretion to enhance damages under 35 U.S.C. § 284 (similar to the "exceptional case" abuse-of-discretion standard for 35 U.S.C. § 285, as set forth in Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 134 S. Ct. 1744 (2014)), where the infringer, one of the world's largest toy companies, intentionally copied the patented game of a competitor, a small three-person toy company, and made no attempt to avoid infringement of the smaller company's valid patent.

Cert. petition filed 11/10/15, conference 1/15/16, conference 6/16/16, GVR 6/20/16.

CAFC Opinion, CAFC Argument

SCA Hygiene Products v. First Quality Baby Products, LLC , No. 15-927

Question Presented:

In Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (2014), the Court held that the defense of laches cannot be used to shorten the three-year copyright limitations period set forth in 17 U.S.C. § 507(b), observing that "we have never applied laches to bar in their entirety claims for discrete wrongs occurring within a federally prescribed limitations period." 134 S. Ct. at 1974. In reaching its decision, the Court noted that the Federal Circuit follows a contrary rule in the patent setting, applying laches to bar infringement claims accruing within the six-year limitations period prescribed in 35 U.S.C. § 286, but stated: "[w]e have not had occasion to review the Federal Circuit's position." Petrella, 134 S. Ct. at 1974 n.15 (discussing A.C. Aukerman Co. v. R.L. Chaides Constr. Co., 960 F.2d 1020 (Fed. Cir. 1992) (en banc)).

Following Petrella, the Federal Circuit convened en banc in this matter to consider the conflict between Petrella and Aukerman. All judges of the court agreed that there is "no substantive distinction material to the Petrella analysis" between the copyright and patent limitations periods. Pet. App. 18a. Nevertheless, in a 6-5 decision, the court reaffirmed its position in Aukerman and held that laches may be used to bar patent infringement claims accruing within the six-year limitations period.

The question presented is:

Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act's six-year statutory limitations period, 35 U.S.C. § 286.

Cert. petition filed 1/19/16, conference 4/22/16, conference 4/29/16, cert. petition granted 5/2/16, set for argument 11/1/16.

Merits Briefs

Brief for Petitioner SCA Hygiene Products Aktiebolag and SCA Personal Care, Inc.
Brief for Respondents First Quality Baby Products, LLC, First Quality Hygienic, Inc., First Quality Products, Inc., and First Quality Retail Services, LLC

Amicus Briefs

In Support of Petitioner

Brief for Alliance of Inventor Groups in Support of Petitioner
Brief for the American Bar Association in Support of Petitioner
Brief for Art+Com Innovationpool GmbH in Support of Petitioner
Brief for Intellectual Property Owners Association in Support of Petitioner
Brief for Law Professors in Support of Petitioner
Brief for Medinol Ltd. in Support of Petitioner

In Support of Respondent

Brief for Askeladden LLC in Support of Respondents
Brief for Briggs & Stratton Corporation, Rockwell Automation Inc., and Wisconsin Manufacturers & Commerce in Support of Respondents
Brief for Cook Medical LLC in Support of Respondents
Brief for Dell, Acushnet, Applied Materials, Asustek, Cablelabs, Canon, Comcast, CTIA, Fairchild, Semiconductor, Global Automakers, Google, HP, Intel, the Internet Association, JC Penney, L Brands, Mastercard, Micron, Newegg, QVC, Red Hat, Samsung, SAP, SAS, Symmetry, T-Mobile, Varian Medical Systems, Visa, Vizio, Xerox, and Xilinx in Support of Respondents
Brief of the Electric Frontier Foundation and Public Knowledge in Support of Respondents
Brief for Johnson & Johnson and Cordis Corporation in Support of Respondent
Brief for Roche Molecular Systems, Inc. in Support of Respondents and Urging Affirmance
Brief for Universal Remote Control, Inc. in Support of Respondent
Brief for Washington Legal Foundation in Support of Respondent

In Support of Neither Party

Brief for American Intellectual Property Law Association in Support of Neither Party
Brief for Chicago Intellectual Property Law Association in Support of Neither Party

CAFC Opinion, CAFC Argument

WilmerHale represents respondents First Quality Baby Prods., LLC

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