by Dennis Crouch
Justice Scalia died this week. May he rest in peace. Although he (as well as Justice Kagan) had left the University of Chicago before I arrived, their influence continues to be felt in that institution. (Posner, Obama, Sunstein, Meltzer & Epstein, etc. were all still around). On her blog, Professor Ouellette (Stanford) has a nice post about the mixed bag of Justice Scalia’s IP scholarship legacy. Most recently, Justice Scalia may be best remembered for calling-out Federal Circuit jurisprudence on obviousness as “gobbledygook.” In many cases, I would expect that his ‘vote’ was less important than the ideas he brought to the table and the way he changed the debates.
I don’t see Scalia’s death having any impact on Halo/Stryker — where I predict the Federal Circuit will be reversed. Cuozzo is perhaps a different story where I expect a divided court to affirm in a situation where Justice Scalia may have voted to reverse. Oral arguments are still set for February 23, 2016 in Halo and Stryker. Tony Mauro has an interesting article on the case titled “Coin toss decides which advocate will argue key patent case.” Professor Mann provides an argument preview on SCOTUSblog.
New petitions this week include the reappearance of Limelight v. Akamai. The Supreme Court previously shot-down the Federal Circuit’s expanded definition of inducing infringement, but on remand the Federal Circuit expanded its definition of direct infringement (to include joint enterprise liability). The case is interesting and I hope that the court grants certiorari, but I would side with the patentee here.
In Medinol v. Cordis, the patentee questions whether the laches doctrine still applies in patent cases. This case parallels SCA Hygiene and comes on the heels of the Supreme Court’s Petrella decision which eliminated the laches defense for back-damages in copyright cases.
Briartek IP v. DeLorme, delves into interesting separation of powers and jurisdiction issues, asking: Whether a binding consent order, entered between the federal government, the ITC, and an ITC respondent, deprives federal district courts of jurisdiction over a declaratory judgment action, seeking to invalidate the patent at issue, filed by the ITC respondent … against the patent holder: a non-party to the consent order. The Federal Circuit had affirmed without substantive opinion.
Finally, last but not least, is Click-to-Call Tech v. Oracle Corp. who has copied the questions from Cuozzo and the recently denied Achates v. Apple. These questions challenge the seeming the absolute bar on judicial review of Patent Trial & Appeal Board’s power to institute IPR proceedings. Although this particular petition is unlikely to be granted. It lends additional credence to the other two. The petition is also a mechanism for the patentee here to keep the issue alive.
1. Petitions Granted:
- Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513 (enhanced damages) (February 23 Oral Arguments linked with Stryker)
- Stryker Corporation, et al. v. Zimmer, Inc., No. 14-1520 (enhanced damages) (linked to Halo)
- Cuozzo Speed Technologies, LLC v. Michelle K. Lee, No. 15-446 (BRI construction in IPRs; institution decisions unreviewable)
2. Petitions Granted with immediate Vacatur and Remand (GVR)
- Medtronic Sofamor Danek USA, Inc., et al. v. NuVasive, Inc., No. 15-85 (Commil re-hash – mens rea requirement for inducement)
3. Petitions for Writ of Certiorari Pending:
- Infringement by Joint Enterprise: Limelight Networks, Inc. v. Akamai Technologies, Inc., et al., No. 15-993 (can a defendant be held liable for the collective performance of method steps by multiple independent parties?)
- Post Grant Admin: Cooper v. Lee, No. 15-955 (whether IPRs violate Separation of Powers).
- Post Grant Admin: Click-to-Call Tech, LP v. Oracale Corp., No. 15-1014 (Same questions as Achates v. Apple and Cuozo)
- Laches: Medinol Ltd. v. Cordis Corporation, et al., No. 15-998
- Laches: SCA Hygiene Products Aktiebolag, et al. v. First Quality Baby Products, LLC, et al., No. 15-927
- Post Grant Admin: 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?)
- 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). 
- Inducement: Life 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: BriarTek IP, Inc. v. DeLorme Publishing Company, Inc., et al., No. 15-1025 (Preclusive impact of ITC consent judgment).
- Preclusion or Jurisdiction: Vermont v. MPHJ Technology Investments, LLC, No. 15-838 (Federal court jurisdiction in anti-troll consumer protection case)
- Preclusion or Jurisdiction: Alexsam, 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 Challenges: Joao 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:
- Achates 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)
- 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:
- February 3, 2016
- January 12, 2016
- January 1, 2016
- December 14, 2015
- December 7, 2015
- October 12, 2015