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.

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.

CAFC OpinionCAFC Argument

Ultramercial, LLC v. WildTangent, Inc., No. 14-1392

Questions Presented:

Whether computer-implemented or software-based claims, reciting novel or non-routine steps with no conventional counterparts, still cover only patent-ineligible “abstract ideas” as this Court has interpreted 35 U.S.C. § 101?

Cert. petition filed 12/7/11, conference 2/17/12, likely being held, perhaps for Mayo Collaborative Services v. Prometheus Laboratories, Inc., No. 10-1150. Cert. petition granted on 3/26/12; judgment vacated and case remanded for further consideration in light of Mayo Collaborative Services v. Prometheus Laboratories, Inc., 500 U.S.__(2012).

Cert petition filed 5/21/15, waiver of respondent WildTangent, Inc. filed 6/1/15, conference 6/25/15.

CAFC Opinion, No CAFC 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.

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.

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.

CAFC OpinionCAFC Argument

Lucree v. U.S., No. 14-1340

Questions Presented:

  1. Did the Federal Court of Appeals err in dismissal of the claim in not following the Constitutional Powers of The Judicial Branch in reviewing and interpreting Legislative actions?
  2. Did the Federal Claims Court err in dismissing the challenge to Congress’s authority to impose patent Maintenance Fees under the Intellectual Property Clause of the Constitution, (Art. I, § 8, cl. 8); claim akin to illegal exaction, takings claim?
  3. Did the Federal Claims Court err in avouching that the “Maintenance Fees” and the Patent System put in place “Do Not Conflict with the Constitution”?
  4. Did the Federal Claims Court err in finding that Congresses’ determination of Federal spending priorities and how the patent system fit into National Development Goals is an eminently “Rational” exercise of its power?
  5. Did the Federal Claims Court err in finding that the early expiration of her Patent did not constitute a taking by the Government, but rather was consequence for her failure to fulfill the requirements upon which her patent was conditioned?
  6. Did the Federal Court of Claims err in declining the challenge of the “First to File” system *ii given the Court’s deference to Congressional discretion over Patent Legislation?
  7. Did the Federal Claims Court err in determining that the expiration (lapsing) of over 1,500 Patents on Tuesday of every week (79,00[0] per year) for nonpayment of “Maintenance Fees” are “RATIONALLY” related to the promotion of “PROGRESS” in “Science and the Useful Arts”.
  8. Is the publication of the invention after eighteen months an unconstitutional taking of private property?
  9. Is Congress protecting Small Business and Independent Inventors rights?

Cert petition filed 5/8/15, waiver of respondent United States filed 5/28/15, conference 6/18/15.

CAFC OpinionCAFC Argument

Apotex Inc. v. UCB, Inc., No. 14-1304

Questions Presented:

Inequitable conduct is a judge-made doctrine designed to ensure the integrity of patent prosecution before the US Patent and Trademark Office (“PTO”). Under that doctrine, a patent is unenforceable if clear and convincing evidence shows that the inventor intentionally withheld or misrepresented information about the prior art that would have been material to the PTO’s decision to issue the patent.

Here, the Federal Circuit applied that extraordinary remedy to hold unenforceable a patent on a previously unknown process for producing a drug, because its inventor did not disclose that a competitor might be using the process in secret. The court treated the inventor’s suspicions—based entirely on non-public, internal tests on the competitor’s product—as material “prior art” that needed to be disclosed in arguments to the PTO during the prosecution of the patent. The Federal Circuit thus held the patent unenforceable, even though the PTO rejected the inventor’s arguments, possessed all the prior art discussing the competitor’s drug, and issued the patent only after the inventor amended his patent application to distinguish it from the prior art.

The questions presented are:

  1. Whether the secret process used to make an existing product is material prior art that must be disclosed to the PTO in a later inventor’s application to patent a similar or identical process.
  2. Whether alleged misconduct that does not induce the PTO to issue a patent can render that patent unenforceable.

Cert petition filed 4/30/15, waiver of respondents UCB, Inc., et al. to filed 5/19/15, conference 6/18/15.

CAFC OpinionCAFC Argument