United States: Patent Law and the Supreme Court: Patent Certiorari Petitions Denied in 2017

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. 

Recently pending, granted and denied certiorari petitions


Johnson & Johnson Vision Care, Inc. v. Rembrandt Vision Technologies, L.P., No. 16-489

Questions Presented:

Fed. R. Civ. P. 60(b)(3) authorizes a losing party to seek to reopen a final judgment based on a showing of "fraud . . . , misrepresentation, or misconduct by an opposing party" that has denied the movant a full and fair opportunity to present its case.  The circuits are sharply split on the burden of proof required for such relief, the showing that is necessary to meet the burden, the identity of the party that must bear the burden under particular circumstances, the meaning of "an opposing party," and what constitutes "misconduct". The questions presented are:

  1. Whether a movant must show that it has been denied a full and fair opportunity to present its case by "clear and convincing evidence," as the Third, Fifth, Seventh, Eighth, and Eleventh Circuits have held; or must the movant instead show "substantial interference" in the presentation of its case, as the Ninth, Tenth, and D.C. Circuits have held; or does the burden on this issue shift under certain circumstances to the party opposing a Rule 60(b)(3) motion, as the First and Sixth Circuits have held; or is there no requirement to show any real effect on the proceeding at all, as the Federal Circuit has held here.
  2. Whether "misrepresentations . . . of an opposing party" under Fed. R. Civ. P. 60(b)(3) include misrepresentations by an expert witness, unknown to the party or its counsel, as the Federal and Eleventh Circuits have held, or cannot be attributed to the party without the complicity of the party or its counsel, as the Seventh and D.C. Circuits have held.
  3. Whether "misconduct" under Fed. R. Civ. P. 60(b)(3) includes purely accidental and unintentional omissions in the course of discovery, as the First, Fifth, Eleventh and Federal Circuits have held, or requires a showing of improper or wrongful behavior, as the Sixth Circuit has held.

Cert. petition filed 10/7/16, conference 1/13/17. Petition denied 1/17/17.

CAFC Opinion, CAFC Argument

Sightsound Technologies, LLC v. Apple Inc., No. 16-483

Question Presented:

In Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), the Court held that the Leahy-Smith America Invents Act of 2011, Pub. L. No. 11229, 125 Stat. 284, in most instances precludes judicial review of the Patent Trial and Appeal Board's ("Board") decision to institute review of challenged patent claims. The Court emphasized, however, that "we do not categorically preclude review of a final decision where a petition fails to give 'sufficient notice' such that there is a due process problem with the entire proceeding, nor does our interpretation enable the agency to act outside its statutory limits . . . ." Cuozzo, 136 S. Ct. at 2141. The Court reasoned that any such errors would, like other final agency actions, remain subject to review under the Administrative Procedure Act. Id. at 2142.

Notwithstanding this Court's admonition in Cuozzo, the Federal Circuit has imposed a categorical ban on review of the Board's decision to initiate review—in the present case, refusing post-Cuozzo to examine whether the Board provided the patent owner with "sufficient notice" of the assertions levied against its patents, or whether the Board is acting in an arbitrary and capricious manner in disregarding its own regulations in moving forward with review on a ground never asserted by any party. The result here is that patents were improperly invalidated without fair notice on a basis the party challenging the patent did not even deem worthy of advancing. This is the case contemplated in Cuozzo: a due process violation that requires judicial review.

The question presented is: When does "a petition fail[] to give 'sufficient notice' such that there is a due process problem with the entire proceeding," and what constitutes the Board "act[ing] outside its statutory limits," to permit judicial review the Board's decisions under Cuozzo?

Cert. petition filed 10/11/16, waiver of Federal Respondent filed 10/27/16, conference 1/13/17. Petition denied 1/17/17.

CAFC Opinion, CAFC Argument

David Netzer Consulting Engineer LLC v. Shell Oil Co., No. 16-713

Questions Presented:

The bedrock principle of claim construction is that patents are written to one skilled in the art. It is well-established principle that a court may not import limitations from the written description into the claims." See Electro Med. Sys. v. Cooper Life Scis., Inc., 34 34 F.3d 1048, 1054 (Fed. Cir. 1994). Claims are not to be interpreted by adding limitations appearing only in the specification." See Hill-Rom Servs., Inc. v. Stryker Corp., No. 2013-1450, 755 F.3d 1367, 2014 WL 2898495, at *2 (Fed. Cir. June 27, 2014).

Rule 52(a)(1) of The Federal Rules of Civil Procedure provides that in matters tried without a jury, the district court "must find the facts specially and state its conclusions of law separately."

The petition for a writ of certiorari presents the following issues:

  1. Is it legal error for the district court to arbitrarily define a factually disputed technical term of art without performing claim construction and then import limitations from the specifications into the claims to avoid patent infringement?
  2. Whether the federal circuit can review de novo a factually disputed technical claim term of art when the record is devoid of factual underpinnings in violation of Rule 52(a)(1)?
  3. Would court failing in (1) and/or (2) above constitute a violation of petitioner's "due process"?

Cert. petition filed 11/23/16, waiver of respondent Shell Oil Company, et al. filed 12/16/16, conference 1/6/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument

Farstone Technology, Inc. v. Apple Inc., No. 16-651

Questions Presented:

  1. Whether, as a matter of statutory construction, the absence of the term "means" in a patent claim gives rise to a "strong presumption" that means-plus-function claiming under 35 U.S.C. § 112, para. 6 is not invoked, which was the standard prior to the Federal Circuit's recent Williamson decision?
  2. Whether the new Williamson standard for determining when 35 U.S.C. § 112, para. 6 is invoked contravenes this Court's precedent and also violates the due process clause of the Fifth Amendment?

Cert. petition filed 11/14/16, waiver of respondent Apple Inc. filed 11/18/16, conference 1/6/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument

EON Corp. IP Holdings LLC v. Silver Spring Networks, Inc., No. 16-551

Question Presented:

In Unitherm Food Systems, Inc. v. Swift-Eckrich, Inc., 546 U.S. 394 (2006), this Court held that absent a motion under Fed. R. Civ. P. 50(b), a court of appeals is without power to set aside a jury verdict and order entry of judgment as a matter of law (JMOL). In Ortiz v. Jordan, 562 U.S. 180 (2011), the Court expanded on that ruling by explaining that a court similarly lacks power to order JMOL on the basis of an argument raised at summary judgment, but not renewed in a Rule 50 motion. However, Ortiz left undecided whether that prohibition applies to "purely legal" arguments, a question upon which the courts of appeals were then, and continue to be, deeply divided.

The issue arises with particularly clarity in the Federal Circuit in the context of claim construction. The Federal Circuit has asserted the power to order JMOL on the basis of a claim construction never presented in any Rule 50 motion, on the theory that claim construction presents a pure question of law that the Federal Circuit must determine independently. See, e.g., Exxon Chem. Patents, Inc. v. Lubrizol Corp., 64 F.3d 1553, 1560 (Fed. Cir. 1995). The Question Presented is:

Whether the Federal Circuit erred in ordering entry of judgment as a matter of law on a ground not presented in a Rule 50 motion in the district court, even though the ground presented a purely legal question.

Cert. petition filed 10/21/16, conference 1/6/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument

Merck & Cie v. Watson Laboratories, Inc., No. 16-493

Question Presented:

The Patent Act provides that a "person shall be entitled to a patent unless . . . the invention was . . . in public use or on sale in this country, more than one year prior to the date of the application" for the patent.  35 U.S.C. § 102(b) (2006).

The question presented is:

Whether the "on sale" bar found in § 102(b) applies only to sales or offers of sale made available to the public, as Congress, this Court, and the United States have all made clear, or whether it also applies to non-public sales or offers of sale, as the Federal Circuit has held.

Cert. petition filed 10/12/16, conference 1/6/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument

LifeScan Scotland, Ltd. v. Pharmatech Solutions, Inc., No. 16-377

Question Presented:

The Leahy-Smith America Invents Act, following established principles of administrative law, sets up a scheme in its newly established inter partes patent challenge proceedings that requires separate decisions to be made for institution and adjudication by two different decision makers: The Act provides that "[t]he Director" of the U.S. Patent and Trademark Office "shall determine whether to institute an inter partes review under this chapter," 35 U.S.C. § 314(b), and that "[t]he Patent Trial and Appeal Board shall . . . conduct each inter partes review instituted under this chapter," id. § 316(c).

The Director subsequently promulgated a regulation providing that "[t]he Board institutes the trial on behalf of the Director." 37 C.F.R. § 42.4(a). As a result, the separate statutory functions in sections 314 and 316(c) are now combined before a single panel of the Board, which first decides whether to institute inter partes review and then rules on the merits.

The question presented is:

Whether the Leahy-Smith America Invents Act permits the Patent Trial and Appeal Board instead of the Director to make inter partes review institution decisions.

Cert. petition filed 9/20/16, conference 1/6/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument

Ethicon Endo-Surgery, Inc. v. Covidien LP, No. 16-366

Question Presented:

The Leahy-Smith America Invents Act, following established principles of administrative law, sets up a scheme in its newly established inter partes patent challenge proceedings that requires separate decisions to be made for institution and adjudication by two different decision makers: The Act provides that "[t]he Director" of the U.S. Patent and Trademark Office "shall determine whether to institute an inter partes review under this chapter," 35 U.S.C. § 314(b), and that "[t]he Patent Trial and Appeal Board shall . . . conduct each inter partes review instituted under this chapter," id. § 316(c).

The Director subsequently promulgated a regulation providing that "[t]he Board institutes the trial on behalf of the Director." 37 C.F.R. § 42.4(a). As a result, the separate statutory functions in sections 314 and 316(c) are now combined before a single panel of the Board, which first decides whether to institute inter partes review and then rules on the merits.

The question presented is:

Whether the Leahy-Smith America Invents Act permits the Patent Trial and Appeal Board instead of the Director to make inter partes review institution decisions.

Cert. petition filed 9/20/16, conference 1/6/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument

Mylan Pharmaceuticals Inc. v. Acorda Therapeutics Inc., No. 16-360

Question Presented:

Under the Hatch-Waxman Act, before a generic pharmaceutical manufacturer can market a generic version of a brand-name drug, it must file an abbreviated new drug application (ANDA) with the Food and Drug Administration in Maryland. That filing generally constitutes an act of patent infringement, giving the brand-name manufacturer an immediate right to sue the generic manufacturer for patent infringement. Mylan prepared the ANDAs here in West Virginia and filed them in Maryland. Mylan was then sued for patent infringement in Delaware, despite the absence of any affirmative steps towards marketing the generic drugs there or any other suit-related contacts between Mylan and Delaware. Such Delaware ANDA-prompted suits were common, under a general jurisdiction theory, before this Court's decision in Daimler AG v. Bauman, 134 S. Ct. 746 (2014). In the decision below, however, the Federal Circuit authorized such suits to be filed in Delaware (or virtually anywhere else) on a theory of specific personal jurisdiction because the ANDA "reliably indicate[s] plans to engage in marketing of the proposed generic drugs," including in Delaware. Thus, the decision below resurrects the pre-Daimler regime under a rubric of nationwide specific personal jurisdiction.

The question presented is:

Whether the mere filing of an abbreviated new drug application by a generic pharmaceutical manufacturer is sufficient to subject the manufacturer to specific personal jurisdiction in any state where it might someday market the drug.

Cert. petition filed 9/19/16, conference 1/9/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument

Google Inc. v. Cioffi, No. 16-200

Questions Presented:

  1. When construing an ambiguous patent claim, should courts generally consider the record of the patent's prosecution as relevant context, or is prosecution history relevant only if it clearly and unmistakably disavows claim scope?
  2. When a patent applicant has amended a claim to overcome the Patent and Trademark Office's earlier disallowance of the claim, should a court strictly construe the amended claim language against the applicant, as this Court has held, or consider the amendment history to be relevant only to the extent that it clearly and unambiguously disavows claim scope, as the Federal Circuit has held?

Cert. petition filed 8/10/16, waiver of respondent Alfonso Cioffi et al., filed 8/31/16, response requested 9/12/16, conference 1/6/17. Petition denied 1/9/17.

CAFC Opinion, CAFC Argument


Patent certiorari petitions denied in:  2016,  2015, 2014, 2013, 2012, 2011, 2010, 2009

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