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.

SpeedTrack, Inc. v. Office Depot, Inc., Inc., No. 15-461

Question Presented:

In Taylor v. Sturgell, 553 U.S. 880 (2008), this Court confirmed that there are “‘uniform federal rule[s]’ of res judicata.” 553 U.S. at 891. In the decision below, however, the Federal Circuit adopted its own unique form of patent-specific preclusion. This new form of preclusion bars entirely new issues and claims that no court has ever resolved. The Federal Circuit grounded this unique legal doctrine in its reading of Kessler v. Eldred, 206 U.S. 285 (1907), an anti-suit injunction case decided during “the heyday of the federal mutuality of estoppel rule.” MGA, Inc. v. Gen. Motors Corp., 827 F.2d 729, 733 (Fed. Cir. 1987). The Federal Circuit has directly acknowledged that its departure from generally applicable legal principles is “questionable” (Brain Life, LLC v. Elekta Inc., 746 F.3d 1045, 1057-1058 (Fed. Cir. 2014)), but the court has nevertheless now twice confirmed that it will not apply traditional preclusion rules “unless and until the Supreme Court overrules [Kessler].” App., infra, 23a; Brain Life, 746 F.3d at 1058. The rules of preclusion are accordingly “[dis]uniform” in the Federal Circuit alone.

The question presented is:

Whether, in direct conflict with the Third and Fourth Circuits, the Federal Circuit erred in construing Kessler to bar new issues and new claims that would survive the “uniform” rules of preclusion applied by every other circuit in all non-patent cases.

Cert. petition filed 10/8/15, waiver of respondent Office Depot, Inc. filed 10/14/15.

CAFC OpinionCAFC Argument

Cuozzo Speed Technologies, LLC v. Lee, Inc., No. 15-446

Questions Presented:

In 2011, Congress enacted the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284, which established a new post-grant adjudicatory process for challenges to the validity of patents. The Act 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. One of the new types of adjudicative proceedings, inter partes review (IPR), has been both unexpectedly popular and surprisingly lethal. Since the inception of IPR, patent challengers have filed over 3,400 petitions, and nearly 85% of the IPR proceedings to date have resulted in the cancellation of some or all claims in the patent under review.

A primary reason for the high cancellation rate is that, although IPR was expressly designed to be a surrogate for litigation, the Board does not use the same claim construction standard as federal courts. Rather than construe the claim in an issued patent according to its plain and ordinary meaning, as a federal court would be required to do, the Board gives the claim its broadest reasonable interpretation, which is a protocol used by examiners in reviewing patent applications. Of course, the broader the interpretation of the claim, the more extensive the array of relevant prior art—and in turn the more likely that the claim will be held invalid in light of that prior art. Consequently, the Board’s broad interpretation allows for differing determinations of validity in IPR proceedings and litigation.

Over a dissent by Judge Newman, a divided panel of the Federal Circuit affirmed the Board’s use of the broadest-reasonable-interpretation standard for claim construction. The panel majority also held that, even if the Board had exceeded its statutory authority in instituting an IPR proceeding in the first place, the Board’s decision to institute was judicially unreviewable. The court of appeals denied rehearing by a vote of 6-5, over a joint dissent by Chief Judge Prost and Judges Newman, Moore, O’Malley, and Reyna, as well as a separate dissent by Judge Newman. The five dissenting judges addressed the merits of, and would have rejected, the Board’s claim construction standard.

The questions presented are as follows:

  1. Whether the court of appeals erred in holding that, in IPR proceedings, the Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning.
  2. Whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.

Cert. petition filed 10/6/15.

CAFC OpinionCAFC Argument