Pending Supreme Court Patent Cases 2016 (February 3 Update)

by Dennis Crouch

With Washington DC snowed-in, action within the Supreme Court has also been somewhat slow.  Briefing is now complete in ePlus v. Lawson. In that case, a district court originally held an adjudged infringer in contempt-of-court for refusing to comply with its injunction order. Following the contempt order, the USPTO independently cancelled the patent claims and, at that point, the Federal Circuit vacated both the injunction and the contempt order. ePlus presents the following questions:

1. Whether civil contempt of a permanent injunction order that has been affirmed on appeal and is binding on the litigants under the law of judgments, may be set aside based on a legal development that came after both the permanent injunction and the contumacious conduct, and that did not call into question the correctness of the injunction when it was entered.
2. Whether, under Plaut v. Spendthrift Farm, 514 U.S. 211 (1995), the PTO, an administrative agency, may issue an order that retroactively overrides a federal court’s judgment on a question of law that is not subject to further judicial review, so long as some other part of the litigation is pending.

BIO/PhRMA filed a brief in support of the petition.  The ePlus case is one of several challenging the structure of administrative review proceedings running in parallel with court litigation.  William Jay (Goodwin Proctor) is representing ePlus with Mark Perry (Gibson Dunn)  on the other side.

Oral arguments for the parallel willfulness cases of Halo and Stryker are set for February 23, 2016.  The cases are consolidated to a single one-hour hearing. The attorneys for Halo/Stryker will chose a representative who gets 20-minutes; the US Department of Justice (who generally supports the Halo/Stryker position) will have 10-minutes of oral arguments; and Pulse/Zimmer will choose an attorney for a 30-minute opposition.  For those attending, the other case being heard that day is the criminal case of Taylor v. US involving the Hobbs Act that creates federal criminal liability for “interference with commerce by threats of violence.” 18 U.S.C. 1951.  The question is whether the required element of interstate commerce must be proven beyond a reasonable doubt in order to obtain a criminal conviction.

A new petition for certiorari has been filed in Cooper v. Lee, No. 15-955 (whether IPRs violate Separation of Powers).  The petition by Robert Greenspoon links itself with the Cuozzo challenge — noting that Cuozzo raises the “smaller issue” while Cooper raises “larger issues.”

Other new petitions include a filing from Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., No. 15-974 (defining an abstract idea) and Systems, Inc. v. Nordock, Inc., No. 15-978 (design patent damage calculations).  The Federal Circuit decided Joao Bock with a R.36 affirmance (without opinion affirming that claim 30, et. al, of U.S. Patent No. 7,096,003 are invalid as effectively claiming abstract ideas).  Regarding Nordock, although it is not as high profile, its simplicity may make it a better vehicle than Samsung v. Apple for challenging design patent damage calculations. In any event Nordock’s timing is good and I would expect that the court will at least withhold judgment until it decides whether to grant certiorari in Samsung v. Apple.

1. Petitions Granted:

2. Petitions Granted with immediate Vacatur and Remand (GVR)

3. Petitions for Writ of Certiorari Pending:

  • Post Grant AdminCooper v. Lee, No. 15-955 (whether IPRs violate Separation of Powers).
  • 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?)
  • Design Patents: Samsung Electronics Co. v. Apple Inc., No 15-777 (design patent scope and damages calculation)
  • Design Patents: Systems, Inc. v. Nordock, Inc., No. 15-978 (design patent damage calculations – similar issues as Samsung v. Apple).
  • 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)
  • 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?)
  • Claim Construction: Universal Lighting Technologies, Inc., v. Lighting Ballast Control LLC, No. 15-893 (intrinsic vs extrinsic evidence for claim construction).
  • 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)
  • 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: 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))
  • Eligibility ChallengesJoao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., No. 15-974 (defining an abstract idea)
  • Claim Construction: Media Rights Technologies, Inc. v. Capital 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 – potential wait-and-see)
  • Low Quality Brief: Morales v. Square, No. 15-896 (eligibility under Alice)

3. Petitions for Writ of Certiorari Denied:

  • Alps South, LLC v. The Ohio Willow Wood Company, No. 15-567
  • Allvoice Developments US, LLC v. Microsoft Corp., No. 15-538
  • OIP Technologies, Inc. v. Amazon.com, 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
  • Kenneth Butler, Sr. v. Balkamp Inc., et al., No. 15-273
  • 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
  • SpeedTrack, Inc. v. Office Depot, Inc. et al., No. 15-461 (Kessler doctrine)
  • Rodney K. Morgan, et al. v. Global Traffic Technologies LLC, No. 15-602
  • Lakshmi Arunachalam v. JPMorgan Chase & Co., No. 15-691

4. Prior versions of this report:

About Dennis Crouch

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

43 thoughts on “Pending Supreme Court Patent Cases 2016 (February 3 Update)

  1. Interesting oral argument this morning in In re Gevo where the applicant’s attorney tees up (or tries to tee up) an issue that’s been discussed here rather frequently.

    Panel: Prost, Newman, & Lourie

    1. The issue is the obviousness of a claim that recites a combination of old elements where (1) there are no unexpected results and (2) individually, the elements and their functionality are decades old and well-known. The PTO described the combination as a “routine design choice” and found the disclosure obvious in view of prior art references which separately taught and suggested the uncombined elements.

      Lourie characterized the applicant’s argument as “Nobody has combined these old things before, therefore the claim is non-obvious”.

    2. Ultimately the dispute boils down to the sufficiency of the PTO’s evidence showing that one skilled in the art would have understood that the recited elements could be combined and used in the claimed manner.

      If there’s no teaching away in the art and the choices are finite and the applicant has no evidence of unexpected results then the applicant is really up the river without a paddle in this circumstance. The claims are obvious. If you don’t like that, then you need to find a less crowded field to practice in (good luck).

      From the arguments, it’s seems highly likely this case will be decided against G evo. G evo can appeal to the Supremes if they like but they will come up empty. Applicants appear to be desperately trying to expand the CAFC’s recent decision in Cutsforth but KSR isn’t going anywhere because KSR makes sense. As a test for obviousness, “Nobody told you to make this combination before” makes no sense at all.

      1. showing that one skilled in the art

        Still a rather important point – and one that shows that the “world” of prior art available for 103 (obviousness) is just not the same “world” of prior art available for 102 (novelty).

        And a reminder: 103 is NOT a law of synergy.

        1. the “world” of prior art available for 103 (obviousness) is just not the same “world” of prior art available for 102 (novelty).

          Yes, it is the same world. It’s called Earth.

          You should visit sometime.

  2. If the government does a decent job briefing the “single staple item of commerce” issue in Life Technologies, I can see the CAFC’s decision being reversed summarily on those grounds. No other action necessary.

    1. The filter does not like links today…

      Is that the issue of statutory construction that you fail to grasp…?

      https://legisource

      .net/2014/08/21/statutory-construction-singular-v-plural-gender-and-time/

      (well, one of them, at least… 😉 )

  3. IBM v. Intellectual Ventures II LLC
    Oral argument: Moore, O’Malley, & Hughes

    Today’s friendly reminder for litigators: don’t interrupt the judge when the judge is talking. After all, you never know what’s going through the judge’s head.

    Intellectual Ventures is probably the least credible company asserting patents in the United States. Heckuva job, Nathan! There’s really nothing like a bunch of lawyers sitting around and “innovating” new “monetizing” schemes. What could go possibly go wrong?

    Today we get to listen to IV’s attorney arguing that outputting data X “directly” is critically different than outputting data X “unchanged”. How can that possibly be the case? The attorney doesn’t say. Of course he doesn’t say! Why not? Because only a “skilled person” is qualified to opine on such a complex question and certainly none of the attorneys at Intellectual Ventures or IBM or the PTO is up to the task. So let’s pay someone to tell us what it means just in case the money we’re paying convinces the person to say what we want him to say.

    Anyway, with respect to the reminder above, at around 13:00 Judge Moore pretty much chews the IV attorney a new one for interrupting her. She alludes to other interruptions that, frankly, I didn’t notice up to that point. At the beginning of the rebuttal, everybody apologizes to each other and you can almost feel the waves of love and healing spreading through the courtroom. Almost.

      1. one “Tr011” fighting another “Tr011” (to apply the parlance of anyone who has a particular patent that they are seeking to enforce but they themselves do not have a product on the market)

      2. km88: That was the IBM attorney who got chewed out, not the IV attorney.

        Indeed. My bad. I got confused when I heard the attorney say that the PTAB had made a mistake by finding “IV’s patent not patentable.” But upon closer lisenting he actually says (oddly) that the PTAB erred in finding IV’s patent to be “not unpatentable”.

        Truly a battle for the basement, in any event.

  4. Oral arguments in InvestPic v. IBM (Wallach, Clevenger, & Taranto)

    How it possible in a post-Bilski, post-Mayo, post-Alice world that the Federal Circuit is wasting its time debating an attorney who is analogizing its claimed “investment evaluation” process to a method of picking one ping ball out of a group of ping balls, where the ping pong balls have stock prices and dates printed on them?

    It’s baffling to me that the CAFC judges still don’t seem to have copped to the surreal nature of these proceedings.

    “Bootstrapping is the critical insight! Bootstrapping is the critical insight! Understanding the temporal relation is the key!” cries the patentee. Really? You can get a patent on data analysis by introducing a hand-waving “bias paramenter” on top of a re-sampling analysis that’s in the prior art data? Funny stuff.

    Thank goodness nobody is trying to patent math. Oh wait! This is math applied to numbers that are derived from stocks. That’s totally differerent. Sure it is.

    1. Software is not math.

      You cannot obtain a copyright on math.

      (and please, don’t try to move the goalposts by trying to talk about a math book in which any copyright obtained would STILL not be on the math itself).

  5. Re this question:

    1. Whether civil contempt of a permanent injunction order that has been affirmed on appeal and is binding on the litigants under the law of judgments, may be set aside based on a legal development that came after both the permanent injunction and the contumacious conduct, and that did not call into question the correctness of the injunction when it was entered.

    On its face, this question goes beyond patents. I’m surprised it hasn’t been addressed already in other contexts.

    Let’s say a “permanent injunction” issues to force me to conform with law X. Later I’m held in contempt for violating the injunction. Later still, law X is found to be unconstitutional. It makes sense that I’m no longer enjoined but if the contempt holding is final, it seems reasonable (barring some equitable considerations) that I pay the fine or do the time in that circumstance.

    2. Whether, under Plaut v. Spendthrift Farm, 514 U.S. 211 (1995), the PTO, an administrative agency, may issue an order that retroactively overrides a federal court’s judgment on a question of law that is not subject to further judicial review, so long as some other part of the litigation is pending.

    The answer here would seem to be highly dependent on the nature of the “overriding” (how did it happen) and the “question of law”. What about an issue of claim construction that goes up the Supreme Court? The Supreme Court decides that “term X means Y” and sends the case back down. Later, while the case is still pending, the PTO is presented with evidence not before the Supreme Court, causing it to construe the term differently and invalidate the patent. Where’s the problem? Note that I’m not suggesting this is the ideal way for the system to operate. But there are procedural checks already in place that guard against the waste of judicial resources and ePlus doesn’t seem to be challenging those (at least not directly).

    1. What about an issue of claim construction that goes up the Supreme Court?

      You missed this part (even though you cut -n-pasted it): “on a question of law that is not subject to further judicial review

      1. You missed this part (even though you cut -n-pasted it): “on a question of law that is not subject to further judicial review“

        No, I didn’t miss it. Are you trying to make a point? If so, try using declarative sentences that express your own thoughts rather than projecting your weird beliefs onto others.

        Maybe you could try writing a paragraph with a thesis statement. I’m pretty sure there’s some guidance on the web about how to write clearly and I guarantee you’ll find it helpful.

    2. MM, the broader question was addressed in an DC Cir. opinion IIRC. The case, I cannot recall its name, involved the mandate of a court regarding the right to an FCC license. After the mandate, and before the grant of the license, Congress changed the law. The court ruled that the mandate controlled.

      The mandate is like a legal right owned by its beneficiary. Congress cannot abrogate it by legislation.

      A similar issue arose in Marbury v. Madison, and the result was the same.

  6. The whole idea that the PTO can revoke the claims of an issued patent against the will of the patent owner is wrong. That has to be stopped.

      1. What will of the public? And what is being unlawfully granted? I think we could safely interpret this as claims that you happen to see as being “unlawful”. Given that this is the requirement:

        Whoever 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, subject to the conditions and requirements of this title.

        Where does the “unlawful” part come in? That law seems awfully broad in scope: something just has to be “new” and “useful”.

        1. Malcolm is already on record as believing that ALL software is per se ineligible.

          That means, PatentBob, that even if a software claim otherwise meets EVERY portion of the Patent Act, Malcolm would STILL: “Rinse. Recycle. Repeat.

      2. MM, the PTO does not have the power to grant enforceable right beyond the statutes. When it does, the patent is invalid, and anybody with standing can sue to invalidate the patent.

  7. The Federal Circuit decided Joao Bock with a R.36 affirmance (without opinion affirming that claim 30, et. al, of U.S. Patent No. 7,096,003 are invalid as effectively claiming abstract ideas).

    The absurd claims in question:

    1. A transaction security apparatus, comprising:

    a memory device, wherein the memory device stores a limitation or restriction regarding a banking transaction, wherein the limitation or restriction prohibits a withdrawal from a checking account or prohibits a use of a checking account, wherein the limitation or restriction is transmitted from a communication device associated with an individual account holder, and further wherein the limitation or restriction is transmitted to a receiver on or over at least one of the Internet and the World Wide Web, wherein the limitation or restriction is automatically received by the receiver, and further wherein the limitation or restriction is automatically stored in the memory device; and

    a processing device, wherein the processing device processes information regarding a banking transaction, wherein the processing device utilizes the limitation or restriction automatically stored in the memory device in processing the banking transaction, and further wherein the processing device generates a signal for allowing or disallowing the banking transaction.

    Translation: use a computer to signal that a “limit” as been exceeded.

    Oh, but this is banking! That changes everything.

    Everything ancient is new again in the shiny world of computers. Basic logic becomes a magical array of “bit states” which is, like, totally not abstract because otherwise nobody will write new software to automatically raise your checking account fees.

    1. Yeah, ancient:

      “wherein the limitation or restriction is transmitted from a communication device associated with an individual account holder, and further wherein the limitation or restriction is transmitted to a receiver on or over at least one of the Internet and the World Wide Web, wherein the limitation or restriction is automatically received by the receiver, and further wherein the limitation or restriction is automatically stored in the memory device;”

      Because it has alllllwaaays been possible to put a stop on your credit card using your smart phone when you realize that you left your wallet at the last bar you were in and then remove the stop 22 minutes later when you get back to the bar and see your wallet still sitting apparently unmolested and verify that your credit card is still there.

      1. Thanks for proving my point, Les.

        These “limitations”, by the way, are completely abstract hooey:

        associated with an individual account holder <–legal relationship between object and person

        limitation or restriction <– data content

        Everything else is just old technology, used for its intended purpose.

        But that's the game isn't it? Tie up that old technology with a zillion claims to ineligible abstractions that eat away at the entire point of the technology. Then make everybody else pay for it.

        The rich crybabies who couldn't innovate themselves out of a paper bag get richer, along with their lawyers. Rinse. Recycle. Repeat.

        1. They are not abstract. They are as concrete as :

          1. In a process for the preparation of crystalline lofepramine free base from 10,11-dihydro-5-(3-(methylamino)-propyl)-5H-dibenz[b,f]azepine, the improvement which comprises using a two-phase system and employing the steps of
          (I) contacting (a) 10,11-dihydro-5-(3-(methylamino)-propyl)-5H-dibenz[b,f]azepine with (b) 2-bromo-4′-chloroacetophenone in (c) a solvent selected from the group consisting of unsubstituted alkanones, cycloalkanones, and alkyl alkanoates (1) having molecular weights between 60 and 150 and (2) in which the solubility of water is more than about 0.1%, in the presence of (d) an aqueous phase having a buffered pH between about 6 and 9, to form (e) a precipitate of lofepramine free base, and
          (II) isolating said precipitated lofepramine free base.

          link to patents.google.com

          Or shall we decree that this claim is directed to the abstract idea of mixing chemical precursors together in a solvent to get a resultant chemical? Its merely directed to the human activity of re-arranging sets of atoms. There are no unexpected results. Everyone knows the advantages of two-phase system.

          1. the abstract idea of mixing chemical precursors together in a solvent to get a resultant chemical

            LOL

            That claim is anticipated.

            And there is nothing at all “abstract” about a process that acts on a structurally defined chemicals to produce a new chemical. Do you want to argue that a new process for synthesizing a chemical is “equivalent” to creating a “new” credit card account? If so, please go ahead. Can you do me a favor, though, and put on a big rubber nose and some giant shoes? Somehow it makes the argument so much more … palatable.

            1. abstract idea claim (given as that is what Les IS saying) is….

              …anticipated?

              If you want Les to wear that costume, do you mind giving him yours?

              1. I wouldn’t be surprised if it is now anticipated, as the associated patent has a 1975 filing date.

                But, I thought we agreed a week or so ago that anticipation should have no bearing an the 101 analysis.

                Why are you bringing up anticipation?

                And no, I’m not saying the claims are equivalent. I’m saying given your “abstract idea” analysis (and that of the Courts), they both can be found to “be directed to” abstract ideas, as I believe I illustrated.

                Moreover, the account claim clearly transforms a state of an account AND is tied to several machines, whereas the chemical process claim isn’t tied to so much as a pot or a spoon.

              2. abstract idea claim (given as that is what Les IS saying) is….

                …anticipated?

                Abstract ideas are anticipated all the time. I’ve no idea why you’d question that. More specifically, the idea of mixing chemicals in a solvent to make another chemical is a really really really really old idea. Got that? Old idea. Old process. Anticipated idea. Anticipated process.

                1. Wolfgang Pauli…

                  Not even wrong.

                  Then again, you “don’t get” why trying to make legal point using the canard of non-Useful Arts is a F A I L from the start…

                2. More directly: you are NOT using the legal term of anticipation correctly with the application to “abstract idea.”

                  Remember Malcolm – the Means to the Ends really do matter.

      2. (never mind the [purposeful?] conflation – the whatever – between prior art (the “ancient” reference) and what the court actually did here – eligibility question)…

        Malcolm: Ever the schmuck

        1. The prior art is always relevant to a determination of eligibility when the claim recites prior art technology.

          This is fundamental stuff and it’s never going away. Maybe time to get used to it?

          More particularly, with respect to these incredibly junky claims (please defend them! you’re very serious!), when you are using old technology to receive, processs and communicate information whose content relates to an abstraction (e.g., “credit card account”) you’re so deep in the ineligibility swamp that you might as well just cover yourself with fish sauce and crawl into the nearest alligator’s mouth.

  8. Professor, you inadvertently left one off, it seems: Cooper v. Lee, No. 15-955 (whether IPRs violate Separation of Powers).

    This was docketed January 28, which means amicus briefs will be due February 29 (since February 27 is a Saturday), with notices / consent requests due February 17. Mr. Cooper is filing a blanket consent.

Comments are closed.