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. 

MobileMedia Ideas LLC v. Apple Inc., No. 15-206

Questions Presented:

  1. Did the US Court of Appeals for the Federal Circuit violate due process by summarily reversing a patent infringement judgment based upon a new and unprompted claim construction without remand to the district court in denial of Petitioner’s right to present evidence at trial and fully and fairly litigate the matter of infringement for the first time based on the new construction?
  2. What standard should apply to denying remand for trial on a new claim construction used by the US Court of Appeals for the Federal Circuit to summarily reverse a patent infringement judgment?
  3. Has the US Court of Appeals for the Federal Circuit effectively rendered Markman hearings and rulings meaningless by creating an unworkable, burdensome and judicially inefficient precedent that will require plaintiffs to present evidence at trial of every imaginable claim construction?

Cert petition filed 8/13/15, waiver of respondent Apple Inc. filed 8/31/15, conference 9/28/15. Petition denied 10/5/15.

CAFC OpinionCAFC Argument

Pulse Electronics, Inc. v. Halo Electronics, Inc., No. 15-121 (Vide 14-1513)

Questions Presented:

Cross-petitioners Pulse Electronics, Inc. and Pulse Electronics Corporation (collectively, “Pulse”) 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. 14-1513 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 that the Court can first consider whether the patent claims that form the basis of the issues raised in that petition are valid or invalid. The single question presented by this conditional cross-petition is:

Whether the Federal Circuit erred by failing to consider obviousness as a de novo legal issue, and, as a result, not holding that all the asserted claims of the patents-in-suit, in light of the correct scope and content of the prior art, are invalid as a matter of law, where (a) all of the claim limitations are present in the prior art, (b) the prior art is clearly combinable, (c) the alleged secondary considerations are irrelevant or unproven, and (d) there is no proof of any nexus of any alleged secondary consideration to the claimed inventions.

Cert petition filed 7/24/15, conference 9/28/15. Petition denied 10/5/15.

CAFC OpinionCAFC Argument

W.L. Gore & Associates, Inc. v. Bard Peripheral Vascular, Inc., No. 15-41

Questions Presented:

The second paragraph of 35 U.S.C. § 261 provides, with emphasis added:

Applications for patent, patents, or any interest therein, shall be assignable in law by an instrument in writing. The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.

The question presented is:

Does Section 261 require that a grant or conveyance of an exclusive patent license be in writing?

Cert petition filed 7/7/15, conference 9/28/15. Petition denied 10/5/15.

CAFC OpinionCAFC Argument

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

Questions Presented:

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

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

Cert. petition filed 6/22/15, waiver of respondent GTE Laboratories, Inc. filed 7/14/15, conference 9/28/15. Petition denied 10/5/15.

CAFC Opinion, No CAFC Argument

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

Questions Presented:

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

Cert. petition filed 6/10/15, conference 9/28/15. Petition denied 10/5/15.

CAFC OpinionCAFC Argument

Key Lighting, Inc. v. Briese Lichttechnik Vertriebs GMBH, et al., No. 14-1416

Questions Presented:

  1. Where the jury is erroneously instructed on the standard for direct patent infringement as “Additionally, personal liability may be imposed upon corporate officers for participating in, inducing, and approving acts of patent infringement,” and the erroneous instruction was objected to at trial and there was no evidence of direct infringement under 35 USC § 271(a) by the individual defendants [corporate officers], are further proceedings required under [the prejudicial jury instruction rule]?
  2. In Shinseki v. Sanders, 556 U.S. 396 (2009), this Court struck down the Federal Circuit's prior complex, rigid and mandatory harmless error framework and replaced it with a case-specific application of judgment based upon examination of the record and given the unambiguous language in 35 U.S.C. § 271(a) that direct infringement requires a party to make, use, sell, offer to sell or import the patented invention, the question presented is whether the decision of the court of appeals is consistent with the standards set down in Shinseki v. Sanders and the statutory language of 28 U.S.C. § 2111?

[ . . . the erroneous direct infringement instruction was not prejudicial or simply a harmless error? . . . ]

[where petitioner objected to the erroneous instruction, petitioner showed with facts and evidence the instruction was prejudicial and respondents did not argue the evidence on the point was overwhelming regardless and conceded so at the oral argument]

Cert. petition filed 5/27/15, waiver of respondent Briese Lichttechnik Vertriebs GmbH filed 6/16/15, conference 9/28/15. Petition denied 10/5/15.

CAFC OpinionCAFC Argument

Interval Licensing LLC v. AOL, Inc., et al., No. 14-1362

Questions Presented:

Whether a patent claim that includes terms that are either “subjective” or “terms of degree” is invalid as indefinite as a matter of law unless it also includes express definitional language or unambiguous limiting language.

Cert. petition filed 5/15/15, conference 9/28/15. Petition denied 10/5/15.

CAFC OpinionCAFC Argument

I/P Engine, Inc. v. AOL Inc., No. 14-1358

Questions Presented:

In Graham v. John Deere Co. of Kansas City, this Court held that whether a patent would have been “obvious” depends on several basic factual inquiries, including “the scope and content of the prior art” and “the differences between the prior art and the claims at issue.” 383 U.S. 1, 17 (1966). In KSR Int’l Co. v. Teleflex Inc., this Court explained that factual questions “continue to define the inquiry that controls” the determination of obviousness, and towards that end held that “factfinders” should not be denied recourse to the “common sense” of a skilled artisan when considering the relationship between prior art and the challenged patent. 550 U.S. 398, 407 (2007). In the decision below, the Federal Circuit held that the “substantial evidence” standard did not control its review of the jury’s factual findings relating to the Graham factors, and that it was free to apply its own “common sense” in determining the relationship between the prior art and the challenged patent.

The question presented is:

Under what circumstances, if any, may the Federal Circuit review de novo a jury’s factual findings underlying a district court’s determination that a patent is nonobvious?

Cert. petition filed 5/13/15, conference 9/28/15. Petition denied 10/5/15.

CAFC OpinionCAFC Argument

Netairus Technologies, LLC v. Apple Inc., No. 14-1353

Questions Presented:

  1. This Court has repeatedly held that the ultimate issue of a patent’s validity is a question of law. See, e.g., Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238, 224-243 (2011); KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 427 (2007); Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 810 (1986); Sakraida v. Ag Pro, Inc., 425 U.S. 273, 280 (1976); Graham v. John Deere Co., 383 U.S. 1, 17 (1966). This Court has further explained that legal issues must be decided by a judge, not a jury. See, e.g., Dimick v. Schiedt, 293 U.S. 474, 486 (1935). The district court below, however, following settled Federal Circuit authority, charged the jury with determining the ultimate legal question of patent validity, subject only to review for “sufficient evidence.” Did the Federal Circuit err when it affirmed that decision?
  2. It is an elementary proposition that an accused device that practices all of the limitations of a method claim infringes that method claim. Did the lower courts err by imposing the additional condition for infringement under 35 U.S.C. § 271 that all of the limitations must be practiced every time that the device is utilized?

Cert. petition filed 5/11/15, waiver of respondent Apple Inc. filed 6/15/15, conference 9/28/15. Petition denied 10/5/15.

CAFC OpinionCAFC Argument