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.

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.

CAFC OpinionCAFC Argument

Stryker Corp. v. Zimmer, Inc., No. 14-1520

Questions Presented:

The Patent Act provides that district courts “may increase . . . damages up to three times the amount found or assessed.” 35 U.S.C. § 284. Despite this permissive and discretionary language, the Federal Circuit requires, as a prerequisite to awarding enhanced damages under § 284, that a patentee prove by clear and convincing evidence that infringement was “willful,” meaning both that (1) there was an objectively high likelihood that the infringer’s actions constituted infringement, and (2) this likelihood was either known or so obvious that it should have been known to the accused infringer.

The questions presented are: 

  1. Has the Federal Circuit improperly abrogated the plain meaning of 35 U.S.C. § 284 by forbidding any award of enhanced damages unless there is a finding of willfulness under a rigid, two-part test, when this Court recently rejected an analogous framework imposed on 35 U.S.C. § 285, the statute providing for attorneys’ fee awards in exceptional cases?
  2. Does a district court have discretion under 35 U.S.C. § 284 to award enhanced damages where an infringer intentionally copied a direct competitor’s patented invention, knew the invention was covered by multiple patents, and made no attempt to avoid infringing the patents on that invention?

Cert. petition filed 6/22/15.

CAFC OpinionCAFC Argument

Beriont v. GTE Laboratories, Inc., No. 14-1517

Questions Presented:

Many inventors seek patent protection using and trusting legal professionals to properly prosecute their patent application. To do otherwise would place the inventor, as well as any potential co-inventors, at risk of losing valuable protections afforded by a complex set of evolving patent laws. This is especially true when the inventor is an employee and has no agreement to assign patents with his employer. The Petitioner Walter Beriont, like many inventors, used a corporate patent attorney to navigate the complex path to a U.S. patent. The corporate patent attorney led Beriont to believe that the attorney would provide full disclosure and protect his interest. This case therefore presents the following questions for review: 

  1. Does a dispute regarding the breach of a patent attorney’s fiduciary duty by not determining legal inventorship raise a material issue of fact concerning presumption of validity of a named inventor of an issued United States patent?
  2. Did the district court’s refusal to grant an inventor important discovery from his patent attorney, employer, and alleged co-inventor violate the inventor's right to due process?
  3. Did the court err by not accepting full jurisdiction over the claim of a breach of a patent attorney’s fiduciary duties?

Cert. petition filed 6/22/15.

CAFC Opinion, No CAFC Argument

Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513

Questions Presented:

  1. Whether the Federal Circuit erred by applying a rigid, two-part test for enhancing patent infringement damages under 35 U.S.C. § 284, that is the same as the rigid, two part test this Court rejected last term in Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (2014) for imposing attorney fees under the similarly worded 35 U.S.C. § 285.
  2. Whether the Federal Circuit erred by holding that a U.S. defendant does not “sell” or “offer to sell” the patented invention “within the United States” under 35 U.S.C. § 271(a), even though it enters a requirements contract with a U.S. customer that they negotiate and execute in the U.S., that is governed by California law, that specifies the material terms, and that creates legally binding obligations.

Cert. petition filed 6/22/15.

CAFC OpinionCAFC Argument

Content Extraction & Transmission LLC v. Wells Fargo Bank, Nat. Ass'n, No. 14-1473

Questions Presented:

  1. Whether on a motion to dismiss a party can overcome the statutory presumption of validity of all claims by arguing patent-ineligibility of selected claims and alleging that all the claims are substantially similar to the selected claims.
  2. Whether a computer technology for processing information is patent-eligible where it performs a task in a manner that is qualitatively different from the way the task is performed by a human; in other words, is it proper to determine patent-eligibility by focusing on the result achieved by an invention rather than on the manner by which the invention accomplishes its task.

Cert. petition filed 6/10/15.

CAFC OpinionCAFC Argument