by Dennis Crouch
The Supreme Court is on recess until Feb 17.
I don't know if my end-of-April prediction will hold true, but I do expect Neil Gorsuch to become a Justice on the United States Supreme Court. As a 10th Circuit Judge, Gorsuch never decided a patent case, but does have a handful of interesting IP cases.
There are a few petitions filed that we have not discussed here:
In its newest petition, DataTreasury takes 101 for a new spin by taking the 101/103 analysis to its next logical level. If we are going to include a 103 analysis as part of the eligibility doctrine then lets go whole hog. Thus, DataTreasury asks: whether a court must consider secondary indicia of invention as evidence in its eligibility analysis? In the case, the Federal Circuit had affirmed the PTAB judgment without opinion under R.36. A second eligibility petition is found in TDE Petroleum Data Solutions, Inc. v. AKM Enterprise, Inc., dba Moblize, Inc. TDE asks the court to "please reconcile Diehr and Alice." (I'm not literally quoting here). The patent at issue (No. 6,892,812) claims a four-step process of "determining the state of a well operation." (a) store several potential "states"; (b) receive well operation data from a plurality of systems; (c) determine that the data is valid by comparing it to a threshold limit; and (d) set the state based upon the valid data.
In Wi-LAN v. Apple, the patentee revives both Cuozzo and Markman claim construction arguments - this time focusing on "whether claim terms used to define the metes and bounds of an invention are generally given their “plain and ordinary meaning,” or are redefined (limited) to match the scope of the exemplary embodiments provided in the specification."
duPont v. Macdermid asks whether summary judgment of obviousness is proper because of the factual disputes at issue. Similarly, in Enplas v. Seoul Semiconductor, the petitioner argues that a finding of anticipation by the PTAB must be supported by findings each and every element of the subject patent claim is disclosed in the prior art. In Enplas, the Federal Circuit affirmed the PTAB on a R.36 Judgment Without Appeal -- it difficult for the petitioner to point to the particular deficiencies.
1. 2016-2016 Decisions:
- Design Patent Damages: Samsung Electronics Co. v. Apple Inc., No 15-777 (Total profits may be based upon either the entire product sold to consumers or a component); GVR order in parallel case Systems, Inc. v. Nordock, Inc., No. 15-978. These cases are now back before the Federal Circuit for the job of explaining when a component
2. Petitions Granted:
- Argued - Awaiting Decision: SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927 (laches in patent cases)
- Argued - Awaiting Decision: Life Technologies Corporation, et al. v. Promega Corporation, No. 14-1538 (infringement under 35 U.S.C. § 271(f)(1) for supplying single component)
- Briefing: Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189 (unreasonable restraints on downstream uses) Oral arguments set for March 21, 2017.
- Briefing: Sandoz Inc. v. Amgen Inc., et al., No. 15-1039 (Does the notice requirement of the BPCIA create an effective six-month exclusivity post-FDA approval?)
- Briefing: TC Heartland LLC v. Kraft Food Brands Group LLC, No 16-341 (Does the general and broad definition of "residence" found in 28 U.S.C. 1391(c) apply to the patent venue statute 1400(b)) Oral arguments set for March 27, 2017
3. Petitions with Invited Views of SG (CVSG):
4. Petitions for Writ of Certiorari Pending:
- Claim Construction: Wi-LAN USA, Inc., et al. v. Apple Inc., No. 16-913 ("plain and ordinary meaning")
- Is it a Patent Case?: Boston Scientific Corporation, et al. v. Mirowski Family Ventures, LLC, No. 16-470 (how closely must a state court "hew" federal court patent law precedents?) (Appeal from MD State Court)
- Anticipation/Obviousness: Google Inc., et al. v. Arendi S A.R.L., et al., No. 16-626 (can "common sense" invalidate a patent claim that includes novel elements?) (Supreme Court has requested a brief in response)
- Anticipation/Obviousness: Enplas Corporation v. Seoul Semiconductor Co., Ltd., et al., No. 16-867 ("Whether a finding of anticipation under 35 U.S.C. § 102 must be supported by findings that each and every element of the subject patent claim is disclosed in the prior art?")
- Anticipation/Obviousness: E.I. du Pont de Nemours and Company v. MacDermid Printing Solutions, L.L.C., No. 16-905 (summary judgment of obviousness proper)
- Jury Trial: Oil States Energy Services, LLC v. Greene's Energy Group, LLC, et al., No. 16-712 ("Whether inter partes review ... violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.") [oilstatespetition]
- Jury Trial: Nanovapor Fuels Group, Inc., et al. v. Vapor Point, LLC, et al., No. 16-892 (Can a party forfeit a properly demanded trial by jury without an explicit, clear, and unequivocal waiver?)
- Is it a Patent Case?: Big Baboon, Inc. v. Michelle K. Lee, No. 16-496 (Appeal of APA seeking overturning of evidentiary admission findings during reexamination - heard by Federal Circuit or Regional Circuit?)
- Laches: Medinol Ltd. v. Cordis Corporation, et al., No. 15-998 (follow-on to SCA); Endotach LLC v. Cook Medical LLC, No. 16-127 (SCA Redux); Romag Fasteners, Inc. v. Fossil, Inc., et al, No. 16-202 (SCA Redux plus TM issue)
- Eligibility: TDE Petroleum Data Solutions, Inc. v. AKM Enterprise, Inc., dba Moblize, Inc., No. 16-890 (Please reconcile Diehr and Alice)
- Eligibility: DataTreasury Corporation v. Fidelity National Information Services, Inc., No. 16-883 (secondary indicia as part of eligibility analysis).
- Eligibility: IPLearn-Focus, LLC v. Microsoft Corp., No. 16-859 (evidence necessary for finding an abstract idea)
5. Petitions for Writ of Certiorari Denied or Dismissed:
