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

CSR PLC v. Azure Networks, LLC, No. 14-976

Question Presented:

Did the United States Court of Appeals for the Federal Circuit err in using a de novo standard of review instead of a “clear error” standard of review in reviewing the factual findings made by the United States District Court for the Eastern District of Texas while construing the term “MAC Address” as used in U.S. Patent No. 7,756,129?

Cert. petition filed 2/4/15, conference 4/17/15, GVR 4/20/15.

CAFC OpinionCAFC Argument

WilmerHale represents petitioner Broadcom.

Shire Development, LLC v. Watson Pharmaceuticals, Inc., No. 14-206

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 findings in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit currently requires, or only for clear error, as Rule 52(a) requires.

Cert. petition filed 8/18/14, conference 10/31/14, conference 1/23/15, GVR 1/26/15.

CAFC OpinionCAFC Argument

Lighting Ballast Control LLC v. Universal Lighting Technologies, Inc., No. 13-1536

Questions Presented:

In Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), the Federal Circuit construed this Court's decision inMarkman v. Westview Instruments, Inc., 517 U.S. 370 (1996), to hold that patent claim construction presents a purely legal question subject to de novo review. In this case, the Federal Circuit granted en banc review to reconsider the widely criticized Cybor rule. In a 6-4 decision, it decided to adhere to its precedent on stare decisis grounds, which hold no sway in this Court. Shortly after the 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 validity of the Cybor rule.

This petition presents the same question presented in Teva. It also presents a second question that will be squarely implicated if the Court, in Teva, affirms the Cybor rule. That question arises from Respondent's failure to raise the claim construction arguments on which it ultimately prevailed below (which are purely legal issues per Cybor) in a motion for judgment as a matter of law after they were previously rejected on summary judgment. The courts of appeals are starkly divided as to whether there is an exception for "purely legal" issues to the general rule that issues raised in a failed summary judgment motion and not renewed in a motion for JMOL are forfeited, a question this Court expressly left open in Ortiz v. Jordan, 131 S. Ct. 884 (2011).

The questions presented are:

  1. 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 Federal Rule of Civil Procedure 52(a) requires.
  2. Whether there is an exception for "purely legal" issues to the general rule that an issue raised only in a failed summary judgment motion and not raised in a motion for judgment as a matter of law under Federal Rule of Civil Procedure 50 is forfeited on appeal.

Cert. petition filed 6/20/14, conference 9/29/14, conference 1/23/15, GVR 1/26/15.

CAFC OpinionCAFC Argument

Gevo, Inc. v. Butamax Advanced Biofuels LLC, No. 13-1286

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, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.

Cert. petition filed 4/22/14, conference 6/26/14, conference 1/23/15, GVR 1/26/15.

CAFC OpinionCAFC Argument

Stephen Kimble, et al. v. Marvel Enterprises, Inc., No. 13-720

Question Presented:

Petitioners are individuals who assigned a patent and conveyed other intellectual property rights to Respondent. The court of appeals “reluctantly” held that Respondent, a large business concern, was absolved of its remaining financial obligations to Petitioners because of “a technical detail that both parties regarded as insignificant at the time of the agreement.” App. 2-3; 23. Specifically, because royalty payments under the parties’ contract extended undiminished beyond the expiration date of the assigned patent, Respondent’s obligation to pay was excused under Brulotte v. Thys Co., 379 U.S. 29, 32 (1964), which had held that “a patentee’s use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se.”

A product of a bygone era, Brulotte is the most widely criticized of this Court’s intellectual property and competition law decisions. Three panels of the courts of appeals (including the panel below), the Justice Department, the Federal Trade Commission, and virtually every treatise and article in the field have called on this Court to reconsider Brulotte, and to replace its rigid per se prohibition on post-expiration patent royalties with a contextualized rule of reason analysis.

The question presented is:

Whether this Court should overrule Brulotte v. Thys Co., 379 U.S. 29 (1964).

Cert petition filed 12/13/13, response requested 1/23/14, conference 5/9/14, CVSG 6/2/14, conference 12/5/14, conference 12/12/14, cert. petition granted 12/12/14, argued 3/31/15 (oral argument transcript here).

CA9 OpinionCA9 Argument

Merit Briefs

Brief for Petitioners Stephen Kimble and Robert Michael Grabb

Brief for Respondent Marvel Enterprises, Inc.  

Reply Brief for Petitioners Stephen Kimble & Robert Michael Grabb

Amicus Briefs

Brief for Biotime, Inc., in Support of Petitioners

Brief for Center for Intellectual Property Research of the Indiana University Maurer School of Law and Other Scholars in Support of Petitioners

Brief of Intellectual Property Owners Association in Support of Petitioners

Brief for Memorial Sloan Kettering Cancer Center, Icahn School of Medicine at Mount Sinai, the Research Foundation for the State University of New York, the Rockefeller University, the Association of American Universities, the Association of American Medical Colleges, the Association of Public and Land-Grant Universities, the Council on Government Relations, and the American Council on Education in Support of Petitioners

Brief of New York Intellectual Property Law Association ("NYIPLA") in Support of Petitioners

Brief for the University of Massachusetts Biologic Laboratories in Support of Petitioners

Brief for the American Intellectual Property Law association in Support of Neither Party

Brief of the Bar of the City of New York in Support of Neither Party

Brief for Professor Robin Feldman, Professor Alice Armitage, and the U.C. Hastings Institute for Innovation Law in Support of Neither Party

Brief for the Intellectual Property Law Society of Chicago in Support of Neither Party

Brief for the Licensing Executive Society (USA and Canada), Inc., in Support of Neither Party

Brief for Nautilus, Inc. in Support of Respondent

Brief for Public Knowledge in Support of Respondent

Brief for the United States Supporting Respondent

Brief for the Washington Legal Foundation in Support of Respondent

Brief for the William Mitchell College of Law Intellectual Property Institute in Support of Respondent

WilmerHale represents respondent Marvel Enterprises, Inc.

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

Questions Presented:

Commil holds a patent teaching a method to implement short-range wireless networks. At trial, the jury returned a verdict that Commil’s patent was valid, that Cisco directly infringed but did not induce infringement, and awarded damages. Because Cisco’s counsel invoked stereotypes about Commil’s Jewish owner and inventors during trial, the district court found the verdict “inconsistent with substantial justice” and ordered a new trial on inducement and damages only. At the second trial, the jury returned a verdict that Cisco induced infringement and awarded damages. The Federal Circuit reversed and remanded for a third trial on two grounds. First, although Commil’s patent is valid, the Federal Circuit held that Cisco’s “good faith belief” that the patent was invalid is a defense to induced infringement. Second, although Cisco had actual knowledge of Commil’s patent, the Federal Circuit held that this Court’s opinion in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), rendered erroneous and prejudicial the jury instruction based on DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006). The questions presented are:

  1. Whether the Federal Circuit erred in holding that a defendant’s belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b).
  2. Whether the Federal Circuit erred in holding that Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), required retrial on the issue of intent under 35 U.S.C. § 271(b) where the jury (1) found the defendant had actual knowledge of the patent and (2) was instructed that “[i]nducing third-party infringement cannot occur unintentionally.”.

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, conference 12/5/14, cert. petition granted limited to question one 12/5/14, argued 3/31/15 (oral argument transcript here).

CAFC OpinionCAFC Argument

WilmerHale represents cross-petitioner Cisco Systems, Inc.

Merit Briefs

Brief for Petitioner Commil USA, LLC

Brief for Respondent Cisco Systems, Inc. 

Reply Brief for Petitioner Commil USA, LLC

Amicus Briefs

Brief for AbbVie, Inc. in Support of Petitioner

Brief for the Biotechnology Industry Organization in Support of Petitioner

Brief for Gilead Sciences, Inc. in Support of Petitioner

Brief for Intellectual Property Owners Association in Support of Petitioner

Brief for MUSC Foundation for Research Development in Support of Petitioner

Brief for Pharmaceutical Research and Manufacturers of American (PhRMA) in Support of Petitioner

Brief for the United States in Support of Petitioner

Brief for Askeladden, LLC in Support of Respondent

Brief for the Computer and Communications Industry Association in Support of Respondent

Brief for DeLorme in Support of Respondent

Brief for Electronic Frontier Foundation in Support of Respondent

Brief for EMC Corporation, Acushnet Company, CITA-The Wireless Association, Dell Inc., Dropbox, Inc., Facebook, Inc., Garmin International, Inc., Google Inc., Hewlett-Packard Company, Intel Corporation, Oracle Corporation, QVC, Inc., Red Hat, Inc., SAS Institute Inc., Symmetry LLC, VIZIO, Inc., and XILINX, Inc. in Support of Respondent

Brief for General Pharmaceutical Association in Support of Respondent

Brief for Public Knowledge, the R Street Institute, the American Library Association, the Association of Research Libraries, the Association of College and Research Libraries, and the Center for Democracy and Technology in Support of Respondent

Brief for Sixteen Intellectual Property Law Professors in Support of Respondent

Brief for the American Intellectual Property Law Association in Support of Neither Party

Brief for Saurabh Vishnubhakat in Support of Respondent

WilmerHale represents respondent Cisco Systems, Inc.

WildTangent, Inc. v. Ultramercial, LLC, et al., No. 13-255

Question Presented:

When is a patent's reference to a computer, or computer-implemented service like the Internet, sufficient to make an unpatentable abstract concept patent eligible under 35 U.S.C. § 101?

Cert. petition filed 8/23/13, waiver by respondent Ultramercial, LLC filed 11/6/13, conference 12/6/13, response requested 12/6/13, conference 1/24/14, conference 6/26/14, GVR 6/30/14.

CAFC OpinionCAFC Argument

Kobe Properties Sarl, et al. v. Checkpoint Systems, Inc., No. 13-788

Questions Presented:

The Patent Act provides that a "court in exceptional cases may award reasonable attorney fees to the prevailing party." 35 U.S.C. § 285. Recent decisions by the Federal Circuit have held that, in the absence of litigation misconduct or misconduct in securing the patent, a case can be deemed "exceptional" if it is both objectively baseless and brought in bad faith. After living with this case for more than ten years, including overseeing a two-week jury trial, the District Court found that this case was objectively baseless and brought in bad faith, and awarded the defendants all of their fees. In its very first application of its decision in Highmark, Inc. v. Allcare Health Mgmt. Sys., Inc., 687 F.3d 1300 (Fed. Cir. 2012), the Federal Circuit panel gave no deference to the District Court's objective baselessness and exceptional case determinations and reversed. App. 15. The Federal Circuit subsequently denied rehearing and rehearing en banc.

The questions presented are:[FN1]

FN1. These are the same questions presented in the petitions for writ of certiorari filed in Highmark, supra, and in Octane Fitness, LLC v. Icon Health & Fitness, Inc., No. 12-1184. This Court granted certiorari in both of those cases on October 1, 2013, 134 S. Ct. 48 (2013), 134 S. Ct. 49 (2013), and they are now pending before this Court.

  1. Whether a district court's exceptional case finding under 35 U.S.C. § 285, based on its judgment that a suit is objectively baseless, is entitled to deference.
  2. More broadly, whether the Federal Circuit's above-described two-part test for determining whether a case is exceptional under 35 U.S.C. § 285 improperly appropriates a district court's discretionary authority to award attorney fees to prevailing accused infringers in contravention of statutory intent and this Court's precedent, thereby raising the standard for accused infringers to recoup their fees and encouraging patent plaintiffs to bring spurious patent cases to cause competitive harm or for other improper purposes.

Cert. petition filed 12/30/13, conference 4/18/14, conference 5/2/14, GVR 5/5/14.

CAFC OpinionCAFC Argument

LG Electronics, Inc., et al. v. InterDigital Communications, LLC, et al., No. 13-796

Questions Presented:

  1. Does a court have jurisdiction to review an agency action omitted from a statute’s detailed list of reviewable actions, because (a) the presumption favoring judicial review overrides the statutory text, or (b) the agency action purportedly has the same “operative effect, in terms of economic impact,” as actions the statute specifies as reviewable?
  2. Where the parties indisputably agreed to arbitrate issues of arbitrability, should a court conduct its own inquiry into the merits of the arbitrability issue before referring the matter to arbitration?

Cert. petition filed 12/31/13, waiver of respondent International Trade Commission filed 3/19/14, conference 4/18/14, GVR 4/21/14.

CAFC OpinionCAFC Argument

Teva Pharmaceuticals USA, Inc. et al., v. Sandoz, Inc., et al., No. 13-854

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, as the Federal Circuit requires (and as the panel explicitly did in this case), or only for clear error, as Rule 52(a) requires.

Cert. petition filed 1/10/14, conference 3/7/14, conference 3/21/14, conference 3/28/14, cert. petition granted 3/31/14, argued 10/15/14 (transcript here), vacated and remanded (opinion here) 1/20/15.

CAFC OpinionCAFC Argument

Merit Briefs

Brief for Petitioners, Teva Pharmaceuticals USA, Inc., et al.

Brief for Respondents, Sandoz Inc., Momenta Pharmaceuticals, Inc., Mylan Pharmaceuticals Inc., Mylan Inc., and Natco Pharma Ltd.

Reply Brief for Petitioners, Teva Pharmaceuticals USA, Inc., et al.

Amicus Briefs

Brief for the American Bar Association in Support of Neither Party

Brief for the Fédération Internationale des Conseils en Propriété Intellectuelle (FICPI) in Support of Neither Party

Brief for Intellectual Property Owners Association in Support of Neither Party

Brief for Professors Peter S. Menell, J. Jonas Anderson, and Arti K. Rai in Support of Neither Party

Brief for the United States in Support of Neither Party 

Brief for Intel Corporation, EMC Corporation, Facebook, Inc., Red Hat, Inc., and Verizon Communications Inc. in Support of Affirmance

Brief for Google Inc., Dell Inc., Hewlett-Packard Co., Salesforce.Com, Inc., Twitter, Inc., Yahoo! Inc., Acushnet Company, EBay Inc., Kaspersky Lab, Inc., Limelight Networks, Inc., Newegg Inc., QVC Inc., SAS Institute Inc., and Xilinx, Inc. in Support of Respondents

Brief for American Intellectual Property Law Association in Support of Neither Party

Brief for Fresenius Kabi USA, LLC in Support of Neither Party

Brief for Houston Intellectual Property Law Association in Support of Neither Party

Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369

Questions Presented:

  1. Does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations - so long as the ambiguity is not “insoluble” by a court - defeat the statutory requirement of particular and distinct patent claiming?
  2. Does the presumption of validity dilute the requirement of particular and distinct patent claiming?

Cert. petition filed 9/21/13, conference 1/10/14, cert. petition granted 1/10/14, argument set for 4/28/14, argued 4/28/14 (transcript here), vacated and remanded 6/2/14 (opinion here).

CAFC OpinionCAFC Argument

Merits Briefs

Brief for Petitioner, Nautilus, Inc.

Brief for Respondent, Biosig Instruments, Inc.

Reply Brief for Petitioner, Nautilus, Inc.

Amicus Briefs

Brief for AARP in Support of Petitioner

Brief for Amazon.com, Inc., Cisco Systems, Inc., Dell Inc., ESRI, Garmin International, Inc., Google Inc., J.C. Penney Corporation, Inc., Limelight Networks, Inc., Netflix, Inc., Newegg Inc., Red Hat, Inc., SAP America, Inc., SAS Institute Inc., and Verizon Communications Inc. in Support of Petitioner

Brief for Electronic Frontier Foundation and Public Knowledge in Support of Petitioner

Brief for Microsoft Corporation in Support of Petitioner

Brief for Nova Chemicals Inc., Aetna Inc., Micron Technology, Inc., General Motors LLC, EMC Corporation, Intel Corporation, and Thermo Fisher Scientific Inc. in Support of Petitioner

Brief for Biotechnology Industry Organization in Support of Respondent

Brief for Interval Licensing LLC in Support of Respondent

Brief for Nokia Corporation and Nokia USA Inc. in Support of Respondent

Brief for the American Bar Association in Support of Neither Party

Brief for American Intellectual Property Law Association in Support of Neither Party

Brief for the Intellectual Property Law Association of Chicago in Support of Neither Party

Brief for Intellectual Property Owners Association in Support of Neither Party

Brief for Professor Peter S. Menell in Support of Neither Party

Brief for Sigram Schindler Beteiligungsgesellschaft mbh, in Support of Neither Party

Brief for Yahoo! Inc. in Support of Reversal

Motion for Leave to File Brief Out of Time and Brief of Ananda M. Chakrabarty, Ph.D., in Support of Petitioner

Brief for the United States in Support of Respondent

Limelight Networks, Inc. v. Akamai Technologies, Inc., et al., No. 12-786, vide 12-800

Question Presented:

Akamai holds a patent claiming a method involving redirecting requests for Internet content and selecting optimal servers. The Federal Circuit acknowledged that neither Limelight nor customers using Limelight’s service directly infringe Akamai’s patent under 35 U.S.C. § 271(a) because no one performs all the steps of the patented method. App. 6a, 30a. The Federal Circuit nevertheless held that Limelight could be liable, under 35 U.S.C. § 271(b), for inducing infringement if (1) it knew of Akamai’s patent; (2) it performed all but one of the steps of the method; (3) it induced its customers to perform the final step of the claimed method; and (4) the customers performed that step. App. 30a. The question presented is: 

Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a). 

Cert. petition filed 12/28/12, 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, cert. petition granted 1/10/14, argued 4/30/14 (transcript here), reversed and remanded 6/2/14 (opinion here).

CAFC OpinionCAFC Argument

Merits Briefs

Brief for Petitioner, Limelight Networks, Inc.

Brief for Respondents, Akamai Technologies, Inc., and MIT

Reply Brief for Petitioner, Limelight Networks, Inc.

Amicus Briefs

Brief for Altera Corporation, HTC Corporation, HTC America, Inc., Smugmug, Inc. and Weatherford International in Support of Petitioner

Brief for Cargill, Incorporated; the Coca-Cola Company; General Mills, Inc.; and Hormel Foods Corporation in Support of Petitioner

Brief for the Clearing House and the Financial Services Roundtable in Support of Petitioner and Reversal

Brief for CTIA-The Wireless Association in Support of Petitioner

Brief for Electronic Frontier Foundation in Support of Petitioner

Brief for Google, Inc.; Cisco Systems, Inc.; Ebay Inc.; Facebook, Inc., Micron Technology, Inc.; Netflix, Inc.; Oracle Corporation; Red Hat, Inc.; SAP America Inc.; SAS Institute Inc.; Vizio, Inc.; Xilinx, Inc.; Yahoo! Inc. in Support of Petitioner

Brief for Microsoft Corporation in Support of Petitioner

Brief for Newegg and L.L. Bean in Support of Petitioner

Brief for Patent and Intellectual Property Law Scholars in Support of Petitioners on the Issue of Joint Infringement

Brief for Ten Intellectual Property Law Professors in Support of Petitioner on the Issue of Extraterritoriality

Brief for the United States in Support of Petitioner

Brief for American Intellectual Property Law Association ("AIPLA") in Support of Respondent

Brief for Bally Technologies, Inc., Bally Gaming, Inc., and SHFL Entertainment, Inc. in Support of Respondents

Brief for Biotechnology Industry Organization in Support of Respondents

Brief for Eli Lilly and Company, in Support of Respondents

Brief for Myriad Genetics, Inc. and Genomic Health, Inc. in Support of Respondent

Brief for Pharmaceutical Research and Manufacturers of America in Support of Respondents

Brief for Robert Mankes in Support of Respondents

Brief for William Mitchell College of Law Intellectual Property Institute in Support of Respondents

Brief for the American Bar Association in Support of Neither Party

Brief for Conejo Valley Bar Association in Support of Neither Party

Brief for Intellectual Property Owners Association in Support of Neither Party

Brief for International Business Machines Corp. in Support of Neither Party

Alice Corp. Pty. Ltd. v. CLS Bank International. et al., No. 13-298

Question Presented:

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

Cert. petition filed 9/4/13, conference 12/6/13, cert. petition granted 12/6/13, argued 3/31/14 (transcript here), affirmed 6/19/14 (opinion here).

CAFC OpinionCAFC Argument

Merit Briefs

Brief for Petitioner Alice Corp.

Brief for Respondents, CLS Bank International and CLS Services Ltd.

Reply Brief for Petitioner, Alice Corporation PTY. Ltd.

Amicus Briefs

Brief for Advanced Biological Laboratories, SA in Support of Petitioner

Brief for Dale R. Cook, Pro Se, in Support of Petitioner

Brief for Trading Technologies International, Inc., Cantor Fitzgerald, L.P., Cummins Inc., Scientific Games Corporation, Align Technology, Inc., et al., in Support of Petitioner

Brief for the American Antitrust Institute in Support of Respondents

Brief for the American Civil Liberties Union in Support of Respondents

Brief for BSA the Software Alliance in Support of Respondent

Brief for Checkpoint Software, Inc., Collateral Analytics, LLC, Daily Motion, Inc., Github, Inc., Guidewire Software, Inc., Hipmunk, Inc., Jive Software, Inc., Linkedin, Inc., Message Systems, Inc., Netflix, Inc., Newegg, Inc., Quantum Corporation, Rackspace, Inc., Ring Central, Inc., Trulia, Inc., Twitter, Inc., and Yelp Inc. in Support of Respondents

Brief for the Clearing House Association L.L.C. and Financial Services Roundtable in Support of Respondents

Brief for Computer & Communications Industry Association in Support of Respondents

Brief for Electronic Frontier Foundation in Support of Respondents

Brief for Google Inc., Amazon.com Inc., American Association of Advertising Agencies, Dell Inc., Facebook, Inc., Intuit Inc., Linkedin Corp., Netflix, Inc., Rackspace Hosting, Inc., Verizon Communications Inc., and Zynga Inc. in Support of Respondents

Brief for the Juhasz Law Firm, P.C. in Support of Respondents

Brief for Law, Business, and Economics Scholars in Support of Respondents

Brief for Professors Peter S. Menell and Jeffrey A. Lefstin in Support of Respondents

Brief for Public Knowledge and the Application Developers Alliance in Support of Respondents

Brief for Red Hat, Inc., in Support of Respondents

Brief for Richrelevance, Inc., Coupa Software, Inc., and Trulia, Inc., in Support of Respondents

Brief for Software Freedom Law Center, Free Software Foundation, and Open Source Initiative in Support of Respondents

Brief for Tony Dutra in Support of Respondents

Brief for the United States in Support of Respondents

Brief for the American Intellectual Property Law Association in Support of Neither Party

Brief for the Association of the Bar of the City of New York in Support of Neither Party

Brief for Brian R. Galvin in Support of Neither Party

Brief for Conejo Valley Bar Association in Support of Neither Party

Brief for IEEE-USA in Support of Neither Party

Brief for the Intellectual Property Law Association of Chicago in Support of Neither Party

Brief for Intellectual Property Owners Association in Support of Neither Party

Brief for International Association for the Protection of Intellectual Property (Association Internationale Pour La Protection De La Propriete Intellectuelle) in Support of Neither Party

Brief for International Business Machines Corporation in Support of Neither Party

Brief for James B. Lampert and David A. Chavous in Support of Neither Party

Brief for Margo Livesay, Ph.D., in Support of Neither Party, and Suggesting Reversal

Brief for the New York Intellectual Property Law Association in Support of Neither Party

Brief for Paul R. Michel in Support of Neither Party

Brief for Professor Lee Hollaar and Peter K. Trzyna in Support of Neither Party

Brief for Professor Robin Feldman and the U.C. Hastings Institute for Innovation Law in Support of Neither Party

Brief for Proove Biosciences, Inc. in Support of Neither Party

Brief for Retailers in Support of Neither Party

Brief for Ronald M. Benrey in Support of Neither Party

Brief for SHFL Entertainment, Inc. in Support of Neither Party

Brief for Sigram Schindler Beteiligungsgesellschaft Mbh, in Support of Neither Party

Brief for Microsoft Corporation, Adobe Systems Inc., and Hewlett-Packard Company in Support of Affirmance

Octane Fitness, LLC v. Icon Health & Fitness, Inc., No. 12-1184

Question Presented:

Does the Federal Circuit’s promulgation of a rigid and exclusive two-part test for determining whether a case is “exceptional” under 35 U.S.C. § 285 improperly appropriate a district court’s discretionary authority to award attorney fees to prevailing accused infringers in contravention of statutory intent and this Court’s precedent, thereby raising the standard for accused infringers (but not patentees) to recoup fees and encouraging patent plaintiffs to bring spurious patent cases to cause competitive harm or coerce unwarranted settlements from defendants?

Cert. petition filed 3/27/13, conference 6/20/13, conference 9/30/13, cert. petition granted 10/1/13, argued 2/26/14 (transcript here), reversed and remanded 4/29/14 (opinion here).

CAFC OpinionCAFC Argument

Merit Briefs

Brief for Petitioner, Octane Fitness, LLC

Brief for Respondent, ICON Health & Fitness, Inc.

Reply Brief for Petitioner, Octane Fitness, LLC

Amicus Briefs

Brief for 3M Co., General Electric Co., the Procter & Gamble Company, and Johnson & Johnson in Support of Petitioner

Brief for BSA, the Software Alliance in Support of Petitioner

Brief for Computer & Communications Industry Association; Newegg, Inc.; Pinterest; Quantum Corporation; and Ringcentral, Inc. in Support of Petitioner

Brief for Electronic Frontier Foundation, Application Developers Alliance, Engine Advocacy, and Public Knowledge in Support of Petitioner

Brief for the Food Marketing Institute in Support of Petitioner

Brief for Intellectual Property Owners Association in Support of Petitioner

Brief for United States in Support of Petitioner

Brief for Vermont, Nebraska, Alabama, Alaska, Arizona, Arkansas, Florida, Georgia, Hawaii, Iowa, Indiana, Kansas, Louisiana, Maine, Massachusetts, Maryland, Michigan, Minnesota, Mississippi, Missouri, Montana, New Mexico, North Dakota, Ohio, Oregon, Pennsylvania, South Dakota, Utah, Washington and Wyoming in Support of Petitioner

Brief for Apple, Inc. in Support of Neither Party

Brief for Google Inc., Cisco Systems, Inc., Facebook, Inc., HTC Corp., Intel Corporation, Linkedin Corp., Motorola Mobility LLC, Netflix, Newegg Inc., Rackspace Hosting, Inc., Salesforce.Com, Inc., T-Mobile USA, Inc., Verizon Communications Inc., and Vizio, Inc., in Support of Neither Party

Brief for the Intellectual Property Law Association of Chicago in Support of Neither Party

Brief for Professor Robin Feldman and the U.C. Hastings Institute for Innovation Law in Support of Neither Party

Brief for Yahoo! Inc., the New York Times Company, Netapp, Inc., Medtronic, Inc., General Mills, Inc., EMC Corporation, and Boston Scientific Corporation in Support of Petitioners

Brief for American Intellectual Property Law Association in Support of Neither Party

Brief for Apple, Inc. in Support of Neither Party

Highmark Inc. v. Allcare Health Management Systems, Inc., No. 12-1163

Question Presented:

IThe Patent Act provides that a “court in exceptional cases may award reasonable attorney fees to the prevailing party.” 35 U.S.C. § 285. A case is “exceptional” if it is objectively baseless and brought in bad faith. After living with this case for more than six years, the District Court found that it was objectively baseless and brought in bad faith, and it awarded fees. Over a strong dissent, a Federal Circuit panel reversed, holding that a district court's objective baselessness determination is reviewed “without deference.” Pet. App. 9a. The Federal Circuit denied rehearing en banc by a vote of six to five. One of the two pointed dissents from that denial accurately observed that the decision below “deviates from precedent *** and establishes a review standard for exceptional case findings in patent cases that is squarely at odds with the highly deferential review adopted by every regional circuit and the Supreme Court in other areas of law.” Pet. App. 191a. The question presented is:

Whether a district court's exceptional-case finding under 35 U.S.C. § 285, based on its judgment that a suit is objectively baseless, is entitled to deference.

Cert petition filed 3/25/13, conference 5/23/13, response requested 5/14/13, conference 9/30/13, cert. petition granted 10/1/13, argued 2/26/14 (transcript here), vacated and remanded 4/29/14 (opinion here).

CAFC OpinionCAFC Argument

Merit Briefs

Brief for Petitioner, Highmark, Inc.

Brief for Respondent, Allcare Health Management System, Inc.

Reply Brief for Petitioner, Highmark, Inc.

Amicus Briefs

Brief for United States in Support of Petitioner

Brief for American Intellectual Property Law Association in Support of Neither Party

Brief for Apple, Inc. in Support of Neither Party

Brief for Google Inc., Cisco Systems, Inc., Facebook, Inc., HTC Corp., Intel Corporation, Linkedin Corp., Motorola Mobility LLC, Netflix, Newegg Inc., Rackspace Hosting, Inc., Salesforce.Com, Inc., T-Mobile USA, Inc., Verizon Communications Inc., and Vizio, Inc., in Support of Neither Party

Brief for New York Intellectual Property Law Association in Support of Neither Party

Brief for Blue Cross Blue Shield Association in Support of Petitioner

Brief for Yahoo! Inc., the New York Times Company, Netapp, Inc., Medtronic, Inc., General Mills, Inc., EMC Corporation, and Boston Scientific Corporation in Support of Petitioners

Brief for Boston Patent Law Association in Support of Respondent

Brief for BSA The Software Alliance in Support of Respondent

Brief for Intellectual Property Owners Association in Support of Respondent

Brief for American Intellectual Property Law Association in Support of Neither Party

Medtronic, Inc. v. Boston Scientific Corp., et al., No. 12-1128

Question Presented:

In MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 137 (2007), this Court ruled that a patent licensee that believes that its products do not infringe the patent and accordingly are not subject to royalty payments is “not required … to break or terminate its … license agreement before seeking a declaratory judgment in federal court that the underlying patent is … not infringed.” The question presented is: 

Whether, in such a declaratory judgment action brought by a licensee under MedImmune, the licensee has the burden to prove that its products do not infringe the patent, or whether (as is the case in all other patent litigation, including other declaratory judgment actions), the patentee must prove infringement. 

Vided 12-1116, cert petition filed 3/14/13, conference 5/16/13, cert. petition granted 5/20/13, argument set for 11/5/13 (transcript here), reversed and remanded 1/22/14.

CAFC OpinionCAFC Argument

Merit Briefs

Brief for Petitioner, Medtronic, Inc.

Amicus Briefs

Brief for Legal Scholars in Support of Petitioner

Brief for the United States in Support of Petitioner

Brief for Tessera Technologies, Inc. in Support of Neither Party Suggesting Vacatur and Remand on Subject-Matter Jurisdictional Grounds

Brief of Koninklijke Philips, N.V., in Support of Respondents

Brief for Intellectual Property Owners Association in Support of Respondents

WilmerHale represents petitioner Medtronic, Inc.

Broadcom Corp. v. Azure Networks, LLC, et al., No. 12-1475

Questions Presented:

  1. Did the Court's decision in Stewart Organization, Inc. v. Ricoh Corp., 487 U.S. 22 (1988), change the standard for enforcement of clauses that designate an alternative federal forum, limiting review of such clauses to a discretionary, balancing-of-conveniences analysis under 28 U.S.C. § 1404(a)?
  2. If so, how should district courts allocate the burdens of proof among parties seeking to enforce or to avoid a forum-selection clause?

Cert. petition filed 6/19/13, conference 9/30/13, GVR 12/9/13.

CAFC Opinion

WilmerHale respresents petitioner Broadcom Corp.

Upsher-Smith Laboratories, Inc. v. Louisiana Wholesale Drug Co., Inc. et al., No. 12-265

Question Presented:

Whether the Third Circuit erred by holding, contrary to the Second, Eleventh, and Federal Circuits, that an agreement settling patent litigation that does not restrict competition outside the scope of the exclusionary right granted by the patent itself may presumptively violate the antitrust laws. 

Vided 12-245, cert petition filed 8/29/12, conference 12/7/12, GVR in light of FTC v. Actavis 6/24/13.

CA3 Opinion, CA3 Argument: Part 1, CA3 Argument: Part 2

Merck & Co., Inc. v. Louisiana Wholesale Drug Co., Inc., et al., No. 12-245

Question Presented:

Whether the federal antitrust laws permit a brand name manufacturer that holds the patent for a drug to enter into a settlement of patent litigation with a prospective generic manufacturer, where the settlement includes a payment from the brand manufacturer to the generic manufacturer but does not exclude competition beyond the scope of the patent. 

Cert. petition filed 8/24/12, conference 12/7/12.

CA3 Opinion, CA3 Argument: Part 1, CA3 Argument: Part 2

Bowman v. Monsanto Co., No. 11-796

Question Presented:

Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies?

Cert. petition filed 12/20/11, response requested 1/26/12, conference 3/30/12, CVSG 4/2/12, conference 9/24/12, conference 10/5/12,cert. petition granted 10/5/12, argued 2/19/13 (transcript here), affirmed 5/13/13 (opinion here), rehearing petition filed 6/7/13.

CAFC OpinionCAFC Argument

Merit Briefs

Brief for Petitioner Vernon Hugh Bowman

Brief for Respondents Monsanto Company, et al.

Reply Brief for Petitioner, Vernon Hugh Bowman

Amicus Briefs

Brief for the American Antitrust Institute, National Farmers Union, Food & Water Watch, Organization for Competitive Markets, and National Family Farm Coalition in Support of Petitioner

Brief for Automotive Aftermarket Industry Association, Automotive Parts Remanufacturers Association, and International Imaging Technology Council in Support of Petitioner

Brief for the Center for Food Safety and Save Our Seeds in Support of Petitioner

Brief for Knowledge Ecology International in Support of Petitioner

Brief for the Public Patent Foundation in Support of Petitioner

Brief for Agilent Technologies, Inc., Illumina, Inc., Life Technologies Corp., Promega Corp., Qiagen N.V., and Roche Molecular Systems, Inc. in Support of Respondents

Brief for American Soybean Association, Illinois Soybean Association, Indiana Soybean Alliance, Iowa Soybean Association, Kansas Soybean Association, Kentucky Soybean Association, Michigan Soybean Association, Minnesota Soybean Growers Association, Mississippi Soybean Association, Missouri Soybean Association, Nebraska Soybean Association, North Dakota Soybean Growers Association, Ohio Soybean Association, Tennessee Soybean Association, Virginia Soybean Association, And Wisconsin Soybean Association, National Corn Growers Association, National Association of Wheat Growers, American Sugarbeet Growers Association, and Growers For Biotechnology in Support of Respondents

Brief for the American Seed Trade Association in Support of Respondents

Brief for the Biotechnology Industry Organization in Support of Respondents

Brief for BSA | The Software Alliance in Support of Respondents

Brief for CHS Inc. in Support of Respondents

Brief for CropLife International in Support of Respondents

Brief for Economists in Support of Respondents

Brief for Intellectual Property Owners Association in Support of Respondents

Brief for Law Professor Christopher M. Holman in Support of Respondents

Brief for the New York Intellectual Property Law Association in Support of Respondents

Brief for Pioneer Hi-Bred International, Inc. in Support of Respondents Monsanto Company, Et Al.

Brief for Washington Legal Foundation in Support of Respondents

Brief for CropLife America in Support of Affirmance

Brief for the American Intellectual Property law Association in Support of Affirmance

Brief for the United States in Support of Affirmance

Brief for ABayhdole25, Inc. in Support of Affirmance

Brief for Wisconsin Alumni Research Foundation et al. in Support of Affirming the Federal Circuit

WilmerHale represents respondent Monsanto.

Gunn v. Minton, No. 11-1118

Questions Presented:

Did the Federal Circuit depart from the standard this Court articulated in Grable & Sons Metal Products, Inc. v. Darue Eng’g & Mfg., 545 U.S. 308 (2005 ), for “arising under” jurisdiction of the federal courts under 28 U.S.C. § 1338, when it held that state law legal malpractice claims against trial lawyers for their handling of underlying patent matters come within the exclusive jurisdiction of the federal courts? Because the Federal Circuit has exclusive jurisdiction over appeals involving patents, are state courts and federal courts strictly following the Federal Circuit’s mistaken standard, thereby magnifying its jurisdictional error and sweeping broad swaths of state law claims - which involve no actual patents and have no impact on actual patent rights - into the federal courts?

Cert. petition filed 3/9/12, waiver of respondent Vernon Minton filed 3/23/12, response requested 4/12/12, conference 10/5/12, cert. petition granted 10/5/12, argued 1/16/13 (transcript here), reversed and remanded 2/20/13 (decision here).

Texas Supreme Court OpinionTexas Supreme Court Argument

Merit Briefs

Brief for Petitioners Jerry W. Gunn, Individually; Williams Squires & Wren, L.L.P.; James E. Wren, Individually; Slusser & Frost, L.L.P.; William C. Slusser, Individually; Slusser Wilson & Partridge, L.L.P.; and Michael E. Wilson, Individually

Brief for Respondent Vernon F. Minton

Reply Brief for PetitionersJerry W. Gunn, Individually; Williams Squires & Wren, L.L.P.; James E. Wren, Individually; Slusser & Frost, L.L.P.; William C. Slusser, Individually; Slusser Wilson & Partridge, L.L.P.; and Michael E. Wilson, Individually

Amicus Briefs

Brief for American Intellectual Property Law Association in Support of Petitioners

Brief for Law Professors in Support of Petitioners

Brief for Ronald E. Mallen in Support of Petitioners

Brief for the Intellectual Property Law Association of Chicago in Support of Respondent

Brief for Los Alamos National Security, LLC; the Regents of the University of California; UChicago Argonne, LLC; the Alliance for Sustainable Energy, Llc; Battelle Memorial Institute; Sandia Corporation; Ut-Battelle, LLC; and Lawrence Livermore National Security, LLC in Support of Respondent

Brief for Wood, Herron & Evans, LLP in Support of Respondent

The Ass’n for Molecular Pathology, et al. v. Myriad Genetics, Inc., et al., No. 12-398

Questions Presented:

Many patients seek genetic testing to see if they have mutations in their genes that are associated with a significantly increased risk of breast or ovarian cancer. Respondent Myriad Genetics obtained patents on two human genes that correlate to this risk, known as BRCA1 and BRCA2. These patents claim every naturally-occurring version of those genes, including mutations, on the theory that Myriad invented something patent-eligible simply by removing (“isolating”) the genes from the body. Petitioners are primarily medical professionals who regularly use routine, conventional genetic testing methods to examine genes, but are prohibited from examining the human genes that Myriad claims to own. This case therefore presents the following questions:

  1. Are human genes patentable?
  2. Did the court of appeals err in upholding a method claim by Myriad that is irreconcilable with this Court's ruling in Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012)?
  3. Did the court of appeals err in adopting a new and inflexible rule, contrary to normal standing rules and this Court's decision inMedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007), that petitioners who have been indisputably deterred by Myriad's “active enforcement” of its patent rights nonetheless lack standing to challenge those patents absent evidence that they have been personally threatened with an infringement action?

Cert. petition filed 9/25/12, conference 11/30/12, cert. petition granted 11/30/12 (limited to question 1), argued 4/15/13 (transcript here), affirmed in part, reversed in part 6/13/13 (decision here).

CAFC OpinionCAFC Argument

Merit Brief

Brief for Petitioners, the Association for Molecular Pathology, et al.

Brief for Respondents, Myriad Genetics, Inc.

Amicus Briefs

Brief for AARP in Support of Petitioners

Brief for American Medical Association, American Society of Human Genetics, American College of Obstetricians and Gynecologists, American Osteopathic Association, American College of Legal Medicine, and the Medical Society of the State of New York in Support of Petitioners

Brief for Canavan Foundation, Claire Altman Heine Foundation, March of Dimes Foundation, Facing Our Risk of Cancer Empowered, National Association for Pseudoxanthoma Elasticum, and Ovarian Cancer National Alliance in Support of Petitioners

Brief for the Ethics & Religious Liberty Commission of the Southern Baptist Convention and Prof. D. Brian Scarnecchia in Support of Petitioners

Brief for Fifteen Law Professors in Support of Petitioners

Brief for Genedx and Law Professors in Support of Petitioners

Brief for Genformatic LLC in Support of Petitioners

Brief for International Center for Technology Assessment, Council for Responsible Genetics, Greenpeace, Indigenous People Council on Biocolonialism, Friends of the Earth, and Center for Environmental Health in Support of Petitioners

Brief for Invitae Corporation in Support of Petitioners

Brief for Kali N. Murray and Erika R. George in Support of Petitioners

Brief for Knowledge Ecology International in Support of Petitioners

Brief for the National Women’s Health Network, Reproductive Health Technologies Project, Disability Rights Legal Center, Forward Together, the Center for Genetics and Society, the Pro-Choice Alliance for Responsible Research, Alliance for Humane Biotechnology, G. Michael Roybal, Md, Mph, and Anne L. Peters, Md in Support of Petitioners

Brief for Professor Eileen M. Kane in Support of Petitioners

Brief for Academics in Law, Medicine, Health Policy and Clinical Genetics in Support of Neither Party

Brief for the American Intellectual Property Law Association in Support of Affirmance but in Support of Neither Party

Brief for CLS Bank International in Support of Neither Party

Brief for the Institute of Professional Representatives Before the European Patent Office (EPI) in Support of Neither Party

Brief for the Juhasz Law Firm, P.C. in Support of Neither Party

Brief for Eric S. Lander in Support of Neither Party

Brief for Fédération Internationale Des Conseils en Propriété Intellectuelle in Support of Neither Party

Brief for Sigram Schindler Beteiligungsgesellschaft mbH in Support of Neither Party

Brief for the United States in Support of Neither Party

Brief for James D. Watson, Ph.D. in Support of Neither Party

Brief for the American Bar Association in Support of Respondents

Brief for Animal Health Institute and Merial Limited in Support of Respondents

Brief for the Biotechnology Industry Organization in Support of Respondents

Brief for the Boston Patent Law Association in Support of Respondents

Brief for the Coalition for 21st Century Medicine in Support of Respondents

Brief for Dr. Ananda Mohan Chakrabarty in Support of Respondents

Brief for Drs. Larry Geier, William Harb, Adam Ofer, and Donald Aptekar in Support of Respondents

Brief for Croplife International in Support of Respondents

Brief for Federal Circuit Bar Association in Support of Respondents

Brief for the Nanobusiness Commercialization Association in Support of Respondents

Brief for Genentech, Inc.; Roche Molecular Systems, Inc.; Ventana Medical Systems, Inc.; Roche Diagnostics Operations, Inc.; Roche Diagnostics Corporation; and Hoffmann-La Roche Inc. in Support of Respondents

Brief for Gilead Sciences, Inc., Elan Pharmaceuticals, Inc. Confluence Life Sciences, Inc., Euclises Pharmaceuticals, Inc. & Biogenerator, in Support of Respondents

Brief for InHouse Patent Counsel LLC in Support of Respondents

Brief for Immatics Biotechnologies, Gmbh in Support of Respondents

Brief for the Intellectual Property Amicus Brief Clinic of the Franklin Pierce Center for Intellectual Property at the University of New Hampshire School of Law in Support of Respondents

Brief for Intellectual Property Owners Association in Support of Respondents

Brief for Lynch Syndrome International in Support of Respondents

Brief for MPEG LA, LLC in Support of Respondents

Brief for National Venture Capital Association in Support of Respondents

Brief for the New York Intellectual Property Law Association in Support of Respondents

Brief for the Pharmaceutical Research and Manufacturers of America in Support of Respondents

Brief for the Philadelphia Intellectual Property Law Association in Support of Respondent

Brief for Professor Jeffrey A. Lefstin in Support of Respondents

Brief for University of Baltimore/Johns Hopkins University Center for Medicine & Law, and Law Professors Gregory Dolin, M.D., et al. in Support of Respondents

Brief for Target Discovery, Inc. in Support of Affirmance

FTC v. Actavis, Inc., et al., No. 12-416

Question Presented:

Federal competition law generally prohibits an incumbent firm from agreeing to pay a potential competitor to stay out of the market. See Palmer v. BRG of Ga., Inc., 498 U.S. 46, 49-50 (1990). This case concerns agreements between (1) the manufacturer of a brand-name drug on which the manufacturer assertedly holds a patent, and (2) potential generic competitors who, in response to patent-infringement litigation brought against them by the manufacturer, defended on the grounds that their products would not infringe the patent and that the patent was invalid. The patent litigation culminated in a settlement through which the seller of the brand-name drug agreed to pay its would-be generic competitors tens of millions of dollars annually, and those competitors agreed not to sell competing generic drugs for a number of years. Settlements containing that combination of terms are commonly known as “reverse payment” agreements. The question presented is as follows:

Whether reverse-payment agreements are per se lawful unless the underlying patent litigation was a sham or the patent was obtained by fraud (as the court below held), or instead are presumptively anticompetitive and unlawful (as the Third Circuit has held).

Cert. petition filed 10/4/12, conference 12/7/12, cert. petition granted 12/7/12, argued 3/25/13 (transcript here), reversed and remanded 6/17/13 (decision here).

CA11 Opinion, CA11 Argument not available.

Merit Briefs

Brief for the Petitioner, FTC

Brief for Respondent, Actavis, inc

Brief for Respondent, Par/Paddock

Brief for Respondent, Solvay Pharmaceuticals, Inc.

Reply Brief for the Petitioner, FTC

Amicus Briefs

Brief for 118 Law, Economics, and Business Professors and the American Antitrust Institute in Support of Petitioner

Brief for AARP, American Medical Association, National Legislative Association for Prescription Drug Prices and U.S. Public Interest Research Groups in Support of Petitioner

Brief for America’s Health Insurance Plans in Support of Petitioner

Brief for Apotex, Inc. in Support of Petitioner

Brief for Louisiana Wholesale Drug Company, Inc., CCS Pharmacy, Inc., Rite Aid Corporation, Walgreen Co., Eckerd Corporation, the Kroger Co., Safeway Inc., Albertson’S, Inc., Hy-Vee, Inc., and Maxi Drug, Inc. D/B/A Brooks Pharmacy in Support of Petitioner

Brief for Knowledge Ecology International in Support of Petitioner

Brief for the National Association of Chain Drug Stores in Support of Petitioner

Brief for Representative Henry A. Waxman in Support of Petitioner

Brief for the Public Patent Foundation in Support of Petitioner

Brief for the States of New York, Arizona, Arkansas, California, Colorado, Connecticut, Delaware, Hawaii, Idaho, Illinois, Iowa, Kentucky, Louisiana, Maine, Maryland, Massachusetts, Michigan, Minnesota, Mississippi, Missouri, Nevada, New Hampshire, New Mexico, North Carolina, North Dakota, Ohio, Oregon, Pennsylvania, Rhode Island, South Carolina, South Dakota, Tennessee, Utah, Vermont, Washington, And Wyoming, the District of Columbia, and the Commonwealth of Puerto Rico in Support of Petitioners

Brief for the American Intellectual Property Law Association in Support of Respondents

Brief for Antitrust Economists in Support of Respondents

Brief for Bayer AG and Bayer Corp. in Support of Respondents

Brief for David W. Opderbeck and Erik Lillquist in Support of Respondents

Brief for Enavail, Llc in Support of Respondents

Brief for Generic Manufacturers Upsher-Smith Laboratories, Inc.; Teva Pharmaceuticals Usa, Inc.; Ranbaxy Pharmaceuticals, Inc.; Mylan Pharmaceuticals Inc.; and Impax Laboratories, Inc. in Support of Respondents

Brief for the Generic Pharmaceutical Association in Support of Respondents

Brief for Health Economics and Law Professors in Support of Respondents

Brief for Law Professors Gregory Dolin, Kent Bernard, Et Al. in Support of Respondents

Brief for Mediation and Negotiation Professionals in Support of Respondents

Brief for Merck & Co., Inc. in Support of Respondents

Brief for National Association of Manufacturers in Support of Respondents

Brief for New York Intellectual Property Law Association in Support of Respondents

Brief for Pharmaceutical Research and Manufacturers of America (Phrma) in Support of Respondents

Brief for Shire PLC in Support of Respondents

Brief for Washington Legal Foundation in Support of Respondents

Byrne v. Wood, Herron & Evans, LLP, et al., No. 11-1497

Questions Presented:

Did the Federal Circuit depart from the standard this Court articulated in Grable & Sons Metal Products, Inc. v. Darue Eng'g & Mfg., 545 U.S. 308 (2005), for “arising under” jurisdiction of the federal courts under 28 U.S.C. § 1338, when it held that state law legal malpractice tort claims which involve no actual patents and have no impact on actual patent rights come within the exclusive jurisdiction of the federal courts because a patent was involved in underlying litigation?

Has the Federal Circuit's overly broad and mistaken standard caused a conflict among state courts and federal courts regarding federal jurisdiction with some other courts declining to assume federal jurisdiction of these state law tort cases?

Cert petition filed 6/8/12, conference 10/5/12, conference 2/22/13, GVR in light of Gunn v. Minton, 2/25/13.

CAFC OpinionCAFC Argument

USPPS, Ltd. v. Avery Dennison Corp., et al., No. 12-539

Questions Presented:

  1. When a federal circuit court of appeals accepts jurisdiction in an original appeal does the jurisdictional decision become “law-of-the-case” and final in a subsequent appeal in the same case unless the decision was not plausible?
  2. Does section 1338 sweep any state law claim involving malpractice, breach of fiduciary duty or fraud that touches on patent law irrevocably into federal court?
  3. Does the federal circuit’s decision in this case disregard the Fifth Circuit’s decision in the first appeal in this case and the Texas Supreme Court decisions that to start running of limitations in fraud and breach of fiduciary cases the plaintiff must discover wrongful conduct on the part of the defendants rising to the level of breach of fiduciary duty and fraud?

Cert. petition filed 9/13/12, response requested 1/3/13, conference 4/12/13, GVR in light of Gunn v. Minton 4/15/13.

CAFC OpinionCAFC Argument

WildTangent, Inc. v. Ultramercial, LLC, et al., No. 11-962

Question Presented:

Whether, or in what circumstances, a patent’s general and indeterminate references to “over the Internet” or at “an Internet website” are sufficient to transform an unpatentable abstract idea into a patentable process for purposes of 35 U.S.C. § 101.

Cert. petition filed 2/2/12, waiver filed by respondent Ultramercial, LLC 3/22/12, response requested 3/30/12, conference 5/17/12, GVR 5/21/12.

CAFC OpinionCAFC Argument

Caraco Pharm. Laboratories, Ltd., et al. v. Novo Nordisk A/S, et al., No. 10-844

Question Presented:

Whether the counterclaim provision of the Hatch-Waxman Act, 21 U.S.C. § 355(j)(5)(C)(ii)(I), applies where (1) there is “an approved method of using the drug” that “the patent does not claim,” and (2) the brand submits “patent information” to the FDA that misstates the patent’s scope, requiring “correct[ion].”

Cert. petition filed 12/23/10.

Conference 3/25/11; CVSG 3/28/11; conference 6/23/11; cert. petition granted 6/27/11; motion of the Solicitor General for leave to participate in oral arguments as amicus curiae and for divided argument granted on 11/7/11, argued 12/5/11, reversed 4/17/12.

CAFC OpinionCAFC ArgumentSupreme Court ArgumentSupreme Court Opinion

Opinion Below

United States Amicus Brief ISO Cert.Mylan Pharmaceuticals Inc. Amicus Brief ISO Cert.Generic Pharmaceutical Association Amicus Brief ISO Cert.AARP and U.S. Public Interest Research Group Amicus Brief ISO Cert.Rep. Henry A. Waxman Amicus Brief ISO Cert.Brief of Petitioners Caraco Pharmaceutical Lab., et alThe Pharmaceutical Research and Manufacturers of America Amicus BriefBrief of Respondents Novo Nordisk.

Kappos v. Hyatt, No. 10-1219

Questions Presented:

When the U.S. Patent and Trademark Office (PTO) denies an application for a patent, the applicant may seek judicial review of the agency's final action through either of two avenues. The applicant may obtain direct review of the agency's determination in the Federal Circuit under 35 U.S.C. § 141. Alternatively, the applicant may commence a civil action against the Director of the PTO in federal district court under 35 U.S.C. § 145. In a Section 145 action, the applicant may in certain circumstances introduce evidence of patentability that was not presented to the agency. The questions presented are as follows:

  1. Whether the plaintiff in a Section 145 action may introduce new evidence that could have been presented to the agency in the first instance.
  2. Whether, when new evidence is introduced under Section 145, 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.

Cert. petition filed 4/7/11.

Conference 6/23/11; cert. petition granted 6/27/11, argued 1/9/12, affirmed and remanded 4/18/12.

CAFC ArgumentSupreme Court ArgumentSupreme Court Opinion

Opinion Below

Intel Corporation Amicus Brief ISO Cert.IEEE-USA Amicus BriefVerizon Communications Inc., Google Inc., Hewlett-Packard Co., HTC Corp. Amicus BriefNY Intellectual Property Law Association Amicus BriefIntellectual Property Owners Association Amicus Brief

Mayo Collaborative Services, dba Mayo Medical Laboratories, et al. v. Prometheus Labs., Inc., No. 10-1150

Question Presented:

Whether 35 U.S.C. § 101 satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occuring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve "transformations" of body chemistry.

Cert. petition filed 3/17/11.

Conference 6/16/11; cert. petition granted 7/20/11; motion of the Solicitor General for leave to participate in oral argument as amicus curiae and for divided argument granted on 11/22/11, argued 12/7/11. Reversed 3/20/12.

CAFC ArgumentSupreme Court ArgumentSupreme Court Opinion

Opinion Below

Verizon Communications Inc. and Hewlett-Packard Co. Amicus Brief ISO Cert.United States Amicus BriefMicrosoft Co., EMC Co. and Intel Co. Amicus BriefInternationale Pour La Protection De La Propriété Intellectuelle and International Association for the Protection of Intellectual Property (U.S.) Amicus Brief

WilmerHale filed an amicus brief in support of neither party on behalf of Roche Molecular Systems, Inc., et al.

Eisai Co. Ltd. v. Teva Pharm.USA, Inc., No. 10-1070

Questions Presented:

When a case becomes moot by the happenstance of a third party's independent action after the court of appeals issues a judgment but while a petition for rehearsing is still pending, should the court of appeals vacate the judgment upon the request of the aggrieved party?

Cert. petition filed 2/25/11.

Waiver filed 3/11/11; conference 4/15/11; response requested 3/30/11; conference 5/26/11; conference 6/2/11; conference 6/9/11; GVR (mootness) 6/13/11.

Opinion Below

Microsoft Corp. v. i4i Ltd. P’ship, No. 10-290

Question Presented:

Whether the court of appeals erred in holding that Microsoft’s invalidity defense must be proved by clear and convincing evidence.

Cert. petition filed 8/27/10.

Conference 11/23/10; cert. petition granted 11/29/10argument 4/18/11; affirmed 6/9/11.

Opinion Below

WilmerHale represents respondent i4i Limited Partnership, et al.

Board of Trustees of the Leland Stanford Junior University v. Roche Molecular System., Roche Diagnostics Corporation, Roche Diagnostics Operations, Inc., No. 09-1159

Question Presented:

Whether a federal contractor university's statutory right under the Bayh-Dole Act, 35 U.S.C. §§ 200-212, in inventions arising from federally funded research can be terminated unilaterally by an individual inventor through a separate agreement purporting to assign the inventor's rights to a third party?

Cert. petition filed 3/22/10.

Conference 6/24/10; CVSG 6/28/10; conference 10/29/10; cert. petition granted 11/1/10argument 2/28/11; affirmed 6/9/11.

Opinion Below

WilmerHale represents respondent Roche Molecular Systems, Inc., et al.

Global-Tech Apppliances and Pentalpha Enterprises, Ltd., v. SEB S.A., No. 10-6

Question Presented:

Whether the legal standard for the state of mind element of a claim for actively inducing infringement under 35 U.S.C. § 271(b) is "deliberate indifference of a known risk" that an infringement may occur, as the Court of Appeals for the Federal Circuit held, or "purposeful, culpable expression and conduct" to encourage an infringement, as this Court taught in MGM Studios, Inc. v. Grokster, Ltd., 545 U.S. 913, 937, 125 S. Ct. 2764, 2780, 162 L. Ed. 2d 781, 801 (2005)?

Cert. petition filed on 6/23/10.

Conference 10/8/10; cert. petition granted 10/12/10argument 2/23/11; affirmed 5/31/11.

Opinion Below

WilmerHale filed an amicus brief in support of petitioner on behalf of Cisco Systems, Inc., et al.

Mayo Collaborative Services (d/b/a Mayo Medical Laboratories) and Mayo Clinic Rochester v. Prometheus Laboratories, Inc., No. 09-490

Question Presented:

Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between patient test results and patient health, so that the claim effectively preempts all uses of these naturally occurring correlations?

Cert. petition filed on 10/22/09.

Conference 1/22/10; cert. petition granted on 6/29/10; judgment vacated and case remanded for further consideration in light ofBilski v. Kappos, 561 U.S. __ (2010).

Classen Immunotherapies, Inc.,v. Biogen Idec, Glaxosmithkline and Merck & Co, Inc., No. 08-1509

Question Presented:

Is the CAFC's test for patentability under 35 U.S.C. §101, as defined in Bilski, the "machine or transformation test" appropriate for determining patentability of a method of using pharmaceuticals and "medical activities"? Do pharmaceuticals including vaccines fall under the definition of an apparatus? Does medical treatment including immunization constitute transformation. Are methods of diagnosing disease or assays for detecting drug adverse events patentable under Bilski and if not is Bilski too narrow or should it not apply to medical activities? (If the court accepts cert in Bilski, this petition for cert should be stayed pending the outcome of Bilski).

Cert. petition filed on 5/11/09.

Conference 11/24/09; cert. petition granted on 6/29/10; judgment vacated and case remanded for further consideration in light ofBilski v. Kappos, 561 U.S. __ (2010).

Bernard L. Bilski and Rand A. Warsaw v. John J. Doll, Acting Under Secretary of Commerce for Intellectual Property and Acting Director of The United States Patent and Trademark Office, No. 08-964

Questions Presented:

  1. Whether the Federal Circuit erred by holding that a "process" must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing ("machine-or-transformation" test), to be eligible for patenting under 35 U.S.C. § 101, despite this Court's precedent declining to limit the broad statutory grant of patent eligibility for "any" new and useful process beyond excluding patents for "laws of nature, physical phenomena, and abstract ideas."?
  2. Whether the Federal Circuit's "machine-or-transformation" test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect "method[s] of doing or conducting business.” 35 U.S.C. § 273 ?

Cert. petition filed on 1/28/09.

Government Opposition filed 5/1/09, available herecert. petition granted on 6/1/09, argument 11/9/09, affirmed 6/28/10.