Pending Supreme Court Patent Cases for 2016

by Dennis Crouch

Welcome to 2016! As of January 1, only two petitions for certiorari have been granted this term — both covering the same topic of enhanced damages, a.k.a. willfulness. Another 20 petitions remain pending, a few of which may have legs.

New petitions from the past fortnight include Achates v. Apple (reviewability of IPR institution decision) and Vermont v. MPHJ (federal court jurisdiction in anti-troll consumer protection case).

1. Petitions Granted:

2. Petitions for Writ of Certiorari Pending:

  • Design Patents: Samsung Electronics Co. v. Apple Inc., No 15-777 (design patent scope and damages calculation)
  • InducementLife Technologies Corporation, et al. v. Promega Corporation, No. 14-1538 (whether an entity can “induce itself” under 271(f)(1))(CVSG, awaiting government brief)
  • InducementMedtronic Sofamor Danek USA, Inc., et al. v. NuVasive, Inc., No. 15-85 (Commil re-hash – mens rea requirement for inducement)
  • Inducement: Arthrex, Inc. v. Smith & Nephew, Inc., et al., No. 15-559 (Commil re-hash – if actions were “not objectively unreasonable” can they constitute inducement?)
  • Post Grant AdminCuozzo Speed Technologies, LLC v. Michelle K. Lee, No. 15-446 (BRI construction in IPRs; institution decisions unreviewable)
  • Post Grant AdminAchates Reference Publishing, Inc. v. Apple, Inc., et al., No. 15-842 (IPR institution decisions unreviewable, even when addressed in a final written decision by PTAB)
  • Post Grant AdminInterval Licensing LLC v. Michelle K. Lee, No. 15-716 (Can the Patent and Trademark Office appropriately apply the “broadest reasonable interpretation” standard in construing patent claims in post-grant validity challenges?)
  • Preclusion or Jurisdiction: Vermont v. MPHJ Technology Investments, LLC, No. 15-838 (Federal court jurisdiction in anti-troll consumer protection case)
  • Preclusion or JurisdictionAlexsam, Inc. v. The Gap, Inc., No. 15-736 (appellate jurisdiction over patents that were dropped from case pre-trial) (New Petition)
  • Preclusion or JurisdictionSpeedTrack, Inc. v. Office Depot, Inc. et al., No. 15-461 (Kesslerdoctrine – enhanced preclusion)
  • Preclusion or Jurisdiction:
    ePlus, Inc. v. Lawson Software, Inc., No. 15-639 (what happens with a finally-determined permanent injunction after PTO cancels the patent claim?)
  • Preclusion or Jurisdiction: Alps South, LLC v. The Ohio Willow Wood Company, No. 15-567 (If patent ownership is fixed after the filing of a complaint, can jurisdiction be cured by a supplemental complaint)
  • Preclusion or Jurisdiction: Biogen MA, Inc. v. Japanese Foundation for Cancer Research, et al., No. 15-607 (Whether AIA eliminated federal district courts’ jurisdiction over patent interference actions under 35 U.S.C. § 146.)
  • Eligibility Challenges: Retirement Capital Access Management Company, LLC v. U.S. Bancorp, et al., No. 15-591 (Whether subject matter eligibility under 35 U.S.C. § 101 is a ground specified as a condition for patentability under 35 U.S.C. § 282(b)(2))
  • Claim Construction: Media Rights Technologies, Inc. v. Capitol One Financial Corporation, et al., No. 15-725 (Claim Construction: whether there a strong presumption against construing terms as subject to 35 U.S.C. § 112p6 that do not recite the term “means.”)
  • Patent Term Adjustment Dispute: Daiichi Sankyo Company, Ltd. v. Michelle K. Lee, No. 15-652 (Patent Term Adjustment – whether the 180 day deadline applies; could bleed into admin law issues)
  • Damages: STC, Inc. v. Global Traffic Technologies, No. 15-592 (Whether marking the packaging of a patented article with patent notification satisfies the marking provision of 35 U.S.C. § 287(a) where the patented article itself is undisputedly capable of being marked.)
  • Damages: Innovention Toys, LLC v. MGA Entertainment, Inc., et al., No. 15-635 (Stryker/Halo follow-on)
  • Soon to be DeniedArunachalam v. JPMorgan Chase & Co., No. 15-691 (unclear)
  • Soon to be DeniedMorgan, et al. v. Global Traffic Technologies LLC, No. 15-602 (unclear)

3. Petitions for Writ of Certiorari Denied:

  • Allvoice Developments US, LLC v. Microsoft Corp., No. 15-538
  • OIP Technologies, Inc. v., Inc., No. 15-642
  • Fivetech Technology Inc. v. Southco, Inc., No. 15-381
  • Tyco Healthcare Group LP, et al. v. Ethicon Endo-Surgery, Inc., No. 15-115
  • Nautilus, Inc. v. Biosig Instruments, Inc., No. 15-561
  • Chunghwa Picture Tubes, Ltd., et al. v. Eidos Display, LLC, et al., No. 15-288
  • Arthrex, Inc. v. KFx Medical Corporation, No. 15-291
  • Daiichi Sankyo, Inc., et al. v. Apotex Inc., No. 15-281
  • Mylan Pharmaceuticals Inc. v. Apotex Inc., No. 15-307
  • Luv N’ Care, Ltd. v. Munchkin, Inc., No. 15-242
  • Automated Merchandising Systems, Inc. v. Michelle K. Lee, Director, United States Patent and Trademark Office, No. 15-326
  • I/P Engine, Inc. v. AOL Inc., et al., No. 14-1358
  • Interval Licensing LLC v. AOL Inc., et al., No. 14-1362
  • Content Extraction and Transmission LLC v. Wells Fargo Bank, National Association, et al., No. 14-1473
  • W.L. Gore & Associates, Inc. v. Bard Peripheral Vascular, Inc., et al., No. 15-41
  • NetAirus Technologies, LLC v. Apple Inc., No. 14-1353
  • Muffin Faye Anderson v. Kimberly-Clark Corporation, No. 14-10337
  • MobileMedia Ideas LLC v. Apple Inc., No. 15-206

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

30 thoughts on “Pending Supreme Court Patent Cases for 2016

  1. Maybe in the new year such blatant thread h1jack attempts as Malcolm below can be simply expunged….

    (and yes, Malcolm just does not care what the thread is actually about…)

  2. Fascinating oral argument today in Site Update Solutions LLC v. CBS Corp (in fact the defense’s arguments this morning were made by Newegg’s counsel). SUS is a quintessential troll who sued a zillion defendants in Texas on the following incredibly junk claim:

    An apparatus for updating an internet search engine database with current content from a web site, comprising:

    a means for creating and modifying a database of a web site wherein said website database contains content capable of being indexed by an internet search engine;

    a means for identifying, using said web site database, new, deleted, or modified content;

    a means for transmitting to said internet search engine a set of indices, wherein said set of indices comprises said new, deleted, unmodified or modified database content;

    a means for opening, by a user, a form on a computer to enable or disable internet search engines to be updated with information;

    a means for enabling or disabling, by said user, the appropriate internet search engines on said form;

    a means for submitting, by said user, said information to a script;

    a means for parsing, through the user of said script, said information from said form; and

    a means for updating, through the use of said script, said database of search engine.

    SUS was crushed at trial but the defendants here are seeking fees under the Supreme’s Octane fitness ruling. The district court denied those fees because the claim construction proposed by SUS in its desperate attempt to identify corresponding “structure” (where there was none) was deemed by the district court judge “not entirely frivolous” and therefore not sanctionable.

    The discussion of the claims with the patentee’s attorney quickly devolves into the usual surreal discussion about the fake “structure” of the magical structureless software that “one skilled in the art” would know how to write (“our expert says so! our expert says so!”) but which isn’t described in the specification except in terms of the awesome new functionality provided by the “claim as a whole”.

    Lowest point was Plaintff’s argument that “The claims were allowed twice by the PTO so that’s evidence of reasonableness.” Right. The claims were allowed in 1999 when the PTO was doing even less than it does now to police the computer-implemented junk that it issues.

    1. According to Thomson Reuters 2015 list of Top 100 Global Innovators, Amazon and several other established players in mature markets are proving that it’s not just start-ups that have the potential to upend traditional business models and reinvent our world. In fact, several of the companies new to this year’s ranking of top innovators have been around a lot longer than Amazon, among them: Boehringer Ingelheim, Chevron, Exxon Mobil, Johnson Controls, Thales, and Yamaha.

      Published by the same wonderfully incoherent script-spewing blog that gave us “big companies don’t innovate.”

  3. Oral arguments are scheduled for tomorrow morning (Jan 4) in the rather humdrum case of Priceplay v. AOL Advertising. After claim construction, Priceplay’s asserted claims were chucked on the pleadings by Judge Andrews (D.Ct. Del). Priceplay has appealed the ruling. Here is the clumsily drafted representative claim:

    A system comprising multiple databases accessible by at least one computer server, wherein the system is programmed to perform the steps of a sales transaction, the steps comprising:

    communicating via the global communication network to a buyer;

    receiving data …. from the buyer via the global communication network [representing a binding commitment to purchase a product for a price that will be partially based upon the buyer’s participation in an auction and participation in a competitive activity that is in addition to placing bids in the auction and that is collateral to the price and associated with the product being purchased; wherein the competitive activity is required as part of the sales transaction]; and

    using an algorithm to calculate the price of the product [based at least partially upon the results of the participation of the buyer in the competitive activity and at least partially based on results of the auction; wherein the price is at least partially dependent on the outcome of the competitive activity.]

    So we here we have “a system” that carries out the steps of “communicating to a buyer”, “receiving data from the buyer” and “calculating a price”. Amazingly, these steps are carried out “over a network” (can you imagine! wowee zowee! specatular insight by the “innovators” here).

    The only other “limitations” in the claim relate to the content of the data and the shiny new “algorithm” that is used to spit a price back to the buyer. Those “innovations” of course, are not eligible for patent protection. As already noted, everything else in the claims was in the prior art (yes, folks, the named inventors did not invent computer networks, nor did they invent the idea of using networks to communicate information, including information about prices that were calculated with an algorithm, nor did they invent auctions, nor did they invent using competition results in a price determination).

    Maybe the “inventors” here should go back to the drawing board and chuck in some additional “limitations” relating to the buyer’s hometown (e.g., “average temperature below 65 degrees F”) or the nature of the “competition” (e.g., “computer-judged hip-hop dance contest against virtual bow-legged frogs”). Or they could find something else to do that doesn’t involve foisting junk on the patent system and wasting other people’s time and money.

    This bit from the district court’s order was interesting:

    For support, Priceplay relies on the following e-commerce models described in the ‘982 specification:,,,, and (D.1. 1-1 at 6, 1 :37-56). Priceplay’s reliance on these e-commerce models is unavailing, however, because even if some of these models are patented, the patents were granted prior to the Supreme Court’s decision in Alice, and have not, to the Court’s knowledge, been challenged for invalidity.

    It’s hardly a stretch to conclude that the most if not all of the “e-commerce” patents in the portfolios of each of those companies is ineligible or obvious junk. What everybody should be happy about is that it is now easier than ever to ignore those patents. You say have a patent on a method of determining a price based on [insert whatever] “on the Internet” or “on a mobile phone” or “in a robot car”? Guess what: your patent is ineligible and it’s easy to eplain why. But you’re going to assert it anyway, you say, unless I pay you? Even after I explained to why your patent is ineligible junk and you responded with some nonsense about William Shatner? Tell it to the judge.

    1. Agreed, the claim is not directed to eligible subject matter.

      The oral argument on the go along lines like this:

      Lawyer, “May it please the court…”

      Chief Judge, interrupting, “No, we are not pleased.”

    2. Oral argument went as expected, with the patentee completely bungling the concept of “pre-emption” (“our claim permits nearly an infinite number of other methods!”). That was followed by an inept and bone-headed attack on the Supreme Court for permitting the consideration of prior art when determining the eligibility of a claim (why in the world would any attorney expect to find traction for that kind of nonsense in 2016?).

      Judge Moore asked an interesting question: “Can two ineligible abstractions can be combined to create an eligible non-abstract innovation”?

      The answer, of course: “no.” [the defendant and the judges simply danced around the answer]

      Another question (Judge Bryson): “Is 101 really a way to separate out technological innovations from non-technological innovations as Judge Mayer has suggested?”

      There was some hemming and hawing on that topic but nothing resembling a conclusion …

      1. From Mayer’s dissent in Bilski:

        “The en banc order in this case asked: “Whether it is appropriate to reconsider State Street Bank & Trust Co. v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed.Cir.1998), and AT & T Corp. v. Excel Communications, Inc., 172 F.3d 1352 (Fed.Cir.1999), in this case and, if so, whether those cases should be overruled in any respect?” I would answer that question with an emphatic “yes.” The patent system is intended to protect and promote advances in science and technology, not ideas about how to structure commercial transactions. Claim 1 of the application of Bernard L. Bilski and Rand A. Warsaw (“Bilski”) is not eligible for patent protection because it is directed to a method of conducting business. Affording patent protection to business methods lacks constitutional and statutory support, serves to hinder rather than promote innovation and usurps that which rightfully belongs in the public domain. State Street and AT & T should be overruled.

        “State Street’s decision to jettison the prohibition against patenting methods of doing business contravenes congressional intent.

        “The Constitution does not grant Congress unfettered authority to issue patents. See U.S. Const. art. I, § 8.[3] Instead, the
        patent power is a “qualified authority … [which] is limited to the promotion of advances in the `useful arts.’ … What the framers described as “useful arts,” we in modern times call “technology.” Paulik v. Rizkalla, 760 F.2d 1270, 1276 (Fed.Cir. 1985) (en banc). Therefore, by mandating that patents advance the useful arts, “[t]he Constitution explicitly limited patentability to … `the process today called technological innovation.'”

        1. …I’m waiting to see the start of shareholder suits clamoring that those with patent portfolios have not properly made writedowns of company values….

          then the fireworks and pushbacks will start in earnest…

  4. This copyright appeal might interest some:

    link to

    Three book authors and their advocacy organization have taken to the Supreme Court their decade-long copyright fight with Google over its massive book-copying and search project. The new appeal, filed on Thursday, asked the Justices to take away the giant digital firm’s legal protection against paying fees and getting permission to add whole volumes to its database. The filing accuses Google of violating copyright “on an epic scale.” Overall, Google has made digital copies of some twenty million books; about four million of them still are under copyright ….

    The three authors — Betty Miles, Jim Bouton, and Joseph Goulden

    Never heard of ’em.

    1. Betty Miles seems to be an author of children’s books, about 30 titles.

      Jim Bouton seems to be a former baseball player with a semi-biography to his credit as an author.

      Joseph Goulden is likely Joseph C Goulden, (Not to be confused with Joseph A Goulden, also an author, but who died in 1915). He has 18 books to his name, all non-fiction, including ironically enough ‘The Money Lawyers’ which is an expose on how rich powerful lawyers are ruining the legal system for monetary gain.

      1. “Jim Bouton seems to be a former baseball player with a semi-biography to his credit as an author.”

        Hey MDT,

        Bouton is a former baseball player. His autobiography is called “Ball Four” which I read. Interesting book about how Bouton tried to make a comeback as a knuckleball pitcher with the old Seattle Pilots (I believe) after hurting his arm when he was a “flamethrower” starting pitcher with the New York Yankees.

  5. Chief Justice Roberts re the newly amended Federal Rules of Civil Procedure (effective Dec 1, 2015):

    “I cannot believe that many members of the bar went to law school because of a burning desire to spend their professional life wearing down opponents with creatively burdensome discovery requests or evading legitimate requests through dilatory tactics.” Lawyers, he added, must work together cooperatively to chart cost-effective litigation and to achieve “just results.”

    Turning to the presiding federal judges, the Chief Justice urged them to get involved very early in the process of litigation, rather than waiting for lawyers to “dictate the scope of discovery and the pace of litigation.” It is up to the judge, he commented, to “identify the critical issues, determine the appropriate breadth of discovery, and curtail dilatory tactics, gamesmanship, and procedural posturing.”

    Given the patents that we know are out there and being regularly asserted, Federal judges should be routinely relying on 101 summary judgment motions to remove patent cases from their dockets. Eventually the message will be received but it may take a few years.

    1. MM, “I cannot believe that many members of the bar went to law school because of a burning desire to spend their professional life wearing down opponents with creatively burdensome discovery requests or evading legitimate requests through dilatory tactics.”

      I think any judge who sees this should do something about it. If from one side only, not only that, but impose sanctions.

      Hopefully the new rules will cut down on both fishing expeditions and the said diliatory tactics.

      Lawsuits are about arriving at a decision, not about making litigators rich.

      1. So, what you’re implying is that, by using these tactics, the litigators are somehow getting more money for this and also these tactics are not known or advocated by their clients? May I ask what proof you have of that?

        1. I don’t think you’ll ever get a real-life example, but the implication should be obvious. Patent litigation lawyers are paid on an hourly basis. I have never seen patent litigation done on a contingency fee basis. And burdensome discovery requests, both the generating and the responding, are typically handled by newbie lawyers billing their ridiculous (in a biglaw firm) rates for doing what is essentially scut work. Remove burdensome discovery and biglaw’s profits go down, down, down.

      2. Ned,

        You are absolutely correct as to what lawsuits should be about.

        You are also hopelessly naive to think that the tactic of “wearing down” or “out spending” is absent from our adversarial system.

        In any dispute, either or Both sides may be complicit with the real world aspects. I would further posit that this trouble is distinctly NOT a patent law issue in that these types of tactics are (or can be) involved in ALL lawsuits.

  6. Soon to be on this list is SCA v. First Quality (whether laches is a valid defense to claims of damages in light of the Supreme Court’s decision in Petrella v. MGM). That will have a great shot for a cert. grant, given the closeness of the Federal Circuit’s 6-5 en banc decision on the issue.

    Disclosure: I’m very biased in SCA’s favor.

    1. Perhaps, but is not there a big difference in this case on the issues of WHICH periods of damages could be impacted by laches or not?

  7. The above pending cert petition in Biogen MA, Inc. v. Japanese Foundation for Cancer Research, et al., No. 15-607 (Whether the AIA eliminated federal district court [alternative appeal path] jurisdiction over prior patent interferences) caught my attention for why it was even filed? I loved the Fed. Cir. decision’s comment that “Unfortunately, the effective date provisions in the AIA are far from a model of clarity. In general, the statute contains a hodgepodge of express reservations of pre-AIA provisions,..” However, the winner below can effectively argue against cert here just by noting that all interferences are all going away, so why is this worth the Supreme’s time ?
    Most significantly here, even if the loser below got a Sup. Ct. reversal on this issue, they would only get a D.C. trial. But the Fed. Cir. has already ruled, in support of the Board, that they must lose on legal grounds! That would technically not be binding in this unusual jurisdiction contest situation, but what D.C. judge would possibly rule in their favor after that Fed. Cir. decision?
    I have to wonder for what benefit other than delay cert petitions like this get filed, especially when the overall odds of any cert petition succeeding are so remarkably low?

    1. P.S. See the excellent Chico Gholz 2015 PTCJ article “So Long 35 U.S.C. § 146—It’s Been Good To Know You!” for how remarkably few patents could even be affected by this cert outcome. [As for AIA “derivation” proceedings, apparently not a single one has ever yet even been declared.]

Comments are closed.