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.
Recently pending, granted and denied certiorari petitions
Intermec, Inc. v. Alien Technology, LLC, No. 16-1404
Questions Presented:
Is the Federal Circuit's review of decisions of the Patent Office subject to the traditional principles of administrative agency review?
What is the proper standard for applying the harmless error doctrine in appeals from administrative agencies in light of SEC v. Chenery Corp., 332 U.S. 194, 196 (1947)?
May the recognized procedural protections of the Administrative Procedures Act and this Court's precedent be disregarded by reviewing courts under the guise of the harmless error doctrine to adopt new theories on appeal when doing so deprives a party from an opportunity to introduce relevant evidence to the administrative agency or the court?
Cert. petition filed 5/22/17, waiver of respondent Alien Technology, LLC filed 6/6/17, conference 6/22/17. Petition denied 6/26/17.
CAFC Opinion, CAFC Argument
Appistry, LLC v. Amazon.Com, Inc., No. 16-1368
Questions Presented:
Are patents claims directed to new and useful computing systems, as here, abstract ideas and ineligible for patenting under 35 U.S.C. § 101? May a district court properly find a patent claim ineligible under 35 U.S.C. § 101, as here, without requiring the challenger to prove by clear and convincing evidence that the claim is ineligible? May a district court properly dismiss a complaint for patent infringement under Fed. R. Civ. P. 12(b)(6) for lack of patent eligibility under 35 U.S.C. § 101 when the complaint contains well-pled facts supporting eligibility?
Cert. petition filed 5/11/17, waiver of respondent Amazon.com, Inc. filed 5/25/17, conference 6/22/17. Petition denied 6/26/17.
CAFC Opinion, CAFC Argument
Poly-America, L.P. v. API Industries, Inc., No. 16-1123
Question Presented:
The exclusive rights granted to a patent holder are defined by the patent's claims. 35 U.S.C. 112; Burns v. Meyer, 100 U.S. (10 Otto) 671, 672 (1879). May a court impose a limitation on a patent claim that is contrary to the claim's plain meaning, based on the court's inferences from the patent's specification and prosecution history?
Cert. petition filed 3/16/17, conference 6/15/17. Petition denied 6/19/17.
CAFC Opinion, CAFC Argument
Cox Communications, Inc. v. Sprint Communications Co. LP, No. 16-1106
Questions Presented:
Under this Court's precedents, “[e]ach element contained in a patent claim is deemed material to defining the scope of the patented invention.” Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997). This Court and the Federal Circuit apply this rule to claim construction and to numerous Patent Act provisions, including 35 U.S.C. §§ 101 (patent-eligible subject matter), 102 (anticipation), 103 (obviousness), and 112, ¶ (best mode, etc.). The first question is: Does the general rule that each element in a patent claim is material to the invention''s scope apply to analysis of a claim's definiteness under 35 U.S.C. § 112, ¶ 2 (now § 112(b))? Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), held that patents that claim a generic structure for performing recited functions— - e.g., a “means for” performing the functions— - are indefinite under 35 U.S.C. § 112, ¶ 2 and earlier decisions of this Court that bar pure functional claiming of inventions generally. Congress responded by enacting a law stating: “An element in a claim for a combination may be expressed as a means or step for performing a specified function,” but “such [a] claim shall be construed to cover the corresponding structure . . .… described in the specification.” 35 U.S.C. § 112, ¶ 6 (now § 112(f)). The patent claims here recite only a generic structure (a “processing system”) to perform software-implemented functions. All agree that the claims do not invoke § 112, ¶ 6, which “targeted” the “specific problem” in Halliburton. Warner-Jenkinson, 520 U.S. at 28. The second question is: Do Halliburton and other decisions of this Court that bar pure functional claiming still control where § 112, ¶ 6 does not apply?
Cert. petition filed 3/13/17, conference 6/15/17. Petition denied 6/19/17.
CAFC Opinion, CAFC Argument
Blue Spike, LLC v. Google Inc., No. 16-1223
Questions Presented:
This Court has fashioned a two-part test for determining whether the subject matter of a patent is ineligible, under 35 U.S.C. § 101, because it claims a law of nature, natural phenomenon, or abstract idea. “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice Corp. Pty Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347, 2355 (2014). If so, a court must nonetheless ask whether the patent involves an “'inventive concept'—i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'” Id. (quoting Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 1294 (2012)). This case raises three questions under that framework:
May patentable subject matter under § 101 properly be assessed by over-generalizing patent claims to a “gist”? May a district court properly assess patent-ability under § 101 prior to authoritatively construing the patent's claims? May a district court adjudicating a motion for judgment on the pleadings on § 101 patentability grounds properly consider questions of patent enablement under 35 U.S.C. § 112?
Cert. petition filed 4/6/17, waiver of respondent Google Inc. filed 5/12/17, conference 5/23/17, conference 6/8/17. Petition denied 6/12/17.
CAFC Opinion, CAFC Argument
Arunachalam v. United States District Court for the District of Delaware, No. 16-1184
Questions Presented:
Whether the lower courts' and USPTO's denial of fundamental rights by collusively blocking access to justice and refusing to enforce this Court's Chief Justice Marshall's Ruling on First Impression Constitutional Res Judicata on Grants violates the free speech and property rights of the First and Fifth Amendments. Whether the America Invents Act is void in view of this Court's ruling on First Impression Constitutional Res Judicata on Grants. Whether the act of transferring patent property to the public without compensation is in the nature of the legislative power of the AIA or judicial power of a court, in violation of this Court's Justice Marshall's 1810 ruling on Grants. Whether the lower courts' and PTAB's rulings are estopped by this Court's ruling on First Impression Constitutional Res Judicata on Patent Grants and/or Patent Prosecution History Estoppel. Whether judges' and the USPTO's failure to enforce this Court's ruling on First Impression Constitutional Res Judicata on Grants as applied to patents and Patent Prosecution History Estoppel, defaulting in contractual fiduciary duty by fraudulent scheme of reexamination of issued patents, honest public services fraud, perjury and contempt for equal protections of law, to aid and abet anti-trust violation, in breach of the takings clause of the Fifth Amendment without valuable consideration voids the judgments of the courts.
Cert. petition filed 3/28/17, conference 6/1/17. Petition denied 6/5/17.
CA3 Opinion, No CA3 Argument
WilmerHale represents petitioner Medtronic, Inc.
Shore v. Lee, No. 16-1240
Questions Presented:
In 35 U.S.C. § 144, Congress mandated that for determinations on “appeal[s] taken on the record before the Patent and Trademark Office,” the Court of Appeals for the Federal Circuit “shall issue to the Director its mandate and opinion.” Such mandate and opinion thereafter “shall” be entered of record in the Patent and Trademark Office (PTO) and “shall” govern any further proceedings in the case. For more than half of its rulings on appeals taken from PTO rulings on patentability, the Federal Circuit has issued summary affirmances without opinion under Federal Circuit Rule 36 (Fed. Cir. R. 36). Such summary affirmances never address the issues raised by appellants, who have the statutory right to appeal. Instead, the summary affirmances return the cases to the examiners or PTO with neither an opinion nor a mandate that governs further proceedings.
The Questions Presented by this Petition are:
Does the Federal Circuit's affirmance without opinion of the PTO's rejection of Petitioner's patent application violate 35 U.S.C. § 144? Does the statute's requirement that the Federal Circuit issue a “mandate and opinion” govern over Federal Rule of Appellate Procedure 36's general permission for appellate courts to render judgment without opinion? Assuming that the Federal Circuit can issue an affirmance without opinion despite the language of § 144, does the Federal Circuit act within its discretion by issuing an affirmance without opinion that does not meet any of the criteria listed in Fed. Cir. R. 36(a)-(e)?
Cert. petition filed 4/13/17, waiver of respondent Michelle K. Lee, Director, United States Patent and Trademark Office filed 5/1/17, conference 5/25/17. Petition denied 5/30/17.
CAFC Opinion, CAFC Argument
Medtronic, Inc. v. Robert Bosch Healthcare Systems, Inc., No. 16-1139
Questions Presented:
Petitioner Medtronic sought, and the US Patent and Trademark Office (“PTO”) instituted, inter partes review (IPR) proceedings regarding claims of two patents held by Respondent Robert Bosch Healthcare Systems. One month before the oral hearing, however, the PTO's Patent Trial and Appeal Board (PTAB) erroneously ruled that Medtronic should have named its wholly owned subsidiary Cardiocom as a real party in interest. The PTAB refused to allow Medtronic to amend its petitions nunc pro tunc to add Cardiocom and terminated the IPR proceedings, in a ruling that was arbitrary, capricious, and contrary to law, and deprived Medtronic of due process. The Federal Circuit ruled that it lacked jurisdiction to hear Medtronic's appeal and refused to grant mandamus.
The questions presented are:
Whether 28 U.S.C. § 1295(a)(4)(A), which gives the Federal Circuit exclusive jurisdiction “of an appeal from a decision of … the [PTAB] with respect to … inter partes review under title 35,” gives that court jurisdiction to review a final PTAB decision terminating an already-instituted inter partes review on grounds unrelated to the patent merits that are arbitrary and capricious, contrary to statute, and/or contrary to due process. Whether the Federal Circuit erred by requiring a mandamus petitioner to show not only a right to the relief sought, but also an independent basis for Federal Circuit review of the challenged decision—a requirement that would make mandamus superfluous.
Cert. petition filed 3/17/17, waiver of respondent Robert Bosch Healthcare Systems, Inc. filed 4/20/17. Petition dismissed pursuant to Rule 46 5/8/17.
CAFC Opinion, No CAFC Argument
WilmerHale represents petitioner Medtronic, Inc.
Medtronic, Inc. v. Lee, No. 16-1138
Question Presented:
Petitioner Medtronic sought, and the US Patent and Trademark Office (PTO) instituted, inter partes review (IPR) of claims of two patents. One month before the oral hearing, however, the PTO's Patent Trial and Appeal Board (PTAB) dismissed the proceedings, ruling erroneously that Medtronic should have named its wholly owned subsidiary Cardiocom as a real party in interest. The PTAB refused to allow Medtronic to amend its petitions nunc pro tunc to add Cardiocom and terminated the IPR proceedings.
Medtronic filed a complaint under the Administrative Procedure Act (APA), 5 U.S.C. §§ 701-706, explaining that the PTAB's decision should be set aside as arbitrary and capricious, contrary to law, and contrary to due process. On the government's motion, the district court ruled that it lacked jurisdiction to review the PTAB decision. Medtronic's appeal has been docketed in the Federal Circuit.
Medtronic is separately filing a petition for certiorari seeking review of a precedential Federal Circuit decision holding that the Federal Circuit lacks jurisdiction to hear a direct appeal of the PTAB's decision and refusing to grant mandamus. This petition is submitted to permit this Court to consider at once all possible grounds for judicial review of the agency's decision.
The question presented is:
Whether a federal district court has jurisdiction to decide an APA claim challenging—as arbitrary and capricious, contrary to law, and contrary to due process—a final PTAB decision terminating already-instituted inter partes reviews on grounds unrelated to the patent merits.
Petition for cert. before judgment filed 3/17/17. Petition dismissed pursuant to Rule 46 5/8/17.
No CAFC Opinion, No CAFC Argument
WilmerHale represents petitioner Medtronic, Inc.
Concaten, Inc. v. AmeriTrak Fleet Solutions, LLC, No. 16-1109
Questions Presented:
Whether and to what extent this Court's decision in Diamond v. Diehr, 450 U.S. 175 (1981), which confirms that patents directed to the acquisition of data are directed to patent-eligible subject matter, can be harmonized with the decision in Alice Corp. Pty. Ltd. v. CLS Bank Intern., 134 S. Ct. 2347 (2014). Whether a district court may properly invalidate a duly issued United States Patent on a motion for judgment on the pleadings, without having considered all of the evidence adduced by the patentee in support of the validity of the patent.
Cert. petition filed 3/10/17, waiver of respondent AmeriTrak Fleet Solutions, LLC dba Ameritrak to respond filed 3/1/17, conference 4/13/17. Petition denied 4/17/17.
CAFC Opinion, CAFC Argument
Affinity Labs of Texas, LLC v. Amazon.com Inc., No. 16-1047
Questions Presented:
In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) and then again in Alice v. CLS Bank Int''l, 134 S. Ct. 2347 (2014), this Court set out a two part test for determining the statutory eligibility to patenting under 35 U.S.C. § 101. Since then, the Court of Appeals for the Federal Circuit and district courts have struggled in applying that framework for determining what constitutes an “abstract idea,” causing confusion and decisions that are seemingly at odds with each other. Some courts have concluded that long-standing, fundamental evidentiary rules, and principles that apply in regard to all other patent validity challenges, no longer apply in deciding motions brought challenging patent claims under § 101. Petitioner respectfully requests consideration of the following questions to help resolve the confusion in the courts:
The questions presented are:
This Court has found the “abstract idea” exception to § 101 to be a doctrine of restraint, limited so far to mathematical algorithms and some business methods directed to fundamental economic practices. The '085 patent claims a new and novel, tangible and concrete media management system for accessing and managing media content on a portable handheld device over a streaming connection. Are patent claims directed to concrete and tangible inventions—which are neither directed to a mathematical algorithm nor a business method—eligible subject matter under step one of the Mayo/Alice framework? Courts are required to draw all factual inferences in the favor of the non-movant in a Rule 12(c) motion for judgment on the pleadings. The second step of the Mayo/Alice analysis examines the factual issue of what was conventional and routine at the time of invention, which can overlap with issues of novelty under 35 U.S.C. § 102. Is disregarding limitations of patent claims relating to implementation parameters, or dismissing them as conventional or routine without citing any evidence of such as of the time of the invention, improper in determining whether a claim constitutes an “abstract idea” under the Mayo/Alice analysis, particularly at a stage of the case when all factual inferences must be drawn in favor of the patentee? The two-step analysis in Mayo/Alice is a question of law based on underlying issues of fact. Each patent claim is a separate property right. This Court requires proof by clear-and-convincing evidence to invalidate each claim in an issued US patent. Does an accused infringer bear the burden of proving each patent claim asserted against it is ineligible under 35 U.S.C. § 101 by clear and convincing evidence?
Cert. petition filed 2/28/17, waiver of respondent Amazon.com, Inc. filed 3/21/17, conference 4/13/17. Petition denied 4/17/17.
CAFC Opinion, CAFC Argument
Affinity Labs of Texas, LLC v. DirecTV, LLC, No. 16-1046
Questions Presented:
In Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (2012) and then again in Alice v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), this Court set out a two part test for determining the statutory eligibility to patenting under 35 U.S.C. § 101. Since then, the Court of Appeals for the Federal Circuit and district courts have struggled in applying that framework for determining what constitutes an “abstract idea,” causing confusion and decisions that are seemingly at odds with each other. Some courts have concluded that long-standing, fundamental evidentiary rules, and principles that apply in regard to all other patent validity challenges, no longer apply in deciding motions brought challenging patent claims under § 101. Petitioner respectfully requests consideration of the following questions to help resolve the confusion in the courts:
The questions presented are:
This Court has found the “abstract idea” exception to § 101 to be a doctrine of restraint, limited so far to mathematical algorithms and some business methods directed to fundamental economic practices. The ′379 patent claims a new and novel, tangible and concrete broadcast system that includes an over-the-air downloadable application. Are patent claims directed to concrete and tangible inventions—which are neither directed to a mathematical algorithm nor a business method—eligible subject matter under step one of the Mayo/Alice framework? Courts are required to draw all factual inferences in the favor of the non-movant in a Rule 12(b)(6) motion to dismiss. The second step of the Mayo /Alice analysis examines the factual issue of what was conventional and routine at the time of invention, which can overlap with issues of novelty under 35 U.S.C. § 102. Is disregarding limitations of patent claims relating to implementation parameters, or dismissing them as conventional or routine without citing any evidence of such as of the time of the invention, improper in determining whether a claim constitutes an “abstract idea” under the Mayo/Aliceanalysis, particularly at a stage of the case when all factual inferences must be drawn in favor of the patentee? The two-step analysis in Mayo/Alice is a question of law based on underlying issues of fact. Each patent claim is a separate property right. This Court requires proof by clear-and-convincing evidence to invalidate each claim in an issued US patent. Does an accused infringer bear the burden of proving each patent claim asserted against it is ineligible under 35 U.S.C. § 101 by clear and convincing evidence?
Cert. petition filed 2/27/17, waivers of respondents DIRECTTV, LLC, DIRECTV Digital, LLC, MLB Advanced Media, Inc. and MLB Advanced Media, L. P. filed 3/17/17, waiver of respondents NBA Media Ventures, LLC; Turner Digital Basketball Services, Inc.; NHL Interactive Cyber Enterprises, LLC; NHL Enterprises, Inc., NHL Enterprises, L.P. filed 3/20/17, conference 4/13/17. Petition denied 4/17/17.
CAFC Opinion, CAFC Argument
CSB-System International, Inc. v. Lee, No. 16-994
Questions Presented:
Whether the Federal Circuit erred by stating that the construction of a claim term under Phillips cannot be narrower than that under the incorrect broadest reasonable interpretation standard, despite the fact that a district court's Markman decision in a previous litigation applied Phillips and accepted a narrower construction of such claim term.
Whether the Federal Circuit erred by ignoring multiple references in a patent's specification that demonstrate the patentee's clear intent to limit a claim term, therefore including an additional aspect to the construction of a claim term and rejecting the patent based upon this inclusion.
Cert. petition filed 2/13/17, waiver of respondent Michelle K. Lee, Director, United States Patent and Trademark Office filed 3/6/17, conference 3/24/17. Petition denied 3/27/17.
CAFC Opinion, CAFC Argument
DataTreasury Corp. v. Fidelity Nat. Information Services, No. 16-883
Question Presented:
Congress broadly provided in the Patent Act that “[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor . . . .” 35 U.S.C. § 101. This Court's 2014 decision in Alice v. CLS Bank requires courts, in their Section 101 analysis, to consider the effect of the patent in practice and if the patent merely claims well-understood, routine conventional activities previously known to the industry.
In that analysis, the Federal Circuit does not consider evidence of copying, unmet need, commercial success, and failure of others—often referred to as secondary considerations evidence in patent law. Ignoring that evidence has caused the Federal Circuit to hold ineligible groundbreaking, valuable inventions, such as the patents in this case. Should this Court grant certiorari and hold that a court must consider secondary considerations evidence in its Section 101 analysis?
Cert. petition filed 1/11/17, waiver of respondent Fiserv., Inc. filed 2/1/17, waiver of respondent Michelle Lee, Director, U.S. Patent and Trademark Office filed 2/8/17, waiver of respondent Jack Henry & Associates, Inc. filed 2/9/17, waiver of respondent Fidelity National Information Services, Inc. filed 2/9/17, conference 3/17/17. Petition denied 3/20/17.
CAFC Opinion, CAFC Argument
Enplas Corp. v. Seoul Semiconductor Co., Ltd., No. 16-867
Questions Presented:
In 2011, Congress enacted the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”) which established new post-grant adjudicatory processes for challenges to the validity of patents. One of those processes created by the Act is an inter partes review. The Act also created a body within the Patent and Trademark Office, called the Patent Trial and Appeal Board (“Board”), to hear those challenges as a quick and cost-effective alternative to litigation. The decisions of the Board are subject to review by the Court of Appeals for the Federal Circuit and, as such, are subject to its precedents. 28 U.S.C. § 1295(a)(4)(A).
The Respondents Seoul Semiconductor Co. Ltd. et al. initiated an inter partes review (IPR2014-00605) of United States Patent No. 7,348,723 (“the '723 Patent”). At the conclusion of the IPR, the Board entered a Final Written Decision, finding the subject claims of the ′'723 Patent invalid as anticipated under 35 U.S.C. § 102 by U.S. Patent No. 5,577,493 (“Parkyn”).
The law of anticipation clearly requires that each and every element be found, expressly or inherently, in the prior art. 35 U.S.C. § 102; see, e.g., Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed. Cir. 2008); Summit 6, LLC v. Samsung Electronics Co., Ltd., 802 F.3d 1283, 1294 (Fed. Cir. 2015). Precedent requires the Board to make specific findings of fact in order to facilitate appellate review. Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) (“[W]e hold that the Board is required to set forth in its opinions specific findings of fact and conclusions of law adequate to form a basis for our review.”). With respect to anticipation, such specific findings must include a limitation by limitation analysis. Id. (“In particular, we expect that the Board's anticipation analysis be conducted on a limitation by limitation basis, with specific fact findings for each contested limitation and satisfactory explanations for such findings.”).
In this case, however, the Board failed to perform such a limitation by limitation analysis and, in turn, failed to make the requisite findings required to support a conclusion that the claims of the '723 Patent are invalid as anticipated under 35 U.S.C. § 102. Petitioner appealed the Board's Final Written Decision to the Court of Appeals for the Federal Circuit on grounds including, inter alia, the Board's failure to make the requisite findings of fact and, further, that the Board could not have made the requisite findings because the relied upon prior art fails to disclose each and every element of the claims of the '723 Patent. In particular, Parkyn fails to disclose the claim element requiring two recited conditions for light emitted within the entire “half-intensity-angular-range.”
It is undisputed that the Board's Final Written Decision fails to make any finding concerning the “half-intensity-angular-range.” Thus, the Board's Final Written Decision is prima facie defective under the controlling law. At the oral argument on appeal, Respondents' counsel conceded that Parkyn does not even discuss the “half-intensity-angular-range.” Thus, the Board's Final Written Decision is per se in conflict with controlling law. The Appellate Court's failure to follow its own precedents creates a conflict of law necessitating this Court's resolution.
Accordingly, Petitioner Enplas presents the following questions:
Whether the Board is required to make specific findings of fact in support of its Final Written Decision? Whether a finding of anticipation under 35 U.S.C. § 102 must be supported by findings that each and every element of the subject patent claim is disclosed in the prior art? Whether the Board erred in finding the subject claims anticipated under 35 U.S.C. § § 102 by a reference that admittedly fails to disclose each and every element of said claims? Whether the Federal Circuit committed a legal and/or procedural error by affirming the decision of the Board finding the '723 Patent invalid as anticipated under 35 U.S.C. § § 102, when (a) the Board's opinion failed to set forth evidence to satisfy the requirement that all elements were in fact present in the prior art, and (b) substantial evidence demonstrated those omitted claim elements were not present in the prior art?
Cert. petition filed 1/9/17, conference 3/17/17. Petition denied 3/20/17.
CAFC Opinion, CAFC Argument
Google Inc. v. Arendi S.A.R.L., No. 16-626
Question Presented:
In KSR International Co. v. Teleflex, Inc., this Court rejected the Federal Circuit's "rigid" approach to analyzing the obviousness of patent claims in favor of the "expansive and flexible" approach of the Court's own cases. 550 U.S. 398, 415 (2007). The Court stressed that "[r]igid preventative rules that deny factfinders recourse to common sense . . . are neither necessary under our case law nor consistent with it." Id. at 421.
In this case, the Patent Trial and Appeal Board relied on the common sense of a skilled artisan in determining that it was obvious to search a database for duplicate entries before adding new information to the database. In making that finding, the Board cited expert testimony on both sides, including respondent Arendi's expert's concession that checking for duplicates before adding items to databases was commonplace. The Federal Circuit reversed, however, limiting KSR to cases involving the motivation to combine two prior-art references and holding that common sense could not supply a non-"peripheral" "missing limitation."
Did the Federal Circuit err in restricting the Board's ability to rely on the common sense and common knowledge of skilled artisans to establish the obviousness of patent claims?
Cert. petition filed 11/8/16, waiver of respondent Arendi S A.R.L. filed 11/21/16, waiver of respondent Apple, Inc. file 12/8/16, response requested 12/12/16, conference 3/17/17. Petition denied 3/20/17.
CAFC Opinion, CAFC Argument
Tde Petroleum Data Solutions, Inc. v. AKM Enterprise, Inc., No. 16-890
Question Presented:
Whether an issued patent for a software implemented industrial process that regulates and controls the operation of an oil rig, which is patentable subject matter under this Court's interpretation of 35 U.S.C. § 101 in Diamond v. Diehr, 450 U.S. 175 (1981), is rendered unpatentable subject matter after this Court's decision in Alice v. CLS Bank, 134 S.Ct. 2347 (2014)?
Cert. petition filed 1/13/17, waiver of respondent AKM Enterprise, Inc., dba Moblize, Inc. filed 1/31/17, conference 3/3/17. Petition denied 3/6/17.
CAFC Opinion, CAFC Argument
Wi-LAN USA, Inc. v. Apple Inc., No. 16-913
Questions Presented:
In Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), the Court explained that a patent claim is that “portion of the patent document that defines the scope of the patentee's rights.” Id. at 372. The Court held that “the construction of a patent, including terms of art within its claim,” is not for a jury but “exclusively” for “the court” to determine. Id.
In the years since Markman, however, inconsistent standards and approaches have been applied when construing patent claims, leading to substantial debate and controversy. Competing approaches have created uncertainty regarding infringement and validity of patent rights.
In Cuozzo Speed Techs., LLC v. Lee, 136 S. Ct. 2131 (2016), for example, the Court considered whether the Patent Office may apply the “broadest reasonable construction” in determining claim scope for inter partes review of the validity of a patent in litigation rather than the “ordinary meaning as understood by a person of skill in the art” used by the federal court in determining the exact same issue. Id. at 2142.
An equally important and related dispute with respect to the “ordinary meaning standard” has also emerged in the last decade, where a fundamental split has developed within the Federal Circuit as to whether claim terms used to define the metes and bounds of an invention are generally given their “plain and ordinary meaning,” or are redefined (limited) to match the scope of the exemplary embodiments provided in the specification.
Many judges and commentators have been outspoken on the need for uniformity on this claim construction issue to strengthen intellectual property rights for innovators (who expect a period of exclusivity to enable a return on their investment) and reduce litigation. Indeed, in the past several years, this Court has received over a dozen certiorari petitions on this fundamental issue. Infra note 3.
This case presents the Federal Circuit's fundamental split over the claim construction standard to be used by federal courts. The questions presented are as follows:
1. Does claim construction presume that the ordinary meaning as understood by a person of skill in the art is the correct construction for claim terms, absent a redefinition or disclaimer in the patent specification?
2. Does the specification limit the scope of claim terms to capture the “actual invention” as implemented in the exemplary embodiments provided in the specification?
Cert. petition filed 12/22/16, waiver of respondent Apple Inc. filed 2/1/17, conference 2/24/17. Petition denied 2/27/17.
CAFC Opinion, CAFC Argument
E.I. Du Pont De Nemours and Co. v. MacDermid Printing Solutions, L.L.C., No. 16-905
Question Presented:
Where an invention is comprised of a combination of elements previously existing in the prior art, this Court's precedent requires that the proper test for assessing obviousness under 35 U.S.C. § 103 examines whether one skilled in the art would have been motivated to make the combination and could have predicted or expected that the combination would be successful. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Further, pursuant to the Seventh Amendment to the U.S. Constitution, disputed issues of fact cannot be resolved on summary judgment but must be resolved by a jury. The question presented is:
Where there are disputed factual issues as to (1) whether a skilled artisan would have been motivated to make the claimed combination, and (2) whether the skilled artisan could have expected or predicted success in so doing, does the Seventh Amendment to the Constitution and this Court's decision in KSR allow a court to find the claimed invention obvious on summary judgment because elements of the claimed invention may have existed in the prior art?
Cert. petition filed 1/18/17, waiver of respondent MacDermaid Printing Solutions, LLC filed 1/23/17, conference 2/17/17. Petition denied 2/21/17.
CAFC Opinion, CAFC Argument
Nanovapor Fuels Group, Inc. v. Vapor Point, LLC, No. 16-892
Question Presented:
The US Constitution's Seventh Amendment guarantees the right to trial by jury if timely requested.
There is division and uncertainty among the circuit courts of appeals regarding the evidentiary-weight standard applicable to prove waiver of the right to a jury trial.
The proper evidentiary-weight standard should require explicit, clear, and unequivocal evidence of a waiver of this fundamental, constitutional right.
The Federal Circuit Court of Appeals erred by not applying the evidentiary-weight standard requiring waiver of a constitutional right to be explicit, clear, and unequivocal.
Thus, the question presented is:
Can a party forfeit a properly demanded trial by jury without an explicit, clear, and unequivocal waiver?
Cert. petition filed 1/11/17, waiver of respondent Vapor Point, LLC filed 1/30/17, conference 2/17/17. Petition denied 2/21/17.
CAFC Opinion, CAFC Argument
IPLearn-Focus, LLC v. Microsoft Corp., No. 16-859
Questions Presented:
Can patent claims be invalidated under 35 U.S.C. § 101 by finding under Alice step two that they involve the conventional implementation of an abstract concept, where the only evidence of record is that the ordered combinations of hardware in the claims are unconventional apparatuses with novel applications? Can claims be invalidated under 35 U.S.C. § 101 by declaring them to be directed to an abstract idea based on statements of purpose in the patent specification without considering whether the claims are directed to improvements to computer functionality rather than to economic or other tasks for which a computer is used in its ordinary capacity?
Cert. petition filed 1/5/17, waiver of respondent Microsoft Corp. filed 1/9/17, conference 2/17/17. Petition denied 2/21/17.
CAFC Opinion, CAFC Argument
Big Baboon, Inc. v. Lee, No. 16-496
Question Presented:
In Christianson v. Colt Industries, 486 U.S. 800 (1988), this Court held that the Court of Appeals for the Federal Circuit does not have appellate jurisdiction under 28 U.S.C. § 1295(a)(1) when the claims of a well-pleaded complaint do not “arise under federal patent law.” The Petitioner filed an action in district court under the Administrative Procedure Act (APA) seeking to have specific evidentiary admission decisions by the Director of the United States Patent and Trademark Office (USPTO) during patent reexaminations overturned as violating due process, and the complaint was dismissed. The Court of Appeals for the Ninth Circuit transferred the appeal of the dismissal to the Federal Circuit over the objection of the Petitioner, even though all parties agreed that Ninth Circuit law governed the only claim of the complaint. Can the Federal Circuit impute a patent law claim into a complaint that does not explicitly contain a claim arising under patent law in order to exert appellate jurisdiction?
Cert. petition filed 10/10/16, waiver of respondent Michelle K. Lee, Director, United States Patent and Trademark Office et al. filed 10/19/16, response requested 10/28/16, conference 2/17/17. Petition denied 2/21/17.
CAFC Opinion, CAFC Argument
Boston Scientific Corp. v. Mirowski Family Ventures, LLC, No. 16-470
Question Presented:
Whether the court below, in deciding federal patent questions that are necessarily implicated by state law claims, contravened this Court's direction in Gunn v. Minton, 133 S. Ct. 1059 (2013), to “hew closely to the pertinent federal precedents,” by (1) failing to perform necessary patent claim construction, (2) disregarding the settled meaning of the term “covered by” in patent jurisprudence, and (3) ignoring the fundamental distinction between method and apparatus claims, as established by the Federal Circuit.
Cert. petition filed 10/7/16, waiver of respondent Mirowski Family Ventures, LLC filed 10/17/16, response requested 11/10/16, conference 2/17/17. Petition denied 2/21/17.
Maryland Ct. of Special Appeals Opinion, No Maryland Ct. of Special Appeals Argument Available
