Pending Cases at the Supreme Court

As we sit here today, there are no pending patent cases before the Supreme Court where the court has granted certiorari.  That said, there are a large number of pending petitions.  These include Cuozzo & Pulse that I have previously discussed. WilmerHale has been covering these, but is a few months behind.

The following are a few recently filed petitions:

Teva Follow-On: FiveTech v. SouthCo: (1) Can the Federal Circuit limit the role of the intrinsic evidence in construing patent claims under the exacting “lexicography and disavowal” standard; (2) Does the “lexicography and disavowal” standard improperly circumscribe the objective standard of the person of ordinary skill in the art in construing claim terms.

Teva Follow-On: Chunghwa Picture Tubes v. Eidos: Whether a district court’s factual finding(s) underlying its construction of a patent claim term must be reviewed for clear error under Rule 52(a)(6) as this Court held in Teva, or is an exception created to clear error review where the appellate court finds the intrinsic record clear after a de novo review of that record, as the Federal Circuit held in this case.

Attorney Fees in Copyright:

Kirtsaeng v. John Wiley (Kirtsaeng II): What is the appropriate standard for awarding attorneys’ fees to a prevailing party under § 505 of the Copyright Act?

Omega v. Costco (Costco II): (1) Can Copyright attorney fees be based on a finding that petitioner engaged in copyright misuse when the issue of misuse was appealed but left undecided on appeal? (2) Can the pursuit of a claim of copyright infringement constitute “copyright misuse” when the allegedly infringing copy is a “pictorial, graphic, or sculptural work” that is reproduced in a “useful” article.

Inter Partes Review Challenges:

Automated Merchandising v. Michelle Lee: (1) Must the federal judiciary await the substantive conclusion of an agency proceeding before it can evaluate whether an express statutory limitation on that agency’s jurisdiction requires that agency to terminate its proceeding? (2) Did the Federal Circuit err in refusing to order the USPTO to terminate the subject inter partes reexaminations under 35 U.S.C. § 317(b)?

Luv N’ Care v. Munchkin: Did the Federal Circuit err by affirming a PTAB administrative judgment based on new issues raised sua sponte by the PTAB at the Final Hearing, thus depriving the patent owner of notice and a meaningful opportunity to respond?

ANDA Loophole Cases:

Mylan v. Apotex:  (1) Whether Article III’s case or controversy requirement can be satisfied by a suit which seeks a judgment of non-infringement of a disclaimed patent. (2) Whether Congress can create Article III jurisdiction by imposing statutory consequences that turn on obtaining a judgment of non-infringement of a disclaimed patent.

Daiichi Sankyo v. Apotex: Whether an action seeking a declaration judgment of non-infringement presents a justiciable case or controversy under Article III of the Constitution where the patent at issue was previously disclaimed and thus cannot be enforced.

Design Patent Summary Judgment: Butler v. Balkamp: Is summary judgement proper in a District Court when a factual dispute exists in a Design Patent action and the District Court substitutes its own opinion for that of the ordinary observer?

Reasons to Combine and Obviousness: Arthrex v. KFX Medical: (1) Is the “reason to combine” inquiry a subsidiary question of fact, subject to deferential review on appeal, or a legal question for the court, and reviewed de novo. (2) Should the ultimate legal issue of obviousness be resolved by the court rather than submitted to the jury for resolution.

36 thoughts on “Pending Cases at the Supreme Court

  1. 9

    Ned: the PTO has declared a war on patents.

    Really? You could have fooled me:

    link to

    “FY2015’s numbers … represent the second-highest number of patents granted in the PTO’s 200+ year history”.

    1. 9.1

      And the lovely chum – straight numbers without context – are of course used for propaganda effect.

      What was that phrase…?

      Who saw that coming?

  2. 8

    This morning the CAFC affirmed (Rule 36) the ineligibility of JOAO Bock Transaction’s incredibly junky banking transaction method claims. Another notorious troll hits the wall. *SPLAT* Hooray!

    Congrats to Polsinelli PC and their client Jack Henry for fighting the good fight.

    There’s much, much more work to be done before the mess is cleaned up.

  3. 7

    … the objective standard of the person of ordinary skill in the art in construing claim terms.

    When I read that I both laughed and cried. It is a fricking myth that anything can be objective when it involves the opinion of the PHOSITA. What we get in court his endless blather from experts about what they believe the person of ordinary skill in the art would “think.”

  4. 6

    No, MM, the statute requires termination.

    “Once a final decision has been entered against a
    party in a civil action arising in whole or in part
    under section 1338 of title 28, that the party has
    not sustained its burden of proving the invalidity
    of any patent claim in suit . . . , then neither that
    party nor its privies may thereafter request an inter
    partes reexamination of any such patent claim
    on the basis of issues which that party or its privies
    raised or could have raised in such civil action
    . . . , and an inter partes reexamination
    requested by that party or its privies on the basis
    of such issues may not thereafter be maintained
    by the Office . . . .”

    Now the way the PTO construes this, consent judgments, with prejudice, do not count. The same infringer can bring further IPE (IPR’s) even thought the whole point of the settlement by consent and the dismissal with prejudice was to end the controversy between the parties. Permanently.

    The new IPR’s section 317 is similar, only that a settlement requires dismissal of the IPR.

    Clearly, the point of a final judgment on validity, with prejudice, is to stop all litigation between the parties and to bind them so that they cannot renew the litigation in the future. If the losing infringer could subsequently file further IPEs and IPRs, that policy would be frustrated.

    On the whole, the Federal Circuit needs to decide this issue – but they hold that the decision must await the whole, now ex parte reexamination, the appeal to the PTAB and then an appeal to the Federal Circuit? That is simply bat sh!t cr@zy.

    I don’t even understand your point about lying. Whose lying about what?

    1. 6.1

      Ned: he way the PTO construes this, consent judgments, with prejudice, do not count. The same infringer can bring further IPE (IPR’s) even thought the whole point of the settlement by consent and the dismissal with prejudice was to end the controversy between the parties.

      The facts here, however, are that the IPR was requested — and granted — before the settlement. The PTO had determined that the validity of the patent was questionable before the settlement.

      At that point it’s the public’s problem and the PTO’s problem. Either kill the patent (and everybody wins) or determine that it’s valid over the cited art.

      Is there another case you’re aware of where the parties had settled litigation with a consent decree of validity and THEN the defendant in that settled case filed an IPR challenging the patent? I’m pretty sure that’s a different situation than the situation here.

      1. 6.1.1

        I agree with Macolm and presented this point on the threads a little while back, showcasing the possibility of the Office continuing its examination on the merits once the post grant review has materially started.

        I also received a similar “deer in the headlights” post by Ned.

      2. 6.1.2

        Still, so what, MM. The statute requires a dismissal of the IPE if the conditions are met. The only issue here is whether that issue is decided now, or after the exam is complete with the cancellation of at least one claim, with a lost appeal to the Board, and then finally with an appeal to the Federal Circuit where, if it is determined that the Director was wrong, in her initial decision, the whole IPE must be erased – vacated. There is no way in bloody Hades that this can be right.

        The Federal Circuit pretends that there was no right involved here, and that the patent owner suffers no legal injury by having to undergo the entire examination process, an appeal to the Board, and then an appeal to the Federal Circuit before he can have the decision of the Director reversed. This is Wong! The whole point of the statute is to conserve resources and to provide a right of the patent owner to have the proceedings in the patent office terminated. This is a statutory right that effectively is being denied the patent owner by this decision by an out-of-control and bat-sheet cr@zy Federal Circuit.

  5. 5

    This is fairly up to date and includes some of the petitions on Dennis’s list and some mentioned in comments.
    link to

    Most of the petitions on the linked Wilmer list were denied on October 5 (the long list of denials when the Justices come back from the summer recess)

  6. 3

    There was also a call for the SG’s views last week in Promega v. Life, about the proper interpretation of 271(f).

    1. 3.1

      Right – That case offers the following question:

      35 U.S.C. § 271(f)(1) provides that it is an act of patent infringement to “suppl[y] . . . in or from the United States all or a substantial portion of the components of a patented invention, . . . in such manner as to actively induce the combination of such components outside the United States.” Despite this Court’s clear dictate that section 271(f) should be construed narrowly, Microsoft Corp. v. AT&T Corp., 550 U.S. 437 (2007), the Federal Circuit held that Life Technologies is liable for patent infringement for worldwide sales of a multi-component kit made abroad because just a single, commodity component of the kit was shipped from its U.S. facility to its own foreign facility.

      The questions presented are:

      Whether the Federal Circuit erred in holding that a single entity can “actively induce” itself to infringe a patent under 35 U.S.C. § 271(f)(1).

      Whether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. § 271(f)(1), exposing the manufacturer to liability for all worldwide sales.

  7. 2

    Note also: Halo Electronics, Inc. v. Pulse Electronics, Inc. (whether Federal Circuit jurisprudence on enhanced damages is unsound in light of Octane Fitness). The case was relisted after the September 28 conference. There’s a good chance we’ll see a grant this Friday (10/16) afternoon, or maybe a call for the views of the Solicitor General.

    1. 2.1

      Fyi, I linked to this before (and you probably saw it prior to that, Andrew) but I thought this recent analysis was interesting:

      link to

      [A]n analysis of the data on the outcome of relisted petitions and the relist history of granted cases suggests that the Court has changed – and is changing – how it treats petitions for certiorari. It is now nearly a prerequisite for a grant of plenary review for a petition to be relisted (except for petitions granted at the Long Conference), a divergence from the historical practice of granting many petitions without a relist.

  8. 1

    Automated Merchandising v. Michelle Lee, can you give a link? 317(b) relates to settlements. I think you might have meant 315(b).

      1. 1.1.1

        Dennis, Egads! Thus is an important question, albeit in the context of an inter partes reexamination.

        Pay attention folks — the PTO’s new position is that a denial of a petition to the Director regarding a statutory requirement to terminate proceedings in an examination, labelled final by the Director, is not final at all. The examination must still take place, and the issue of whether the Director’s decision was correct can be considered only on appeal.

        This effectively allows the PTO to operate ulta vires.

        This effectively removes collateral district court challenges under the APA.

        It is also directly contrary to controlling Supreme Court authority.

        But one can see the PTO’s plan that decisions under 315 and other provisions of the new IPR and PGR that are ultra vires cannot be considered until after proceedings are complete, and then, only by mandamus.

        The PTO is far, far out of control, beyond the pale, and they are being aided and abetted by the Federal Circuit here, again, by completely ignoring controlling Supreme Court precedent.


          One of our new posters here commented that Congress can do anything it wants until stopped by the judiciary. Well, that seems to apply as well to the PTO/Federal Circuit, who seem to be operating in lock step. They can be stopped only by the Supreme Court or by Congress.

          This is getting ugly.



            Ned, if you had any sense of objectivity – and not just your pursuits as some sense of “Einstein-inducing-exceptionalism,” you would have realized that things have been going amiss for some time.

            And you would have had to recognize the Royal Nine wax nose mashing as well.


              anon, you know, as well as I, that I think the Supreme screwed up in Bilski, in eBay and in Medimmune, just to name a few recent decisions off the top of my head. But I do not see in the Supreme Court a systematic bias in favor of federal agencies so that they will allow them free reign to trample all over the rights of people like the aristocracy of old Europe trampled the rights (and the people themselves, viz the Tale of Two Cities by Dickens) and get away with it.

              But that is the new PTO/Federal Circuit.


                Both the PTO and your version of the “new” Fed are directly taking their cues from the Supremes.

                This is merely reaping what has been sown.

                1. From the Supreme Court? Anon, not really. They are doing the bidding of the PTO, nearly rubber stamping everything they want in construing the statutes.

                  When it comes time to construe the AIA first to file provisions, they will listen only to the PTO. This is not a good thing, especially since the PTO has declared a war on patents.

                2. Ned – you are – and remain – unwilling to see that the Emperor is buck n@ked.

                  Clearly, the Supremes have brow-beaten the CAFC to enforce the philosophical viewpoints that the Supremes want written – both implicitly and explicitly – into the law.

                  You continue to turn a blind eye to the judicial attack on patents from the highest level, and you continue to lose credibility for such a lack of objectivity. You do this – because you too want to violate the very thing your own reference to Judge O’Malley’s warning was about: the use of the judiciary to usurp the role of the legislature in writing patent law.


              things have been going amiss for some time.

              Right. Since about 1990, taking an especially deep dive with State Street Bank leading to a complete clustercluck as documented here: link to

              Now we’re cleaning up that incredible mess. It’s going to take years and we can expect that the same whiners who cheerleaded the earlier catastrophe are going to do everything in their power to prevent the necessary repairs.

              And it was all predicted. Thanks for playing, “anon.”


                By “playing,” you mean deliberately mischaracterizing the posts of others like you are doing directly here?

                Great “ec(h)0system Prof


            Ugly for who?
            Where are the harms?

            Also the congress and the court being on the same page ship sailed a long time ago when FDR packed the court.


              You do realize that the Court-packing situation has nothing to do with the present topic, right?

              Try to at least get into the ballpark.


            Perhaps Justice knows it can say anything it wants to the Federal Circuit about the law, but no one want to look like a complete f00l to the Supreme Court, which is what is required here to defend this Federal Circuit decision.


            This is pretty common at the cert stage. The idea is you’re not giving the petition more attention than it deserves.

            Not odd at all. Take a look at a few more cert petitions, you’ll see this is not out of the ordinary.


              You might be right Jane. When something is completely indefensible, simply try to ignore it — the implication being that there is really nothing to see here.


                When something is completely indefensible, simply try to ignore it

                The irony of how that phrase fits those who advocate on this forum in a drive-by monologue manner is stunning.

    1. 1.2

      You gotta love it when the patentee doesn’t have the guts to present its patent claims front and center in their petition.

      This is a case where a party filed a petition for inter partes review arguing invalidity of an asserted patent. The PTO granted the request for review. Subsequently, as part of a settlement, the same party stipulated in court — without any finding by the judge — that the patent was valid.

      So … it would appear that this party is lying (or has lied) to either the district court or the PTO. Which is it, I wonder?

      The question can be looked at this way: if the PTO has accepted a petition for review of a patent and the patent is complete absolute junk, can the inevitable invalidation be taken out of the PTO’s hands merely because the party who originally initiated the review has been paid off and “changed its mind”?

      1. 1.2.1

        MM, the statute requires the IPE be terminated in view of a court judgment between the parties deciding validity. When the PTO refuses to do that, the issue of whether it was right or not now has to await final disposition of the IPE, an appeal on the merits to the PTAB, and then an appeal to the Federal Circuit, who then may vacate all this effort by the PTO and the patent owner if the decision by the Director was wrong.

        Now think about that for a moment.


          the statute requires the IPE be terminated in view of a court judgment between the parties deciding validity. When the PTO refuses to do that,

          There’s no “refusal.” The PTO can’t force the court to determine validity after the parties settle without a validity determination. The validity determination is now in the PTO’s hands.

          Again I ask the question: to whom is the defendant in this case lying? The court or the PTO?

          It’s telling the court one thing and it’s told the agency another thing. Can it simply change its mind without a reasonable explanation?

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