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. 

2015

CEATS, Inc. v. Continental Airlines, Inc., No. 14-681

Question Presented:

Petitioner CEATS, Inc. (“Petitioner” or “CEATS”) engaged in court-ordered mediation with a mediator who had an undisclosed close, enduring, and personal relationship with a partner for the law firm that was lead defense counsel in the underlying CEATS patent infringement litigation. The undisclosed relationship involved continuous emails, phone calls, visits, gifts, and lavish dinners. The Federal Circuit found that: (i) the mediator breached his duty of disclosure by failing to inform Petitioner of the relationship; and (ii) the breach was likely to undermine the public's confidence and trust in mediation.

Notwithstanding those express findings and express recognition of the potential adverse impact the decision would have on the public's view of the federal mediation process generally, the Federal Circuit declined to grant Petitioner any form of relief under Fed. R. Civ. P. 60(b). To reach its conclusion, the Federal Circuit utilized the special harmless error standard for judges set forth in the United States Supreme Court case Liljeberg v. Health Services Acquisition Corp., 486 U.S. 847 (1988).

The issue presented is whether in the face of a specific finding that the court-appointed mediator breached his duty to disclose the conflict, did the Federal Circuit err in utilizing the special harmless error standard from Liljeberg for a mediator in declining to grant Petitioner any relief for the undisclosed conflict of interest.

Stated another way, the question for Supreme Court review is whether the failure of a court-appointed mediator to disclose a long standing conflict of interest with one of the parties to the mediation can ever be “harmless.” The answer to that question strikes at the very foundation of the integrity of the Federal judicial process as well as the public’s perception of the fundamental fairness of those proceedings.

Cert. petition filed 12/4/14, conference 3/20/15, cert denied 3/23/15.

CAFC OpinionCAFC Argument


Gilead Sciences, Inc. v. Natco Pharma Ltd., No. 14-647

Question Presented:

This Court’s double-patenting doctrine establishes the “well-settled rule that two valid patents for the same invention,” or obvious modifications of that invention, “cannot be granted” to a single party. Miller v. Eagle Mfg. Co., 151 U.S. 186, 196-97 (1894). The Court has repeatedly held that when two such patents are granted to a single party, “the later one [i]s void.” Id. at 197 (discussing Suffolk Co. v. Hayden, 70 U.S. 315 (1865)). In the decision below, the Federal Circuit inverted this century-old doctrine, holding a first issued patent invalid based on the issuance of the second patent.

The question presented is:

Whether, contrary to this Court’s consistent and longstanding precedent and Congress’s intent, the double-patenting doctrine can be used to invalidate a properly issued patent before its statutory term has expired using a second, later-issuing patent whose term of exclusivity is entirely subsumed within that first patent's term?

Cert. petition filed 11/26/14, conference 3/6/15, cert denied 3/9/15.

CAFC OpinionCAFC Argument


K/S HIMPP v. Hear-Wear Technologies, LLC, No. 14-744

Questions Presented:

The PTO during an inter partes reexamination of U.S. Patent No. 7,016,512 confirmed two dependent claims in a hearing-aid patent that recited a multi-pronged plug at the end of an insulated wire connecting two known portions of the hearing-aid even though there was no dispute that such multi-pronged plugs were known in the art for half a century. Yet the Federal Circuit in a precedential 2-1 decision affirmed the result solely because the Petitioner's original inter partes reexamination request did not support that notorious fact with documentary evidence. The majority affirmed in the face of an ex parte reexamination of the same patent that reached a contrary result, in the face of record prior art showing that exact feature, and even in the face of an admission at oral argument that multi-pronged plugs were known in the art. The Federal Circuit’s affirmance is contrary to the Administrative Procedures Act requiring whole record review, and contrary to this Court's landmark obviousness decision in KSR Int’l Co. v. Teleflex, 550 U.S. 398 (2007).

The APA requires courts reviewing an agency decision under the substantial-evidence standard to consider the whole record of the formal agency proceedings. 5 U.S.C. § 706 (2012). What comprises the entire record of a patent in an administrative proceeding at the PTO has not been addressed by the Court. This novel legal question is important. It is not uncommon for the PTO to review a single claim over the course of several proceedings. Here the Federal Circuit ignored the factual findings of a Petitioner-initiated parallel ex parte review of the same patent claims, by the same three examiners, that reached a contrary result. It also ignored record evidence that the patent owner itself later presented in the inter partes reexamination that detracted from the PTO’s decision.

This Court's obviousness jurisprudence requires an expansive approach. It was set forth most recently in KSR, 550 U.S. at 415, where this Court broadly warned against a rigid approach to determining obviousness and against an overemphasis on printed publications. Yet here, the Federal Circuit created a bright-line rule that demands documentary evidence for every structural feature of a claim, no matter how trivial or notoriously well-known. The new rule effectively precludes examiners from relying on common sense/common knowledge to find a structural feature in the prior art.

The Questions Presented are:

  1. Did the Federal Circuit misapprehend and grossly misapply the APA’s doctrine of whole record review when it refused to consider submitted prior art and all the PTO's prior patentability determinations of the disputed claims under review?
  2. Did the Federal Circuit err when it created a new, bright-line rule that precludes the use of common knowledge or common sense to find obvious claimed structural elements, no matter how trivial or notoriously well-known?.

Cert. petition filed 12/23/14, waiver of respondent Hear-Wear Technologies, LLC filed 1/7/15, conference 2/20/15. Petition denied 2/23/15.

CAFC OpinionCAFC Argument


Southern Snow Mfg. Co., Inc. v. SnoWizard, Inc., et al.., No. 14-742

Questions Presented:   In civil actions by business competitors, alleging several instances of fraud upon the USPTO in obtaining patents and trademark registrations variously obtained, approved, and applied for at the time of filing suit, in turn misleading customers;

Where the district court dismissed before trial:

  • all Civil-RICO claims, because of absence of USPTO reliance and absence of pleading “criminal acts”;
  • antitrust claims, because fraud upon the USPTO cannot be an element of such claims nor admissible evidence in support;
  • 15 USC §1125(a) unfair-competition claims, because of no proven damages and no materiality; and
  • 15 USC §1120 claims, where trademarks were not fully registered at the time of filing suit;

1. Does sufficiently alleged fraud upon the USPTO in obtaining patents and trademark registrations, in turn misleading customers, support civil claims by business competitors under:

a. Civil-RICO (18 USC §1964);  b. Clayton Act §4 & §16 (15 USC §15 & §26) antitrust attempted monopolization;  c. Lanham Act §43(a) (15 USC §1125(a)) unfair competition?

2. Can Lanham Act §38 (15 USC §1120) claims for fraudulent procurement of trademark registrations be sustained against marks that are not fully registered at the filing of suit, but will likely become registered during the course of litigation?

Cert. petition filed 12/1/14, waiver of respondent SnoWizard, Inc., et al. filed 12/30/14, conference 2/20/15. Petition denied 2/23/15.

CAFC OpinionCAFC Argument


STC.UNM v. Intel Corp., No. 14-717

Question Presented:

Rule 19 of the Federal Rules of Civil Procedure provides that where a necessary party to a lawsuit has not been joined, “the court must order that the person be made a party.” The Court of Appeals for the Federal Circuit ruled below that Rule 19 is “trumped” by a purported “substantive rule” that a co-owner of a patent can “impede an infringement suit brought by another co-owner.” The majority opinion below stands in stark contrast to this Court’s precedents. For over seventy years, this Court has rejected every statutory challenge to a Federal Rule that has come before it.  The question presented is:  Whether Rule 19 of the Federal Rules of Civil Procedure applies in patent infringement cases or is trumped by a substantive right of a patent co-owner to bar a fellow owner’s infringement suit.

Cert. petition filed 12/16/14.

CAFC OpinionCAFC Argument


Tse v. Google Inc., No. 14-692

Question Presented:

The district court granted summary judgment of invalidity of most claims of U.S. Patent No. 6,665,797 (“’797 patent”) under 35 U.S.C. § 112, for lack of written description support in the originally filed patent application for the “No Charge” negative limitations in the invalidated claims (“Summary Judgment”).

However, evidences found in the Summary Judgment show that the district court actually granted it without even having a look at the originally filed claims, which it should, to check if there is any “No Charge” limitation therein. Tse respectfully submits, they do have languages explicitly precluding payment.

As such, the Summary Judgment itself is nothing but a no opinion judgment, at least in respect to the originally filed claims.

And thereafter, a Federal Circuit panel affirmed the summary judgment, with no opinion, by virtue of Fed. Cir. Rule 36 and then the Federal Circuit denied a combined petition for panel rehearing and rehearing en banc, again with no opinion.

This is an issue of first impression, the question is:

Regardless of the decision below being made is right or not, whether the Federal Circuit should use its Rule 36 power to issue a no opinion affirmance order, when there is an omission in the opinion of the court below which is so critical that the use of Rule 36 power would result in a serious violation of the Fifth Amendment to the United States Constitution, which guarantees “No person shall . . . be deprived of life, liberty, or property, without due process of law” and, the requirements of due process includes, “Requirement that the tribunal prepare written findings of fact and reasons for its decision.” (emphasis added) A well-regarded article. “Some Kind of Hearing”, by late Judge Henry Friendly.

Cert. petition filed 12/11/14, waiver of respondent HTC America, Inc. filed 12/17/14, waiver of respondent Samsung Telecommunications America, LLC filed 12/19/14, waiver of respondent Google, Inc. filed 12/29/14, conference 2/20/15. Petition denied 2/23/15.

CAFC Opinion, CAFC Argument Not Available


SnoWizard, Inc. v. Southern Snow Mfg. Co., Inc., No. 14-684

Questions Presented:

  1. Whether the United States Court of Appeals for the Federal Circuit misapplied this Court’s holding in Pfaff v. Wells Electronics, Inc. 525 U.S. 55, 119 (1998) by conflating the ‘ready for patenting’ standard with that of the on-sale bar by concluding that non binding price quotations for two component parts constituted a sale of the “claimed” invention simply because one skilled in the art could infer the claimed invention from the non-binding price quotations.
  2. Whether the United States Court of Appeals for the Federal Circuit erred in concluding that the on-sale bar applied because one skilled in the art could infer the claimed invention from the alleged invalidating activity even when absolutely no evidence whatsoever from one skilled in the art as to what the activity suggests was of record.
  3. Whether the United States Court of Appeals for the Federal Circuit erred by applying the on-sale bar to the receipt of non-binding price quotations for two component parts of claimed invention without any consideration whatsoever of multiple dependent claims, some of which clearly define a complete ice shaving machine.
  4. Whether the United States Court of Appeals for the Federal Circuit erred by concluding that Petitioners infringed an alleged trademark of one of the parties when all parties judicially confessed that the trademark was generic.

Cert. petition filed 12/1/14, waiver of respondent Southern Snow Manufacturing Co., Inc., et al. filed 12/27/15, conference 2/20/15.Petition denied 2/23/15.

CAFC OpinionCAFC Argument


Zoll Lifecor Corp. v. Philips Electronics North America Corp., No. 14-619

Question Presented:

Sections 312, 314, and 315 of Title 35 each identify separate requirements for instituting an administrative inter partes review (IPR) proceeding to invalidate a patent that the U.S. Patent & Trademark Office (USPTO) erroneously issued. The only one of these three sections that limits an IPR petitioner’s right to appeal is Section 314, and it is limited on its face to decisions “under this section.” A general right to appeal is provided by 28 U.S.C. § 1295(a)(4)(A), which grants the Federal Circuit “exclusive jurisdiction . . . of an appeal from a decision of - the Patent Trial and Appeal Board [PTAB] of the [USPTO] with respect to a[n] . . . inter partes review under Title 35.” Despite this statutory structure and plain statutory language, the Federal Circuit has repeatedly refused to review dismissals of IPR proceedings made under Sections 312 and 315 (which are not the sections under which Congress said there could be no appeal). The Federal Circuit’s holdings leave IPR petitioners dismissed under these sections with no appellate review, and give the USPTO essentially unfettered discretion to dispose of petitions alleging that the agency erred in granting a patent.

The question presented is:

Whether the Federal Circuit has erred in blocking all appellate review of USPTO decisions made under 35 U.S.C. §§ 312 and 315, when the only limit in the statute is in Section 314, which is expressly limited to decisions made “under this section” - thus giving the USPTO complete and unreviewable authority under these two sections to reject assertions that the agency previously erred in granting patents.

Cert. petition filed 11/24/14, conference 2/20/15. Petition denied 2/23/15.

CAFC Opinion, CAFC Argument Not Available


Consumer Watchdog v. Wisconsin Alumni Research Foundation, No. 14-516

Question Presented:

Does a statute that expressly provides a requester of agency action a right to appeal any dissatisfactory decision of the agency on her request to the courts provide sufficient Article III standing for the appeal, or must additional requirements be satisfied above and beyond the statute? 

Cert. petition filed 10/31/14, conference 2/20/15. Petition denied 2/23/15.

CAFC OpinionCAFC Argument


MadStad Engineering, Inc. v. United States Patent And Trademark Office, No. 14-366

Questions Presented:

  1. Whether the Federal Circuit’s decision that Petitioners lack standing to challenge the “First-Inventor-to-File” provisions of the America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (“AIA”), conflicts with precedent of this Court and decisions in other circuits.
  2. Whether the “First-Inventor-to-File” provisions of the AIA are unconstitutional under the Intellectual Property Clause of Article I, Section 8, Clause 8.

Cert. petition filed 9/26/14, conference 2/20/15. Petition denied 2/23/15.

CAFC OpinionCAFC Argument


Southern Electronics Supply, Inc. v. Camsoft Data Systems, Inc., No. 14-628    Questions Presented:   In cases removed to federal court, Caterpillar, Inc. v. Lewis generally provides a plaintiff the appellate right to challenge the denial of a motion to remand, but qualifies that right if “considerations of finality, efficiency, and economy become overwhelming.” 519 U.S. 61, 75 (1996). The Circuit Courts of Appeals are divided on the proper application of Caterpillar to the following two questions:

  1. Whether a plaintiff waives its right to appeal under Caterpillar by amending its complaint, after denial of a motion to remand, to add new and distinct federal claims thereby independently creating undisputed federal-question jurisdiction.
  2. Whether a federal court’s adjudication of the majority of a plaintiff’s claims on summary judgment and dismissals with prejudice creates sufficient considerations of “finality, efficiency, and economy” to foreclose appellate review of the denial of the motion to remand.   The Circuit Courts of Appeals are also divided on the underlying question of removal jurisdiction in this case: 
  3. Whether federal courts have subject matter jurisdiction over claims of inventorship involving a pending patent application, as the Federal Circuit has held, or only over claims of inventorship involving an issued patent, as the Fifth Circuit held here.CAFC Opinion, CAFC Argument.

Cert. petition filed 11/25/14, conference 1/16/15. Petition denied 1/20/15.

CA5 OpinionCA5 Argument


Allergan, Inc. v. Apotex Inc., No. 14-465

Question Presented:

May the Federal Circuit sitting in review of a district court bench trial on patent obviousness find facts that the district court never found or must the Federal Circuit remand to the district court for further fact finding consistent with Federal Rule of Civil Procedure 52(a)?

Cert. petition filed 10/10/14, waiver of respondent Hi-Tech Pharmacol, Co. filed 11/19/14, waiver of respondent Sandoz, Inc. filed 11/20/14, waiver of respondents Watson Laboratories, Inc., et al. filed 11/21/14, waiver of respondent Apotex Inc., et al. filed 11/21/14, conference 1/9/15. Petition denied 1/12/15.

CAFC OpinionCAFC Argument


Yufa v. Lockheed Martin Corp., No. 14-454

Questions Presented:

  1. Whether the Federal Circuit has erred in affirming the District Court’s summary judgment, holding that the non-movant of summary judgment “did not supply evidence creating a genuine evidentiary dispute,” without discussion or at least mention in the Federal Circuit decision of the clearly specified evidences on record, which create a genuine evidentiary dispute of the admissible triable evidentiary material facts, supplied by the non-movant for the Federal Circuit consideration.
  2. Whether the Federal Circuit has erred in affirming the District Court’s summary judgment, holding that the District Court “applied the proper standards in granting summary judgment,” without applying, discussion or at least mention in the Federal Circuit decision of the standards, supplied by the non-movant for the Federal Circuit consideration, and which “must” be performed in granting summary judgment.

Cert. petition filed 10/14/14, conference 1/9/15. Petition denied 1/12/15.

CAFC Opinion, CAFC Argument Not Available


Apple Inc. v. Ancora Technologies, Inc., No. 14-469

Questions Presented:

  1. Whether this petition should be held for disposition of Teva Pharmaceuticals USA, Inc. v. Sandoz Inc., No. 13-854, which will address whether de novo review applies to a district court’s ruling on the meaning of patent claims, because the Federal Circuit in this case expressly applied de novo review in reversing the district court’s construction of a key claim term.
  2. Whether this Court should grant, vacate, and remand for the Federal Circuit to reconsider whether, in light of Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), the patent claims are invalid for indefiniteness where the ordinary meaning of a key claim term is irreconcilable with the usage of the term in the patent’s specification.

Cert. petition filed 10/20/14, conference 1/9/15. Petition denied 1/12/15.

CAFC OpinionCAFC Argument


2014


Braintree Laboratories, Inc. v. Novel Laboratories, Inc., No. 14-499

Question Presented:

This petition presents the same question as is presented in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., No. 13-854, currently pending before this Court:

Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires, or only for clear error, as Rule 52(a) requires.

Cert. petition filed 10/30/14, waiver of respondent Novel Laboratories, Inc. filed 11/5/14, conference 12/5/14. Petition denied 12/8/14.

CAFC OpinionCAFC Argument


Sigram Schindler Beteiligungsgesellschaft mbH v. Lee, No. 14-424   Question Presented:   Does the U.S. Constitution, in legal decisions based on 35 U.S.C. §§ 101/102/103/112,

  • require instantly avoiding the inevitable legal errors in construing incomplete and vague classical claim constructions – especially for “emerging technology claim(ed invention)s, ET CIs” – by construing for them the complete/concise refined claim constructions of the Supreme Court’s KSR/Bilski/Mayo/Myriad/Biosig/Alice line of unanimous precedents framework,

or does the U.S. Constitution for such decisions

  • entitle any public institution to refrain, for ET CIs, for a time it feels feasible, from proceeding as these Supreme Court precedents require – or meeting its requirements just by some lip-service – and in the meantime to construe incomplete classical claim constructions, notwithstanding their implied legal errors?

Cert. petition filed 10/6/14, conference 12/5/14. Petition denied 12/8/14.

CAFC OpinionCAFC Argument


Glenmark Pharmaceuticals Inc., USA v. Sanofi-Aventis Deutschland GmbH, No. 14-417

Question Presented:

The patent statute states that the “patentee” shall have a remedy for patent infringement (35 U.S.C. § 281), and that an interest in a patent may be assigned by “an instrument in writing.” 35 U.S.C. § 261. Here, the Federal Circuit held that the U.S. distributor of a patented product had standing to recover lost profits damages for infringement on the ground that it was an “implied” exclusive licensee, even though no written or oral agreement conveyed to that entity any interest in the patent in suit.

The question presented is whether a distributor of a patented product, to which no interest in the patent has been assigned, has standing to recover damages for infringement.

Cert. petition filed 10/6/14, waiver of respondents Abbott GmbH & Co. KG, Abbott Laboratories filed 11/4/14, waiver of respondents Sanofi-Aventis Deutschland GmbH, et al. filed 11/6/14, conference 12/5/14. Petition denied 12/8/14.

CAFC OpinionCAFC Argument


Takeda Pharmaceutical Co. Ltd. v. Zydus Pharmaceuticals USA, Inc., No. 14-217

Question Presented:

The Federal Circuit below, relying on Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), declared that it reviews patent claim construction determinations without any deference. In accordance with that standard, the appellate court reversed the District Court’s claim construction without deferring to its evaluation of extrinsic evidence and resolution of competing expert testimony. And the Federal Circuit ignored not only the District Court’s analysis but also the parties’ framing of the issues, employing de novo review to embrace a claim construction that Respondents had explicitly abandoned on appeal.

After the Federal Circuit issued its decision, this Court granted the petition for certiorari in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., No. 13-854 (Mar. 31, 2014), to consider the proper standard of appellate review for claim construction determinations.

The question presented is:

Whether a district court’s factual findings in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires, or only for clear error, as Federal Rule of Civil Procedure 52(a) requires.

Cert. petition filed 8/22/14, conference 11/25/14. Petition denied 12/1/14.

CAFC OpinionCAFC Argument


Stryker Corp. v. Hill-Rom, Inc., No. 14-358

Question Presented:

Rule 52(a) of the Federal Rules of Civil Procedure provides that in matters tried to a district court, the court’s “[f]indings of fact…must not be set aside unless clearly erroneous.”

The question presented is as follows:

Whether a district court’s factual finding in support of its construction of a patent claim term may be reviewed de novo, or only for clear error, as Rule 52(a) requires.

Cert. petition filed 9/23/14, conference 11/25/14. Petition denied 12/1/14.

CAFC OpinionCAFC Argument


Porauto Indus. Co, Ltd. v. Kabo Tool Co., No. 14-338   Questions Presented:   This is a specific personal jurisdiction case in which the Respondents, Kabo Tool Company and Chih-Ching Hsieh (collectively “Plaintiffs”), alleged a single claim of patent infringement of a wrench design (U.S. Patent No. 7,066,057) against Petitioners, Porauto Industrial Co., Ltd; Accuaire Corp.; and Chih-Hsiang Hsu (collectively “Defendants”). Although Plaintiffs and Defendants are both based in Taiwan, where Plaintiffs have maintained a parallel litigation involving the same wrench design, the Federal Circuit refused to intervene and dismiss Defendants from a Nevada Federal District Court lawsuit due to a lack of specific personal jurisdiction. The parties agree that there is no general personal jurisdiction over Defendants.

The questions presented are:

  1. Whether affidavits of counsel cannot provide a sufficient basis to subject Defendants to specific personal jurisdiction in Nevada for a case alleging patent infringement.
  2. Whether the controlling Federal Circuit reasonable factors for determining specific personal jurisdiction in cases alleging patent infringement are limited by the stream of commerce theory set forth by the plurality opinion in Asahi Metal Industry Co., Ltd. v. Superior Court, 480 U.S. 102, 107 S. Ct. 1026 (1987).

Cert. petition filed 9/18/14, conference 11/25/14. Petition denied 12/1/14.

CAFC Opinion, CAFC Argument Not Available


Cisco Systems, Inc. v. Commil USA, LLC, No. 13-1044, vide 13-896

Question Presented:

When a court sets aside a jury verdict and orders a new trial, the Seventh Amendment requires that all issues be retried "unless it clearly appears that the issue to be retried is so distinct and separable from the others that a trial of it alone may be had without injustice." Gasoline Prods. Co. v. Champlin Ref. Co., 283 U.S. 494, 500 (1931).

In this case, the Federal Circuit directed a retrial of Commil's claim that Cisco induced infringement of its patent, but forbade retrial of Cisco's claim that the patent was invalid, even though - as the Federal Circuit held - Cisco's good-faith belief of the patent's invalidity can negate the requisite intent for induced infringement.

The question presented is:

Whether, and in what circumstances, the Seventh Amendment permits a court to order a partial retrial of induced patent infringement without also retrying the related question of patent invalidity.

Cert. petition filed 2/27/14, conference 5/22/14, CVSG 5/27/14, brief amicus curiae of United States filed 10/16/14, conference 11/25/14. Petition denied 12/1/14.

CAFC OpinionCAFC Argument

WilmerHale represents cross-petitioner Cisco Systems, Inc.


Conte v. Jakks Pacific, Inc., No. 14-301

Questions Presented:

  1. Whether the United States Court of Appeals for the Federal Circuit erred in finding that claim 9 of United States Patent No. 6,494,457 (the ’457 patent) failed because it would have been obvious.
  2. Whether the United States Court of Appeals for the Federal Circuit erred in finding that the district court did not abuse its discretion in refusing to permit plaintiffs to amend the complaint to include claim 1 of the ’457 patent.

Cert. petition filed 9/9/14, conference 11/14/14. Petition denied 11/17/14.

CAFC OpinionCAFC Argument


StoneEagle Services, Inc. v. Gillman, No. 14-305

Question Presented:

The Declaratory Judgment Act, 28 U.S.C. § 2201, confers jurisdiction on the federal district courts to undertake early resolution of certain disputes in “case[s] of actual controversy.” For decades, this Court has taken a pragmatic approach in assessing the existence of an “actual controversy” of “sufficient immediacy and reality,” by considering “ ‘all the circumstances.’ ” MedImmune, Inc., v. Genentech, Inc., 549 U.S. 118, 126-27 (2007) (quoting Md. Cas. Co. v. Pac. Coal & Oil Co., 312 U.S. 270, 273 (1941)). The question presented is:

Whether the decision below, like other recent Federal Circuit decisions, unduly restricts Declaratory Judgment Act jurisdiction by refusing to consider extrinsic evidence demonstrating an actual controversy—including a defendant’s answer and deposition testimony—and instead determining jurisdiction based solely on a hyper-technical reading of the complaint.

Cert. petition filed 9/12/14, waiver of respondent David Gillman, et al. filed 10/7/14, conference 11/7/14. Petition denied 11/10/14.

CAFC OpinionCAFC Argument


Schindler v. Cisco Systems, Inc., No. 14-221   Question Presented:   Does the U.S. Constitution, for a legal decision based on 35 U.S.C. §§ 101/102/103/112,

  • require using the uniform refined claim construction framework set forth by the Supreme Court’s line ofKSR/Bilski/Mayo/Myriad/Biosig/Alice decisions, which overcomes the shortcomings of the classical claim construction as to emerging technology inventions, or does it
  • entitle any one of the institutions PTO, district court, and CAFC to continue using the classical claim construction and its “broadest reasonable interpretation, BRIpto” of a claim, including refining both on its own – for meeting, as suitable for its business, emerging technology inventions’ needs just ‘in the light’ of the above Supreme Court decisions.

Cert. petition filed 8/25/14, waiver of respondent Cisco Systems, Inc. filed 9/10/14, waiver of Federal respondent filed 9/11/14, conference 10/10/14. Petition denied 10/14/14.

CAFC OpinionCAFC Argument


Mirowski Family Ventures, LLC v. Medtronic, Inc., No. 14-137

Question Presented:

In this patent case, the district court and the Federal Circuit combined to create a new way to summarily dismiss any patent case without having to review any of its merits.

After the submission of extensive post-trial briefing, the district court sua sponte found a new reason (not suggested by Medtronic) to support its Daubert conclusion that MFV’s infringement expert was not “reliable” and, therefore, his trial testimony had to be stricken in its entirety.

However, the district court erred. Its supposed new reason was non-existent. MFV appealed, pointing this out. Medtronic did not disagree. (The new reason was that MFV’s infringement expert supposedly had not covered in his report a claim element (a sense amplifier) that Medtronic did not even assert was not present in its accused products.)

Nonetheless, the Federal Circuit affirmed because, supposedly, it was within the district court’s Daubert discretion to rely upon a non-existent reason to dismiss MFV’s infringement case.

Question – Is a district court’s Daubert discretion so unlimited that it can summarily dismiss a patentee’s infringement case on the basis of a non-existent reason? If so, any patent infringement case can be similarly and summarily dismissed.

Cert. petition filed 7/6/14, waiver of respondents Medtronic, Inc. filed 8/13/14, waiver of respondents Boston Scientific Corp. and Guidant Corp. filed 8/20/14, conference 10/10/14. Petition denied 10/14/14.

CAFC OpinionCAFC Argument

WilmerHale represents respondent Medtronic.


Wilkins v. General Elec. Co., No. 14-157

Questions Presented:

  1. Did the United States Court of Appeals for the Federal Circuit err when, in reviewing claim construction for the underlying putative inventor matter on Patent No. 6,921,985, they ignored and contradicted the findings from their prior ruling on the same Patent No. 6,921,985 in the matter of Gen’l Electric Co. v. Int’l Trade Commission, 670 F.3d 1206 (Fed. Cir. 2012)?
  2. Should the standard articulated by the Appellate Court – that in a Patent Inventor case, the fact-finding court need not review any third-party or corroborating evidence or apply the Rule of Reason test if it can first be found by a Judge that an inventor’s testimony is not credible – be allowed to sit as the new standard in Patent Inventorship matters?
  3. Does the judicial system demonstrate legitimacy in law where a lack of judicial accountability, as demonstrated in the underlying matter, allowed a disqualified federal judge to reinsert himself into the matter, even while the federal judge had an admitted financial interest in the party to whom the disqualified federal judge found in favor?
  4. Does the judicial system demonstrate legitimacy in law where a lack of judicial accountability, as demonstrated in the underlying matter, allowed a disqualified federal judge to re-insert himself into a matter at the cronyistic behest of named local counsel, even while that federal judge had worked for and was recommended to the bench by the local counsel, and where the disqualified Judge is presiding over the subject matter where the named local council [sic] is a named defendant?

Cert. petition filed 8/6/14, waiver of respondents General Electric Co. filed 8/26/14, conference 9/29/14. Petition denied 10/7/14.

CAFC OpinionCAFC Argument

WilmerHale represents respondent General Electric Co.


Emerson Electric Company, et al. v. United States District Court for the Eastern District of Texas, No. 14-44

Questions Presented:

A district court may transfer an action to another venue for “the convenience of parties and witnesses, in the interest of justice.” 28 U.S.C. § 1404(a). In this case, as in many patent cases, the plaintiff filed suit in the Eastern District of Texas even though most of the relevant witnesses and evidence are located elsewhere.

The questions presented are:

  1. Should a district court order a case transferred when most witnesses and evidence are located in the transferee venue?
  2. Should an appellate court grant a writ of mandamus to correct an erroneous transfer of venue decision?

Cert. petition filed 7/11/14, waiver of respondent United States District Court for the Eastern District of Texas filed 7/24/14, conference 9/29/14. Petition denied 10/7/14.

CAFC Opinion, No CAFC Argument Available


Caluori v. One World Technologies, Inc., No. 14-38

Question Presented:

Rule 50 regulates challenges to sufficiency of the evidence. Petitioner, however, intended to appeal only legal issues. Because Rule 50 does not require filing of a JMOL motion to obtain de novo review of legal issues, he filed no such motion. Nonetheless, the Federal Circuit – after indicating JMOL motions are a precondition for de novo review – summarily affirmed the judgment. Did that court err in requiring Petitioner to file a JMOL motion – although Rule 50 establishes no such requirement – to obtain de novo review of his legal questions?

Cert. petition filed 7/7/14, conference 9/29/14. Petition denied 10/7/14.

CAFC OpinionCAFC Argument


MRC Innovations, Inc. v. Hunter Mfg., LLP, No. 14-5

Question Presented:

The question presented is whether the principle set forth by this Court in KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398 (2007), that when making an obviousness determination under 35 U.S.C. § 103 a court must provide an explicit analysis regarding whether there was an apparent reason to combine the known elements in the fashion claimed by the patent, also applies to design patents.

Cert. petition filed 7/1/14, conference 9/29/14. Petition denied 10/7/14.

CAFC OpinionCAFC Argument


Classen Immunotherapies, Inc. v. Somaxon Pharmaceuticals, No. 13-1508

Questions Presented:

If some of the steps of a method claim are protected, however additional subsequently performed steps fall outside of the safe harbor, is the claim excluded by the § 271(e)(1)?

Does the Safe Harbor protection of 35 U.S.C. § 271(e)(1) extend to commercial activity which relies upon information previously submitted to the FDA but carries no additional reporting requirement?

Does the assertion of infringement by a product made by a process under 35 U.S.C. § 271(g) survive even if the process is protected by § 271(e)(1)?

Can steps performed as acts of infringement under 35 U.S.C. § 154 be combined with steps performed as acts of infringement under 35 U.S.C. § 271?

Cert. petition filed 6/20/14, waiver of respondent Somaxon Pharmaceuticals filed 7/2/14, conference 9/29/14. Petition denied 10/7/14.

CAFC OpinionCAFC Argument


Pronova Biopharma Norge AS v. Teva Pharmaceutical USA, Inc., No. 13-1251

Question Presented:

The Patent Act provides that a person shall be entitled to a patent unless the invention was “in public use” in the United States more than one year before the filing of a U.S. patent application. 35 U.S.C. § 102(b) (2006). In Egbert v. Lippmann, this Court held that to constitute an invalidating public use, an invention must be used without restriction “for the purpose and in the manner designed by the inventor.” The Federal Circuit applied Egbert in Motionless Keyboard Co. v. Microsoft Corp., holding that the public-use bar of section 102(b) requires a use of the invention “for its intended purpose.”  In this case, the Federal Circuit interpreted “public use” as “public access,” holding that any disclosure that makes an invention “publicly accessible” triggers the public-use statutory bar to a U.S. patent. The court thus concluded that because Pronova provided samples of a chemical composition to a U.S. medical researcher, the patent in suit was invalid on public-use grounds irrespective of any actual “use” of the invention for its claimed and intended purpose as a pharmaceutical.  The question presented is whether the statutory bar for “public use” of an invention under section 102(b) (2006) (pre-AIA) (current version at 35 U.S.C. § 102(a)(1) (2012)) broadly bars a patent when an innovator company allows any public access to its invention even if the invention is not actually used in public for its intended purpose.

Cert. petition filed 4/16/14, conference 9/29/14. Petition denied 10/7/14.

CAFC OpinionCAFC Argument


Advanced Biological Laboratories, SA, et al. v. SmartGene, Inc., No. 13-1299

Question Presented:

Whether claims to a computerized expert system and method for evaluating treatment options for complex medical conditions which necessarily requires the use of computer, are patent eligible since they do not preempt all practical applications of an abstract idea of “guiding the selection of a therapeutic treatment regimen for a patient with a known disease or medical condition.”

Cert. petition filed 4/24/14, waiver of respondent SmartGene, Inc. filed 5/2/14, conference 6/5/14, response requested 6/2/14, conference 9/29/14. Petition denied 10/7/14.

CAFC OpinionCAFC Argument


Galderma Laboratories, L.P. v. Tolmar, Inc., No. 13-1350

Question Presented:

35 U.S.C. § 103 and controlling precedent mandate that obviousness be assessed “at the time the invention was made” and that the scope and content of the prior art as a whole be evaluated in determining obviousness. 35 U.S.C. § 282 and controlling precedent further mandate that the patent challenger must prove obviousness by clear and convincing evidence, a burden that remains always on the challenger. Accordingly, the question presented is:

Whether the Federal Circuit, without considering the state of the prior art as of the patent’s filing date, may presume that a lawfully issued patent is presumptively obvious under 35 U.S.C. § 103 and then place the burden of proof on the patentee to prove otherwise?

Cert. petition filed 5/7/14, waiver filed by respondent Tolmar, Inc. 5/12/14, conference 6/5/14. Petition denied 6/9/14.

CAFC OpinionCAFC Argument


Watkins v. Kajima Intern., Inc., No. 13-1200

Question Presented:

  1. 6th Circuit: Will this court solve the confusion of pleadings in a patent case? Is there more that has to be in the pleadings of a patent case or do the lower courts have to abide by the decision in:

Bell Atlantic Corp. v. Twombly, --- U.S. ----, 127 S.Ct. 1955, 1965, 167 L.Ed.2d 929 (2007) (quoting Conley v. Gibson, 355 U.S. 41, 47, 78 S.Ct. 99, 2 L.Ed.2d 80 (1957)) ("Bell Atlantic") 4; see also Fed. R. Civ. P. Form 16 (2006) (setting forth a sample complaint for patent infringement that includes only the following elements: 1) an allegation of jurisdiction; 2) a statement that the plaintiff owns the patent; 3) a statement that defendant has been infringing the patent "by making, selling, and using [the device] embodying the patent"; 4) a statement that the plaintiff has given the defendant notice of its infringement; and 5) a demand for an injunction and damages);Conley, 355 U.S. at 47, 78 S.Ct. 99 (stating that "[the] illustrative forms appended to the Rules plainly demonstrate [the pleading requirements]"). It logically follows that a patentee need only plead facts sufficient to place the alleged infringer on notice as to what he must defend. See Bell Atlantic, 127 S.Ct. at 1971 n. 10 (stating "[a] defendant wishing to prepare an answer in the simple fact pattern laid out in Form 9 [in the Federal Rules of Civil Procedure] would know what to answer; a defendant seeking to respond to plaintiffs' conclusory allegations would have little idea where to begin."). Thus, a plaintiff in a patent infringement suit is not required to specifically include each element of the claims of the asserted patent.

Maty v. Grasselli Chemical Co., 303 U.S. 197 (1938)

"Pleadings are intended to serve as a means of arriving at fair and just settlements of controversies between litigants. They should not raise barriers which prevent the achievement of that end. Proper pleading is important, but its importance consists in its effectiveness as a means to accomplish the end of a just judgment."

Many [m]otions to dismiss or to strike could be avoided if the parties confer in good faith (as they are required to do under L. R. 7-3), especially for perceived defects in a complaint, answer or counterclaim which could be corrected by amendment. See: Chang v. Chen, 80 F. 3d 1293, 1296 (9th Cir. 1996) (where a motion to dismiss is granted, a district court should provide leave to amend).

Moreover, where a party has amended his Complaint once or a responsive pleading has been served, the Federal Rules provide that leave to amend should be "freely given when justice so requires." F[ed]. R. Civ. P. 15(a). The Federal Circuits require that this policy favoring amendment be applied with "extreme liberality." Morongo Band of Mission Indians v. Rose, 893 F.2d 1074, 1079 (9th Cir. 1990) [(e]mphasis added[).] Especially where there is a pro se litigant involved, the court must show how that the pro[ ]se litigant arguments are incorrect AND INSTRUCT THE PRO SE LITIGANT ON HOW TO REPAIR PLEADING. Sims v. Aherns, 271 S.W. 720 (1925) [(e)mphasis added[);] Roadway Express v. Pipe, 447 U.S. 752 at 757 (1982).

"Due to sloth, inattention or desire to seize tactical advantage, lawyers have long engaged in dilatory practices… [T]he glacial pace of much litigation breeds frustration with the Federal Courts and ultimately, disrespect for the law." Many [l]awyers have expressed to Petitioner of the confusion between the circuit courts on this issue. Also Petitioner's had quoted this case on a motion to amend the complaint to comply with the above and District court refused.

2. 6th Circuit: Especially when Petitioners actually requested it can the lower courts dismiss a case without telling the Plaintiff when in pro[ ]se what he has to add to the claim when dismissing for failure to state a claim and court refusing to address the question of supplemental jurisdiction and without allowing him to amend the complaint or does the lower courts have to comply with this court[']s decision in:

Conley v. Gibson, 355 U.S. 41 at 48 (1957)

"Following the simple guide of [R]ule 8(f) that all pleadings shall be so construed as to do substantial justice"… "The federal rules reject the approach that pleading is a game of skill in which one misstep by counsel may be decisive to the outcome and accept the principle that the purpose of pleading is to facilitate a proper decision on the merits." The court also cited Rule 8(f) FRCP, which holds that all pleadings shall be construed to do substantial justice.

Maty v. Grasselli Chemical Co., 303 U.S. 197 (1938)

"Pleadings are intended to serve as a means of arriving at fair and just settlements of controversies between litigants. They should not raise barriers which prevent the achievement of that end. Proper pleading is important, but its importance consists in its effectiveness as a means to accomplish the end of a just judgment."

Many [m]otions to dismiss or to strike could be avoided if the parties confer in good faith (as they are required to do under L. R. 7-3), especially for perceived defects in a complaint, answer or counterclaim which could be corrected by amendment. See: Chang v. Chen, 80 F. 3d 1293, 1296 (9th Cir. 1996) (where a motion to dismiss is granted, a district court should provide leave to amend).

Moreover, where a party has amended his Complaint once or a responsive pleading has been served, the Federal Rules provide that leave to amend should be "freely given when justice so requires." F[ed]. R. Civ. P. 15(a). The Federal Circuits require that this policy favoring amendment be applied with "extreme liberality." Morongo Band of Mission Indians v. Rose, 893 F.2d 1074, 1079 (9th Cir. 1990) [(e)mphasis added[). W]here there is a pro se litigant involved, the court must show how that the pro[ ]se litigant arguments are incorrect AND INSTRUCT THE PRO SE LITIGANT ON HOW TO REPAIR PLEADING. Sims v. Aherns, 271 S.W. 720 (1925) [(e]mphasis added[);] Roadway Express v. Pipe, 447 U.S. 752 at 757 (1982).

"Due to sloth, inattention or desire to seize tactical advantage, lawyers have long engaged in dilatory practices … [T]he glacial pace of much litigation breeds frustration with the Federal Courts and ultimately, disrespect for the law."

This question was asked because Petitioners had motioned the court to tell Petitioners what was missing in the complaint to state a claim and had motioned the court to amend the complaint where Judge Campbell stated that he was not required to tell Petitioners what was missing and refused to let Petitioners amend the complaint.

3. 11th Circuit. Here the question is about the Rooker[-F]eldmen doctrine. There was a ruling by the 11th [C]ircuit that was the opposite of the 6th [C]ircuit when it comes to the Rooker[-F]eldman doctrine and how does the court not violate the constitutional right of due process when Plaintiff paid the fee on appeal in the 11th [C]ircuit and then the docket stated the default was cured and then the court turned around and stated that they got the money late or does the court have to abide by the decision of this court:

Conley v. Gibson, 355 U.S. 41 at 48 (1957)

"Following the simple guide of [R]ule 8(f) that all pleadings shall be so construed as to do substantial justice"… "The federal rules reject the approach that pleading is a game of skill in which one misstep by counsel may be decisive to the outcome and accept the principle that the purpose of pleading is to facilitate a proper decision on the merits." The court also cited Rule 8(f) FRCP, which holds that all pleadings shall be construed to do substantial justice.

Cert. petition filed 1/6/14, conference 6/5/14. Petition denied 6/9/14.

No CA6 opinion available.


Cisco Systems, Inc. v. TecSec, Inc., No. 13-1165

Question Presented:

Whether alternative holdings, each independently sufficient to sustain a judgment, all have preclusive effect in subsequent proceedings, as the Second, Third, Ninth, Eleventh, and D.C. Circuits hold, or whether none of them do, as the Fourth, Seventh, Tenth, and Federal Circuits hold.

Whether the mandate rule bars a party from relitigating an issue in the same case that was within the scope of a decision that was unequivocally affirmed.

Cert. petition filed 3/21/14, conference 5/29/14. Petition denied 6/2/14.

CAFC OpinionCAFC Argument


Rudolph Technologies, Inc. v. Integrated Technology, et al., No. 13-1062

Questions Presented:

  1. Whether issues of law impacting patent damages should be reviewed de novo - like all other issues of law - or whether they should be reviewed under the deferential substantial evidence standard.
  2. Whether a patentee may obtain "lost profits" damages under a "two-supplier market" theory even when there are non-infringing alternatives.

Cert. petition filed 3/4/14, waiver by respondents Integrated Technology Corp., et al. filed 4/1/14, conference 4/25/14, response requested 4/22/14, conference 6/26/14. Petition denied 6/30/14.

CAFC OpinionCAFC Argument


Caret, et al. v. The University of Utah, No. 13-947

Questions Presented:

  1. Whether the Federal Circuit correctly held that a dispute between two States over ownership of patent rights may be adjudicated in a federal district court, despite this Court's exclusive jurisdiction over suits between States, as long as (1) the plaintiff-State sues only officials of the other State in their official capacity, and (2) the district court determines that the case does not implicate the core sovereign interests of the two States.
  2. Whether a State can utilize the Ex parte Young doctrine to circumvent this Court's original and exclusive jurisdiction over controversies between States by amending its complaint to drop the defendant-State and add in its place state officials against whom the plaintiff-State seeks no relief, where the dispute concerns which State is the owner of disputed patent rights

Cert. petition filed 2/7/14, waiver by respondent University of Utah filed 3/19/14, response requested 3/31/14, conference 6/12/14.Petition denied 6/16/14.

CAFC OpinionCAFC Argument


Accenture Global Services, GmbH v. Guidewire Software, Inc., No. 13-918

Question Presented:

Whether claims to computer-implemented inventions are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101?

Cert. petition filed 1/31/14, conference 5/2/14, conference 6/26/14. Petition denied 6/30/14.

CAFC OpinionCAFC Argument


Bancorp Services, LLC v. Sun Life Assurance Co. of Canada (U.S.), et al., No. 13-584

Question Presented:

  1. Whether claims to computer-implemented inventions—including claims to systems and machines, processes, and items of manufacture—redirected to patent-eligible subject matter within the meaning of 35 U.S.C. § 101 as interpreted by this Court?

Cert. petition filed 11/8/13, conference 2/21/14, conference 6/26/14. Petition denied 6/30/14.

CAFC OpinionCAFC Argument


Akamai, et al. v. Limelight Networks, Inc., No. 12-960, vided 12-786 and 12-800

Question Presented:

Cross-petitioners Akamai Technologies, Inc. and the Massachusetts Institute of Technology (collectively, “Akamai”) respectfully file this conditional cross-petition for a writ of certiorari to review the judgment of the United States Court of Appeals for the Federal Circuit in this case. The Court should deny the petition for a writ of certiorari in No. 12-786 and, if the Court does so, it need not consider this cross-petition. If the Court grants that petition, however, it should also grant this conditional cross-petition so the Court can fully consider the question of liability for joint infringement, not just under one provision of the patent infringement statute (35 U.S.C. § 271(b)) as Limelight requests, but under all relevant provisions of that statute. The question presented by this conditional cross-petition is:  Whether a party may be liable for infringement under either 35 U.S.C. § 271(a) or § 271(b) where two or more entities join together to perform all of the steps of a process claim?

Cross-petition for cert. filed 2/1/13, conference 6/6/13, conference 6/13/13, conference 6/20/13, CVSG 6/24/13, brief of amicus United States filed 12/10/13, conference 1/10/14, conference 6/5/14. Petition denied 6/9/14.

CAFC OpinionCAFC Argument


Maersk Drilling USA, Inc. v. Transocean Offshore Deepwater Drilling, Inc., No. 13-43

Question Presented:

Direct infringement of a U.S. patent occurs when a person “makes, uses, offers to sell, or sells any patented invention, within the United States,” or “imports into the United States any patented invention.” 35 U.S.C. § 271(a). Petitioner offered, negotiated, and agreed in Scandinavia to provide a Norwegian oil company with drilling services using Petitioner's oil rig. Consistent with the contract's express terms, before bringing the rig into or using it in U.S. waters, Petitioner modified it so that it did not infringe any U.S. patent.

The Federal Circuit nonetheless held that Petitioner offered to sell and sold an infringing rig “within the United States.” Although all of the relevant negotiations occurred overseas and Petitioner modified the rig to avoid any infringement in U.S. waters, the Federal Circuit held that entry into a service contract in Scandinavia violated U.S. patent law because the parties were U.S. companies and the contract contemplated performance in the United States. The Federal Circuit also extended U.S. patent law by deeming an offer to provide services using a rig to be an “offer to sell” or “sale” of the rig itself.

The question presented is:

Whether offering, negotiating, and entering into a contract in Scandinavia to provide services using a potentially patented device constitutes an “offer to sell” or “sale” of an actually patented device “within the United States,” under 35 U.S.C. § 271(a).

Cert. petition filed 7/8/13, conference 9/30/13, CVSG 10/7/13, petition dismissed, Rule 46, 5/21/14.

CAFC OpinionCAFC Argument


Baxter Intern. Inc. v. Fresenius USA, Inc., No. 13-1071

Questions Presented:

Fresenius brought a declaratory judgment action challenging the validity of patents owned by Baxter, and Baxter counterclaimed for infringement. The district court held that Baxter's patents were valid and infringed, and entered judgment awarding past damages, an injunction, and a transitional royalty. The U.S. Court of Appeals for the Federal Circuit affirmed in part and reversed in part. The Federal Circuit held that claims 26-31 of U.S. Patent No. 5,247,434 are not invalid. But because it invalidated other claims of Baxter's patents, the court remanded solely for recalculation of the transitional royalty and reconsideration of the injunction. On remand, the district court recalculated the transitional royalty and again entered judgment for Baxter.

While Fresenius's second appeal was pending, the U.S. Patent and Trademark Office cancelled claims 26-31 of the '434 patent based on an ex parte reexamination requested by Fresenius. Over the dissent of four judges who would have granted rehearing en banc, the Federal Circuit held that the PTO's decision required reversal of the judgments against Fresenius.

The questions presented are:

  1. Whether an Article III court's final judgment may be reversed based on the decision of an administrative agency.
  2. Whether a final determination of liability that has been affirmed on appeal may be reversed based on the decision of an administrative agency merely because an appeal regarding the post-verdict remedy is pending.

Cert. petition filed 3/5/14, conference 5/15/14. Petition denied 5/19/14.

CAFC OpinionCAFC Argument

WilmerHale represents petitioner Baxter International Inc.


Voda v. Medtronic, Inc., No. 13-992

Questions Presented:

Section 284 of the Patent Act provides that "the court may increase the damages up to three times the amount found or assessed" in a patent case (35 U.S.C. § 284) while Section 285 of the Patent Act provides that "[t]he court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285. Current patent common law requires a finding of willful patent infringement before an enhanced damages assessment is made or, absent litigation misconduct, attorneys' fees are awarded to a prevailing patentee. The questions presented are as follows:

  1. Whether a jury's finding that a party's litigating position is illegitimate or incredible for purposes of finding willfulness is subject to de novo review; and
  2. Whether a determination that a defendant's litigation position is illegitimate or incredible suffices for a patentee to establish an exceptional case in the absence of litigation misconduct?

Cert. petition filed 2/18/14, conference 4/18/14, conference 5/2/14. Petition denied 5/5/14.

CAFC OpinionCAFC Argument

WilmerHale represents respondent Medtronic, Inc.


Minemyer v. R-BOC Representatives, Inc., et al., No. 13-708

Questions Presented:

Section 284 of the Patent Act, 35 U.S.C. § 284, provides that in cases of patent infringement "the court may increase the damages up to three times the amount found or assessed." This Court has never interpreted this statute but the Federal Circuit has held that such enhanced damages may be awarded in cases of "willful" infringement, and in In re Seagate Technology, LLC, 497 F.3d 1360 (Fed. Cir. 2007), it promulgated a two-part test to decide which cases qualify, a test that it says is identical to the one it uses to decide what cases qualify as "exceptional" for purposes of the attorneys' fee-shifting provision in section 285 of the Act, 35 U.S.C. § 285, now under consideration by this Court.

Does the Seagate test satisfy the statute's purpose when it has confused both the Federal Circuit itself and the district courts required to apply it, district courts have sometimes expressly declined to follow it, and it has so restrictively limited the class of cases warranting enhanced damages that the district court in this case felt compelled to vacate - in its own word, "sadly" - a jury's express finding of "willfulness," even though the infringement resulted from what the court agreed was "blatant, deliberate and slavish" copying of the patented product and no meaningful defenses were raised?

Cert. petition filed 12/12/13, conference 3/21/14, conference 5/2/14. Petition denied 5/5/14.

CAFC OpinionCAFC Argument


Thomas v. Pippin, No. 13-1151

Question Presented:

The Patent Act provides that "[a] patent shall be presumed valid" and that "[t]he burden of establishing invalidity of a patent or any claim thereof shall rest on the party asserting such invalidity." 35 U.S.C. § 282. The United States Court of Appeals for the Federal Circuit held below that the Patent Trial and Appeal Board of the United States Patent and Trademark Office ("USPTO") did not commit legal error when it required Thomas, the patent holder, to prove that its own patents were valid over the prior art during an interference proceeding in which priority of invention was undisputed. The question presented is:

Whether the court of appeals erred in holding that Thomas, the patent holder, must carry the burden of persuasion against an invalidity challenge to his patents.

Cert. petition filed 3/21/14, waiver of respondent Pippin filed 4/2/14, conference 4/18/14. Petition denied 4/21/14.

CAFC OpinionCAFC Argument

WilmerHale represents respondent Jack Pippin.


Sandoz Inc., et al. v. Allergan, Inc., No. 13-889

Questions Presented:

The Patent Act provides that a patent may not be obtained for a claimed invention that is "obvious." 35 U.S.C. § 103. The Federal Circuit held it was obvious to combine in a single bottle two eye-drop medications commonly used together and thus invalidated one patent. But it then went on to hold it not obvious to use that same combination as it was intended to be used because a result of such use was purportedly "unexpected." That sole "unexpected result" was the unremarkable fact that the combination outperformed one of its component medications taken alone, allowing for less frequent dosing. That was the only basis for nonobviousness.

Having upheld that method-of-use claim, the Federal Circuit then refused to decide the invalidity counterclaims of two additional patents that are virtually indistinguishable from the patent it already had invalidated. Even though these separate counterclaims had been appealed as of right and would rid the marketplace of two invalid patents, the Federal Circuit deemed it "unnecessary to address" them because their resolution would not affect the termination date of the injunction.

The questions presented are:

  1. Whether and to what extent identification of an "unexpected result" of using an obvious composition, by itself, can render that use patentable.
  2. Whether a court of appeals may sua sponte decline to decide appealed independent judgments as to counterclaims of patent invalidity.

Cert. petition filed 1/22/14, waiver of respondent Apotex, Inc. and Apotex Corp. filed 2/26/14, conference 3/28/14. Petition denied 3/31/14.

CAFC OpinionCAFC Argument


O2 Micro Intern. Ltd. v. Monolithic Power Systems, Inc., et al., No. 13-848

Question Presented:

Section 285 of the Patent Act (Title 35) allows for the shifting of fees in exceptional patent infringement cases. This Court is reconsidering the Federal Circuit law in this area in two cases it has accepted this term.[FN1] This case, which involves the affirmance of a sanction of $9,082,580, presents related questions worthy of this Court's consideration in view of its forthcoming evaluation of this area of the law.

FN1. Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 687 F.3d 1300, cert, granted, 134 S. Ct. 48 (U.S. Oct. 1, 2013) (No. 12-1163); Octane Fitness, LLC v. Icon Health Fitness, Inc., 496 F. App'x 57, cert, granted, 134 S. Ct. 49 (U.S. Oct. 1, 2013) (No. 12-1184).

The questions presented are:

  1. Whether a court can vitiate the First Amendment right to petition by failing to require findings related to either "objective baselessness" or subjective "bad faith," established as the standard for fee shifting cases by this Court in Professional Real Estate Investors, Inc., by merely labeling a party's actions "litigation misconduct" when the district court did not do so.
  2. Whether there is a standard for finding "litigation misconduct" under 35 U.S.C. § 285, and, if so, whether it requires culpability greater than negligence.
  3. Whether, under Fox v. Vice, ___ U.S. ___, 131 S. Ct. 2205 (2011) (holding that shifting of fees is improper for all fees that would nevertheless have been incurred absent the misconduct), a court may properly include in a sanction an award of attorneys' fees incurred in a separate tribunal, such as the ITC, in which there has been no finding of wrongdoing and where those fees would have indisputably been incurred regardless of the alleged wrongdoing.

Cert. petition filed 1/14/14, waiver of respondents Monolithic Power Systems, Inc., et al., filed 2/13/14, conference 3/21/14. Petition denied 3/24/14.

CAFC OpinionCAFC Argument


Cheese & Whey Systems, Inc. v. Tetra Pak Cheese and Powder Sys., Inc., et al., No. 13-804

Question Presented:

The district court construed the relevant cheese processing vat patent claim terms, including the terms "a plurality of sharp cutting edges disposed in a generally common first plane" and "a plurality of blunt stirring edges disposed in a generally common second plane" on cross motions for summary judgment and held as a matter of law that the accused devices did not literally satisfy those limitations, but that they were satisfied under the doctrine of equivalents. The district court also held as a matter of law that the relevant claims were not invalid, either on grounds of indefiniteness or prior art. On appeal the Federal Circuit supplanted what it characterized as the district court's "unduly limited" interpretation of the "generally common plane" limitations. Based on the Federal Circuit's broader interpretation of the claim language, and without permitting Petitioner to offer evidence or argument directed to the new, broadened construction, the panel held that the accused devices literally satisfied the "generally common plane" limitation, raising two issues:

  1. Whether the United States Court of Appeals for the Federal Circuit exceeded its authority by adopting a broader claim interpretation than the district court, resulting in a broader scope of protection for the patentee, without the patentee having filed a cross-appeal directed to the district court's claim construction.
  2. Whether the United States Court of Appeals for the Federal Circuit denied Petitioners' fundamental right to due process under the Fifth Amendment to the Constitution by holding that the accused device literally satisfies the "generally common plane" limitation based on its broadened interpretation of the claim language without affording Petitioners a meaningful opportunity to address the issues of literal infringement or indefiniteness in light of the panel's broadened claim construction.

Cert. petition filed 1/6/14, conference 3/21/14. Petition denied 3/24/14.

CAFC OpinionCAFC Argument


Novozymes A/S, et al. v. DuPont Nutrition Biosciences APS, et al., No. 13-865

Question Presented:

This case is an opportunity for the Court to address the Federal Circuit's persistent failure to apply in patent cases the highly deferential standard of review of jury verdicts that is routinely and consistently applied by all of the regional circuits. A challenge to the validity of a patent on the ground that its claims are not supported by an adequate written description of the invention presents a pure question of fact that must be decided from the perspective of a person of ordinary skill in the art, an inquiry that frequently depends heavily on expert testimony. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351, 1355 (Fed. Cir. 2010) (en banc). The accused infringer must prove invalidity by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238 (2011). After a properly instructed jury found the claims of the asserted patent in this case adequately described and not invalid, a divided panel of the Federal Circuit held, contrary to the verdict, that the accused infringer had proved invalidity as a matter of law. The dissent objected to the majority's failure to defer to the jury's findings of fact, observing that the jury's verdict was supported by expert testimony and other substantial evidence and "deserve[d] significant deference." App. 37, 40.

The question presented is:

Whether the Federal Circuit effectively engaged in de novo review of the jury's verdict in violation of Rule 50 and the Seventh Amendment when it refused to accept a verdict supported by substantial evidence, including properly admitted expert testimony that was essential to the issue, on a question of fact on which the accused infringer bore a heightened burden of proof.

Cert. petition filed 1/20/14, waiver of respondent DuPont Nutrition Biosciences APS, et al., filed 2/7/14, conference 2/12/14. Petition denied 3/3/14.

CAFC OpinionCAFC Argument


In re Gordon, No. 13-844

Question Presented:

When a patent claim meets all of the statutory requirements for patentability, whether it is error to apply the printed matter doctrine to deny patentability on obviousness grounds under 35 U.S.C. § 103. The "printed matter doctrine" requires that any element of a patent claim which recites patent-ineligible printed matter must be excised from the patent claim and ignored in an obviousness analysis under Section 103. The doctrine was judicially adopted before Section 103 was enacted; has no basis in the current statute; directly contradicts Section 103 which requires that obviousness be determined based on the "subject matter as a whole" of the invention; and directly contradicts this Court's interpretation of Section 103 as requiring that all claim elements be considered in an obviousness analysis.

Cert. petition filed 1/10/14, waiver of respondent Teresa Stanek Rea, Acting Director, PTO, filed 1/24/14, conference 2/21/14. Petition denied 2/24/14.

CAFC OpinionCAFC Argument


Morsa v. United States Patent and Trademark Office, No. 13-755

Questions Presented:

  1. Can the Patent Office unilaterally abrogate a legally binding agreement to not use or rely on unreliable, date-and-content-modifiable alleged prior art?
  2. Can the Patent Office prevail even when they've at all times ignored, never contested, and never rebutted dispositive evidence?
  3. Can the Federal Circuit affirm the rejection of claims which the Patent Office has not properly and legally preserved?
  4. Can prior art which does not enable a claim render said claim obvious, especially when the totality of the prior art consists of merely a single alleged prior art item?
  5. Are secondary/objective factors preserved and therefore entitled to consideration as long as they are at a minimum listed in the briefs with references to their arguments in the record?
  6. Can the Federal Circuit affirm obviousness rejections the Patent Office never made?
  7. Can new evidence be presented as the result of new Federal (or Supreme) Court decisions, especially when the new decisions are precedential?
  8. Is it proper for the Patent Office to readily allow patentable distinctions between different types of entities in some invention classifications including pharmaceuticals, but not in others?

Cert. petition filed 9/11/13, waiver of respondent PTO filed 1/17/14, conference 2/21/14. Petition denied 2/24/14.

CAFC Opinion, No CAFC Argument Presented


Sinclair-Allison, Inc. v. Fifth Ave. Physician Services, LLC, et al., No. 13-709

Question Presented:

What should be the standard for analyzing the abstract-idea exception to patent eligibility under 35 U.S.C. § 101?

Cert. petition filed 12/11/13, conference 2/21/14. Petition denied 2/24/14.

CAFC OpinionCAFC Argument


2013 


SAP America, Inc., et al. v. Versata Software, Inc., et al., No. 13-716

Questions Presented:

The business method patent claims that are the basis of the $391 million judgment against petitioners have already been declared invalid as unpatentable abstract ideas by a special board of the Patent and Trademark Office created by Congress to eliminate such patents that were wrongly issued. Nonetheless, the court of appeals denied a stay of the infringement action without explanation. The court of appeals refused even to consider petitioners' challenge to the sufficiency of the evidence to support that award, and affirmed the judgment despite the fact that petitioners' product, as shipped, could not perform the claimed functionality, until modified by respondents' expert. The court of appeals' judgment presents the following questions:

  1. Whether a computer software manufacturer may be liable for direct infringement of a patent drawn to computer instructions where the software, as shipped, does not contain sufficient instructions to perform the claimed operations.
  2. Whether flaws in an expert's methodology may be raised as part of a challenge to the sufficiency of the evidence or only to the testimony's admissibility.
  3. Whether a patent infringement action should be stayed where the Patent Trial and Appeal Board has declared invalid all patent claims at issue in the infringement action and the defendant, which sought such review at the first opportunity, might otherwise be compelled to pay an enormous damages judgment and be subjected to a permanent injunction on the basis of the invalid claims.

Cert. petition filed 12/12/13, conference 1/17/14. Petition denied 1/21/14.

CAFC OpinionCAFC Argument


DirecTV v. K-Tech Telecommunications, Inc., et al., No. 13-618

Questions Presented:

This Court has repeatedly held that, to comply with Federal Rule of Civil Procedure 8(a), a plaintiff must plead a “plausible claim” for relief, including factual allegations sufficient to “allow[] the court to draw the reasonable inference that the defendant is liable for the misconduct alleged.” Ashcroft v. Iqbal, 556 U.S. 662, 678, 685 (2009); see Bell Atl. Corp. v. Twombly, 550 U.S. 544, 570 (2007). That standard, the Court has ruled, applies in “‘all civil actions.’” Iqbal, 556 U.S. at 684 (quoting Fed. R. Civ. P. 1).

The Federal Circuit in this case held that a different standard applies to complaints alleging direct patent infringement. Under that standard, courts evaluate such complaints “by reference to Form 18 of the Appendix of Forms to the Federal Rules of Civil Procedure.” Form 18—a sample complaint added to the appendix of Forms in 1938—includes only five conclusory assertions: (1) the court has jurisdiction; (2) plaintiff owns a specified patent; (3) defendant has been infringing that patent by making, selling, and using a specified device embodying the patent; (4) plaintiff has notified the defendant of the infringement; and (5) plaintiff seeks specified relief.

The questions presented are:

  1. Whether the court of appeals erred in holding that Form 18 “control[s]” over the pleading standard announced in Iqbal andTwombly.
  2. If Form 18 does “control,” whether a complaint that omits and contradicts allegations required by Form 18 states a claim.

Cert. petition filed 11/18/13, conference 1/24/14. Petition denied 1/27/14.

CAFC OpinionCAFC Argument


Metso Minerals, Inc. v. Powerscreen Intern. Distribution, No. 13-565

Questions Presented:

  1. Following a civil jury's verdict, whether the Court of Appeals for the Federal Circuit, in direct contravention of relevant precedent, may reverse the district court's denial of a motion for judgment as a matter of law of patent non-obviousness without applying the regional circuit's standard of review and in so doing, rely only upon contested evidence implicitly rejected by the jury and ignore substantial evidence supporting the jury's verdict, thereby depriving the jury verdict winner of its right to a jury trial under the Seventh Amendment.
  2. With respect to commercial success as a secondary indicia of patent non-obviousness, whether a nexus is presumed between a patented invention and commercially successful products covered by the patent where the patent's claims are coextensive with the commercially successful products.
  3. Whether, and to what extent, a court of appeals may review the sufficiency of the evidence supporting a civil jury verdict where the party requesting review made a motion for judgment as a matter of law under Rule 50(b) of the Federal Rules of Civil Procedure after the jury's verdict that had not been made by the party under Rule 50(a) before submission of the case to the jury.
  4. Where a jury instruction was erroneous, may a court of appeals reverse a district court's finding that the erroneous instruction had no prejudicial effect, where the evidence cited by the district court showed that the issue addressed by the instruction was not contested at trial.

Cert. petition filed 11/5/13, conference 1/10/14. Petition denied 1/13/14.

CAFC OpinionCAFC Argument


Soverian Software LLC v. Newegg Inc., No. 13-477

Question Presented:

In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17 (1966), this Court held that "[w]hile the ultimate question of patent validity is one of law," that question is premised on "several basic factual inquiries." Those inquiries include "the scope and content of the prior art" and the "differences between the prior art and the claims at issue." Id. In KSR International Co. v. Teleflex Inc., 550 U.S. 398, 407 (2007), this Court reaffirmed that the Graham factual questions "continue to define the inquiry that controls" the determination of obviousness. The Federal Circuit in this case resolved disputes about these "basic factual inquiries" under the guise of determining the ultimate legal question.

The question presented is:

Whether the Federal Circuit's effective redefinition of obviousness as a pure question of law, allowing it to resolve disputed factual questions in the first instance on appeal, violates the Seventh Amendment and this Court's precedent.

Cert. petition filed 10/16/13, conference 1/10/14. Petition denied 1/13/14.

CAFC OpinionCAFC Argument

WilmerHale represents petitioner Soverain Software LLC.


Saffran v. Johnson & Johnson, et al., No. 13-405

Questions Presented:

Based on the district court's constructions of the patent claim terms, a jury found that Cordis infringed Dr. Saffran's patent. A fractured panel of the Federal Circuit did not afford the district court's claim constructions deference, changed those constructions, and reversed the judgment of infringement. At the same time, the en banc Federal Circuit decided to reconsider the appropriate level of deference to district court claim constructions. See Lighting Ballast Control LLC v. Philips Elecs.N. Am. Corp., 500 F. App'x 951 (Fed. Cir. 2013). Dr. Saffran sought to have his case held or reconsidered in conjunction with Lighting Ballast, but the Federal Circuit refused. The questions presented are:

  1. Whether the Federal Circuit should have given deference to the district court's factual findings in construing the patent claims.
  2. Whether the Federal Circuit erred in arbitrarily subjecting two similar, concurrently pending cases to potentially different standards of review.

Cert. petition filed 9/30/13, conference 11/15/13, response requested 11/12/13, conference 1/24/14. Petition denied 1/27/14.

CAFC OpinionCAFC Argument


Organic Seed Growers and Trade Association, et al. v. Monsanto Company, et al., No. 13-303

Question Presented:

Petitioners are farmers and seed dealers who wish to avoid using or selling genetically engineered (GE) seed but are at an immediate and real risk of being contaminated by Respondents' patented GE seed and then accused of patent infringement by Respondents. This risk of being sued for patent infringement has compelled Petitioners to forgo full use of their land and adopt burdensome genetic testing in order to avoid being contaminated. To alleviate the need to undertake those precautions, Petitioners filed this action seeking a declaration that being contaminated by Respondents' GE seed does not render them liable for patent infringement. Petitioners also requested, but Respondents refused to grant, a covenant not to sue. The District Court dismissed, believing Petitioners must be at risk of suit to have standing. The Court of Appeals affirmed after finding Respondents mooted the case by making “binding assurances” to not make patent infringement claims against Petitioners contaminated up to 1%. However, Petitioners risk being contaminated in amounts much greater than 1%, and thus remain compelled to forgo full use of their land and adopt genetic testing of their seed supplies in order to avoid being accused of patent infringement by Respondents.  Given that non-GE farmers and seed dealers will inevitably be contaminated by Respondents' GE seed, and given Respondents' aggressive assertion of its patents on GE seed and refusal to grant Petitioners a covenant not to sue, do Petitioners have standing to seek a declaratory judgment that they will not be liable as infringers of Respondents' patents when contaminated?

Cert. petition filed 9/5/13, conference 1/10/14. Petition denied 1/13/14.

CAFC OpinionCAFC Argument


Power Integrations, Inc. v. Fairchild Semiconductor Int'l, Inc., No. 13-269

Question Presented:

In this case, a jury found that respondent Fairchild Semiconductor committed patent infringement and induced infringement by others—in the United States—after it reverse-engineered and mass produced petitioner Power Integrations' patented technology for controller chips that are used in power supplies (or chargers) for consumer electronic devices such as smart phones. The jury also found that this U.S.-based infringement directly and foreseeably caused Power Integrations to lose sales of its chips worldwide, and the jury awarded $34 million in damages based on these lost profits and other injuries. The Federal Circuit set aside the jury's damages award, concluding that under the “presumption against extraterritoriality” patent damages can never be based on lost foreign sales of an infringing product, even when such lost sales are the direct and foreseeable result of patent infringement inside the United States.  The question presented is whether the Federal Circuit erroneously rejected the jury's damages verdict after holding—in direct conflict with the decisions of this Court—that a patent owner is barred from obtaining damages under 35 U.S.C. § 284 for lost sales outside the United States, even where those lost sales are the direct and foreseeable result of patent infringement inside the United States.

Cert. petition filed 8/23/13, response requested 9/19/13, conference 1/10/14. Petition denied 1/13/14.

CAFC OpinionCAFC Argument


Mirowski Family Ventures, LLC v. Medtronic, Inc., et al., No. 12-1116, vide 12-1128

Question Presented:

“Claim construction is the single most important event in the course of a patent litigation. It … is often the difference between infringement and non-infringement, or validity and invalidity. Despite the crucial role that claim construction plays in patent litigation, our rules are still ill-defined and inconsistently applied, even by us. Commentators have observed that claim construction appeals are ‘panel dependent’ which leads to frustrating and unpredictable results for both the litigants and the trial court.” Retractable Techs., Inc. v. Becton, Dickinson & Co., 659 F.3d 1369, 1370 (Fed. Cir. 2011) (en banc) (Moore, Circuit Judge, with whom Rader, Chief Judge, joins, dissenting from the denial of the petition for rehearing en banc).

Each of the two questions presented below are directed to this “single most important event.”

  1. Where a district court has resolved conflicting expert testimony to decide a claim construction issue, should this decision be reviewed on appeal with no deference?
  2. Should the words of a patent claim be construed by their ordinary meaning (with a narrow exception) as the Federal Circuit holds or should they be construed according to the patent's specification as this Court has long held?

Cert. petition filed 3/4/13, conference 5/16/13, conference 1/24/14. Petition denied 1/27/14.

CAFC OpinionCAFC Argument

WilmerHale represents respondent Medtronic, Inc.


Convolve, Inc. v. Compaq Computer Corp., No. 13-547

Questions Presented:

Rule 56(a), Federal Rules of Civil Procedure, permits a grant of summary judgment only if “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” The questions presented for review are:

  1. Whether a United States Court of Appeals, in summarily affirming an internally inconsistent summary judgment that is directly contradicted and discredited by the district court's own fact-findings, has so far departed from the accepted and usual course of summary judgment proceedings as to call for an exercise of this Court's supervisory power? See Sup. Ct. R. 10(a).
  2. Whether an internally inconsistent summary judgment—directly contradicted and discredited by the district court's own fact-findings—violates the right to trial by jury secured by the Seventh Amendment to the United States Constitution?
  3. Whether an internally inconsistent summary judgment—directly contradicted and discredited by the district court's own fact-findings—violates the guarantee of due process in federal courts secured by the Fifth Amendment to the United States Constitution?

Cert. petition filed 10/29/13, waiver of respondent Seagate Technology filed 11/6/13, waiver of respondent Compaq Computer filed 11/8/13, conference 12/6/13. Petition denied 12/9/13.

CAFC OpinionCAFC Argument


Cephalon, Inc. v. Apotex, Inc., No. 13-441

Questions Presented:

  1. Whether the mere act of omitting purportedly material information during a patent prosecution, without separate proof of intent to deceive the Patent and Trademark Office, can constitute clear and convincing evidence sufficient to support a finding of inequitable conduct.
  2. Whether a corporation can be found liable for inequitable conduct in the absence of a finding of inequitable conduct by any of its officers, employees or agents.

Cert. petition filed 10/7/13, conference 12/13/13. Petition denied 12/16/13.

CAFC OpinionCAFC Argument

WilmerHale represents petitioner Cephalon, Inc.


Arthrex, Inc. v. Smith & Nephew, Inc., No. 13-290

Question Presented:

In Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), this Court held that, to be liable under a “willful blindness” theory of intent, “(1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact.” Id. at 2070. The Court explained that “willful blindness” is a rigorous standard that “surpasses recklessness and negligence.” IbidIn Safeco Insurance Co. of America v. Burr, 551 U.S. 47 (2007), the Court held that a defendant cannot be found to have committed a violation under the lesser “recklessness” standard if its actions were consistent with an understanding of legal requirements that was “not objectively unreasonable,” “whatever [its] subjective intent may have been.” Id. at 70 & n.20. The question presented is:  Whether a defendant may be held liable under the “willful blindness” standard where its actions were consistent with an understanding of relevant legal requirements that was not objectively unreasonable.

Cert. petition filed 8/30/13, conference 12/6/13. Petition denied 12/9/13.

CAFC OpinionCAFC Argument


Artesyn Technologies, Inc. et al. v. Synqor, Inc., No. 13-375

Questions Presented:

  1. Whether the Federal Circuit upheld a patent infringement verdict of more than $100 million by failing to apply the obviousness standard set forth in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), and reverting instead to its pre-KSR “teaching, suggestion, or motivation” test.
  2. Whether the Federal Circuit upheld a damages award for induced infringement by failing to apply the actual knowledge standard specified by this Court in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), and reverting instead to its pre-Global-Tech recklessness standard.

Cert. petition filed 9/23/13, conference 11/15/13. Petition denied 11/18/13.

CAFC OpinionCAFC Argument


Hyundai Motor America, Inc. v. Clear With Computers, LLC, No. 13-296

Question Presented:

In Microsoft Corp. v. i4i Ltd., 131 S.Ct. 2238 (2011), this Court held that 35 U.S.C. § 282 requires fact finders in patent infringement cases to “determin[e] whether an invalidity defense has been proved by clear and convincing evidence.”131 S.Ct. at 2251. Three Justices also wrote separately to “emphasiz[e]” that the clear and convincing standard “applies to questions of fact” underlying invalidity, “not to questions of law” like whether an invention is non-obvious within the meaning of the Patent Act. Id. at 2253 (Breyer, J., concurring, joined by Scalia and Alito, JJ.). Consistent with centuries of Anglo-American law and multiple decisions of this Court, and to ensure that “inventions will not receive legal protection where none is due,” the concurring Justices urged district courts to “separat[e] factual and legal aspects of an invalidity claim” by “using instructions … that help the jury make the distinction.” Ibid.

Here, over petitioner's objection, the district court refused to cabin the clear and convincing standard to the jury's fact-finding, instead permitting that heightened standard to infect legal questions concerning invalidity. The district court then simply adopted the jury's verdict with no analysis of the ultimate legal questions. Without explanation, and despite full merits briefing and a lively oral argument, the Federal Circuit affirmed by summary disposition.

The question presented is whether, following i4i, a district court may ignore the fact/law distinction and in so doing instruct a jury to apply the heightened “clear and convincing” standard not only to disputed factual aspects of an invalidity claim, but also to the legal aspects of such a claim—including the ultimate question of a patent's invalidity?

Cert. petition filed 9/3/13, conference 11/8/13. Petition denied 11/12/13.

CAFC OpinionCAFC Argument


The Fox Group, Inc. v. Cree, Inc., No. 12-1378

Question Presented:

The Federal Circuit's opinion below, for the first time in American jurisprudence, invalidated a patent based on a prior “invention” that provided no benefit to the public, because the prior inventor concealed how to make the invention, did not commercialize it, and did not apply for a patent. The Federal Circuit based its holding on a distinction between “process” and “product” patents that does not exist in the plain language of the relevant statute, 35 USC § 102. Did the Federal Circuit err in interpreting § 102(g)(2) to allow non-enabling disclosures to invalidate product patents, a result that will create significant uncertainty in litigation involving product patents and penalize patent holders who publicly shared their inventions?

Cert. petition filed 5/21/13, waiver of respondent Cree, Inc. filed 6/14/13, response requested 8/5/13, conference 9/30/13, conference 10/11/13. Petition denied 10/15/13.

CAFC OpinionCAFC Argument


Nokia Inc., et al. v. ITC, No. 12-1352

Questions Presented:

Section 337 of the Tariff Act of 1930 permits the International Trade Commission to exclude from entry into the United States an article that infringes a valid and enforceable patent. Under what is known as the “domestic industry” requirement, however, it may do so only when a complainant establishes that there is “an industry in the United States, relating to the articles protected by the patent.”

Respondent InterDigital asserted that petitioner Nokia violated section 337 by importing cellular handsets into the United States that allegedly infringed InterDigital's patents. After a five-day evidentiary hearing, a judge concluded that no infringement had occurred. In a divided opinion, the Federal Circuit, employing de novo review, concluded that the patent claims had been erroneously construed and reversed the non-infringement determination. The court also held that “licensing alone” is sufficient to satisfy the domestic industry requirement. In denying rehearing, the panel majority reiterated that licensing alone satisfies the domestic industry requirement as long as the patent concerns “the article that is the subject of the exclusion proceeding.” The questions presented are:

  1. Whether the “domestic industry” requirement of section 337 is satisfied by “licensing alone” despite the absence of proof of “articles protected by the patent.”
  2. Whether underlying factual determinations in a patent claim construction ruling should be subject to deferential review by the Federal Circuit.

Cert. petition filed 5/10/13, conference 10/11/13. Petition denied 10/15/13.

CAFC OpinionCAFC Argument


Sony Computer Entertainment America LLC, et al. v. 1st Media, LLC, No. 12-1086

Question Presented:

Did the Court of Appeals for the Federal Circuit err in restricting district courts' equitable discretion in evaluating patent unenforceability, contrary to this Court's precedent in Keystone Driller, Hazel-Atlas, and Precision Instrument, by applying a rigid test that (a) forecloses district courts from considering the entire circumstantial record; and (b) precludes district courts from granting equitable remedies where a patent applicant has violated the PTO's duty of candor.

Cert. petition filed 3/4/13, conference 5/9/13, CVSG 5/13/13, conference 10/11/13. Petition denied 10/11/13.

CAFC OpinionCAFC Argument


Public Patent Foundation, Inc. v. McNeil-PPC, Inc., et al., No. 13-161

Question Presented:

The Patent Act has long forbidden falsely marking and advertising unpatented articles as patented. The false marking statute, 35 U.S.C. § 292, also long provided a qui tam cause of action for any member of the public to pursue violators on the government's behalf. In June 2009, Petitioner filed such an action against Respondent. In September 2011, more than two years after Petitioner filed this case, Congress passed the Leahy-Smith America Invents Act (AIA) that contained amendments to the false marking statute. One such amendment eliminated qui tam standing for members of the public to bring false marking claims. The AIA applied its changes to the false marking statute retroactively and, as a result, the district court dismissed Petitioner's case because Petitioner no longer had standing under the retroactively amended version of the statute. The Court of Appeals summarily affirmed.  Does the retroactive application of the AIA's changes to the false marking statute to this case violate Petitioner's Due Process under the Fifth Amendment?

Cert. petition filed 8/1/13, waiver of respondent United States filed 8/22/13, waiver of respondent McNeil-PPC filed 8/28/13, conference 9/30/13. Petition denied 10/7/13.

CAFC OpinionCAFC Argument


Intema Ltd. v. Perkinelmer, Inc., No. 12-1372

Questions Presented:

The Federal Circuit reversed the District Court and held the claims of Intema's patent ineligible under 35 U.S.C. §101 by misapplyingMayo Collaborative Services v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 182 L.Ed.2d 321 (2012) in a manner that creates erroneous, rigid rules for determining patent ineligibility in cases involving laws of nature. If the Judgment of the Federal Circuit is not reversed, it will have the practical effect of rendering most diagnostic, screening and personal medicine tests unpatentable.

The questions presented by this Petition for a Writ of Certiorari are:

  1. Is a useful, novel and non-obvious diagnostic, screening or personal medicine test patent eligible under 35 U.S.C. §101 if:
    1. the inventive concept is in the selection, combination and timing of the data collected in the data-gathering steps; and/or
    2. the final step is calculating a new and useful test result from data collected by novel data-gathering steps, but does not involve a physical activity?
  2. Did this Court in Mayo establish the rigid rules for patent eligibility of claims involving a law of nature found by the Federal Circuit, namely that:
    1. data-gathering steps, even if they include new and non-obvious combinations of known steps, may not be considered all or part of the “inventive concept” that ensures that the patent is significantly more than the natural law itself; and/or
    2. a claimed method that provides test results that determine a course of action must include a final step that involves physical activity?
  3. Should the determination of patent eligibility under Section 101 be based on a Markman claim construction as the District Court did, as opposed to an inaccurate paraphrase of the claim as used by the Federal Circuit?

Cert. petition filed 5/16/13, conference 9/30/13. Petition denied 10/7/13.

CAFC OpinionCAFC Argument


Raylon, LLC v. Complus Data Innovations, Inc., et al., No. 12-1354

Questions Presented:

The Federal Circuit reversed a Trial Court's denial of sanctions based on its de novo finding that the Plaintiff's patent case was frivolous in violation of Fed. R. Civ. P. 11. In its ruling, the Federal Circuit gave no deference to the Trial Court findings and created a formalistic rule that evidence of non-trivial settlements cannot be considered to determine objective reasonableness of the lawsuit under Rule 11, which conflicts with several other circuits.

The Federal Circuit found that settlement evidence “has no place in the Rule 11 analysis,” which ignores the widely-recognized relevance such evidence has in showing the views of objective litigants (e.g. settling Defendants) as to whether the underlying lawsuit was reasonably calculated to elicit a favorable outcome. Petitioner respectfully requests that the Supreme Court grant this Petition for a Writ of Certiorari on the following questions.

  1. Whether the Federal Circuit erred in creating a de facto rule that past non-trivial settlements cannot be considered in objective reasonableness determinations for Fed. R. Civ. P. 11 sanctions, which is a departure from precedent in at least four other Circuits finding that settlements can be considered for objective reasonableness and Rule 11 analysis.
  2. Whether the Federal Circuit erred in finding an abuse of discretion by a Trial Court's consideration of non-trivial settlement evidence in a sanctions determination when such evidence is relevant in demonstrating the views of objective litigants (e.g., settling Defendants) as to whether the Plaintiff's case was reasonable.
  3. Whether the Federal Circuit's lower level of deference given to Trial Court determinations, as shown by its extraordinary reversal rates in patent cases and its adoption of an expanded de novo standard of review, conflicts with the higher level of deference shown to Trial Court determinations by the other circuit courts, especially those courts reviewing Trial Court sanctions determinations.
  4. Whether the Federal Circuit erred in making a de novo determination that the Plaintiff's entire case was “frivolous” without analyzing all the relevant facts normally considered when reviewing the merits of a patent lawsuit, including: (1) the prior Federal Circuit precedent supporting the objective reasonableness of Plaintiff's claim interpretations, (2) the Plaintiff's alternate infringement theories embodied in doctrine of equivalents infringement claims, (3) disagreements among the various Defendants (and with the Plaintiff) regarding the contested claim construction, and (4) the technical and patent law expert opinions supporting the objective reasonableness of the Plaintiff's case.

Cert. petition filed 5/10/13, conference 9/30/13. Petition denied 10/7/13.

CAFC OpinionCAFC Argument


CoreValve Inc. v. Lifesciences AG, No. 12-1325

Questions Presented:

The “enablement” provision of the Patent Act, 35 U.S.C. § 112(a), states that a patent “shall contain a written description of the invention *** in such full, clear, concise, and exact terms as to enable any person skilled in the art *** to make and use the same.” The Federal Circuit's cases are in conflict over the meaning and application of this core patentability requirement. The patent at issue claims a collapsible prosthetic valve attached to a stent “for implantation in a body channel.” The specification describes the claimed invention as directed primarily to a valve implanted by catheter in the human heart. Yet the specification does not disclose how to make a valve that is small and stable enough to achieve that purpose. Engineers attempting to apply the patent could not make a valve suitable for human implantation despite many years of effort, and no experimental animal survived implantation for more than a few hours. The questions presented are:

  1. Whether a claimed invention is enabled within the meaning of 35 U.S.C. § 112(a) where the patent does not describe how to make and use it and engineers could not do so despite years of effort.
  2. Whether the Federal Circuit's holding that an injunction is presumptively warranted after a verdict of infringement conflicts with this Court's decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006).

Cert. petition filed 5/6/13, waiver of respondent Edwards Lifesciences AG filed 5/9/13, response requested 5/20/13, conference 9/30/13.Petition denied 10/7/13.

CAFC OpinionCAFC Argument


Technology Patents LLC v. T-Mobile (UK) Ltd., et al., No. 12-1292

Questions Presented:

  1. Whether a court of appeals may refuse to decide if an appealed dismissal of a party for lack of jurisdiction was proper, and instead make rulings on the merits regarding that party including factual findings on issues not addressed by the district court without first establishing jurisdiction over that party.
  2. Did the court of appeals err in conducting a de novo review of a summary judgment by not believing the declaration submitted by non-movant and by not drawing inferences in non-movant's favor?

Cert. petition filed 4/26/13, waiver of respondent AT&T Mobility, LLC filed 5/13/13, waivers of respondents T-Mobile (UK) Ltd., H3G S.P.A., Advanced Info Service PLC, et al., PCCW Mobile HK Ltd, KDDI, Corp. filed 5/28/13, waiver of respondent TMN – Telecomunicacoes moveis Nacionais, S.A. filed 5/29/13, conference 9/30/13. Petition denied 10/7/13.

CAFC OpinionCAFC Argument


Finjan, Inc. v. Patent and Trademark Office, No. 12-1245

Question Presented:

Whether all prior art should be presumed enabled in the United States Patent and Trademark Office.

Cert. petition filed 4/11/13, conference 9/30/13. Petition denied 10/7/13.

CAFC OpinionCAFC Argument


ClearPlay, Inc. v. Nissim Corp., No. 12-1365

Questions Presented:

After Respondents granted Petitioner ClearPlay, Inc. a license of their patent rights, Respondent Nissim Corp. told ClearPlay's business partners that the licensee's products (1) violated certain covenants of the parties' license agreement unrelated to the patents' field of use, (2) were accordingly “unlicensed,” and (3) therefore infringed on the licensors' patents.

Is a patent license an affirmative covenant not to sue, as held by the Federal Circuit and adopted by several other circuits, or does a license allow the licensor to threaten infringement suits, as held by the Eleventh Circuit?

Do federal patent laws preempt state-law business-interference claims when the veracity of a licensor's assertions that its products were “unlicensed” can be determined by looking to the terms of the license agreement without regard to any issues of patent law?

Cert. petition filed 5/15/13, waiver of respondent Nissim Corp. filed 5/22/13, conference 6/20/13. Petition denied 6/24/13.

CA11 Opinion


Mirror Worlds, LLC v. Apple Inc., No. 12-1158

Question Presented:

  1. Whether the offer for sale and/or sale of a product that embodies a patented invention can directly infringe a method claim under 35 U.S.C. § 271(a)?
  2. Whether the Federal Circuit has created an improper de facto rule precluding the use of circumstantial evidence to establish that one or more steps in a patented method have been performed for the purpose of demonstrating infringement?

Cert petition filed 3/21/13, waiver by respondents Apple Inc. filed 3/27/13, response requested 4/17/13, conference 6/20/13. Petition denied 6/24/13.

CAFC OpinionCAFC Argument


Momenta Pharmaceuticals Inc., et al. v. Amphastar Pharmaceuticals, Inc., et al., No. 12-1033

Questions Presented:

The Drug Price Competition and Patent Term Restoration Act, also known as the Hatch-Waxman Act, created a safe harbor from liability for patent infringement. The statutory safe harbor provides that it shall not be an act of patent infringement to make or use a patented invention “solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs.” 35 U.S.C. § 271(e)(1). The safe harbor “allows competitors, prior to the expiration of a patent, to engage in otherwise infringing activities necessary to obtain regulatory approval” from the Food and Drug Administration (“FDA”). Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661, 671 (1990). In this case, the Federal Circuit held that the safe harbor immunizes respondents' use of petitioners' patented method in the course of post-approval manufacturing of respondents' drug for commercial sale, in direct competition with petitioners, during and throughout the life of petitioners' patent.

The question presented is:

Whether the use of a patented invention in the course of post-approval manufacture of a drug for commercial sale, where the FDA requires that a record of that manufacturing activity be maintained, is exempted from liability for patent infringement under Section 271(e)(1) as “solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs.”

Cert petition filed 2/15/13, waiver of respondent Amphastar Pharmaceuticals filed 3/21/13, response requested 4/2/13, conference 6/20/13. Petition denied 6/24/13.

CAFC OpinionCAFC Argument


Voter Verified, Inc. v. Election Systems & Software, Inc., No. 12-1228, vided 12-1227

Questions Presented:

  1. Important questions of federal law:
    1. With respect to prior art public accessibility, the question presented is:  Whether the status of public accessibility of a reference to qualify as a prior art publication under 35 U.S.C. §102(b) for patent invalidation under 35 U.S.C. §103(a) must be shown with clear and convincing evidence?
    2. On August 31, 2012, following oral argument on November 18, 2011, a majority of six of the Federal Circuit en banc rendered their judgment in the cases consolidated in Akamai Technologies, Inc. v. Limelight Networks, Inc.(reported at 692 F.3d 1301) on the question of the propriety and operation of the so-called “single-entity rule,” previously announced by a panel of the Federal Circuit in BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) and elaborated upon in Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008). The “single-entity rule” is a doctrinal basis for the decision of non-infringement in the present case, in which a panel of the Federal Circuit rendered its opinion on November 5, 2012. The questions presented are:
      1. Whether 35 U.S.C. § 271(a) by its own terms and without being extended imposes liability upon multiple independent parties who collectively perform the various steps of a patented method claim in the practice of the patented invention?
      2. Whether the making, offering to sell, sale or use of a system which incorporates, or controls, or directs the practice of an entire method claim of a patented invention infringes the method claim under 35 U.S.C. §271(a)?
    3. With respect to the distinction between the doctrine of equivalents and equivalents under 35 U.S.C. §112 ¶ 6, the question presented is: Whether a human action in the operation of an accused system that performs the same function as a means plus function element of a system claim cannot be an equivalent to that system claim element in determining infringement under the doctrine of equivalents?
  2. With respect to substantial departure from the usual course of judicial proceedings in the lower courts, the questions presented are:
    1. Whether the lower courts erred in affirming the sua sponte imposition by the district court of protection and ad hoc conditions of onerous travel upon a party seeking to compel compliance with requests for production?
    2. Whether the Federal Circuit Panel erred in ruling that Voter Verified had on appeal waived its action for indirect infringement, where the district court had only ruled on the issue of direct infringement with summary judgment; and where the legal doctrine prevailing in the Federal Circuit during the pendency of this action precluded any finding of indirect infringement without a finding of liability for direct infringement.
    3. Whether the Federal Circuit Panel erred in basing appellate holdings on misstatements of the undisputed evidence and misstatements of the holdings of the district court, thereby denying to the Petitioner due process of law guaranteed by Amendment V of the United States Constitution?
    4. Whether the Federal Circuit Panel erred in failing to enter summary judgment for Voter Verified on the issues of infringement and invalidity presented with motions therefor in the district court?

Cert. petition filed 4/4/13, conference 6/6/13. Petition denied 6/10/13.

CAFC OpinionCAFC Argument


Voter Verified, Inc. v. Premier Election Solutions, Inc., et al., No. 12-1227, vided 12-1228

Questions Presented:

  1. Important questions of federal law:
    1. With respect to prior art public accessibility, the question presented is: Whether the status of public accessibility of a reference to qualify as a prior art publication under 35 U.S.C. §102(b) for patent invalidation under 35 U.S.C. § 103(a) must be shown with clear and convincing evidence?
    2. On August 31, 2012, following oral argument on November 18, 2011, a majority of six of the Federal Circuit en banc rendered their judgment in the cases consolidated in Akamai Technologies, Inc. v. Limelight Networks, Inc.(reported at 692 F.3d 1301) on the question of the propriety and operation of the so-called “single-entity rule”, previously announced by a panel of the Federal Circuit in BMC Resources, Inc. v. Paymentech, L.P.,498 F.3d 1373 (Fed. Cir. 2007) and elaborated upon in Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008). The “single-entity rule” is a doctrinal basis for the decision of non-infringement in the present case, in which a panel of the Federal Circuit rendered its opinion on November 5, 2012. The questions presented are:
      1. Whether 35 U.S.C. § 271(a) by its own terms and without being extended imposes liability upon multiple independent parties who collectively perform the various steps of a patented method claim in the practice of the patented invention?
      2. Whether the making, offering to sell, sale or use of a system which incorporates, or controls, or directs the practice of an entire method claim of a patented invention infringes the method claim under 35 U.S.C. §271(a)?
    3. With respect to the distinction between the doctrine of equivalents and equivalents under 35 U.S.C. §112 ¶6, the question presented is: Whether a human action in the operation of an accused system that performs the same function as a means plus function element of a system claim cannot be an equivalent to that system claim element in determining infringement under the doctrine of equivalents?
  2. With respect to substantial departure from the usual course of judicial proceedings in the lower courts, the questions presented are:
    1. Whether the lower courts erred in affirming the sua sponte imposition by the district court of protection and ad hoc conditions of onerous travel upon a party seeking to compel compliance with requests for production?
    2. Whether the Federal Circuit Panel erred in ruling that Voter Verified had on appeal waived its action for indirect infringement, where the district court had only ruled on the issue of direct infringement with summary judgment; and where the legal doctrine prevailing in the Federal Circuit during the pendency of this action precluded any finding of indirect infringement without a finding of liability for direct infringement.
    3. Whether the Federal Circuit Panel erred in basing appellate holdings on misstatements of the undisputed evidence and misstatements of the holdings of the district court, thereby denying to the Petitioner due process of law guaranteed by Amendment V of the United States Constitution?
    4. Whether the Federal Circuit Panel erred in failing to enter summary judgment for Voter Verified on the issues of infringement and invalidity presented with motions therefor in the district court?
    5. Whether the conduct of the lower courts so far departed from the accepted and usual course of judicial proceedings and/or denied to the petitioner due process of law guaranteed by Amendment V of the United States Constitution in:
      1. Failing to enter default under Rule 55(a), Fed. R. Civ. P.;
      2. Refusing to permit discovery concerning the failure of the clerk of the district court to enter a default and the clerk's referral of the motion therefor to a magistrate judge;
      3. Failing to consider the district court's own documentation showing (1) improper interference with the operation of the clerk of the district court related to the clerk's failure to enter default and referral of the motion therefore to a magistrate judge; and (2) improper acceptance by the magistrate judge of the referral of the motion for default to deny it as moot upon an unauthorized filing by the defaulting party;
      4. Refusing to permit discovery or testimony in opposition to declarations filed in support of a claim of excusable neglect;
      5. Denying the Petitioner's right to present evidence in opposition to declarations filed in support of a claim of excusable neglect.
      6. Failing to enter default judgment under Rule 55(b), Fed. R. Civ. P.?

Cert. petition filed 4/4/13, conference 6/6/13. Petition denied 6/10/13.

CAFC OpinionCAFC Argument


David v. Monsanto, CANo. 12-1041

Questions Presented:

  1. Were the district and Federal Circuit courts correct in ruling that Monsanto’s acceptance of a check clearly noted as “payment in full,” did not constitute accord and satisfaction?
  2. Did the United States Court of Appeals for the Federal Circuit afford Loren David due process?
  3. Would a decision by the U.S. Supreme Court in Bowman justify reversal in this case under similar circumstances?

Cert. petition filed 2/13/13, conference 4/26/13. Petition denied 4/29/13.

CAFC OpinionCAFC Argument


Widex A/S and Widex USA, Inc. v. Energy Transportation Group, Inc., No. 12-1136

Questions Presented:

  1. Whether the Court of Appeals for the Federal Circuit may refuse to review a fully briefed challenge to a jury’s finding of willful patent infringement solely because the trial court did not enhance damages based on the jury’s finding, even where the finding of willfulness itself leads to serious, albeit non-pecuniary, reputational harms;
  2. Where a prior art patent discloses every structural element of a patentee’s claimed invention, and also discloses a device that performs the claimed invention’s remaining functional element, does the patentee bear a burden of proving that the device disclosed in the prior art patent would not actually perform the claimed function in order to avoid a finding that the later claimed patent is invalid under 35 U.S.C. § 102; and
  3. Where an alleged infringer has shown that the scope of coverage necessary for a patentee’s claim to cover the accused technology for purposes of infringement under the doctrine of equivalents would also sweep broadly to cover a prior art patent, does the patentee bear any burden of showing that the broadened scope of the claim would not in fact cover the prior art?

Cert. petition filed 3/19/13, waiver of respondent Energy Transportation Group, Inc. filed 3/28/13, conference 4/19/13. Petition denied 4/22/13.

CAFC OpinionCAFC Argument


Aspex Eyewear, Inc., et al. v. Altair Eyewear, Inc., No. 12-1120

Question Presented:

Under 35 U.S.C. § 103(a), a claimed invention is patentable if it would not have been “obvious” at the time it was made to a person having ordinary skill in the art. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), this Court held that obviousness is determined by looking “to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all to determine whether there was an apparent reason to combine known elements in the fashion claimed by the patent at issue.” KSR, 550 U.S. at 418. The question presented here is:

Whether the Federal Circuit effectively eliminated the standard articulated in KSR by substituting the trial court's own determination of “common sense,” a standardless and unpredictable standard.

Cert petition filed 3/13/13, waiver of respondent Altair Eyewear filed 3/21/13, conference 4/12/13. Petition denied 4/15/13.

CAFC OpinionCAFC Argument


Andrews Arts & Sciences Law, LLC, et al. v. Snowizard, Inc., No. 12-974

Question Presented:

Where patent litigation is pending in federal court, the patent-holding defendant sued the plaintiffs' attorney in state court for defamation and unfair practices for publishing an essay about the federal litigation, alleging an attempt to taint the jury pool and gain unfair advantage in the federal litigation, identifying the federal case numbers, and using the word “patent” 16 times:

Do state courts have subject-matter jurisdiction of defamation and unfair-practices collateral lawsuits against the attorney for opponents in federal-court patent litigation, which allege the attorney's actions related to the patent litigation?

Court of Appeal of Louisiana, Fifth Circuit, opinion not available. Court of Appeal of Louisiana, Fifth Circuit, argument transcript not available.

Cert. petition filed 2/4/13, waiver of respondent SnoWizard, Inc. filed 2/11/13, conference 3/15/13. Petition denied 3/18/13.


McKesson Technologies, Inc. v. Epic Systems Corp., No. 12-970

Question Presented:

Under what circumstances is a person who performs some of the steps of a patented method, in combination with another's performance of the remaining steps, liable for direct infringement of the patent?

Conditional cross petition for cert. filed 2/4/13. Petition dismissed–Rule 46 3/11/13.

CAFC OpinionCAFC Argument


Epic Systems Corp. v. McKesson Technologies, Inc., No. 12-800

Question Presented:

Whether a defendant may be held liable for inducing infringement of a patent that no one is liable for infringing.

Cert. petition filed 12/28/12. Petition dismissed–Rule 46 3/11/13.

CAFC OpinionCAFC Argument


Ninestar Technology Co., Inc., et al. v. ITC, et al., No. 12-552

Question Presented:

“The longstanding doctrine of patent exhaustion provides that the initial authorized sale of a patented item terminates all patent rights to that item.” Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 625 (2008). In Holiday v. Mattheson, 24 F. 185, 185 (C.C.S.D.N.Y. 1885), the court held that foreign sales authorized by U.S. patentees exhaust U.S. patent rights. That decision was followed for more than a century. In Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094, 1105 (Fed. Cir. 2001), however, the Federal Circuit concluded that foreign sales do not exhaust U.S. patent rights. The question presented is:

Whether the initial authorized sale outside the United States of a patented item terminates all patent rights to that item.

Cert. petition filed 11/2/12, conference 3/15/13, conference 3/22/13. Petition denied 3/25/13.

CAFC OpinionCAFC Argument


Computer Packages, Inc. v. WhitServe, LLC, et al., No. 12-833

Question Presented:

  1. Whether 35 U.S.C. § 101, which defines the subject matter that is eligible for a patent, is a jurisdictional statute.
  2. Whether a federal court must address whether a patent claims abstract ideas or mental steps, outside the scope of patentable subject matter defined by 35 U.S.C. § 101, whenever the issue comes to the court's attention.
  3. Whether Respondents' U.S. Patent Nos. 5,895,468, 6,049,801 and 6,182,078, which patent looking up due dates and notifying clients of them, claim unpatentable abstract ideas or mental steps under 35 U.S.C. § 101.

Cert. petition filed 1/4/13, waiver of respondent WhitServe, LLC filed 1/10/13, conference 2/15/13. Petition denied 2/19/13.

CAFC OpinionCAFC Argument 


Beineke v. Kappos, No. 12-580

Question Presented:

Does the plant patent statute, 35 U.S.C. §161, require that the plant be created by man?

Cert. petition filed 11/5/12, conference 1/11/13, conference 2/15/13. Petition denied 2/19/13.

CAFC OpinionCAFC Argument


Jia Jewelry Imports of America, Inc. v. Pandora Jewelry, LLC, No. 12-577

Question Presented:

Does Article III's grant of jurisdiction of “all Cases … arising under … the Laws of the United States,” implemented in the ‘actual controversy’ requirement of the Declaratory Judgment Act, §28 U.S.C. 2201(a), require the patent holder to have direct communication with the potential patent infringer before that infringer may sue to declare the patent invalid or not infringed?

Cert. petition filed 11/6/12, conference 2/15/13. Petition denied 2/19/13.

CAFC OpinionCAFC Argument


Regents of the University of California, et al. v. Caldera Pharm., Inc., No. 12-570

Questions Presented:

  1. Are a patent licensee's contract and tort claims against its licensor claims that arise under federal patent law such that they are within the exclusive jurisdiction of the federal courts when:
    1. those claims depend upon proof of infringement of a claim of a licensed patent or patent application;
    2. the patent license measures the allegedly breached obligations by reference to provisions of the federal patent laws and regulations governing practice before the United States Patent and Trademark Office; or,
    3. the licensee's claims seek to impose duties upon licensed practitioners conducting patent prosecution before the United States Patent and Trademark Office?
  2. In determining whether a patent license dispute arises under federal patent law and is within the exclusive jurisdiction of the federal courts, should the court consider the license and actual elements of proof necessary for the plaintiff to prevail on its claims?

Cert. petition filed 11/5/12, conference 2/15/13. Petition denied 2/25/13.

Cal. Supreme Court opinion not available.  Cal. Supreme Court oral argument not available.


Wang v. Plasmart Inc., No. 12-616

Question Presented:

Did the Federal Circuit have power to go outside the record to override the contrary factual findings of the United States Patent and Trademark Office and invalidate a patent solely based on its own unarticulated and unexplained view of “common sense”?

Cert. petition filed 11/13/12, waiver of federal respondent filed 12/7/12, conference 1/18/13. Petition denied 1/22/13.

CAFC OpinionCAFC Argument


Transaction Holdings, Ltd., et al. v. Kappos, No. 12-674

Question Presented:

  1. Whether the Federal Circuit erred in affirming a decision based on a definition of the term “Internet” for purposes of patent protection as consisting solely of a “public network” and not including private networks.
  2. Whether the Federal Circuit erred in affirming a decision of the Board of Patent Appeals and Interferences based on grounds which were different from those found by patent examiners and which petitioner has therefore never had an opportunity to address or rebut.

Cert. petition filed 11/29/12, waiver by respondent David Kappos filed 12/11/12, conference 1/11/13. Petition denied 1/14/13.

CAFC OpinionCAFC Argument


Apotex Inc., et al. v. Otsuka Pharma Co., Ltd., No. 12-571

Question Presented:

Under the Patent Act, “a patent may not be obtained” if its subject matter would have been “obvious” when viewed in light of the prior art. 35 U.S.C. § 103. This statutory patentability standard invalidates any patent claim that would have been obvious in view of any prior art, regardless of the technology at issue. In recent years, and continuing even after this Court's decision in KSR Int'l v. Teleflex, Inc., 550 U.S. 398 (2007), the Federal Circuit has applied a restrictive “lead compound” test for determining the obviousness of pharmaceutical compounds, which limits the scope of the prior art against which the obviousness of pharmaceutical compounds are evaluated to one or more “lead compound[s],” on the ground that a “lead compound” is “a natural choice and “most promising” … “for further development efforts”. The question presented is whether the “lead compound” requirement is consistent with the statutory command that all obvious variations of the prior art be denied patent protection, given that there will be cases in which the structural similarity between the patented compound and a prior art compound, even if not a lead, rendered the patented compound obvious.

Cert. petition filed 11/5/12, waiver of respondent Sun Pharma. Industries, Ltd. Filed 11/26/12, waiver of respondent Sandoz, Inc. filed 12/5/12, conference 1/11/13. Petition denied 1/14/13.

CAFC OpinionCAFC Argument


Mylan Pharm. Inc., et al. v. Eurand, Inc., nka Aptalis Pharmatech, Inc., et al., No. 12-514

Question Presented:

The Patent Act provides that “[a] patent may not be obtained … if 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.”35 U.S.C. § 103(a). In reviewing patent claims covering a “therapeutically effective” drug, which is a combination of a prior FDA-approved immediate-release drug and a well-known extended-release drug delivery system, the Federal Circuit, in reversing a district court holding of obviousness, held that such claims would not have been “obvious.” Specifically, the Federal Circuit created a “PK/ PD relationship” requirement to hold that one skilled in the art would have “no reasonable expectation of success” that the claimed drug was “therapeutically-effective” even though it was bioequivalent to the prior FDA-approved drug. The questions presented are:

  1. Whether the Federal Circuit erred in finding the “therapeutically effective” claims not obvious under 35 U.S.C. § 103(a) for a drug that combined a prior FDA-approved immediate-release drug and a well-known extended-release drug delivery system to create a bioequivalent extended-release formulation.
  2. Whether the court of appeals improperly relied on its newly-minted “PK/PD relationship” requirement to substitute de novo review for clear error review in order to give its finding of non-obviousness additional support.  

Cert. petition filed 10/23/12, conference 1/11/13. Petition denied 1/14/13.


CAFC OpinionCAFC Argument

W.L. Gore & Associates, Inc. v. C.R. Bard, Inc., et al., No. 12-458

Question Presented:

Title 35 U.S.C. § 116 requires two or more persons who make an invention jointly to apply for any patent jointly and provides that “[i]nventors may apply for a patent jointly even though (1) they did not physically work together or at the same time, (2) each did not make the same type or amount of contribution, or (3) each did not make a contribution to the subject matter of every claim of the patent.” Here the patented invention is a vascular prosthesis made of a novel material. Together with his staff, the developer of the material, having overseen substantial experimentation to narrow the field of potentially useful material characteristics, made a small number of sample tubes for use as prostheses. Expecting at least one of those samples to be successful for its intended purpose - but not yet aware of the exact microscopic properties that allow success - he supplied those few samples to an experimenter who confirmed one sample's success and identified its microscopic structure.

The question presented is:

Whether it is consistent with Section 116 to deny joint-inventor status to the maker of the successful material, and instead deem the experimenter the sole inventor, on the ground that the maker did not communicate to the experimenter the exact property that turned out to be key.

Cert. petition file 10/12/12, conference 1/11/13. Petition denied 1/14/13.

CAFC OpinionCAFC Argument


Rates Technology Inc. v. Speakeasy, Inc., et al., No. 12-402

Question Presented:

  1. Does the strong federal policy favoring settlements, including of patent disputes, outweigh the public's interest in challenges to allegedly invalid patents such that the rationale behind the holding in Lear, Inc. v. Adkins, 395 U.S. 653 (1969), which case rejected implied-at-law “licensee estoppel” defenses to patent invalidity challenges, does not mandate invalidation of “no-challenge” provisions in settlement agreements even where they are clear and unambiguous, and resolve bona fide infringement claims without litigation?
  2. Does the Second Circuit's decision sought to be reviewed create a conflict with the most recent decisions of the Federal Circuit recognizing the enforceability of clear and unambiguous “no-challenge” provisions in agreements settling patent infringement claims prior to and in avoidance of patent invalidity litigation, and should that conflict be resolved in favor of the Federal Circuit's view that such provisions may be enforced?
  3. To the extent that the rationale expressed 43 years ago in Lear was applied correctly by the Second Circuit, do considerations of vital public interest, including especially the strong federal policy favoring settlement, warrant reconsideration of Lear's policy articulations to the limited extent necessary to permit enforcement of clear and unambiguous “no-challenge” provisions in agreements settling bona fide patent infringement claims without litigation?

Cert. petition filed 9/28/12, waiver by respondent MegaPath, Inc. filed 10/16/12, waiver by respondent Speakeasy, Inc. filed 10/23/12, response requested 11/7/12, conference 1/11/13. Petition denied 1/14/13.

CA2 Opinion, CA2 Argument Not Available


GlaxoSmithKline v. Classen Immunotherapies, Inc., No. 11-1078

Question Presented:

Congress has created a statutory safe harbor from patent-infringement liability for otherwise-infringing conduct that is “reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs.” 35 U.S.C. § 271(e)(1). In this case, the Federal Circuit concluded that this safe harbor “is limited to activities conducted to obtain pre-marketing approval of generic counterparts.” Pet. App. 27a. The question presented is:

Whether the Federal Circuit's interpretation of § 271(e)(1), which arbitrarily restricts the safe harbor to preapproval activities, is faithful to statutory text that contains no such limitation, and decisions of this Court rejecting similar efforts to impose extra-textual limitations on the statute.

Cert. petition filed 2/28/12, response requested 4/23/12, conference 6/21/12, CVSG 6/25/12, conference 1/11/13. Petition denied 1/14/13.

CAFC OpinionCAFC Argument


Leader Technologies, Inc. v. Facebook, Inc., No. 12-617

Question Presented:

The United States Court of Appeals for the Federal Circuit stepped outside the boundaries of its appellate role, as it has done with alarming frequency the past few years, and assumed the role as fact-finder in adjudicating Leader Technologies, Inc.'s patent invalid. As an intermediate federal appellate court, the Federal Circuit is not a trial court, but nonetheless acted as one in the present case and engaged in a form of decision-making at odds with traditional notions of appellate review. The proper role of an appellate court is to decide appeals from the lower court, and should do so based on the decision below and on the arguments presented by the parties below. In far too many instances, however, the Federal Circuit, as it did in this case, takes upon itself to consider evidence not argued to the lower court, disregard the fact-finding below, disregard binding precedent of this Court, and goes beyond the factual record presented to the proper trier of fact in order to engage in its own fact-finding, evidentiary weighing, and advocacy. Not only does this type of appellant court advocacy encourage litigants to retry cases at the appellate level, but more importantly, it denies litigants their due process rights.

The questions presented are:

  1. Whether the Federal Circuit violates a litigant's procedural due process rights when it steps outside its appellant role and engages in independent fact-finding, and to what extent it can ignore Rule 52(a) in substituting its view of the factual issues for that of the district courts.
  2. Whether the Federal Circuit can disregard Supreme Court precedent on interpretation of verb tense when applied to patent law, or alternatively, construe patent-related Supreme Court precedent in such a way to vitiate this Court's holdings.

Cert. petition filed 11/14/12, waiver by respondent Facebook, Inc. filed 11/19/12, conference 1/4/13. Petition denied 1/7/13.

CAFC OpinionCAFC Argument


Trans Video Electronics, Ltd. v. Sony Electronics Inc., et al., No. 12-575

Question Presented:

  1. Whether 35 U.S.C. § 112, first paragraph, which requires that the sufficiency of a patent claim's written description is to be assessed from the perspective of a person of skill in the art, nevertheless warrants, as a matter of law, excluding a disclosed embodiment within a patent, including any pertinent figure and accompanying disclosure, from the source of potential written description for the claim on the grounds that the embodiment lacks each and every feature recited in the claim.
  2. If the subject matter of a claim is the combination of two or more disclosed embodiments that would have been obvious to one of ordinary skill in the art from the disclosed embodiments, is written description satisfied?

Cert. petition filed 11/6/12, waiver by respondent Sony Electronics, et al. filed 11/30/12, conference 1/4/13. Petition denied 1/7/13.

CAFC OpinionCAFC Argument


Three-Dimensional Media Group, Ltd. v. Kappos, No. 12-48

Question Presented:

In Markman v. Westview Instruments, this Court afforded the power of construing the meaning of patent claim terms to judges. Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996). The justification for this Court's decision in Markman was in large part to provide uniformity and consistency to the interpretation of a patent's exclusive rights. Id. at 390-91. Unfortunately, the United States Court of Appeals for the Federal Circuit has failed in this endeavor, wreaking confusion and uncertainty on the patent system. In particular, the Federal Circuit refused to elaborate the proper standard for when and to what extent it is appropriate to limit the scope of a claim based upon the specification.

The Federal Circuit's abdication of its role is particularly salient here, where the court simply refused to consider the claim construction issue, notwithstanding inconsistent interpretations of the same patent by the Patent Examiner, the Board of Patent Appeals and Interferences, and a district court in a related litigation.

The questions thus presented are:

  1. when and to what extent is it appropriate to narrow the scope of a patent claim based upon the specification and
  2. has the Federal Circuit's failure to clarify the reach of the Broadest Reasonable Interpretation standard led to an unwarranted expansion of the standard's application by the Board of Patent Appeals and Interferences?

Cert. petition filed 7/9/12, waiver by respondent Kappos filed 8/6/12, response requested 8/14/12, conference 11/20/12, conference 1/4/13. Petition denied 1/7/13.

CAFC OpinionCAFC Argument


Becton Dickinson and Co. v. Retractable Technologies, Inc., No. 11-1278 (Vide 11-1154)

Question Presented:

Retractable Technologies, Inc. and Thomas J. Shaw (collectively, “RTI”) have filed a petition for a writ of certiorari seeking review of the method that the United States Court of Appeals for the Federal Circuit used to construe the term “body” in patents owned by RTI. Specifically, RTI argues that the clear statements in the specification defining the “invention” as having a “one piece hollow outer body,” criticizing the “two-piece” designs in the prior art, and touting the benefits of a one-piece design were not sufficient to show that the term “body,” as used in the patent claims, refers to a one-piece body.

If RTI's petition is granted, the Court should also consider the following questions, which provide alternative grounds for affirmance:

  1. Whether the Federal Circuit's construction of the “lodging” limitation should be reversed because, at RTI's urging, the Federal Circuit deviated from the term's clear meaning on far weaker grounds than the court relied on to construe the ambiguous term “body.”
  2. Whether the Federal Circuit's construction of the “retainer member” limitation should be reversed because, at RTI's urging, the Federal Circuit deviated from the term's clear meaning on far weaker grounds than the court relied on to construe the ambiguous term “body.”
  3. Whether the Federal Circuit's holding that the asserted claims cover devices that work by cutting should be reversed because, at RTI's urging, the Federal Circuit disregarded a clear disclaimer of claim scope on far weaker grounds than the court relied on to construe the ambiguous term “body.”

Cert. petition filed 4/23/12, conference 6/21/12, conference 6/28/12, conference 1/4/13. Petition denied 1/7/13.

CAFC OpinionCAFC Argument


Retractable Technologies, Inc. v. Becton, Dickinson & Co., No. 11-1154 (Vide 11-1278)

Question Presented:

  1. Whether a court may depart from the plain and ordinary meaning of a term in a patent claim based on language in the patent specification, where the patentee has neither expressly disavowed the plain meaning of the claim term nor expressly defined the term in a way that differs from its plain meaning.
  2. Whether claim construction, including underlying factual issues that are integral to claim construction, is a purely legal question subject to de novo review on appeal.

Cert. petition filed 3/20/12, conference 6/21/12, conference 6/28/12, CVSG 6/29/12, conference 1/4/13. Petition denied 1/7/13.

CAFC OpinionCAFC Argument

WilmerHale represents respondent Becton Dickinson.


2012


Montgomery, et al. v. Kappos, No. 12-182

Question Presented:

Undisputed facts produce either of two contradictory outcomes at The Court of Appeals for the Federal Circuit because different judges apply conflicting rules for “inherent anticipation.” The Circuit acknowledges this intra-Circuit conflict, yet has rebuffed every request to resolve the conflict en banc. Petitioner thus asks this Court to do so. The question presented is:

Whether a research proposal which was never in fact performed can, as a matter of law, inherently anticipate a patent claim underTilghman v. Proctor, 102 U.S. 707 (1880)?

Cert. petition filed 8/6/12, conference 12/7/12. Petition denied 12/10/12.

CAFC OpinionCAFC Argument


Picture Patents LLC, et al. v. Aeropostale, Inc., et al., No. 12-339

Question Presented:

In FilmTec Corp. v. Allied-Signal, Inc., 939 F.2d 1568 (Fed. Cir. 1991), the Federal Circuit ruled without explanation that an agreement for the assignment of inventions that uses the words “hereby assign” effects a present assignment of future inventions even though those inventions have not been conceived and do not exist at the time the agreement is signed.

The question presented is whether FilmTec's “automatic assignment” rule should be overruled given the doubts about its validity expressed by three Justices of the United States Supreme Court in Bd. of Trustees of the Leland Stanford Jr. University v. Roche Molecular Sys., Inc., 131 S. Ct. 2188, 2199 & 2203 (2011), and in light of the reservation of that issue by the Court's Opinion therein. Id. at 2194, n.2.

Cert. petition filed 9/17/12, conference 11/20/12. Petition denied 11/26/12.

CAFC OpinionCAFC Argument


The California Table Grape Commission v. Delano Farms Company, et al., No. 11-1371

Question Presented:

The United States Court of Appeals for the Federal Circuit held that the waiver of sovereign immunity in the Administrative Procedure Act, 5 U.S.C. § 702, applies to a declaratory judgment action under the Patent Act that challenges the validity of patents owned by the United States. The question presented is:

Does the waiver of sovereign immunity in 5 U.S.C. § 702 apply to a claim that does not challenge the legality of “agency action” or “final agency action” within the meaning of the Administrative Procedure Act - or even any government action or inaction of any kind - but instead challenges the validity of government owned property based solely on actions by private parties?

Cert. petition filed 5/11/12, waiver of respondent Delano Farms Company filed 6/11/12, respond requested 9/18/12, conference 11/20/12. Petition denied 11/26/12.

CAFC OpinionCAFC Argument.

WilmerHale represents petitioner California Table Grape Commission.


Allergan, Inc., et al. v. Watson Laboratories, Inc., et al., No. 12-342

Question Presented:

Under 35 U.S.C. § 103(a), an invention is patentable unless the differences between the invention and what was known in the prior art are such that the invention would have been “obvious” at the time it was made to a person having ordinary skill in the art.

The Federal Circuit has held that for an invention to have been obvious, the prior art must have given the skilled artisan a “reasonable expectation” that he would succeed at achieving the claimed invention, and it has treated the question of whether such a “reasonable expectation” existed as a question of fact. Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348, 1361 (Fed. Cir. 2007).

In Graham v. John Deere Co., 383 U.S. 1 (1966), this Court held “the ultimate question of patent validity is one of law” that depends on several “basic factual inquiries.” In Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238 (2011), three Justices stressed the importance of “separating [the] factual and legal aspects of an invalidity claim.” Id. at 2253 (Breyer, J., concurring).

The question presented is as follows:

Is it a question of law whether a given likelihood that an invention would succeed is sufficient to establish the invention was obvious, and, if so, what factors may be considered in determining whether that likelihood is sufficient to show obviousness in a given case?

Cert. petition filed 9/17/12, waiver by respondents Sandoz, Inc. filed 9/25/12, waiver by respondents Watson Labs., Inc.-Florida filed 9/25/12, waiver by respondents Paddock Labs filed 9/25/12, conference 10/12/12. Petition denied 10/15/12.

CAFC OpinionCAFC Argument


Nova Chemicals Corp. (Canada), et al. v. The Dow Chemical Co., No. 12-243

Questions Presented:

  1. Whether the Federal Circuit improperly created a special rule in patent infringement cases that shifts to the defendant the burden of proof to disprove standing.
  2. Whether the Federal Circuit's test for patent indefiniteness, which upholds claims as long as their meaning “ ‘is discernible [by a reviewing court], even though the task may be formidable and the conclusion may be one over which reason-able persons will disagree,’ ” effectively eliminates the Patent Act's requirement that claims be definite and this Court's longstanding precedent that patent claim descriptions be neither vague nor ambiguous.

Cert. petition filed 8/23/12, conference 10/26/12. Petition denied 10/29/12.

CAFC OpinionCAFC Argument

WilmerHale represents petitioner Nova Chemicals Corp.


ClearValue, Inc., et al. v. Pearl River Polymers, Inc., et al., No 12-212

Question Presented:

Section 282 of the Patent Act provides that “[a] patent shall be presumed valid.” 35 U.S.C. § 282. This Court held in Microsoft Corp. v. i4i Ltd. Partnership, 131 S. Ct. 2238 (2011), that this presumption is not merely a procedural device to shift the burden of proof, but is substantive in nature and requires proof of invalidity by clear and convincing evidence. The jury in this case found Petitioners' patent valid. Despite § 282, the court of appeals nullified that finding and invalidated the patent, holding that there was no “substantial evidence” to support the jury's finding. The question presented is:

Whether 35 U.S.C. § 282 and the Seventh Amendment require conclusive proof of invalidity as a matter of law in order to overturn a jury's finding upholding the patent, or whether a lesser showing will suffice.

Cert. petition filed 8/16/12, waiver by respondent Pearl River Polymers filed 8/24/12, response requested 9/6/12, conference 11/9/12.Petition denied 11/13/12.

CAFC OpinionCAFC Argument


John Mezzalingua Associates, Inc. (dba PPC) v. ITC, No. 11-1427

Questions Presented:

  1. Whether the ITC acted cursorily and capriciously in finding that PPC's substantial investment in engineering, research and development for the EX product was minimally attributable to its design patent, U.S. Pat. No. D440, 539 (“the '539 patent”), thus precluding satisfaction of the domestic industry requirement under 19 U.S.C. Sec. 1337 (a)(3)(C) and, thereby, arbitrarily diminishing the availability of Section 337 relief, including for design patents generally?
  2. Whether the ITC's interpretation of “exploitation” in section 337(a)(3)(C) was unduly narrow and manifestly contrary to the plain meaning of the language of that statute which compels this term to be read broadly in accordance with its text, thereby artificially and arbitrarily narrowing the domestic industry requirement to the detriment of PPC and other patent owners similarly situated?
  3. Whether it was error for the ITC, in its capacity as an administrator of an important intellectual property statute, 19 U.S.C. Sec. 1337, to place an undue expectation of trade-related or production-related activity upon PPC's '539 patent when analyzing the domestic industry requirement, thereby improperly limiting section 337 relief including for patents generally?
  4. Whether litigation, undertaken to enforce patent rights and enhance the value of a patent or pave the way for a stronger competitive advantage, constitutes a substantial investment in exploitation under section 337(a)(3)(C), regardless of that activity's relationship to licensing, engineering, research or production, such that it was error for the ITC to exclude PPC's litigation costs untethered to licensing when considering whether PPC had established a domestic industry for the '539 patent?
  5. Whether litigation activities alone can support a finding of a substantial investment in exploitation under section 337(a)(3)(C)?

Cert. petition filed 3/7/12, waiver of respondent ITC filed 6/6/12, conference 9/24/12, response requested 7/6/12, conference 10/5/12.Petition denied 10/9/12.

CAFC Opinion


Collins, et al. v. Kappos, No. 12-57

Questions Presented:

The patent system provides for the protection of inventions to promote the progress of science and the useful arts. In order for the proper scope of an invention to be protected, the United States Patent and Trademark Office (hereinafter “USPTO”) and U.S. Court of Appeals (hereinafter “Federal Circuit”) must explain why a patent claim has been rejected. The Federal Circuit has explicitly stated that the USPTO has not properly rejected the patent claims in this case, yet affirmed the rejection of the claims without providing any reason.

This situation highlights a lack of due process afforded inventors.

The questions presented, therefore, are:

  1. Whether denying an inventor a patent claim without explanation is a violation of due process?
  2. Whether a rejection of a claim for one reason by the USPTO or Board of Patent Appeals and Interferences of the USPTO (hereinafter “Board”) may be affirmed for a completely different reason by the Federal Circuit?
  3. Whether using a “capable of” standard is proper when rejecting a claim?

Cert. petition filed 7/10/12, waiver by respondent Kappos filed 7/23/12, conference 9/24/12. Petition denied 10/1/12.

CAFC OpinionCAFC Argument


Rudy v. Kappos, No. 11-1408

Questions Presented:

Utility patent claims are composed of parts, i.e., elements, which, taken together, define the invention patented or, during examination before the Patent and Trademark Office (PTO), sought to be patented. The claims of most if not all patented articles of manufacture are new combinations of old elements, features or principles. Combinations that are obvious over the prior art are not patentable.

The questions presented are as follows:

  1. Whether the Federal Circuit's rule of obviousness that a claimed invention, which includes as elements “printed matter” and a substrate on which the “printed matter” resides, cannot be granted a utility patent under 35 USC 103(a) if the sole difference between the prior art and the claim is the “printed matter,” unless the “printed matter” bears a functional, mechanical relationship to the substrate, violates the statute.
  2. Whether a claimed combination including a substrate and “printed matter” not bearing a functional, mechanical relationship to the substrate, yet providing more together than either the substrate or “printed matter” element alone provides in view of the prior art, is not obvious and therefore, taken as a whole, is patentable under 35 USC 103(a).

Cert. petition filed 5/21/12, conference 9/24/12. Petition denied 10/1/12.

CAFC OpinionCAFC Agrument.


R. J. Reynolds Tobacco Co., et al. v. Star Scientific, Inc., No. 11-1182

Question Presented:

The Patent Act requires that a patent application include claims “particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 ¶ 2. This Court has made clear that this definiteness requirement demands that a valid patent inform the public during the life of the patent of the limits of the monopoly asserted - that is, what may be safely used or manufactured without a license. Such practical notice of the patent's claim limits is necessary, inter alia, to avoid chilling the inventive creativity of others.

In recent years, the Federal Circuit has adopted a definiteness standard demanding only that patent claims not be “insolubly ambiguous,” which test it has often found satisfied if the claims are “amenable to construction,” however difficult the task or debatable the result. The question presented is:

Whether the Federal Circuit's insolubly ambiguous/amenable-to-construction test for patent definiteness, which upholds patents whose construed claims fail to inform a skilled artisan of the outer limits of the claimed monopoly, faithfully implements § 112 ¶ 2 as interpreted by the decisions of this Court.

Cert. petition filed 3/28/12, conference 9/24/12. Petition dismissed–Rule 46 9/21/12.

CAFC OpinionCAFC Argument


Memorylink Corp. v. Motorola, Inc., et al., No. 11-1356

Questions Presented:

For over 70 years, federal courts hearing state-law claims must apply state law, even if even if it is irrational or bad public policy. Erie Railroad Co. v. Tompkins, 304 U.S. 64, 58 S. Ct. 817, 82 L. Ed. 1188 (1938). Here, the Federal Circuit Court of Appeals - the only federal appellate court without diversity jurisdiction - upheld the dismissal of a state-law claim without opinion, while the district court's 12(b)(6) dismissal on the pleadings ignored the controlling Illinois Supreme Court authority. This Petition presents two questions:

  1. Does the Federal Circuit's jurisdictional grab over state-law patent-attorney malpractice claims comply with this Court's federalism analysis in Christianson v. Colt Indus. Operating Corp., 486 U.S. 800 (1988) and its progeny?[FN1] FN1. The question of “arising under” federal jurisdiction also is presented in a certiorari petition to the Texas Supreme Court pending before this Court in No. 11-1118, Gunn et al. v. Minton (Docketed 13 March 2012).
  2. Did the Federal Circuit's lack of experience with federalism analysis result in a violation of Petitioner's Constitutional Rights under Erie Railroad?

Cert. petition filed 4/26/12, waiver by respondents Motorola, Inc., et al filed 5/14/12, conference 5/31/12. Petition denied 6/4/12.

CAFC OpinionCAFC Argument.


Tessera, Inc. v. ITC, et al., No. 11-903

Questions Presented:

Whether a patent license may make the subsequent payment of royalties by the licensee a condition of the licensee’s authority to sell infringing products.

Cert. petition filed 12/28/11, conference 5/24/12. Petition denied 5/29/12.

CAFC OpinionCAFC Argument


Saint-Gobain Ceramics & Plastics, Inc. v. Siemens Medical Solutions USA, Inc., No. 11-301

Questions Presented:

  1. Whether the Patent and Trademark Office's (PTO) presumptively valid finding that an invention is not obvious and is thus patentable over a prior art patent is impermissibly nullified or undermined when a jury is allowed to find, by a mere preponderance of the evidence, that the patented invention is "insubstantially different" from the very same prior art patent, and thus infringes that prior art patent under the "doctrine of equivalents."
  2. Whether, as the dissent below warned, the Federal Circuit's failure to impose a heightened evidentiary standard to ensure that juries do not use the doctrine of equivalents to override the PTO's presumptively valid non-obvious determinations undermines the reasonable reliance of competitors and investors on such PTO determinations, thereby intolerably increasing uncertainty over claim scope, fostering litigation, "deter[ring] innovation and hamper[ing] legitimate competition." App. 89a (Dyk, J., dissenting from the denial of rehearing en banc).

Cert petition filed 9/6/11.

Conference 11/4/11, CVSG 11/7/11, brief amicuscuriae of United States filed 4/25/12, conference 5/24/12. Petition denied 5/29/12.

CAFC OpinionCAFC Argument


Yufa v. Kappos, No. 11-1253

Questions Presented:

  1. Whether the United States Court of Appeals for the Federal Circuit has erred in holding that a claimed invention can be held “obvious”, and thus unpatentable under 35 U.S.C. § 103(a), on the grounds of a combination of the subject matter, described in the embodiment section of a single prior art reference, with the subject matter criticized and discredited as a “drawback” in the background section of the same single prior art reference?
  2. Whether the United States Court of Appeals for the Federal Circuit has erred in holding that a claimed invention can be held “obvious”, and thus unpatentable under 35 U.S.C. § 103(a), on the grounds of the reasoning of “obviousness”, wherein said reasoning with its own words “criticizes, discredits, or otherwise discourages” the claimed invention?

Cert. petition filed 4/17/12, waiver by respondent David J. Kappos, Director Patent & Trademark Office, filed 4/25/12, conference 5/17/12. Petition denied 5/21/12.

CAFC Opinion


Research & Diagnostic Systems, Inc., et al., v. Streck, Inc., No. 11-1212

Questions Presented:

When a party chooses to appeal a decision in an interference by the Board of Patent Appeals and Interferences (“Board”), it may choose to seek review either directly to the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) under 35 U.S.C. § 141 (“Section 141”), or to a United States District Court, under 35 U.S.C. § 146 (“Section 146”). When the appeal is taken directly to the Federal Circuit under Section 141, the appeal is decided strictly on the administrative record. However, when the review is sought in a district court under Section 146, the statute permits the parties to introduce additional evidence which was not presented before the Board. The questions presented are as follows:

  1. Whether, when any new evidence is introduced under Section 146, “the district court may decide de novo the factual questions to which the evidence pertains, without giving deference to the prior decision of the PTO.” See Kappos v. Hyatt, No. 10-1219 (second question presented, argued on January 9, 2012, presently awaiting decision, but relating to parallel 35 U.S.C. § 145 (“Section 145”) rather than Section 146).
  2. Whether, when new evidence is introduced in an action under Section 146 that does not conflict with the record before the Board, the district court must give deference to the Board's factual findings and apply the Administrative Procedure Act's substantial evidence standard of review.

Cert. petition filed 4/9/12, waiver by respondent Streck, Inc. filed 4/23/12, conference 5/17/12. Petition denied 5/21/12.

CAFC OpinionCAFC Argument


Gardner v. Kappos, No. 11-1195

Question Presented:

Whether the Federal Circuit has erred in holding a combination of pre-existing elements unpatentable under 35 U.S.C. § 103(a) providing a synergistic result, an effect greater than the sum of several effects taken separately while solely and consistently being limited to applying the vague standard of what would be obvious to the hypothetical “person having ordinary skill in the art” without regard to the importance of secondary evidence relative to the issue of obviousness where petitioner has established a nexus between the merits of the claimed invention and the proffered evidence of secondary considerations.

Cert. petition filed 1/23/12, waiver by respondent David Kappos filed 4/11/12, conference 5/10/12. Petition denied 5/14/12.

CAFC Opinion


Zimmerman v. Flagstar Bancorp, No. 11-1112

Question Presented:

Did the Federal Circuit err in construing the patent claim terms in this case because it employs different methodologies to construe claims rather than employing a single methodology providing the uniformity required by this Court's decision in Markman, et al. v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996)?

Cert. petition filed 1/9/12, waiver by respondent Flagstar Bancorp filed 4/10/12, conference 5/10/12. Petition denied 5/14/12.

CAFC OpinionCAFC Agrument


Kim v. The Earthgrains Company, No. 11-1106

Questions Presented:

  1. Whether applicable law by Justice Souter and ruling in Phillips is adopted to construe the claim construction of RE36,355 F1 patent by the Court of Appeals' Decision.
  2. Whether the courts' decision taking away the jury verdict is in violation of petitioner's Seventh Amendment Constitutional Right by making the completely unsupported and erroneous fact finding that potassium bromate replacer is a substitute in the production of bread as potassium bromate.
  3. Whether extensive objective evidence was introduced to prove PBR as a functional replacement for PB, but the courts have failed to grasp the technical subject matter, reaching a determination as to non-infringement and further failing to secure inventors the exclusive rights to their respective discoveries as our Constitution rightly states, U.S. Constitution, Article 1, Section 8, and Clause 8.
  4. Whether the Appeals and District courts have further deprived the petitioner of due process by relying on the clearly erroneous fact finding to rule that the change in this transitional phrase was required by the Reexaminer to overcome prior art.
  5. Whether the Court of Appeals granted defendant's motion on Applicable Damages Period by ruling that the use of “consisting of” or “present” narrowed the claim scope of RE36,355 F1 patent.

Cert. petition filed 3/7/12, waiver filed by respondent The Earthgrains Co. 4/3/12, conference 4/27/12. Petition denied 4/30/12.

CAFC Opinion


Genetics Institute, LLC v. Novartis Vaccines and Diagnostics, Inc., No. 11-1079

Question Presented:

In a dramatic shift from established principles of patent law, the Federal Circuit upheld the validity of Respondent's patent claims based on a feature that was discovered by third parties, long after the patent application was filed, and was neither disclosed nor claimed by the patentee at the time of the invention.

Petitioner owns a patent related to cloning synthetic blood clotting proteins, and sued to have later, overlapping patent claims issued to Respondent declared invalid. Over a vigorous dissent by Judge Dyk, a divided panel of the Federal Circuit held that Respondent's patented claims were not obvious in light of Petitioner's claims. The majority credited Respondent with a discovery on the basis of “unexpected results” based on a feature that was not expressly or inherently disclosed or claimed and was discovered by others long after Respondent applied for its patents. That holding disregards fundamental principles of patent law, including that an invention must not have “been obvious at the time the invention was made,” 35 U.S.C. 103(a), that the elements of the invention must be set forth in the claims, and that only the person responsible for the underlying discovery may obtain a patent for that discovery. U.S. Const. art. I, § 8, cl. 8; 35 U.S.C. 101.

The question presented is:

Whether a patentee may rely, as evidence of the nonobviousness of his invention, on an undisclosed and unclaimed feature that does not flow inherently from the claims, which he did not and could not know at the time of the patent application's filing, and which was discovered separately, years after the patent application was filed, from research conducted by others.

Cert. petition filed 2/28/12, conference 4/13/12. Petition denied 4/16/12.

CAFC OpinionCAFC Argument


GEO Foundation, Ltd. v. Costco Wholesale Corp., et al., No. 11-984

Question Presented:

Whether the unclean-hands doctrine empowers a federal court to nullify valid patent-property rights asserted by an innocent transferee, rather than merely deny relief to the party with unclean hands.

Cert. petition filed 2/8/12, conference 4/13/12. Petition denied 4/16/12.

Waiver filed by respondent Ikea Illinois, LLC 3/8/12, waiver filed by respondent Wal-Mart Stores, Inc. 3/8/12, waiver filed by respondent Costco Wholesale Corp. 3/8/12, waiver filed by respondent Lowes Home Centers, Inc. 3/14/12.

CAFC OpinionCAFC Argument


Apotex, Inc. v. Allergan, Inc., et al., No. 11-800

Questions Presented:

In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), this Court made clear that a patent claim may be “obvious” and therefore invalid under 35 U.S.C. § 103(a) if the claimed invention would have been “obvious to try” given the state of the prior art to a person with ordinary skill in the relevant field. The Court also emphasized that “[t]he ultimate judgment of obviousness is a legal determination.” 550 U.S. at 427. The questions presented are:

  1. Whether the Federal Circuit, in conflict with KSR, effectively gutted the “obvious to try” standard by holding that it could not be satisfied in this case (involving the combination of two previously patented eyedrop solutions that were already routinely used together by patients) because, among other things, (a) it was possible that the two ingredients might be incompatible or ineffectual when combined in a single solution, (b) this particular combination was not shown to have been an “anticipated success,” and (c) the inventors themselves testified in support of their patent that they were “surprised” that the combination of the two products worked in light of “concerns” they had.
  2. Whether the Federal Circuit erroneously treats as a factual finding, reviewable only deferentially on appeal, a trial court's determination that a person of ordinary skill in the art would not have believed a claimed invention to be “obvious” or “obvious to try” or been motivated (by common sense or prior art) to combine particular references.

Cert. petition filed 12/21/11, conference 3/23/12. Petition denied 3/26/12.

CAFC OpinionCAFC Argument


Apotex, Inc., et al. v. Unigene Laboratories, Inc., et al., No. 11-879

Question Presented:

In KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), this Court rejected the use of “mandatory formulas” to determine whether a patent would have been obvious under 35 U.S.C. § 103 and instructed that courts must take an “expansive and flexible approach” to the obviousness inquiry in all patent cases. Despite those clear directives, the Federal Circuit has continued to apply an inflexible and formalistic “lead compound” test as the exclusive standard for determining obviousness of chemical compositions. The question presented is:

Whether the Federal Circuit's rigid application of the “lead compound” test to determine whether a patent directed to a chemical composition would have been obvious under 35 U.S.C. § 103 conflicts with KSR and impermissibly creates different patentability standards for chemical and nonchemical inventions.

Cert. petition filed 1/13/12, conference 3/16/12. Petition denied 3/19/12.

CAFC OpinionCAFC Argument


Aerotel, Ltd. v. Telco Group, Inc., et al., No. 11-871

Question Presented:

The 1952 Patent Act authorizes patent claims that describe “[a]n element in a claim … as a means … for performing a specified function without the recital of structure.” 35 U.S.C. 112, ¶ 6 (emphasis added). When drafted this way, the “claim shall be construed to cover the corresponding structure … described in the specification and equivalents thereof.” Ibid. (emphasis added). Congress endorsed this special manner of drafting “means” claims to remove the doubt that this Court's decision in Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), had cast on using functional language in claims.

Although this Court has never construed a “means-plus-function” patent claim, the Federal Circuit, prior to this appeal, has recognized that the language of Paragraph 6 requires that such claims be construed in a multi-step process. The court first identifies the function based on the ordinary meaning of the words recited in the claim itself. Only thereafter does the court identify the structures disclosed in the specification that correspond to the claimed function. A means-plus-function claim covers all disclosed structures as well as equivalent structures. Micro Chem., Inc. v. Great Plains Chem. Co., 194 F.3d 1250, 1258 (Fed. Cir. 1999).

The question presented is whether a court errs when, as in this case, it conflates the multiple steps for construing means-plus-function claims and narrows the ordinary meaning of the claimed function by reading into it limitations of a disclosed embodiment, thereby effectively eliminating the benefits of a means-plus-function type of claim that Congress endorsed in Section 112, ¶ 6.

Cert. petition filed 1/11/12. Petition denied 3/19/12.

Waiver of respondents Telco Group filed 2/2/12, waiver of respondents Radiant Telecom Inc. filed 2/8/12, conference 3/16/12.

CAFC OpinionCAFC Argument


Kastner v. Chet's Shoes, Inc., No. 11-776

Question Presented:

Whether the U.S. Court of Appeals for the Federal Circuit can properly affirm an obviously incorrect district court holding with the single word, Affirmed, thereby leaving the appellant completely without knowledge as to the basis for the affirmance.

Cert. petition filed 12/20/11, conference 2/17/12. Petition denied 2/21/12.

CAFC OpinionCAFC Argument


Janssen Biotech, Inc., et al. v. Abbott Laboratories, et al., No. 11-596

Question Presented:

The Patent Act provides, in relevant part:

The specification [for a patent] shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same. 35 U.S.C. § 112 (2010).

The Federal Circuit has read into Section 112 a “written description” mandate that goes beyond disclosing the invention and enabling others to make and use it. The question presented is:

Whether Section 112 forecloses the Federal Circuit’s written-description mandate, which in implementation (i) has required a heightened, actual-reduction-to-practice standard for biotechnology patents, (ii) has licensed de novo appellate review of what the Federal Circuit labels a fact question, and (iii) has led to substantial unpredictability and instability in patent protection.

Cert. petition filed 11/10/11, conference 2/7/12. Petition denied 2/21/12.

CAFC OpinionCAFC Argument


WilmerHale represents respondent Abbott Laboratories

Eastman Chemical Co. v. Wellman, Inc., No. 11-584

Question Presented:

Whether the legal standard for patent indefiniteness is an artificial and blunt rule assessing whether patent claims are “amenable to construction,” or a more textually grounded and nuanced rule assessing whether the patent notifies a skilled artisan of the bounds of the patent claims and what would infringe those claims.

Cert. petition filed 11/9/11, conference 2/17/12. Petition denied 2/21/12.

CAFC OpinionCAFC Argument


Hynix Semiconductor Inc., et al. v. Rambus Inc., No. 11-549

Questions Presented:

  1. Whether principles of equity recognized in Miller v. Brass Co., 104 U.S. 350 (1882), and Woodbridge v. United States, 263 U.S. 50 (1923), foreclose the infringement claims of a participant in a standard-setting organization that conceals its pending applications while secretly amending its claims to cover the emerging standard; delays the issuance of its amended claims until after it has exited the organization; and then alleges that standard-compliant products infringe claims descending from the concealed applications.
  2. Whether the specification and the prosecution history of a patent are the principal guides to construction of the patent's claims, as the Federal Circuit held in Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), or whether the specification and the prosecution history are relevant only if they amount to a "clear disclaimer or disavowal" of the dictionary meaning of claim terms, as the Federal Circuit held in this case.

Cert petition filed 10/27/11, conference 2/17/12. Petition denied 2/21/12.

CAFC OpinionCAFC Argument


Kimberly-Clark Worldwide, Inc., et al. v. First Quality Baby Products, LLC, et al., No. 11-605

Question Presented:

Whether preliminary injunctions in patent infringement lawsuits should be governed by the same equitable principles that govern all other cases, instead of the Federal Circuit’s patent-specific standard, under which a preliminary injunction may not be entered where an accused infringer has raised a “substantial question” as to the validity of an asserted patent claim and the patentee has not shown that the accused infringer’s defense “lacks substantial merit,” regardless of the patentee’s likelihood of success on the merits and the court’s assessment of the other equitable factors.

Cert. petition filed 11/10/11, conference 1/20/12. Petition denied 1/23/12.

CAFC OpinionCAFC Argument


2011


Spansion, Inc., et al. v. ITC, et al., No. 11-127

Questions Presented:

  1. Whether the petition should be granted, the decision below vacated, and the case remanded, in light of Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011).
  2. Whether the asserted patent claims, which were unlimited by any objective standard, are invalid as indefinite.

Cert petition filed 7/27/11. Petition denied 11/28/11.

CAFC OpinionCAFC Argument


Qualcomm Inc. v. ITC, No. 11-128

Questions Presented:

  1. To be liable for contributory infringement of a patent under 35 U.S.C. § 271(c), must the defendant know that the component it sells is used in a combination that infringes the patent, as this Court held in Aro Manufacturing Co. v. Convertible Top Replacement Co., 377 U.S. 476 (1964), and recently reaffirmed in Global-Tech Appliances, Inc. v. SEB, S.A., 131 S. Ct. 2060 (2011)?
  2. Is a patent claim defined in terms of function and unlimited by any objective standard invalid under 35 U.S.C. § 112?

Cert petition filed 7/27/11. Petition denied 11/28/11.

CAFC OpinionCAFC Argument


Barr Laboratories, Inc., et al. v. Cancer Research Technology Ltd., et al., No. 11-131

Questions Presented:

  1. Whether the defense of prosecution laches requires an accused infringer to prove intervening rights, where the patent applicants unreasonably delayed prosecution of their application, thereby extending the term of their patent.
  2. Whether, in analyzing whether a patent is unenforceable due to inequitable conduct, the finder of fact may rely on the same piece of evidence as proof of both materiality and intent.

Cert petition filed 7/28/11.

Conference 10/28/11. Petition denied 10/31/11.

CAFC OpinionCAFC Argument


APP Pharmaceuticals, LLC v. Navinta LLC, No. 10-1502

Question Presented:

Did the Federal Circuit err in creating a new body of federal common law to govern contracts assigning patents, in the absence of a significant conflict between state law and any federal insterest that might justify preemption?

Cert. petition filed 6/13/11.

Conference 9/26/11. Petition denied 10/3/11.

CAFC OpinionCAFC Argument


White v. Hitachi, Ltd., et al., No. 10-1504

Questions Presented:

  1. Whether California's policy that patent licesnses are freely transferable should apply to patent licenses?
  2. If so, whether the Federal Circuit erred by effectively creating new federal common law that ignores both the California law exceptions to Farmland Irrigation, Co., Inc. v. Dopplmaier, 48 Cal. 2d 208, 222 (Cal. 1957), and the federal presumption against free transferability of a patent license.

Cert. petition filed 6/15/11.

Distributed for conference of 9/26/11 on 7/27/11; Petition denied 10/3/11.

CAFC OpinionCAFC Argument


Shum v. Intel Corp., No. 10-1444

Questions Presented:

  1. Whether a plaintiff has standing under Article II of the US Constitution to assert federal inventorship issues subsumed within his state law claims in a removed state court complaint when defendants, the parties asserting federal jurisdiction, claim that plaintiff suffered no injury and cannot receive any benefits from his success on these federal issues.
  2. Whether a patent co-owner who is defrauded by his fellow co-owner's assignment of the "sole and exclusive" patent rights has any continuing rights in those patents, or may the federal courts disregard teh evidentiary and legal importance of those fraudulent patent assignments, and grant judgment as a matter of law to defendants.
  3. Whether defendants, the losing party on plaintiff's federal correction of inventorship claims which have gave rise to federal subject matter jurisdiction, should be deemed the "prevailing party" for cost award purposes under FRCP Rule 54 on the grounds that the plaintiff did not receive any benefit from that victory.

Cert. petition filed 5/25/11.

Conference 6/16/11; response requested 6/8/11; brief in opposition filed 8/8/11; distributed for conference of 9/26/11 on 8/24/11;Petition denied 10/3/11.

CAFC OpinionCAFC Argument

WilmerHale represents respondent Intel Corp.


Lockwood, et al. v. Sheppard, Mullin, Richter & Hampton, LLP, et al., No. 10-1339

Question Presented:

Whether under the implied preemption principles in Buckman Co. v. Plaintiffs' Legal Comm., 531 U.S. 341 (2001), federal patent law bars an aggrieved patent owner-plaintiff from asserting a state law claim seeking relief for harm to patent property rights caused by a private party maliciously initiating a sham administrative patent reexamination proceedings before the U.S. Patent and Trademark Office, where "fraud on the agency" is not an element of the claim, and where the agency itself cannot remedy the harm addressed by state law.

Cert. petition filed 4/28/11.

Conference 9/26/11; Petition denied 10/3/11.

CAFC OpinionCAFC Argument

iRunway Amicus Brief ISO Cert.Law Professors Amicus Brief ISO Cert.TPL Group and T. Tafas Amicus Brief ISO Cert.


Max Rack, Inc. v. Hoist Fitness Sys., Inc., No. 10-1384

Question Presented:

Whether it is a denial of due process in violation of the Fifth Amendment to the United States Constitution for the Federal Circuit Court of Appeals to merely affirm a decision of the District Court on the scope of a patent property right with no expressed independent analysis of issues for which de novo review is required.

Cert. petition filed 5/11/11.

Conference 9/26/11; Petition dismissed 8/9/11.

CAFC OpinionCAFC Argument


Abbyy Production, LLC v. Nuance Communications, Inc., No. 10-1019

Questions Presented:

  1. Where a treaty between the United States and the Russian Federation applies and governs service of process on a Russian national in Russia, may a US litigant elected to bypass the treaty's requirements in favor of a more convenient means of service of process if evidence suggests that Russia in the past failed to perform under the treaty?
  2. Is a Russian software developer's act of electronically shipping a master copy of software to a nonexclusive licensee in California an act of impoortation under 35 U.S.C. § 271 upon which a federal court may assert personal jurisdiction over the Russian developer consistent with due process?

Cert. petition filed 2/10/11.

Conference 4/15/11; response requested 4/7/11; conference 6/23/11; conference 6/27/11. Petition denied 6/28/11.

CAFC OpinionCAFC Argument


L-3 Commc'ns Corp, et al. v. Honeywell Int’l Inc., et al., No. 10-491

Questions Presented:

  1. Whether every element of a patent claim must have been previously disclosed in the prior art for the claim to be considered obvious, and thus unpatentable, under 35 U.S.C. § 103(a).
  2. Whether petitioners must prove their obviousness defense by clear and convincing evidence.

Cert. petition filed 10/8/10.

Conference 6/16/11. Petition denied 6/20/11.

CAFC OpinionCAFC Argument


Applera Corp. v. Enzo Biochem, Inc., No. 10-426

Question Presented:

Whether the Federal Circuit’s standard for definiteness is consistent with the language of 35 U.S.C. § 112.

Cert. petition filed on 9/23/10.

Conference 12/10/10; CVSG 12/13/10; conference 6/16/11. Petition denied 6/20/11.

CAFC OpinionCAFC Argument


Extreme Networks, Inc. v. Enterasys Networks, Inc., No. 10-1199

Questions Presented:

  1. Whether an unqualified money judgment for a sum certain is final for purposes of appellate jurisdiction under 28 U.S.C. §§ 1291 and 1295.
  2. Whether, when a postjudgment motion tolls the time to file a notice of appeal under Federal Rule of Appellate Procedure 4(a)(4)(A), the time to appeal runs from the date of an order granting the motion or from the date of a judgment's alteration or amendment upon such motion.

Cert. petition filed 3/31/11.

Conference 6/2/11. Petition denied 6/6/11.

CAFC OpinionCAFC Argument


Howmedica Osteonics Corp. v. Zimmer, Inc., et al, No. 10-1161

Questions Presented:

  1. Has the U.S. Court of Appeals for the Federal Circuit improperly eroded or eliminated a patent-holder's Seventh Amendment right to a trial by jury in patent infringement cases by making the affirmative defense of invalidity for indefiniteness of patent claims (35 U.S.C. § 112, ¶ 2) a pure question of law for the court?
  2. Has the U.S. Court of Appeals for the Federal Circuit improperly treated invalidity of patent claims for indefiniteness as a pure question of law when the dispute arises around a factual determination of whether a value associated with patent claim language can be measured or calculated by persons of ordinary skill in the art using the disclosures of the patent?

Cert. petition filed 3/14/11.

Conference 5/12/11. Petition denied 5/16/11.

CAFC OpinionCAFC Argument


MedioStream, Inc. v. Acer America Corp., No. 10-1090

Question Presented:

Did the Federal Circuit err in reweighing a district court's discretionary § 1404(a) analysis in the manner of the 6th, 7th, 10th and 11th Circuits, or is the proper approach under the All Writs Act, 28 U.S.C. § 1651, that of the 1st and 3rd Circuits which decline review of discretionary venue decisions?

Cert. petition filed 3/3/11.

Conference 5/12/11. Petition denied 5/16/11.

CAFC Opinion


Eli Lilly & Co. v. Sun Pharm. Indus., Ltd, No. 10-972

Question Presented:

Whether the Federal Circuit improperly transformed the doctrine of "double patenting," in conflict with a "vast body of precedent" cited by four dissenting judges, by creating a new bright-line rule that invalidates a subsequent patent on a nonobvious, newly discovered use of a basic invention solely because it was disclosed, but not claimed, in the final text of the earlier basic patent.

Cert. petition filed 1/28/11.

Conference 5/12/11. Petition denied 5/16/11.

CAFC OpinionCAFC Argument

WilmerHale filed an amicus brief in support of cert on behalf of Pharmaceutical Research and Manufacturers of America.


Princo Corp. v. Int'l Trade Comm. et al., No. 10-898

Question Presented:

Should the equitable doctrine of patent misuse remain a flexible doctrine to be applied when a patent holder has impermissibly attempted to extend the scope of his patent, or, as a divided Federal Circuit has held, be conditioned on a showing of "leveraging," "with anticompetitive effects" and in a manner previously "held to be outside...the patent grant"?

Cert. petition 1/5/11.

Conference 5/12/11. Petition denied 5/16/11.

CAFC OpinionCAFC Argument

WilmerHale represents respondent U.S. Philips.


Mylan, Inc. v. Daiichi Sankyo Co., Ltd, No. 10-770

Question Presented:

Whether, contrary to this Court’s decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Federal Circuit has erred in applying a “lead compound test” as the exclusive standard for determining whether a patent claim directed to a new chemical compound is “obvious” and therefore invalid under 35 U.S.C. § 103(a).

Cert. petition filed 12/8/10.

Conference 3/18/11. Petition denied 3/21/11.

CAFC OpinionCAFC Argument


Baran v. Medical Device Tech., Inc., No. 10-862

Question Presented:

Whether 35 U.S.C. § 112, ¶ 6 permits a patent claim expressed as a "means...for performing a specific function" to be construed to require functions not recited int eh means clause.

Cert. petition filed 12/29/10. 2010

Conference 3/4/11. Petition denied 3/7/11.

CAFC OpinionCAFC Argument


Louisiana Wholesale Drug Co., Inc., et al. v. Bayer AG, et al., No. 10-762

Question Presented:

Absent patent fraud or sham litigation, is a brand drug maker's substantial payment to a competing generic drug maker to forego judicial testing of the patent and restrict entry per se lawful under the Sherman Act?

Cert. petition filed 12/6/10.

Conference of 3/4/11. Petition denied 3/7/11.

US Court of Appeals for the Second Circuit Opinion


Wyers, et al. v. Master Lock Co., No. 10-899

Questions Presented:

  1. Whether the Court of Appeals denied Wyers' Seventh Amendment right to a jury trial by substituting its own evaluation of theGraham factual findings for those made by the jury in its general verdict.
  2. Whether the Court of Appeals erred in applying the "clear error" standard to the jury's factual findings rather than the substantial evidence standard.

Cert. petition filed 1/10/11.

Waiver filed 1/26/11; conference 2/18/11. Petition denied 2/22/11.

CAFC OpinionCAFC Argument


Papyrus Tech. Corp. v. New York Stock Exchange, Inc., No. 10-866

Question Presented:

By failing to give the patent holder (1) notice that a newly identified technology might be used to invalidate a patent and (2) an opportunity to present evidence and set forth facts supporting the validity of the patent in view of this newly identified technology, did the trial court disregard Rule 56 and deprive the patent holder of a property right without due process of law?

Cert. petition filed 12/30/10.

Waiver filed 1/13/11; conference 2/18/11. Petition denied 2/22/11.

CAFC OpinionCAFC Argument


Landmark Screens, LLC v. Morgan, Lewis & Bockius LLP, et al., No. 10-499

Question Presented:

Whether a legal malpractice claim against a patent lawyer that involves no actual patent and will have no impact on patent rights arises under an Act of Congress relating to patents so as to invoke the exclusive jurisdiction of the federal district courts under 28 U.S.C. § 1338.

Cert. petition filed 10/12/10.

Response requested 11/16/10, conference 2/18/11. Petition denied 2/22/11.

Court of Appeals of California, Sixth Appellate District Opinion Below


Romala Stone, Inc. v. The Home Depot USA, Inc., No. 10-777

Questions Presented:

  1. Did the Federal Circuit’s use of Rule 36 in this case effectively deprive Romala of its statutory right of appeal (See 28 U.S.C. § 1291, “An appeal is not a matter of absolute right, independently of constitutional or statutory provisions allowing such appeal.”McKane v. Durston, 153 U.S. 684, 687 (1894))
  2. Does Rule 36 when it is used by the Federal Circuit in any case effectively deprive appellants of their statutory right of appeal?

Cert. petition filed 12/8/10.

Waiver filed 12/23/10; conference 1/21/11. Petition denied 1/24/11.

CAFC OpinionCAFC Argument


Vanderbilt University v. ICOS Corporation., No. 10-412

Questions Presented:

  1. Whether the Court of Appeals can impose a clear and convincing evidence burden on a statutory civil action where there is no indication in the statute or its legislative history that Congress intended a burden of proof higher than the preponderance of evidence standard normally imposed upon civil actions.
  2. Whether the Court of Appeals’ failure to remand the case to the District Court conflicts with the United States Supreme Court’s decision in Pullman-Standard v. Swint, 456 U.S. 273 (1982).

Cert. petition filed 9/21/10.

Response requested 10/20/10; conference 1/21/11. Petition denied 1/24/11.

CAFC OpinionCAFC Argument


Apotex, Inc. v. Sebelius, No. 10-453

Question Presented:

May a generic drug manufacturer forfeit marketing exclusivity under 21 U.S.C. § 355(j)(5)(D) based on “unilateral” action by the holder of the challenged patent?

Cert. petition filed 10/4/10.

Conference 1/14/11. Petition denied 1/18/11.

US Court of Appeals for the District of Columbia Circuit


Desenberg v. Google, Inc., No. 10-706

Questions Presented:

  1. Whether the Courts erred in dismissing the case by interpreting the BMC precedent to mean all patented inventions used by multiple parties are invalid per se, and even in cases when all of the steps of a pioneer web site patent is performed by a single web site.
  2. Whether the Courts misinterpreted the web site patent as not having direction and control over its users, when Courts in the USA and other countries have found Google guilty for vicarious liability for the actions of its users.
  3. Whether the Court erred in interpreting “user” must refer to a real person, since “user” in computers often refers to a program, and not a person, nor a representative.
  4. Did the Court err by allowing Defendant, during litigation, to change status quo to hide infringement by changing the very patented technology under dispute; and has only changed over ten years as a response to the this case; without a Markman nor other hearing to check if AdWords is equivalent to the patented technology?
  5. Whether the Courts erred in not recognizing Defendant and Courts failed to state a specific claim as to which step of the patent, in its entirety, violates a precedent from a case; and then dismiss based on a general non-specific claim without comparing Defendant’s methods to the patent and without discovery.
  6. Did the Court err in not granting a preliminary injunction as: (i) the traditional four factor test supports such action; (ii) Defendant has no patent; (iii) there is no prior art; (iv) Defendant’s “Quality Score” bid rigging function would be removed benefiting the pubic interest; and (v) Defendant would not suffer significant hardship nor revenue loss; and (vi) the principals of equity have been ignored by the Courts.
  7. Who has rights to write standard architectures for the industry: (i) the CEO from the infringing startup company, who introduced bid rigging, educated the public to think bid rigging is unavoidable and acceptable, and instituted a version of the patented method enabling over $3 billion of fraud per year; or (ii) the Inventor and CEO of the startup company who endured for seven years to earn the patent rights from the USPTO in order to prevent excessive fraud for the public interest?

Cert. petition filed 11/26/10.

Waiver filed 12/6/10. Petition denied 1/10/11.

CAFC OpinionCAFC Argument


Avid Identification Sys., Inc. v. The Crystal Import Corp., et al., No. 10-509

Questions Presented:

  1. Whether a patent may be rendered unenforceable based solely on the failure to disclose prior art by an individual who was not involved in the preparation or submission of any evidence or argument to the Patent Office to convince it to issue the patent.
  2. Whether a patent made be rendered unenforceable due to the failure to disclose a prior art reference that does not render the patent invalid or otherwise contradict the applicant’s statements to the Patent Office.

Cert petition filed 10/13/10.

Conference 1/7/11. Petition denied 1/10/11.

CAFC Opinion


2010


Benun, et al. v. FujiFilm Corp., No. 10-486

Question Presented:

Whether the authorized sale of an article that substantially embodies a patented invention exhausts the patentee’s rights to use the patent law to control post sale disposition of such article, where the authorized sale occurs outside the United States.

Cert petition filed 10/8/10.

Conference 12/10/10. Petition denied 12/13/10.

CAFC OpinionCAFC Argument


Anascape, Ltd. v. Nintendo of America, Inc., No. 10-301

Question Presented:

In reviewing the factual sufficiency of the evidence supporting a jury verdict under Fed. R. Civ. P. 50, may an appellate court weigh expert testimony submitted to the jury, and discredit that expert testimony, when its admissibility was never challenged under Fed. R. Evid. 702?

Cert. petition filed 8/27/10.

Conference 10/29/10. Petition denied 11/1/10.

CAFC OpinionCAFC Argument

WilmerHale represents respondent Nintendo of America, Inc.


Kozachuk v. Medpointe Healthcare, Inc., No 10-342

Question Presented:

Should reasonable (or at least some) indicia of informed consent, by voir dire or otherwise, be a necessary and required element of an oral settlement of a case in open court, on the record?

Cert. petition filed 7/6/10. Petition denied 11/1/10.

CAFC Opinion


Innovative Therapies, Inc. v. Kinetic Concepts, No. 10-287

Questions Presented:

  1. Does Article III's grant of jurisdiction of "all Cases...arising under...the Laws of the United States," implemented in the "actual controversy" requirement of the Declaratory Judgment Act, 28 U.S.C. § 2201 (a), require a patentee to direct an affirmative act toward a potential infringer for declaratory judgment subject matter jurisdiction to exist?
  2. Does such grant of jurisdiction require that a patentee be able to sue a potential infringer before declaratory judgment subject matter jurisdiction can exist?
  3. What are the metes and bounds of a district court's discretion to dismiss a delcaratory judgment complaint under the Declaratory Judgment Act, despite the existence of an actual controversy?

Cert. petition filed 8/24/10. Petition denied 10/18/10.

CAFC OpinionCAFC Argument


Vaidyanathan v. Kappos, No. 10-234

Questions Presented:

  1. Does de novo judicial review of a legal conclusion reached by an agency adjudicatory body permit remand to the agency when there is no material question of underlying fact?
  2. Does de novo judicial review of a legal conclusion reached by an agency adjudicatory body require reversal when the underlying facts as set forth by the agency adjudicatory body, and taken in a light most favorable to that body, are insufficient to reach the agency's ultimate legal conclusion?

Cert. petition filed 8/16/10. Petition denied 10/4/10.

CAFC Opinion


Sami Chemicals and Extracts v. United States Patent and Trademark Office, No. 10-133

Questions Presented:

  1. Whether the failure of the Federal Circuit to order reopening of prosecution after the U.S. Patent and Trademark Office Board of Appeals and Patent Inferences issued a new ground of rejection in its Decision on Appeal denied Petitioner the right to appeal decisions "adverse to the patentability of any original or proposed amended or new claim of the patent." 37 C.F.R. § 41.50(d), 35 U.S.C. § 306?
  2. Whether the failure of the Federal Circuit to reverse the Decision on Appeal issued by the U.S. Patent and Trademark Office Board of Appeals and Patent Interferences was inconsistent with its own precedents, in particular: Abbot Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274 (Fed. Cir. 2003); and Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).

Cert. petition filed 7/26/10.

Conference 9/27/10. Petition denied 10/4/10.

CAFC OpinionCAFC Argument


University of South Carolina v. University of Southern California, No. 09-1270

Questions Presented:

  1. Should the likelihood-of-confusion analysis require proof that a group of relevant purchasing consumers exists who would likely be confused by competing trademarks so that trademark registration may be denied or trademark infringement be found?
  2. Should the scope of protection for onamentally used trademarks (i.e., merchandising rights), such as those used by colleges and universities to decorate products and indicate an affiliation with their school, be accorded the same scope of protection as traditional trademarks that instead indentify the source of the products being sold under the trademarks?

Cert. petition filed 4/19/10. Petition denied 10/4/10.


Vaidyanathan v. Kappos, No. 10-234

Cert. petition filed 8/16/10; 2010 WL 3267816. Petition denied.

Questions Presented:

  1. Does de novo judicial review of a legal conclusion reached by an agency adjudicatory body permit remand to the agency when there is no material question of underlying fact?
  2. Does de novo judicial review of a legal conclusion reached by an agency adjudicatory body require reversal when the underlying facts as set forth by the agency adjudicatory body, and taken in a light most favorable to that body, are insufficient to reach the agency’s ultimate legal conclusion?

Sami Chemicals and Extracts v. David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, No. 10-133

Questions Presented:

  1. Whether the failure of the Federal Circuit to order reopening of prosecution after the U.S. Patent and Trademark Office Board of Appeals and Patent Interferences issued a new ground of rejection in its Decision on Appeal denied Petitioner the right to appeal decisions “adverse to the patentability of any original or proposed amended or new claim of the patent.” [under] 37 C.F.R. § 41.50(d), 35 U.S.C. § 306?
  2. Whether the failure of the Federal Circuit to reverse the Decision on Appeal issued by the U.S. Patent and Trademark Office Board of Appeals and Patent Interferences was inconsistent with its own precedents, in particular:  Abbott Labs. v. Baxter Pharm. Prods., Inc., 334 F.3d 1274 (Fed. Cir. 2003); and Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc).

Cert. petition filed 7/26/10.

Conference 9/27/10. Petition denied.


Media Technologies Licensing, LLC and Adrian Gluck, v. The Upper Deck Company LLC, Upper Deck Distribution & Sales Company, Upper Deck Distribution & Sales Company, LLC. and Playoff Corporation, No. 10-126

Questions Presented:

  1. Whether the same standard should govern the obviousness determination of patents in the non-technical arts as patents in the technical arts?
  2. Whether the Federal Circuit erred by failing to apply in its obviousness analysis of a non-technical patent this Court's precedent that “a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently, known in the prior art.” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007).
  3. Whether this Court's precedent that a patent can be proved invalid as “obvious to try” when “there are a finite number of identified, predictable solutions” requires (1) merely that the number of solutions be “not infinite” (e.g. one million potential solutions) as the Federal Circuit held in this case; or alternatively, (2) that the number of solutions be relatively small or easily traversed (as the Federal Circuit has held in other cases). KSR Int'l Co., 550 U.S. at 421

Cert. petition filed 7/22/10.

Conference 9/27/10. Petition denied 10/4/10.

CAFC OpinionCAFC Argument


Derek J. Lackey v. David J. Kappos, Under Secretary of Commerce for Intellectual Property Director of the United States Patent and Trademark Office, No. 10-50

Question Presented:

Whether substituting one fabrication material (metal) for another (plastic) to produce a previously unknown significant advance in the state of the art of air admittance valves is per se obvious under 35 USC 103(a), thereby foreclosing further consideration of patentability?

Cert. petition filed 6/30/10

Conference 9/27/10. Petition denied 10/4/10.

CAFC Opinion


Heather A. Davis v. Brouse McDowell, L.P.A. and Daniel A. Thomson, No. 09-1413

Questions Presented:

  1. Whether the Federal Circuit erred by relying upon a deposition answer in determining that federal patent jurisdiction extended to Plaintiff's Amended Complaint under 35 U.S.C. § 1338(a)?
  2. Whether the Federal Circuit erred by asserting federal patent jurisdiction over a single state law claim of legal malpractice in which at least one theory of the claim does not rely upon a substantial question of federal patent law?

Cert. petition filed 5/19/10.

Conference 9/27/10. Petition denied 10/4/10.

CAFC OpinionCAFC Argument


Ferring B.V., Ferring Pharmaceuticals, Inc., and Aventis Pharmaceuticals, Inc. v. Meijer, Inc,, Meijer Distribution, Inc., Rochester Drug Co-Operative, Inc., and Louisiana Wholesale Drug Co., Inc., No. 09-1175

Questions Presented:

  1. The Federal Circuit has "exclusive jurisdiction" over all appeals that are based "in whole or in part" on patent issues. 28 U.S.C. § 1295(a)(1). Accordingly, courts have consistently held that a Walker Process claim (i.e., an antitrust claim alleging enforcement of an invalid patent that was procured through fraud) lies within the exclusive jurisdiction of the Federal Circuit. In this case, however, the Second Circuit held that the Federal Circuit lacks jurisdiction over a Walker Process claim if plaintiffs include non-patent allegations in the same count. The court reached this conclusion even though it acknowledged that the patent fraud allegations are "the linchpin" of the case and even though the non-patent allegations would not provide plaintiffs a basis for obtaining all the relief they seek.
  2. The question presented is whether the Second Circuit's new jurisdictional standard conflicts with this Court's decision inChristianson v. Colt Indus. Operating Corp., 486 U.S. 800 (1988), and with decisions of the Federal Circuit and Seventh Circuit, holding that the Federal Circuit has exclusive jurisdiction in any patent-based case in which patent issues must be resolved in order for plaintiffs to achieve the overall success of their claim and obtain all the damages (or other relief) they seek.?

Cert. petition filed 3/26/10.

Conference 6/24/10. Petition denied.


Bayer Schering Pharma AG and Bayer HealthCare Pharmaceuticals Inc. v. Barr Laboratories, Inc.; No. 09-1022

Questions Presented:

  1. Under 35 U.S.C. § 103(a) and this Court's precedents, a claimed invention is not patentable if it would have been "obvious" at the time it was made to a person having ordinary skill in the art. This Court has used terms like "plainly foreshadowed," "plainly indicated," "immediately recognized," and "predictable" to describe the standard.
  2. Whether the Federal Circuit has deviated from the statutory text and this Court's precedents by holding that an invention is "obvious" when there were a finite number of "viable" options that provided a so-called "reasonable expectation" of success, even though it remained necessary to conduct further experimentation, the results of which were unpredictable.?

Cert. petition filed 2/23/10.

Conference 4/30/10. Petition denied.


Microsoft Corporation v. Lucent Technologies, No. 09-1006

In this case, the Federal Circuit affirmed a verdict of patent infringement over a challenge to the sufficiency of the evidence. After reviewing the record, the Federal Circuit pointed only to expressly speculative expert testimony and lawyer characterization of the evidence (not the evidence itself) to support the verdict. In affirming the verdict, the Federal Circuit itself characterized this speculative and argumentative "evidence" as "less than the weight of the evidence," but "just more than a mere scintilla." The questions presented are:

  1. Whether a jury verdict of patent infringement can stand when it is supported only by speculative "evidence" and lawyer argument, or whether the standards for entry of judgment as a matter of law that apply in all other federal cases should apply equally in patent cases?
  2. 2. Whether a new trial is required in a patent infringement case, as in all other cases, when the verdict is found to be contrary?

Cert. petition filed 2/19/10.

Conference 5/20/10. Petition denied.


Fresenius USA, INC. and Fresenius Medical Care Holdings, Inc., vs. Baxter International and Baxter Healthcare Corporation, No. 09-1096

Questions Presented:

  1. Does the Federal Circuit's practice of evaluating jury verdicts in patent cases by requiring a prevailing party to point to substantial evidence plus a detailed explanation by an expert witness of that evidence (a "substantial evidence plus explication" requirement) comport with this Court's precedents and the Constitution?
  2. If the answer to Question 1 is yes, then in what circumstances should a requirement for substantial evidence plus explication apply?

Cert. petition filed 2/16/10.

Conference 4/16/10. Petition denied.


Loren David v. Monsanto Company and Monsanto Technology LL, No. 09-829

Question Presented:

Is a federal statutory award of attorney fees, expert expenses and costs in a private law action (not a civil rights action involving important civil and constitutional rights providing a broader, uncompensated benefit to the public), in the amount of $487,000 reasonable in relation to the results achieved, a compensatory damage award of $87,000?

Cert. petition filed 1/12/10.

Conference of 2/26/10. Petition denied.


Saint-Gobain v. Gemtron, No. 09-778

Question Presented:

Did the Federal Circuit impermissibly apply United States patent law on an extraterritorial basis in upholding a finding of infringement of a product claim based on a temporary characteristic of the product during its manufacture in Mexico, even though the product found to infringe no longer has this characteristic when imported into the United States?

Cert. petition filed 12/31/09.

Conference 3/5/10. Petition denied.


SAP AG and SAP America, Inc.v. Sky Technologies LLC, No. 09-819

Question Presented:

The Patent Act identifies only three classes of patent owners with standing to sue for infringement: "patentee[s]," "heirs," and "assigns." This Court has repeatedly held that these three classes—unchanged since 1870—comprise the exclusive set of patent owners and that the transfer of legal title in and to a patent requires an assignment in writing. Respondent is not the original patentee, is not an heir, and has no written assignment from the original patent owner. The United States Court of Appeals for the Federal Circuit nevertheless held that Respondent had standing to sue for infringement because a non-judicial state law foreclosure "transferred" legal title to the patents-in-suit by operation of law.

1. Did the Federal Circuit err when it held that the Patent Act allows the states to create additional, non-statutory classes of patent owners—including "transfer[ee]s" who may take title without any writing at all?

Cert. petition filed 12/24/09.

Conference 2/19/10. Petition denied.


Acushnet Company v. Callaway Golf Company, No. 09-702

Questions Presented:

  1. Whether this Court should make clear that no single finding on any of its underlying Graham factors is dispositive of the ultimate legal conclusion on invalidity, such that a court reviewing a jury's § 103 verdicts must always independently render its own legal conclusion regardless of whether one or all of the jury's underlying findings are accepted as adequately supported by the evidence?
  2. Whether this Court should instruct that a jury's § 103 verdict necessarily identifies the jury's implicit findings on the disputed underlying factual issues litigated at trial, but is entirely advisory as to the ultimate legal conclusion on invalidity?

Cert. petition filed 12/11/09.

Conference 2/19/10. Petition denied.


Cardiac Pacemaker, Inc., and Guidant Sales Corporation and Mirowski Family Ventures, LLC and Anna Mirowski, v. St. Jude Medical Inc., and Pacesetter, Inc., No. 09-596

Questions Presented:

Should a defendant be permitted to use "the accident of a remand" to raise previously available but not previously asserted defenses?

Patent protection is important for an economy heavily based upon technology. Although this Court recently held in one context that method and product inventions should be treated similarly (Quanta Computer, Inc. v. LG Electronics, Inc., 128 S.Ct. 2109 (2008)), the Federal Circuit's en banc decision in another context does not provide such similar treatment and significantly restricts protection for method inventions. Two additional questions are:

  1. Where the value of a method invention is its availability for use if needed, should damages for infringement be restricted to actual use?
  2. Should the maker of a product capable of performing a patented method be liable for products made here but sold abroad, i.e., does 35 U.S.C. §271(f) exclude method claims?

Cert. petition filed 11/17/09.

Conference 1/8/10. Petition denied.


Richard P. Mettke, v. David Kappos, Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office, No. 09-744

Questions Presented:

  1. Whether the Court of Appeals for the Federal Circuit erred by holding the United States Patent and Trademark Office's conclusion of obviousness based on the combination of Exhibit E, Exhibit F, and Shah was correct and that it was based on findings supported by substantial evidence and not rebutted by objective evidence?
  2. Whether the Court of Appeals for the Federal Circuit erred in denying the appellant the right to present oral arguments in support of his appeal in contradiction to the Constitution of the United States, Fifth Amendment right to due process?

Cert. petition filed 11/16/09.

Conference 1/22/10. Petition denied.


Patent Enforcement Team, LLC, v. Dickson Industries, Inc., No. 09-476

Questions Presented:

  1. Can a patentee be held liable for tortious interference without an appropriate finding that the patentee's pre-suit actions were objectively baseless?
  2. What constitutes substantial evidence sufficient to invalidate a claim based on anticipation?

Cert. petition filed 10/20/09.

Conference 1/22/10. Petition denied.


SMC Corporation and SMC Corporation of America, v. Norgren, Inc, and U.S. International Trade Commission, No. 09-412

Questions Presented:

  1. The claims in a patent are critical since they define the scope of the exclusionary right. Prior to Markman v. Westview Instruments, Inc., 52 F.3d 967 (Fed. Cir. 1995) (en banc), aff'd, 517 U.S. 370 (1996), the jury construed the claims. Although this Court in its Markman decision supra held as a matter of policy that the claims should be construed by the district court, this Court did not hold that this construction was entitled to no deference upon appeal.
  2. In Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), the Federal Circuit held that a district court's claim construction was entitled to no deference upon appeal. This ruling has resulted in a highly unsatisfactory situation during the last eleven years, i.e., a claim construction reversal rate of roughly 40%, a need for many patent cases to be tried more than once, and increasing dissatisfaction by the district courts whose claim constructions are afforded no deference and are reversed almost half the time. Although some Federal Circuit judges have long recognized this problem, it appears that its correction can only come from this Court. Thus, the question presented for review is—Should the Federal Circuit accord deference to a district court's claim construction?

Cert. petition filed 10/6/09.

Conference 1/15/10. Petition denied.


2009


Boston Scientific Corporation and Scimed Life Systems, Inc. v. Cordis Corporation, No. 09-362.

Questions Presented:

  1. Where the phrase "printed publication" has been continuously used in patent statutes since 1836, does the Federal Circuit's abandonment of the original construction of that phrase, refusal to apply any other plain-language construction, and substitution of its own policy goal of protecting inventors to the exclusion of Congress' goal of encouraging competition improperly alter the scope of the "loss of right to patent" provision of 35 U.S.C. § 102(b)?
  2. Does the Federal Circuit's case-by-case analysis of "printed publications"—described by commentators as "a muddled mess" with "many irreconcilable conflicts"—improperly lead to an inconsistent and unpredictable scope of the "loss of right to patent" provision and frustrate Congress' policy goal of providing a bright-line on which inventors and the public can rely?
  3. Does an inventor's dissemination of a printed description of his invention to commercial companies and individuals skilled and interested in the art without a legal obligation of confidentiality—for five years in an attempt to exploit his invention—bar his later attempt to file a patent application and thereby unilaterally extend the duration of his statutory monopoly and withdraw from the public domain the subject matter he had spent five years disclosing?

Cert. petition filed 9/28/09.

Conference 11/24/09. Petition denied.


Astellas Pharma, Inc v. Lupin Limited and Lupin Pharmaceuticals, Inc., No. 09-335

Question Presented:

Whether the United States Court of Appeals for the Federal Circuit erred in ignoring the Court's binding precedent and finding product-by-process claims are not infringed by an identical product made by a different process?

Cert. petition filed 9/16/09.

Conference of 1/8/10. Petition denied.


Robert Chapman, Lonn S. Rider, Qi Hong, Donald Kyle and Robert Kupper v. Michael Lawrence Casner, Jen-Sen Dung, Erno M. Keskeny and Jin Luo, No. 09-320

Questions Presented:

  1. How is the principle in Eibel Process Co. v. Minnesota & Ontario Paper Co., 261 U.S. 45, 68 (1923), that a claim may be non-obvious when the inventor discovers a "source [of trouble or a problem] not before known" and then claims the resulting "application of the remedy," applied in light of KSR International Co. v. Teleflex, 550 U.S. 398 (2007)?
  2. Does Eibel require recitation of the newly discovered source of the problem as claim limitations?

Cert. petition filed 9/10/09.

Conference 10/30/09. Petition denied.


Medela AG and Medela, Inc.,v. Kinetic Concepts, Inc., KCI Licensing, Inc., KCI USA, Inc., and Wake Forest University Health Sciences, No. 09-198

Question Presented:

Whether a person accused of patent infringement has a right to independent judicial, as distinct from lay jury, determination of whether an asserted patent claim satisfies the "non-obvious subject matter" condition for patentability?

Cert. petition filed 8/11/09.

Conference 11/13/09. Petition denied.


Apotex, Inc. and Apotex Corp., v. Sanofi-Synthelabo, Sanofi-Synthelabo Inc., and Bristol-Myers Squibb Sanofi Pharmaceuticals Holding Partnership, No. 09-117

Question Presented:

Whether, if an experiment was "obvious to try," a prima facie case of obviousness is automatically rebutted by a showing that the outcome of the experiment was not entirely predictable?

Cert. petition filed 7/24/09.

Conference 10/30/09. Petition denied.


Steven D. Richie and H. David Reynard (as Trustee for the Harlie David Reynard, Jr. Revocable Trust), v. Vast Resources, Inc., (doing business as Topco Sales), No. 09-97

Questions Presented:

  1. Did the Federal Circuit Panel err in not considering all relevant evidence of non- obviousness in reaching its decision of invalidity based on obviousness.?
  2. Must the Federal Circuit Court of Appeals Panel explicitly address, and carefully attend to all relevant evidence of non obviousness, such as secondary consideration in reaching a judgement of obviousness?
  3. Whether the Supreme Court will address the inconsistencies within the opinions of the Federal Circuit and inconsistencies with Supreme Court Case law, where the Federal Circuit found error when the District Court below failed?  (a) to give due weight to the nature of the problem to be solved and common sense as required in Andersen Corp. v. Pella Corp., 300 Fed.Appx. 893, 895, C.A.Fed. (Minn. 2008); see also Goodyear Tire & Rubber Co. v. Ray-O-Vac Co.,  (b) to make mention or discuss relevant evidence of the secondary considerations as required and, set forth in Ruiz v. A.B. Chance Co., 234 F.3d 654, 667, C.A.Fed. (Mo. 2000);  (c) to focus on the indications of non obviousness, as required by Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 14 (1966); and  *ii (d) to explain the rationale for finding the patent obvious absent any evidence of any rational. underpinning which would support the legal conclusion of obviousness, as required by the Supreme Court in KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727, 1741.

Cert. petition filed 7/22/09.

Conference 9/29/09. Petition denied.


Boston Scientific Scimed Inc. and Boston Scientific Corporation, v. Cordis Corporation and Johnson & Johnson, Inc., No. 09-103

Questions Presented:

  1. Whether the Federal Circuit's "de novo" review methodology for jury verdicts rendered on the issue of obviousness under 35 U.S.C. § 103(a) has become so inconsistent and unpredictable that this Court's guidance is required?
  2. Whether the Federal Circuit's "de novo" review methodology for the ultimate legal conclusion under § 103 entitles it to substitute its own findings for a jury's implicit findings on the underlying Graham factors, including the secondary considerations of nonobviousness?
  3. Whether the Federal Circuit may disregard the jury's findings that there was a long-felt but unfulfilled need, a widespread failure of others, and significant commercial success directly resulting from the claimed invention, and then negate their effect by recasting them as "weak" by adopting the rejected factual assertions of the verdict loser?

Cert. petition filed 7/22/09.

Conference 9/29/09. Petition denied.


Line Rothman and Glamourmom LLC, v. Target Group et al., No. 09-304

Questions Presented:

  1. Whether an invention which was not obvious to conceive can satisfy the "nonobvious subject matter" patentability requirement, even if the invention becomes obvious to reduce to practice once conceived?
  2. Whether denying patentability on an invention that was not obvious to conceive violates §103(a) of the Patent Act, which provides that "Patentability shall not be negatived by the manner in which the invention was made"?
  3. Whether denying patentability on an invention that was not obvious to conceive violates this Court's holding in KSR v. Teleflex that "a patent composed of several elements is not proved obvious merely by demonstrating that each of its elements was, independently known in the prior art"?

Cert. petition filed 7/7/09.

Conference 11/13/09. Petition denied.


Lewis Ferguson, et al. v. Director of the The United States Patent and Trademark Office, No. 08-1501

Questions Presented:

  1. Are claims that recite business methods unpatentable per se when they are not tied to a machine and do not preempt any mathematical algorithm?
  2. Is a claim properly unpatentable under 35 U.S.C. §101 as being an abstract idea only because it does not come within the test of "machine or transformation" set forth by In re Bilski, 545 F.3d 943 (Fed. Cir. 2008)?

Cert. petition filed 6/2/09.

Conference 9/29/09. Petition denied.


Alphapharm Pty., Ltd. and Genpharm Inc., v. Takeda Chemical Industries, Ltd. and Takeda Pharmaceuticals North America, Inc., No. 08-1463

Question Presented:

  1. This Court has long held that a party cannot be punished for what it was lawfully entitled to do. In spite of this fundamental rule-of-law, that is precisely what happened here. The district court punished Alphapharm for what it was lawfully entitled to do, and in the process may have gutted the underlying purpose of the Hatch-Waxman Act. In BMW of North America Inc. v. Gore,517 U.S. 559, 573-74 (1996), this Court held that a fact finder (in that case, an Alabama state jury) has no power to punish a litigant for conduct that is lawful in that or other jurisdictions. The jury there had awarded $4 million in punitive damages against the automobile company BMW for repairing and repainting minimally damaged cars without notice to prospective buyers. But BMW could have no reason to believe that its conduct would subject it to sanctions in either Alabama or any of the other 49 states. Finding that the Alabama award constituted a due process violation, this Court reversed and remanded.
  2. Here the Court faces a closely analogous set of facts. Alphapharm Pty., Ltd. and Genpharm Inc. (collectively "Alphapharm") challenged U.S. Patent No. 4,687,777 ("the '777 patent") under the Hatch-Waxman Amendments ("Hatch-Waxman") to the Food, Drug, and Cosmetic Act by certifying to the FDA that the compounds claimed in that patent were obvious. Hatch-Waxman allows such challenges if the patentee is provided notice of the challenge with a detailed statement of the legal and factual bases in support. Alphapharm provided that notice by pre-suit letter ("Notice Letter"), and explained that the '777 patent*ii was obvious over two particular prior-art references. Following trial, the district court rejected the challenge and ruled the '777 patent nonobvious. But the district court went further, finding that the challenge was in bad faith under the patent act's exceptional-case provision. The district court's principal basis for this finding was Alphapharm's reliance on additional prior-art references it adduced during pre-trial discovery. This was standard litigation conduct in a patent case - indeed in any case. Alphapharm had no cause to believe using information obtained through discovery at trial would subject it to sanctions. Just as in Gore, Alphapharm was punished for lawful conduct. Does the court's award of $5.4 million against Alphapharm penalize it for engaging in standard litigation conduct, and thus deprive Alphapharm of due process of law?

Cert. petition filed 5/26/09.

Conference 9/29/09. Petition denied.


Mylan Laboratories, inc., Mylan Pharmaceuticals, Inc., & UDL Laboratories, Inc., v. Takeda Chemical Industries, Lltd. & Takeda Pharmaceuticals North America, Inc., No. 08-1461

Question Presented:

Does 35 U.S.C. § 285 permit the imposition of a ten-million-dollar attorney-fee award based substantially on (i) a generic drug maker's challenge to a patent's validity on different grounds than those stated in its pre-suit notice to the brand company, and (ii) the trial court's post-trial determination that the drug maker's initial (and ultimately unlitigated) theory lacked merit?

Cert. petition filed 5/26/09.

Conference 9/29/09. Petition denied.


CHF Industries, Inc. v. Park B. Smith, Inc., No. 08-1378

Question Presented:

Whether the Federal Circuit erred in holding that Fed. R. App. P. 4(a)(2) permits a premature notice of appeal filed from an interlocutory order (that did not decide or dispose of all claims in the case) to operate as a notice of appeal from a subsequently—entered final order?

Cert. petition filed 5/6/09.

Conference 9/29/09. Petition denied.


In Re DBC , No. 08-1284

Questions Presented:

  1. Whether the PTO has jurisdiction to pass on the constitutionality of its own federal statutes or whether such constitutional issues should be heard in the first instance by the Federal Circuit as an Article III Court?
  2. Whether 35 U.S.C. § 6 as amended in the Act of Aug. 12, 2008, Pub. L. No. 110-313, 122 Stat. 3014, violates the Appointments Clause of the United States Constitution?
  3. Whether Congress exceeded its power by authorizing retroactive appointments in Congress's amendment to 35 U.S.C. § 6 in the Act of Aug. 12, 2008, Pub. L. No. 110- 313, 122 Stat. 3014?

Cert. petition filed 4/15/09.

Conference 9/29/09. Petition denied.