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. 

OIP Technologies, Inc. v Amazon, Inc., No. 15-642

Questions Presented:

  1. Whether all methods that improve existing technological processes are equally eligible for patent protection under 35 U.S.C. § 101, and the Federal Circuit erred by distinguishing a method of testing demand to improve a pricing process from Diehr’s method of testing temperature to improve the timing of a rubber curing process by finding that only the business-related process was ineligible.
  2. Whether a court may grant a motion to dismiss a patent infringement suit for failure to claim patent-eligible subject matter under 35 U.S.C. § 101 based on factual determinations that are inconsistent with the facts in the complaint, notwithstanding the requirement of Federal Rule of Civil Procedure 12 that all facts in the complaint be taken as true.

Cert. petition filed 11/12/15, waiver of respondent Amazon.com, Inc. filed 11/17/15, conference 12/11/15. Petition denied 12/14/15.

CAFC OpinionCAFC Argument

Allvoice Developments US, LLC v. Microsoft Corp., No. 15-538

Questions Presented:

  1. Do patent claims addressed directly to software that is inherently in a computer-readable medium qualify as a “manufacture” under 35 U.S.C. § 101 without express recitation of the medium?
  2. Does a district court abuse its discretion when it refuses to consider evidence of patent infringement as described in a patentee’s infringement contentions on the ground that those contentions did not refer to the specific part of the accused product corresponding to a particular claim element by name when (a) the accused infringer never objected to the adequacy of the disclosure, (b) the patentee nevertheless identified the specific part by name during discovery, and (c) there is no reason, such as bad faith or prejudice to the accused infringer, for excluding the evidence as a sanction?

Cert. petition filed 10/23/15, waiver of respondent Microsoft Corp. filed 11/17/15, conference 12/11/15. Petition denied 12/14/15.

CAFC OpinionCAFC Argument

Fivetech Technology Inc. v. Southco, Inc., No. 15-381

Questions Presented:

In United States v. Adams, 383 U.S. 39, 49 (1966), this Court stated that “it is fundamental that [patent] claims are to be construed in light of the specifications, and both are to be read with a view to ascertaining the invention.” In Markman v. Westview Instruments, Inc., 517 U.S. 370, 389 (1996), this Court referenced the required “standard construction rule that a [claim] term can be defined only in a way that comports with the instrument as a whole.” (Emphasis added). In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the Federal Circuit rejected a line of Federal Circuit opinions that limited the role of the specification in defining claim terms only to instances of explicit redefinitions or explicit disavowals of claim scope. However, since Phillips, the Federal Circuit remains divided as to the role of the specification and file history (intrinsic evidence) in construing claim terms. Specifically, some panels of the Federal Circuit have adopted a rigid standard of “lexicography and disavowal” for defining claim terms which limits the relevance of the intrinsic evidence only to those instances of explicit redefinition of a claim term or explicit disavowal of claim scope. See, e.g., GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304,1308-09 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). This has raised the following questions for this Court.

  1. Whether it is proper for the Federal Circuit to limit the role of the intrinsic evidence in construing patent claims under the exacting “lexicography and disavowal” standard.
  2. Whether the Federal Circuit’s exacting “lexicography and disavowal” standard improperly circumscribes the objective standard of the person of ordinary skill in the art in construing claim terms.

Cert. petition filed 9/28/15, conference 12/4/15. Petition denied 12/7/15.

CAFC OpinionCAFC Argument

Allergan plc v. State of New York, No. 15-587

Questions Presented:

Brand drug manufacturers seeking to market a new prescription drug must undergo a long and expensive process to obtain FDA approval. Under the 1984 Drug Price Competition and Patent Term Restoration Act, better known as Hatch-Waxman, generic drug manufacturers can obtain FDA approval for a “bioequivalent” generic drug more easily, by piggy-backing on the brand’s approval efforts. Once the brand drug’s patent and other exclusivities expire and generic versions enter the market, state drug substitution laws permit or require pharmacists to dispense lower-priced, therapeutically equivalent generic drugs in place of brand drugs, unless the prescriber directs otherwise. Under most (but not all) states’ definitions of therapeutic equivalence, however, pharmacists may not substitute a generic drug that has a different dose than the prescribed brand without the physician’s approval.

The Second Circuit held below that brand drug manufacturers have a federal antitrust duty to facilitate the operation of state drug substitution laws so as to maximize the future sales of their generic competitors. Petitioners are a brand drug manufacturer and its subsidiary, who sought to exercise their rights under the Patent Act to limit distribution of an outdated version of their patented Alzheimer’s drug in favor of an innovative new formulation with different dosing and longer patent protection. The Second Circuit held that so doing would violate section 2 of the Sherman Antitrust Act because it would reduce the number of prescriptions most state substitution laws would automatically hand over to Petitioners’ generic rivals once the old drug’s exclusivities ended.

The questions presented are:

  1. Whether exercising rights granted by the Patent Act—in particular, not selling one patented product and selling a different patented product instead—can violate the Sherman Antitrust Act?
  2. Whether drug manufacturers have a federal antitrust duty to facilitate the operation of state drug substitution laws to maximize competitors’ sales?

Cert. petition filed 11/4/15. Petition dismissed – Rule 46 11/30/15.

CA2 Opinion, No CA2 Argument

Nautilus, Inc. v. Biosig Instruments, Inc., No. 15-561

Questions Presented:

The Patent Act’s particular-and-distinct claiming mandate gives innovators the reasonable certainty they need to invent confidently near a patent claim’s boundary, but not over it. See 35 U.S.C. § 112, - 2 (2006 ed.). To perform this public-notice function, a patent claim must be clear the day it issues. This Court accordingly rejected the Federal Circuit’s post hoc “amenable to construction” standard: “It cannot be sufficient that a court can ascribe some meaning to a patent's claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 (2014). But, the remand panel again did the opposite. It copied and pasted much of its opinion this Court had vacated. It did not even mention the original prosecution history. Instead, it again viewed the claim post hoc in view of statements made in Patent Office proceedings 15 years after the patent issued. And, it again relied upon a purely functional distinction over a structurally identical prior-art design as supposedly providing sufficient clarity.

The questions presented are:

  1. Is a patent claim invalid for indefiniteness if its scope is not reasonably certain the day the patent issues, even if statements in later Patent Office proceedings clarify it?
  2. Is a patent claim invalid for indefiniteness if its scope is distinguished from prior art solely by a functional requirement, rather than by any structural difference?

Cert. petition filed 10/30/15, waiver of respondent Biosig Instruments, Inc. filed 11/5/15, conference 11/24/15. Petition denied 11/30/15.

CAFC OpinionCAFC Argument

Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., No. 15-115

Questions Presented:

Title 35 U.S.C. § 103(a) (2006) prohibits the issuance of a patent where “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” (Emphases added). This statute will continue to govern hundreds of thousands of patents (those with effective filing dates before March 16, 2013) for many years to come.

The question presented is whether a mere conception that was neither known to the public nor reduced to practice at the time a patented invention was made is “prior art” to that invention under the pre-2013 version of 35 U.S.C. § 103.

Cert. petition filed 7/27/15, response requested 9/21/15, conference 11/24/15. Petition denied 11/30/15.

CAFC OpinionCAFC Argument