Pending Supreme Court Patent Cases

by Dennis Crouch

1.   Petition Granted:

2.   Petition for Writ of Certiorari Pending:

  • Life Technologies Corporation, et al. v. Promega Corporation, No. 14-1538 (Can an entity “induce itself” under 271(f)(1)?)(CVSG)
  • Allvoice Developments US, LLC v. Microsoft Corp., No. 15-538 (“Do patent claims addressed directly to software that is inherently in a computer-readable medium qualify as a ‘manufacture’ under 35 U.S.C. § 101 without express recitation of the medium?”)
  • OIP Technologies, Inc. v. Amazon.com, Inc., No. 15-642 (Do the rules of civil procedure apply when defendant raises a Section 101 eligibility “defense” in a motion-to-dismiss for failure to state a claim upon which relief can be granted?)
  • Fivetech Technology Inc. v. Southco, Inc., No. 15-381 (What is the proper role of intrinsic evidence in claim construction?)
  • Medtronic Sofamor Danek USA, Inc., et al. v. NuVasive, Inc., No. 15-85 (Commil re-hash – mens rea requirement for inducement)
  • SpeedTrack, Inc. v. Office Depot, Inc. et al., No. 15-461 (Kessler doctrine – enhanced preclusion)
  • Cuozzo Speed Technologies, LLC v. Michelle K. Lee, No. 15-446 (BRI construction in IPRs; institution decisions unreviewable).
  • Arthrex, Inc. v. Smith & Nephew, Inc., et al., No. 15-559 (Commil re-hash – if actions were “not objectively unreasonable” can they constitute inducement?)
  • 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)
  • 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.)
  • 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))
  • 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.)
  • ePlus, Inc. v. Lawson Software, Inc., No. 15-639 (what happens with a finally-determined permanent injunction after PTO cancels the patent claim?)
  • Interval 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?)
  • 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.”)
  • Daiichi Sankyo Company, Ltd. v. Michelle K. Lee, No. 15-652 (Patent Term Adjustment – whether the 180 day deadline applies)
  • Innovention Toys, LLC v. MGA Entertainment, Inc., et al., No. 15-635 (Stryker/Halo follow-on)
  • Morgan, et al. v. Global Traffic Technologies LLC, No. 15-602 (unclear)
  • Arunachalam v. JPMorgan Chase & Co., No. 15-691 (unclear)

About Dennis Crouch

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

29 thoughts on “Pending Supreme Court Patent Cases

  1. Great write-up on the oral arguments in Franchise Tax Board of California v. Hyatt here: link to scotusblog.com.

    Except for the fact that no one was wearing buckled shoes, knee breeches, and lace cuffs, an argument in the Supreme Court Monday might have been a reenactment of a day at the Constitutional Convention in Philadelphia 228 years ago. It was all about what the states gave up, and did not give up, as part of the bargaining over a new Constitution.

    That is what has become of the case of Franchise Tax Board of California v. Hyatt, a prolonged, multi-million-dollar tax fight between California authorities and a Nevada inventor. It took the Court and the lawyers back to constitutional basics, because the California agency is trying to gain immunity as a “sovereign state” from being sued in Nevada state court by the wealthy inventor, Gilbert P. Hyatt. …..

  2. Genetic Technologies has a junk “use PRC to exploit this natural phenomenon!” patent with a critical date going back to 1989 that they have been waving around many years. The oral arguments today were fascinating for the vast gulfs between the Federal Circuit judges. Three judges on the panel: Prost, Dyk and Taranto.

    Here’s the incredibly broad claim 1:

    A method for detection of at least one coding region allele of a multi-allelic genetic locus comprising:

    a) amplifying genomic DNA with a primer pair that spans a non-coding region sequence, said primer pair defining a DNA sequence which is in genetic linkage with said genetic locus and contains a sufficient number of non-coding region sequence nucleotides to produce an amplified DNA sequence characteristic of said allele; and

    b) analyzing the amplified DNA sequence to detect the allele.

    Among the central points that at least one judge (Taranto) still seems to be struggling with: there is no meaningful distinction between “natural law” and “natural phenomenon” and “natural correlations”. It’s all the same stuff.

    What was known (indisputably) as of the filing date: (1) non coding DNA and coding DNA exists; (2) genetic linkages between DNA sequences exist; (3) PCR could amplify non-coding and coding DNA.

    What was allegedly unknown (and this is surely complete baloney as anyone who was doing research back in the late 80s will tell you) is that the presence of a certain non-coding sequences could be used to infer coding sequences. For years now Genetic Technologies has been relentlessly pushing its self-serving mythology that non-coding DNA (e.g., intronic sequences) was deemed “junk” and devoid of any useful information until the named inventor on this patent (Malcom Simon) showed otherwise.

    The entire value of this portfolio has rested on the promulgation of this ridiculous lie (see, e.g., comment below Woessner’s typically vapid and fawning article here: link to patents4life.com for just one counter-example out of many) and the willingness of a lot of “experts” who should know better to swallow it whole.

    Hopefully the Federal Circuit will put a cork in it finally. It should have happened a long time ago.

    1. From Woessner, “The PCR technique used in the GTG claim was NOT conventional activity previously engaged in by researchers in the field!”

      Is there a point here? Was the technique novel?

      1. People knew what PCR was for as of the filing date. People were using it.

        The patentee at oral argument today tried to make hay out of the relative “newness” of PCR, trying to argue that it wasn’t “conventional.” The term “conventional” is a red herring, however. What matters is: did the public know about the technique and how it worked? With respect to PCR circa 1989, the answer is absolutely they knew about it.

        Woessner is kicking up dust around the Prometheus analysis, arguing that it wasn’t conventional to use PCR in this manner (i.e., to detect the presence of a sequence in genetic linkage with another, where the detected sequence is in a so-called “non-coding” region of DNA). But that’s just re-stating the claim and completely ignores the analytic framework that’s necessary for 101 to function. People were using PCR to amplify non-coding sequences before the alleged “discovery” here. All that’s admitted right in the specification. What’s (allegedly) “new” is the *ineligible* informative value for that known technique, i.e., that the non-coding sequence detected can be used to infer the existence of another remote (but genetically linked) sequence (linkage just means that there is a statistical likelihood that the presence or absence of sequence X is correlated with the presence or absence of sequence Z).

        An analogy would be if someone “discovered” that the average number of times you blink/hour is correlated with the likelihood of your getting cancer. Then they claim a method of using a recently invented off-the-shelf “blink detector” to count the blinks followed by a step of “analyzing the blink number to determine cancer.” It’s the Prometheus problem. You’ve got to add more.

        People get worked up about this result because they see the word “cancer” and immediately they think “don’t we want to cure cancer?!” That reaction misses the point. The point is that this “cancer correlation” is just one of an infinite number of “correlations” that can be tied to “blinking” and the infinite number of other observable phenomenon and if we start handing out patents on all them the system implodes and the intended use of the bona fide technologies (e.g., the structurally defined blink detecting machine) turns into a liability long after the technology has fallen into the public domain.

  3. Interesting discussion at the beginning of the Rembrandt v. Facebook oral argument today about the “estoppel” effects of the Federal Circuit possibly finding (as the jury did) that a patent is invalid when the same (or broader) claims were deemed patentable by the PTAB after an IPR proceeding (where, interestingly, the PTAB applied a narrower construction than the construction at district court). According to Rembrandt, Facebook “could have cited” references to the PTAB but (presumably intentionally) Facebook chose to recite those references at trial instead. As this Law360 article notes link to law360.com, the situation is “almost the opposite” of Fresenius USA v. Baxter International (where a “non-final” jury verdict in favor of the patentee was “wiped out” by an IPR finding at the PTAB). Additional discussion on the preclusive effects at 44:00. Further complicating matters for Facebook is the fact that the district court also found non-infringement so that if the CAFC upheld the non-infringement finding, the district court’s invalidity finding could remain moot and unreached and therefore “non-final”, leaving the PTAB’s validity holding in control (at least as to Facebook, until Facebook appeals the PTAB’s decision and succeeds in reversing that decision).

    Facebook, of course, is a notoriously compromised defendant given the vast amount of junk in its own portfolio. The title of one of the asserted patents here alone (“Method and apparatus for implementing a web page diary”; 6,415,316) is enough to make any “expert” in computer-related dust-kicking jump for joy.

    The playground gate is open wide. Let’s have some $100 million dollar fun and revel in the sooper techno discussions between highly paid Federal judges and compromised attorneys about “what Big Pipe wants” and “what the browser decides”.

    1. MM, without even listening to the argument I think it is self-evident that if collateral estoppel is to imply that the issues have to be the same.

      However if the parties are the same, that one as claim preclusion – res judicata. Was that the issue even argued?

  4. Is this an uncharacteristically large bunch of petitions for cert in a year?

    The only ones I see having much of a chance to ultimately be acted on in the way the petitioners want are the ones about dmg and the ones about the role of evidence in claim construction.

    1. You don’t think Life Tech has “much of a chance to … ultimately be acted on”, 6? I recall that the Supreme’s have already asked the government to weigh in (tho’ I’m not aware that the government has responded yet to that request).

      1. O well maybe so if they had the gov weight in. I didn’t hear about that one. Though I had thought about maybe adding it to the list anyway since it’s such a hilarious topic.

  5. Transcripts for today’s Supreme Court oral argument in Franchise Tax Board of California v. Hyatt here:

    link to scotusblog.com

    Sovereign immunity nerds unite! Plenty of history and interesting back-and-forth between the Justices and counsel for both sides.

  6. Now and again over the years I’ve noted the similarities in rhetoric (and occasionally, “reasoning”) offered by the proponents of expansive gun rights and the proponents of expansive patent rights. Both groups lean heavily on ridiculously expansive language (the Second Amendment in the former group; 35 USC 101 in the second group) and both groups operate in a bubble world of quasi-religious belief in their “cause” that doesn’t shake even when the predictably negative consequences of their absurd beliefs are piled high right up to their eyebrows.

    In that light, the Supreme Court’s refusal today to hear the complaints of some infantile rambo types who need an assualt rifle to sleep at night was quite interesting. In Heller (2008), when the Supreme Court established a person right to a gun, itnotably failed to clarify exactly what “arms” the government may ban from your neighbor’s closet other than perhaps a “sawed off shotgun” or “a machine gun.” That didn’t seem to bother the gun lovers or their principle lobbying group, the beloved NRA, at the time.

    It seems highly likely that Heller will be the gun law equivalent of State Street Bank. Given the widespread love for projectiles expressed by conspiracy-spewin’ American gun fondlers, however, it’s likely that the pullback from Scalia/Thomas’ nutso jurisprudence will not (unfortunately) be as welcome or rapid as the well-considered retreat from Judge Rich’s patent jurisprudence.

    More here:

    link to scotusblog.com

    1. MM, since the whole point of the right to keep and bear arms is to provide for a militia, I would think that the only arms that are guaranteed to the people are the type of weapons that would be useful in a militia.

      1. The phrase “useful in a militia” could be interpreted to mean just about anything depending on what kind of “militia” is deemed “necessary” to maintain the “security” of a “free State.”

        But regardless, the Second makes it plain that the “right of the people to keep and bear arms shall not be infringed.”

        It’s about as absurdly awful a piece of writing as “whoever invents any new and useful process may obtain a patent”. Worthless junk written by thoughtless clueless people who lacked the ability to think ahead or understand history itself. Hooray Framers!

        1. Possibly, MM. But were the not trying to put this into our constitution?

          “That the subjects …. may have arms for their defence suitable to their conditions and as allowed by law;”

          English bill of rights.

          What is this bit “suitable to their conditions” and “as allowed by law?”

          This does seem to suggest that the right they were looking to maintain was the right of self defense and to hunt. The militia bit throws one off.

          1. Ned: were the not trying to put this into our constitution?

            “That the subjects …. may have arms for their defence suitable to their conditions and as allowed by law;”

            If that’s what the Framers were trying to put in, they kinda messed up the attempt just a tad, wouldn’t you say?

            Regardless, I’m chuckling further as the gun lovers are now chastising their critics for “not understanding the technology” (e.g., “you don’t know even know what an assault rifle is nyah nyah so you can’t participate in the discussion about my awesome freedoms!”). It’s all so very familiar.

            1. MM, I think the Supremes would read this in because a principal reason they came out the way they did in the Heller case was because this was in the English Bill of Rights.

  7. Regarding the travails of Saint Arunachalam, the “little guy” who just can’t get a break but is oh-so-deserving of the enormous wealth that has been taken from her by those bad ol’ “copyists”:

    link to law360.com

    Arunachalam has been in patent litigation for years, with her company WebExchange accusing Allstate Corp., Dell Inc. and FedEx Corp. of infringing patents and with Pi-Net charging banks with infringement, court records show.

    Her attorneys at Kasowitz Benson Torres & Friedman LLP sued her in 2012 for $750,000 in fees stemming from the first round of suits, saying that she hadn’t paid the firm for work it did for her. Kasowitz and WebXchange’s local counsel Morris Nichols Arsht & Tunnell LLP filed a motion in the Delaware federal court in Feburary 2011 to withdraw from the Dell and FedEx suits, citing an irreconcilable breakdown in the client-lawyer relationship.

    The Delaware court approved Kasowitz’s withdrawal that April, after WebXchange secured new counsels RatnerPrestia and Katsh & Associates LLP.

    In July 2011, RatnerPrestia and Katsh & Associates also filed for withdrawal from the cases, saying “WebXchange has taken unilateral actions, and failed to take actions, which have effectively discharged [the firms],” according to court filings.

    The company was then briefly represented by Grant & Eisenhofer PA, which withdrew that September. It, too, cited an irreconcilable breakdown in the client-attorney relationship.

    Surely among the many “big corp”-disparaging folks who endlessly brag about about their “true” understanding of patent law and technology there must be one or two that can achieve total zealosity and bond with this remarkable genius and her righteous cause.

    1. Dr. Arunachalam’s petition was covered on this blog a few weeks ago. link to patentlyo.com

      Somewhat ironically, the 49-page petition looks like it’s about 1000 words over the Supreme Court’s 9000-word limit for cert petitions. It might not be.

    2. Your little “game” of painting every pro-patent person with the same brush is beyond trite Malcolm.

      Try (oh please try) to see the actual discussion points that those of us who actually favor the work product we produce (as a gen er al matter) and who are pro strong patent rights instead of the chum-style-this-patent-bad-let’s-get-rid-of-all-patents schlock that you usually peddle.

  8. The question in Morgan (courtesy of Wilmer Hale’s site: link to wilmerhale.com):

    Morgan v. Global Traffic Technologies LLC, No. 15-602

    As a case of first impression, does the procedure required when a patent, cited as prior art in and accused of infringing a subsequently issued patent, include construction of the scope of the claims of the subsequent patent in light of the prior patent plus comparison of differences between the accused device and the one claimed?

    Does the standard set forth in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) apply retroactively in this case, pending on appeal when Teva was decided?

    Supreme Court lawyers are expensive right? I hope they didn’t charge the client much to draft that first question. Wow. It’s hard to imagine that one going anywhere.

    The cert petition stems from a victory for the patentee that was affirmed on appeal. The CAFC decision was published in June and but there’s no discussion of validity or eligibility — almost as if the defenses were never raised or they were raised so poorly, with so many arguments waived, that the defendant didn’t bother to appeal the loss on those issues.

    That’s unfortunate for everyone because these claims are purely functional “do it with GPS!” junk of the first order. Perhaps the defendant’s hands were tied by its own awesome portfolio? Try not to gag as you read the following:

    16. A traffic control preemption method which uses data received from a global positioning system (GPS) to determine whether a vehicle, having an associated vehicle path, is allowed to preempt traffic signals at an intersection comprising the steps of:

    (a) receiving GPS signals;

    (b) processing the GPS signals on-board the vehicle so as to generate vehicle data;

    (c) transmitting the vehicle data;

    (d) providing a map of allowed approaches, wherein the map of allowed approaches comprises a plurality of preprogrammed allowed positions proximate to the intersection;

    (e) comparing the vehicle data with the map of allowed approaches;

    (f) determining based on a comparing step (e), whether the vehicle is within one of the allowed approaches; and

    (g) allowing the vehicle to preempt the traffic signals associated with the intersection if the vehicle is within one of the allowed approaches.

  9. Life Technologies Corporation, et al. v. Promega Corporation, No. 14-1538 (Can an entity “induce itself” under 271(f)(1)?)(CVSG)

    The other question in this cert petition is far easier to answer and at least as important: 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. (answer: yes, the CAFC erred, bigtime)

  10. I have to wonder if all these clients paying for cert petitions were properly counseled by their attorneys as to the extremely low odds of cert being granted? Presumably these days few of them are delaying an injunction?

    1. Paul, just viewing a petition from the Supreme Court point of view, many of these questions are simply not important enough for the Court to review.

    2. Paul,

      Do you have any reason to suppose otherwise, or is this just more of your “fait acclompi” ”
      don’t bother” meme?

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