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.
Internet Machines, LLC v. Cyclone Microsystems, Inc., No. 14-1088
Section 271(a) of the Patent Act provides that “whoever ... sells any patented invention, within the United States ... infringes the patent.” The question presented is whether sales of an infringing product that occur within the United States are beyond the reach of the Patent Act because the products are manufactured and initially shipped overseas, even though they are ultimately imported into and used in the United States.
Cert. petition filed 2/23/15, motion to dismiss petition pursuant to Rule 46 filed 5/1/15. Petition dismissed—Rule 46, 6/5/15.
Cyclone Microsystems, Inc. v. Internet Machines, LLC, No. 14-1043
Under controlling Supreme Court precedent, a patentee seeking to recover for patent infringement “must in every case give evidence tending to separate or apportion the defendant's profits and the patentee’s damages between the patented feature and the unpatented features.” Here, in conflict with that important precedent, the District Court, over the Petitioners’ objections, permitted the patentee to obtain royalties on both patented and unpatented features, holding that, because the patentee’s expert “used the smallest salable unit as his royalty base, additional apportionment is unwarranted and the narrow exception of the entire market value rule is inapplicable.” On appeal, the Federal Circuit affirmed the damages award based on that model. Was it proper for the Federal Circuit to sanction a damages award that is in direct conflict with this Court’s controlling precedent?
Cert. petition filed 1/23/15, motion to dismiss petition pursuant to Rule 46 filed 5/4/15. Petition dismissed—Rule 46, 6/5/15.
Scientific Plastic Products, Inc. v. Biotage AB, No. 14-1186
Despite no evidence of a known problem in the prior art, the Court of Appeals for the Federal Circuit ruled below that evidence “implicitly” showing a “potential” problem is sufficient to combine references is an obviousness determination. Never before has any court held that a person of ordinary skill would have been prompted to make a combination based on “an implicit” “potential” problem. In KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398 (2006), this Court reaffirmed that patent “obviousness” depends on whether evidence shows that persons of ordinary skill in the art had a “reason to combine” earlier technologies into the claimed invention, such as to address a “known problem.” Since all inventions necessarily had the “potential” to have been made, the KSR standard supplies rigor to prevent nontechnical judges and juries from using hindsight, or using standardless yardsticks tantamount to “the length of the chancellor’s foot.” A majority of the divided panel in this case rejected the balance and rigor of the KSR test in favor of tautological standard that asks whether a “potential” (not “known”) problem existed in the art.
The question presented is:
Whether an “implicit” acknowledgment of a “potential” problem or “concern,” which Judge Moore, in dissent, declared “according to all of the evidence on record, never actually existed,” is consistent with this Court’s anti-hindsight jurisprudence requiring substantial evidence of a “known problem” to provide a reason for combining references for an obviousness determination.
Cert. petition filed 3/19/15, conference 5/28/15. Petition denied 6/1/15.
Packard v. Lee, No. 14-655
- Can the Federal Circuit affirm an administrative agency decision on a novel procedural ground that the agency did not consider?
- Can the United States Patent and Trademark Office use a standard that this Court expressly rejected in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), to decide whether patent claims violate the definiteness requirement of 35 U.S.C. § 112(b)?
WilmerHale represents petitioner Thomas G. Packard.
Cert. petition filed 12/2/14, conference 5/14/15. Petition denied 5/18/15.