United States: Patent Law and the Supreme Court: Patent Certiorari Petitions Pending

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

Recently pending, granted and denied certiorari petitions

Tde Petroleum Data Solutions, Inc. v. AKM Enterprise, Inc., No. 16-890

Question Presented:

Whether an issued patent for a software implemented industrial process that regulates and controls the operation of an oil rig, which is patentable subject matter under this Court's interpretation of 35 U.S.C. § 101 in Diamond v. Diehr, 450 U.S. 175 (1981), is rendered unpatentable subject matter after this Court's decision in Alice v. CLS Bank, 134 S.Ct. 2347 (2014)? 

Cert. petition filed 1/13/17.

CAFC Opinion, CAFC Argument

Nanovapor Fuels Group, Inc. v. Vapor Point, LLC, No. 16-892

Question Presented:

The US Constitution's Seventh Amendment guarantees the right to trial by jury if timely requested.

There is division and uncertainty among the circuit courts of appeals regarding the evidentiary-weight standard applicable to prove waiver of the right to a jury trial.

The proper evidentiary-weight standard should require explicit, clear, and unequivocal evidence of a waiver of this fundamental, constitutional right.

The Federal Circuit Court of Appeals erred by not applying the evidentiary-weight standard requiring waiver of a constitutional right to be explicit, clear, and unequivocal.

Thus, the question presented is:

Can a party forfeit a properly demanded trial by jury without an explicit, clear, and unequivocal waiver?

Cert. petition filed 1/11/17.

CAFC Opinion, CAFC Argument

DataTreasury Corp. v. Fidelity Nat. Information Services, No. 16-883

Question Presented:

Congress broadly provided in the Patent Act that "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor . . . ." 35 U.S.C. § 101. This Court's 2014 decision in Alice v. CLS Bank requires courts, in their Section 101 analysis, to consider the effect of the patent in practice and if the patent merely claims well-understood, routine conventional activities previously known to the industry.

In that analysis, the Federal Circuit does not consider evidence of copying, unmet need, commercial success, and failure of others—often referred to as secondary considerations evidence in patent law. Ignoring that evidence has caused the Federal Circuit to hold ineligible groundbreaking, valuable inventions, such as the patents in this case. Should this Court grant certiorari and hold that a court must consider secondary considerations evidence in its Section 101 analysis?

Cert. petition filed 1/11/17.

CAFC Opinion, CAFC Argument

Enplas Corp. v. Seoul Semiconductor Co., Ltd.,  No. 16-867

Questions Presented:

In 2011, Congress enacted the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) ("AIA") which established new post-grant adjudicatory processes for challenges to the validity of patents. One of those processes created by the Act is an inter partes review. The Act also 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.  The decisions of the Board are subject to review by the Court of Appeals for the Federal Circuit and, as such, are subject to its precedents. 28 U.S.C. § 1295(a)(4)(A).

The Respondents Seoul Semiconductor Co. Ltd., et al. initiated an inter partes review (IPR2014-00605) of United States Patent No. 7,348,723 ("the ′'723 Patent"). At the conclusion of the IPR, the Board entered a Final Written Decision, finding the subject claims of the ′'723 Patent invalid as anticipated under 35 U.S.C. § 102 by U.S. Patent No. 5,577,493 ("Parkyn").

The law of anticipation clearly requires that each and every element be found, expressly or inherently, in the prior art. 35 U.S.C. § 102; see, e.g., Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008); Summit 6, LLC v. Samsung Electronics Co., Ltd., 802 F.3d 1283, 1294 (Fed. Cir. 2015). Precedent requires the Board to make specific findings of fact in order to facilitate appellate review. Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) ("[W]e hold that the Board is required to set forth in its opinions specific findings of fact and conclusions of law adequate to form a basis for our review."). With respect to anticipation, such specific findings must include a limitation by limitation analysis. Id. ("In particular, we expect that the Board's anticipation analysis be conducted on a limitation by limitation basis, with specific fact findings for each contested limitation and satisfactory explanations for such findings.").

In this case, however, the Board failed to perform such a limitation by limitation analysis and, in turn, failed to make the requisite findings required to support a conclusion that the claims of the ′'723 Patent are invalid as anticipated under 35 U.S.C. § 102.  Petitioner appealed the Board's Final Written Decision to the Court of Appeals for the Federal Circuit on grounds including, inter alia, the Board's failure to make the requisite findings of fact and, further, that the Board could not have made the requisite findings because the relied upon prior art fails to disclose each and every element of the claims of the ′'723 Patent.  In particular, Parkyn fails to disclose the claim element requiring two recited conditions for light emitted within the entire "half-intensity-angular-range."

It is undisputed that the Board's Final Written Decision fails to make any finding concerning the "half-intensity-angular-range." Thus, the Board's Final Written Decision is prima facie defective under the controlling law. At the oral argument on appeal, Respondents' counsel conceded that Parkyn does not even discuss the "half-intensity-angular-range." Thus, the Board's Final  Written Decision is per se in conflict with controlling law. The Appellate Court's failure to follow its own precedents creates a conflict of law necessitating this Court's resolution.

Accordingly, Petitioner Enplas presents the following questions:

  1. Whether the Board is required to make specific findings of fact in support of its Final Written Decision?
  2. Whether a finding of anticipation under 35 U.S.C. § 102 must be supported by findings that each and every element of the subject patent claim is disclosed in the prior art?
  3. Whether the Board erred in finding the subject claims anticipated under 35 U.S.C. § § 102 by a reference that admittedly fails to disclose each and every element of said claims?
  4. Whether the Federal Circuit committed a legal and/or procedural error by affirming the decision of the Board finding the ′'723 Patent invalid as anticipated under 35 U.S.C. § § 102, when (a) the Board's opinion failed to set forth evidence to satisfy the requirement that all elements were in fact present in the prior art, and (b) substantial evidence demonstrated those omitted claim elements were not present in the prior art?

Cert. petition filed 1/9/17.

CAFC Opinion, CAFC Argument

IPLearn-Focus, LLC v. Microsoft Corp., No. 16-859

Questions Presented:

  1. Can patent claims be invalidated under 35 U.S.C. § 101 by finding under Alice step two that they involve the conventional implementation of an abstract concept, where the only evidence of record is that the ordered combinations of hardware in the claims are unconventional apparatuses with novel applications?
  2. Can claims be invalidated under 35 U.S.C. § 101 by declaring them to be directed to an abstract idea based on statements of purpose in the patent specification without considering whether the claims are directed to improvements to computer functionality rather than to economic or other tasks for which a computer is used in its ordinary capacity?

Cert. petition filed 1/5/17, waiver of respondent Microsoft Corp. filed 1/9/17, conference 2/17/17.

CAFC Opinion, CAFC Argument

Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712

Questions Presented:

  1. Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
  2. Whether the amendment process implemented by the PTO in inter partes review conflicts with this Court's decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), and congressional direction.
  3. Whether the "broadest reasonable interpretation" of patent claims—upheld in Cuozzo for use in inter partes review—requires the application of traditional claim construction principles, including disclaimer by disparagement of prior art and reading claims in light of the patent's specification.

Cert. petition filed 11/23/16, waiver of respondent Michelle Lee, Director, Patent and Trademark Office filed 12/12/16.

CAFC Opinion, CAFC Argument

Google Inc. v. Arendi S.A.R.L., No. 16-626

Question Presented:

In KSR International Co. v. Teleflex, Inc., this Court rejected the Federal Circuit's "rigid" approach to analyzing the obviousness of patent claims in favor of the "expansive and flexible" approach of the Court's own cases. 550 U.S. 398, 415 (2007). The Court stressed that "[r]igid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it." Id. at 421.

In this case, the Patent Trial and Appeal Board relied on the common sense of a skilled artisan in determining that it was obvious to search a database for duplicate entries before adding new information to the database. In making that finding, the Board cited expert testimony on both sides, including respondent Arendi's expert's concession that checking for duplicates before adding items to databases was commonplace. The Federal Circuit reversed, however, limiting KSR to cases involving the motivation to combine two prior-art references and holding that common sense could not supply a non-"peripheral" "missing limitation."

Did the Federal Circuit err in restricting the Board's ability to rely on the common sense and common knowledge of skilled artisans to establish the obviousness of patent claims?

Cert. petition filed 11/8/16, waiver of respondent Arendi S A.R.L. filed 11/21/16, waiver of respondent Apple, Inc. file 12/8/16, response requested 12/12/16.

CAFC Opinion, CAFC Argument

Big Baboon, Inc. v. Lee, No. 16-496

Question Presented:

In Christianson v. Colt Industries, 486 U.S. 800 (1988), this Court held that the Court of Appeals for the Federal Circuit does not have appellate jurisdiction under 28 U.S.C. § 1295(a)(1) when the claims of a well-pleaded complaint do not "arise under federal patent law." The Petitioner filed an action in district court under the Administrative Procedure Act (APA) seeking to have specific evidentiary admission decisions by the Director of the United States Patent and Trademark Office (USPTO) during patent reexaminations overturned as violating due process, and the complaint was dismissed. The Court of Appeals for the Ninth Circuit transferred the appeal of the dismissal to the Federal Circuit over the objection of the Petitioner, even though all parties agreed that Ninth Circuit law governed the only claim of the complaint.  Can the Federal Circuit impute a patent law claim into a complaint that does not explicitly contain a claim arising under patent law in order to exert appellate jurisdiction?

Cert. petition filed 10/10/16, waiver of respondent Michelle K. Lee, Director, United States Patent and Trademark Office et al. filed 10/19/16, response requested 10/28/16, conference 2/17/17.

CAFC Opinion, CAFC Argument

Boston Scientific Corp. v. Mirowski Family Ventures, LLC, No. 16-470

Question Presented:

Whether the court below, in deciding federal patent questions that are necessarily implicated by state law claims, contravened this Court's direction in Gunn v. Minton, 133 S. Ct. 1059 (2013), to "hew closely to the pertinent federal precedents," by (1) failing to perform necessary patent claim construction, (2) disregarding the settled meaning of the term "covered by" in patent jurisprudence, and (3) ignoring the fundamental distinction between method and apparatus claims, as established by the Federal Circuit.

Cert. petition filed 10/7/16, waiver of respondent Mirowski Family Ventures, LLC filed 10/17/16, response requested 11/10/16.

Maryland Ct. of Special Appeals Opinion, No Maryland Ct. of Special Appeals Argument Available

Romag Fasteners, Inc. v. Fossil, Inc., No. 16-202

Questions Presented:

Section 43(a) of the Lanham Act prohibits trademark infringement through false representations regarding the origin, endorsement, or association of goods through the use of another's distinctive mark. 15 U.S.C. § 1125(a). Section 35 of the Lanham Act permits a trademark holder who establishes a violation of Section 43(a) to recover the infringer's profits, among other damages. Id. § 1117(a). The federal circuits are intractably divided—six to six—over whether a trademark holder also must establish that the infringement was willful in order recover an award of profits.

The questions presented are:

  1. Whether, under Section 35 of the Lanham Act, willful infringement is a prerequisite for an award of infringer's profits for a violation of section 43(a).
  2. Whether and to what extent the defense of laches may bar an award for patent infringement brought within the Patent Act's six-year statutory limitations period, 35 U.S.C. § 286—the same issue this Court granted for plenary review in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927.

Cert. petition filed 8/12/16, conference 11/22/16.

CAFC Opinion, CAFC Argument

Endotach LLC v. Cook Medical LLC, No. 16-127

Questions Presented:

Petitioner respectfully requests that this case be held in view of SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 136 S. Ct. 1824 (2016) ("SCA II"), No. 15-927. In SCA II, this Court granted a petition for writ of certiorari in order to determine if the defense of laches could bar a claim for patent infringement brought within the six-year statutory limitations period of the Patent Act. The granting of the writ followed this Court's decision in Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (2014), which held the defense of laches cannot be used to shorten the three-year copyright limitations period set forth in 17 U.S.C. § 507(b). In Petrella, this Court noted 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 1975.

The Federal Circuit ignored this Court's Petrella guidance shortly thereafter in a divisive 6-5 split en banc opinion in SCA Hygiene Prods. Aktiebolag v. First Quality Baby Prods., LLC, 807 F.3d 1311, 1333 (Fed. Cir. 2015) ("SCA I"), and instead carved out a patent-specific approach for laches. The dissent in SCA I recognized the conflict with Petrella, noting "[t]he Supreme Court has repeatedly cautioned this court not to create special rules for patent cases. In light of the Supreme Court's clear, consistent, and longstanding position on the unavailability of laches to bar damages claims filed within a statutory limitations period, we should not do so here." SCA I, at 1333. This Court has already recognized the benefit in reviewing the Federal Circuit's position on this matter and this petition presents the same vital question posed in SCA II:

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 7/25/16, waiver of respondent Cook Medical LLC filed 8/26/16, response requested 9/12/16, conference 1/6/17.

No CAFC Opinion—appeal terminated, CAFC Argument

Medinol Ltd. v. Cordis Corp., No. 15-998

Question Presented:

In Petrella v. Metro-Goldwyn-Mayer, this Court ruled that if a damages claim is timely under the relevant statute of limitations, judges cannot bar the claim by invoking the defense of laches. 134 S. Ct. 1962 (2014). The timeliness of the claim depends on "Congress' judgment," not the discretion of judges exercising their equitable powers. Id. at 1967.

In this case, the Federal Circuit affirmed the use of laches to dismiss damages claims that were timely under the Patent Act's statute of limitations. The Federal Circuit relied on a 6-5 en banc decision in SCA Hygiene Products Aktiebolag v. First Quality Baby Prods., LLC, 807 F.3d 1311 (Fed. Cir. 2015), that disregarded Petrella's admonition that "courts are not at liberty to jettison Congress' judgment on the timeliness of suit." 134 S. Ct. at 1967. Rather than following Petrella, the Federal Circuit created an exception for damages claims in patent cases.

The question presented is:

May judges use the equitable defense of laches to bar legal claims for damages that are timely under the express terms of the Patent Act.

Cert. petition filed 2/2/16, conference 4/22/16, conference 4/29/16.

CAFC Opinion was unpublished, No CAFC Argument

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