WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently pending petitions, organized in reverse chronological order by date of certiorari petition.
Fivetech Technology Inc. v. Southco, Inc., No. 15-381
In United States v. Adams, 383 U.S. 39, 49 (1966), this Court stated that “it is fundamental that [patent] claims are to be construed in light of the specifications, and both are to be read with a view to ascertaining the invention.” In Markman v. Westview Instruments, Inc., 517 U.S. 370, 389 (1996), this Court referenced the required “standard construction rule that a [claim] term can be defined only in a way that comports with the instrument as a whole.” (Emphasis added). In Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) (en banc), the Federal Circuit rejected a line of Federal Circuit opinions that limited the role of the specification in defining claim terms only to instances of explicit redefinitions or explicit disavowals of claim scope. However, since Phillips, the Federal Circuit remains divided as to the role of the specification and file history (intrinsic evidence) in construing claim terms. Specifically, some panels of the Federal Circuit have adopted a rigid standard of “lexicography and disavowal” for defining claim terms which limits the relevance of the intrinsic evidence only to those instances of explicit redefinition of a claim term or explicit disavowal of claim scope. See, e.g., GE Lighting Solutions, LLC v. Agilight, Inc., 750 F.3d 1304,1308-09 (Fed. Cir. 2014) (“The standards for finding lexicography and disavowal are exacting.”). This has raised the following questions for this Court.
- Whether it is proper for the Federal Circuit to limit the role of the intrinsic evidence in construing patent claims under the exacting “lexicography and disavowal” standard.
- Whether the Federal Circuit’s exacting “lexicography and disavowal” standard improperly circumscribes the objective standard of the person of ordinary skill in the art in construing claim terms.
Cert. petition filed 9/28/15.
Automated Merchandising Systems, Inc. v. Lee, No. 15-326
- Must the federal judiciary await the substantive conclusion of an agency proceeding before it can evaluate whether an express statutory limitation on that agency’s jurisdiction requires that agency to terminate its proceeding?
- Did the Federal Circuit err in refusing to order the United States Patent and Trademark Office to terminate the subject inter partes reexaminations under 35 U.S.C. § 317(b)?
Cert. petition filed 9/11/15.
Mylan Pharmaceuticals Inc. v. Apotex Inc., No. 15-307
Years ago, a branded pharmaceutical company disclaimed one of two patents that underlay its brand name blood-pressure medicine in response to petitioner’s Abbreviated New Drug Application (“ANDA”). Under the well-established law of this Court, that disclaimer rendered the patent a complete nullity that could not be infringed. Nonetheless, years later the respondent filed a declaratory judgment action seeking a judicial declaration of what no one did or could dispute—namely, that a generic version of the blood-pressure medicine did not infringe the disclaimed patent. Respondent's incentive for filing this action in the absence of any dispute over the question to be litigated is clear: Respondent believes that a judicial declaration of non-infringement will benefit it at petitioner’s expense by effectively eliminating the period of generic exclusivity petitioner secured by filing its ANDA first. While the District Court recognized that a statutory incentive to sue was no substitute for an actual controversy, the Federal Circuit reversed in a decision that will open the doors of district courts nationwide to non-disputes over disclaimed patents.
The questions presented are:
- Whether Article III's case or controversy requirement can be satisfied when the suit seeks a judgment of non-infringement of a disclaimed patent.
- Whether Congress can create Article III jurisdiction by imposing statutory consequences that turn on obtaining a judgment of non-infringement of a disclaimed patent.
Cert. petition filed 9/8/15.
Chunghwa Picture Tubes, Ltd. v. Eidos Display, LLC, No. 15-288
In Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (“Teva”), this Court put an end to the Federal Circuit's universal de novo review of all district courts’ claim constructions by holding that: “a court of appeals ‘must not . . . set aside’ a district court’s ‘[f]indings of fact’ unless they are ‘clearly erroneous.’” Id. at 836. “In our view, this rule and the standard it sets forth must apply when a court of appeals reviews a district court's resolution of subsidiary factual matters made in the course of its construction of a patent claim.” Id.
Teva also confirmed that Federal Rule of Civil Procedure 52(a)(6) “does not make exceptions or purport to exclude certain categories of fact findings.” Id. at 837. This Court went on to specifically hold that “[e]ven if exceptions to the Rule were permissible, we cannot find any convincing ground for creating an exception to that Rule here.” Id.
The question presented is as follows:
Whether a district court's factual finding(s) underlying its construction of a patent claim term must be reviewed for clear error under Rule 52(a)(6) as this Court held in Teva, or is an exception created to clear error review where the appellate court finds the intrinsic record clear after a de novo review of that record, as the Federal Circuit held in this case.
Cert. petition filed 9/8/15.
Arthrex, Inc. v. KFx Medical Corporation, No. 15-291
Under the 1952 Patent Act, an invention is not eligible for a patent if it is “obvious,” ie., “if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious . . . to a person having ordinary skill in the art” at the time the patent application was filed. 35 U.S.C. § 103. This Court has stated that, in deciding obviousness, it can be important “to determine whether,” at the time the patent application was filed, there was “an apparent reason to combine the known elements in the fashion claimed by the patent at issue.” KSR Int’l Co. v. Telefax Inc., 550 U.S. 398, 418 (2007). The questions presented are:
- Whether the “reason to combine” inquiry is a subsidiary question of fact, subject to deferential review on appeal, or a legal question for the court, and reviewed de novo.
- Whether the ultimate legal issue of obviousness (or even predicate factual issues bearing on obviousness) should be resolved by the court rather than submitted to the jury for resolution.
Cert. petition filed 9/4/15.
Sankyo, Inc. v. Apotex, Inc., No. 15-281
Whether an action seeking a declaration that a patent would not be infringed presents a justiciable case or controversy under Article III of the Constitution where the patent at issue was previously disclaimed and thus cannot be enforced.
Cert. petition filed 9/4/15.
Butler v. Balkamp Inc., No. 15-273
Is summary judgement proper in a District Court when a factual dispute exists in a Design Patent action and the District Court substitutes its own opinion for that of the ordinary observer?
In Anderson v. Liberty Lobby, Inc., 477 U.S. 242 (1986), this court articulated the standard that a District Court must consider evidence presented by the non-moving party: “the evidence of the non-movant is to be believed, and all justifiable inferences are to be drawn in his favor.” Since, Anderson, and without further guidance from this Court, lower courts have reformulated the standard to allow summary judgment when there is a genuine issue as to material fact. The specific questions presented in this case:
- Was the District Court in error in granting summary judgment of non-infringement when the record included competent and unrefuted evidence that ordinary observers considered the patented and accused designs to be substantially the same?
- Was the District Court’s decision to ignore the evidence presented by Plaintiff, the non-movant, in direct conflict with the standard articulated by this Court in Anderson, 477 U.S. 242?
Infringement of a design patent is a question of fact not a question of law. (cite) The standard for determining design patent infringement was established by this Court in Gorham Co. v. White, 81 U.S. 511, (1871). In Gorham, this court created a test that expressly favored the ordinary observer’s viewpoint when considering the overall similarity of a patented design to an accused design. Since, Gorham, and without further guidance from this Court, lower courts have reformulated the test by substituting the opinion of the District Court for that of the ordinary observers. The question presented in this case is:
- Can a District Court substitute its own observations on substantial similarity for the observations of ordinary observers and thus change the “facts,” without impermissibly altering the Gorham’s ordinary observers test for design patent infringement?
Cert. petition filed 8/31/15.
Luv n’ Care, Ltd. v. Munchkin, Inc., No. 15-242
Did the Federal Circuit err by rejecting the law of at least the First, Second, Fourth, Fifth, Sixth, Seventh, Eighth, Ninth, Tenth, and D.C. Circuits when it affirmed a PTAB administrative judgment based on new issues raised sua sponte by the PTAB at the Final Hearing, thus depriving the patent owner of notice and a meaningful opportunity to respond?
Cert. petition filed 8/24/15.
Bodum, Inc. v. Meyer Intellectual Properties Limited, No. 15-185
In determining whether this patent case was “exceptional” requiring an award of attorney fees to a prevailing defendant pursuant to 35 U.S.C. § 285, does the successor District Court Judge’s reliance upon the decision of the predecessor District Court Judge, which decision was vacated by the Federal Circuit Court of Appeals, instead of reviewing de novo the prior record in the case, deprive the Petitioner of its right to have the case fairly adjudicated?
Cert. petition filed 8/11/15, conference 10/16/15.
Tyco Healthcare Group LP v. Ethicon Endo-Surgery, Inc., No. 15-115
Title 35 U.S.C. § 103(a) (2006) prohibits the issuance of a patent where “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.” (Emphases added). This statute will continue to govern hundreds of thousands of patents (those with effective filing dates before March 16, 2013) for many years to come.
The question presented is whether a mere conception that was neither known to the public nor reduced to practice at the time a patented invention was made is “prior art” to that invention under the pre-2013 version of 35 U.S.C. § 103.
Cert. petition filed 7/27/15, response requested 9/21/15.
Medtronic Sofamor Danek USA, Inc. v. NuVasive, Inc., No. 15-85
In this case, the Federal Circuit affirmed a judgment of indirect infringement, solely on the ground that defendant Medtronic was aware of the patent and instructed doctors to use its products in a manner that was later determined to be infringing. The Federal Circuit did not discuss whether Medtronic’s reading of the patent claims—under which it did not infringe—was reasonable.
Two months later, this Court decided Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (2015). That decision rejected the proposition that “even if the defendant reads the patent’s claims differently from the plaintiff, and that reading is reasonable, he would still be liable because he knew the acts might infringe,” and held that a plaintiff asserting a claim of indirect infringement must provide “proof the defendant knew the acts were infringing.”
The question presented is:
Whether the Court should grant the petition, vacate the judgment below, and remand to the Federal Circuit for further consideration in light of Commil USA, LLC v. Cisco Systems, Inc., 135 S. Ct. 1920 (2015).
Cert. petition filed 7/17/15, waiver of respondent NuVasive, Inc. filed 8/19/15, response requested 9/14/15.