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Pending Supreme Court and en banc Federal Circuit Patent Cases

By Jason Rantanen

The Supeme Court continues to take an active interest in patent cases, with three currently pending before the Court.  Briefs are available through the American Bar Association's Supreme Court coverage site.

Patent Cases Pending Before the Supreme Court:

Mayo v. Prometheus: Subject Matter Patentability of Processes, redux. In Mayo, the Supreme Court will revisit the issue of patentable processes in a case that was the subject of a grant-vacate-remand order following Bilski.  The Court has asked the parties to answer the following question:

Whether 35 U.S.C. § 101 is satisfied by a patent claim that covers observed correlations between blood test results and patient health, so that the claim effectively preempts all uses of the naturally occurring correlations, simply because well-known methods used to administer prescription drugs and test blood may involve “transformations” of body chemistry.  

Argument is set for December 7, 2011.  This case has prompted substantial debate and numerous amici submissions.  Prior PatentlyO posts:

Kappos v. Hyatt: Standard of Review of Patent Office Appeals to the District Court.  In Kappos v. Hyatt, the Supreme Court will address the de novo nature of a civil action brought by a patent applicant under 35 U.S.C. § 145.  The Federal Circuit, sitting en banc, previously held that in such a proceeding the applicant many present new evidence to the district court and that any factual conclusions impacted by that evidence must be determined de novo, without deference to the patent office.  The Supreme Court has not yet set oral argument.  Prior PatentlyO commentary:

Caraco v. Novo: Counterclaims Relating to Brand Name Description of Claim Scope. This case relates to a generic company's ability to seek a counterclaim to correct a brand pharmaceutical company's alleged misdescription of patent claim scope submitted to the FDA. Oral argument is set for December 5, 2011.

Patent Cases Pending Before the Federal Circuit Sitting en banc:

Akamai v. Limelight and McKesson v. Epic: Multi-Party, Multi-Step Infringement issues.  In this set of cases the Federal Circuit will address infringement liability when multiple parties collectively perform separate steps of a muti-step process claim but no single entity performs all the steps. Oral argument will take place on November 18, 2011.  Prior PatentlyO commentary:

Prosecution Laches from Woodbridge to Sonos: A 170-Year Continuation?

Patent

By Dennis Crouch,

I did a double-take earlier this week as I read the 1923 Supreme Court case of Woodbridge v. U.S., 263 U.S. 50, 44 S.Ct. 45. Although the case was decided after WWI, the facts center on a cannon projectile patent originally filed in 1852 – well before the U.S. Civil War.  The 70 year saga involved the inventor’s prolonged quest for a patent (and later for compensation). The Supreme Court’s ultimate decision, delivered by the former U.S. President and Chief Justice Taft, planted the seeds for what we now call prosecution laches – the equitable doctrine barring patents obtained after unreasonable, prejudicial delay in prosecution.

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Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem

Journal, Patent

David Boundy’s writing often focuses on the intersection between administrative procedure and Patent Office operations. In his new Patently-O Law Journal essay, Boundy explains the role of guidance (the MPEP, memoranda to examiners, checkboxes on forms, etc. -- anything the PTO uses to govern the public or its employees outside the Code of Federal Regulations). Boundy explains when the PTO may act by guidance vs. when the PTO must use a full statutory rulemaking procedure.

Boundy walks through how bad PTO guidance practices is leading to lost patent protection, companies not formed, companies that fold because of delays and unpredictability of their patent applications, business opportunities not pursued, and similar economic effects, etc.  He estimates the cost as several billion dollars per year.

Boundy's essay then explains how that law applies to several specific rules that PTO improperly promulgated by guidance that create difficulties for patent applicants.

  • Example 1: The secret 2007 restriction memo
  • Example 2: Unpublished rules for ADS submission of bibliographic data
  • Example 3: MPEP § 2144.03(C) misstatement of the law of intra-agency Official Notice
  • Example 4: MPEP § 1207.04 and an examiner's power to abort an appeal
  • Example 5: the PTAB’s Trial Practice Guide (The right way)

Boundy's essay is directly relevant to the pending en banc petition in Hyatt v. USPTO that challenges the agency's right to "reopen prosecution" following a second rejection rather than allowing issues to be appealed.  Although the Federal Circuit ruled that Hyatt's petition was time-barred, Boundy explains, inter alia, that PTO procedural failures likely divested the agency from any statute of limitations defense.  See, e.g., National Resources Defense Council v. Nat’l Highway Traffic Safety Admin, 894 F.3d 95, 106 (2d Cir. 2018) (a rule does not go effective until published in the Federal Register, and that’s the event that commences the limitations period). 

Read it here:

  • David A. Boundy, Agency Bad Guidance Practices at the Patent and Trademark Office: a Billion Dollar Problem, 2018 Patently-O Patent Law Journal 20. (Boundy.2018.BadGuidance)
Prior Patently-O Patent L.J. Articles:

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Pending Supreme Court Patent Cases 2016 (April 18 Update)

Patent, , , , , , , , , , , , , ,

by Dennis Crouch

Cuozzo: Prof Mann provides his preview of the April 25 oral arguments in Cuozzo v. Lee; and Cuozzo has filed its reply brief. Neither document address my the mootness concern regarding Cuozzo's demand for an ordinary construction of claim terms rather than their broadest reasonable interpretation.  As far as I have seen, nothing in the record suggests that a change in claim interpretation standard would alter the PTO's determination.

Following its April 15 Conference, the Supreme Court denied certiorari in a set of cases, including Vermont v. MPHJ; Limelight v. Akamai; Hemopet v. Hill's Pet Nutrition; and Tas v. Beachy. In its April 1 Conference, the Court denied cert in Retirement Capital v. US Bancorp. That case had questioned 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).

The only patent cases surviving the April 15 conference are (1) Interval Licensing v. Lee that asks the same question as Cuozzo: Can the Patent and Trademark Office appropriately apply the "broadest reasonable interpretation" standard in construing patent claims in post-grant validity challenges?; and (2) Medinol v. Cordis that focuses on whether "the equitable defense of laches [may be used to] bar legal claims for damages that are timely under the express terms of the Patent Act."   Medinol is conceptually linked to the SCA Hygiene case that also raises the laches issue. The court will consider both cases in its April 22 conference and may likely couple the decision to grant/deny.  The court is also scheduled to consider Cloud Satchel (abstract idea eligibility) and Globus Medical (appellate jurisdiction) at Friday's conference. Neither of these cases offer much hope for the respective petitioner.

In Cooper v. Lee, the US Government filed its brief opposing certiorari. The government argues that Cooper's Article III challenge to the IPR system "lack's merit."

[P]atents are quintessential "public rights" whose issuance and cancellation Congress may permissible entrust to a non-Article III tribunal. . . . Pursuant to its constitutional authority to “promote the Progress of Science and useful Arts” by establishing a patent system, Congress created the PTO - an agency with “special expertise in evaluating patent applications.” Kappos v. Hyatt, 132 S. Ct. 1690 (2012). It directed that agency to issue a patent if “it appears that the applicant is entitled to a patent” under standards set by federal law, 35 U.S.C. 131. Patents are accordingly rights that “exist only by virtue of statute.” Sears, Roebuck & Co. v. Stiffel Co., 376 U.S. 225, 229 n.5 (1964). They “dispose of public rights held by the government on behalf of the people.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 849 n.2 (2015) (Thomas, J., dissenting).

The government also argues that the posture of the case lacks merits - in particular that Cooper's collateral challenge to the procedures doesn't work.  Cooper has argued that "inter partes review violates Article III of the Constitution by authorizing an Executive Branch agency, rather than a court, to invalidate a previously issued patent."

Daniel Bohnen has filed a brief on behalf of UK's Chartered Institute of Patent Attorneys (CIPA) in support of the Sequenom v. Ariosa petition.   The brief argues that the court should look to "maintain international harmonisation in the law of patent-eligibility."[AriosaCIPA].  More briefs in support of the petitioner are expected this week as is Ariosa's opposition brief (if any).

Finally, Nova has filed its opposition in Dow v. Nova and is attempting to refocus attention on the merits of the indefiniteness decision rather than the procedure for reaching that decision.  The difference in question presented is interesting:

Dow: Whether factual findings underlying a district court’s determination on the definiteness of a patent claim under the Patent Act, 35 U.S.C. 112, like a district court’s factual findings underlying construction of a patent claim, are subject to appellate review only for clear error or substantial evidence rather than de novo review.

Nova: Whether the court of appeals correctly invalidated Dow’s patent claims as indefinite under 35 U.S.C. § 112.

Explaining its shift of the question, Nova argues that "Dow's petition rests on a false premise that the Federal Circuit refuses to give deference to factual findings" that underlie the definiteness determination.  Nova is correct as to the Federal Circuit's position -- the only question here is whether the Supreme Court will order the appellate court to follow its own law in this case. [DowPetition][NovaOpposition]

The big list:

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