Pending Supreme Court Patent Cases 2016 (May 18 Update)

by Dennis Crouch

It is now time to begin looking for an opinion in the Halo/Stryker regarding whether the Federal Circuit’s test for willful infringement is too rigid. Those cases were argued in February 2016.  We can also expect a decision in Cuozzo prior to the end June 2016.

Supplying Components Abroad: The Solicitor General has finally filed its brief in Life Tech v. Promega. The brief supports certiorari — but only for one of the two questions presented: namely,

whether a supplier can be held liable for providing ‘all or a substantial portion of the components of a patented invention’ from the United States when the supplier ships for combination abroad only a single commodity component of a multi-component invention

The patent in the case involves a DNA amplification kit used for personal identification.  And, although the allegedly infringing kids were made in the UK, one commodity-component (the Taq polymerase) was supplied from the U.S.  Focusing on the language of the statute, the Solicitor Generals argues that liability for export of a single component of a multi-component invention “is contrary to Section 271(f)’s text and structure, and it is inconsistent with the presumption against extraterritoriality.”  Separately, the brief argues that the Federal Circuit was correct in its holding that a party can actively induce itself – thus 271(f)(1) inducement does not require a third party to be induced. [USPromega CVSG Petition].

Post Grant Admin: I previously discussed GEA Process Engineering. That case involves the Flip-side of Cuozzo and asks whether an appeal can follow when the PTAB exceeds its authority by terminating an already instituted IPR proceeding?  The respondent (Steuben Foods) had previously waived its right to respond, but the Supreme Court has now requested a response.  That move makes certiorari more likely, but the result will depend upon the outcome in Cuozzo.

Attorney Fees: Newegg Inc. v. MacroSolve, Inc., No. 15-1369.  Professor Mark Lemley’s brief on behalf of Newegg asks that the attorney-fee framework of Octane Fitness actually be implemented. [NewEggPetition].  Although Octane Fitness gives district courts discretion in determining whether to award fees, Newegg argues that the E.D. Texas court improperly applied “a special, heightened burden of proof.”  The Supreme Court is currently considering the Kirtsaeng attorney fee case for copyright law. That decision may shed some light on the patent cases as well.

A new petition in Automotive Body Parts, No. 15-1314,  focuses on a question of civil procedure regarding a clerk’s transfer of a design patent case out of E.D.Tx in a manner that violated the local rules.  Here, the clerk transferred the case immediately after the judge ordered transfer even though the local rules call for a 21 day delay.  The case is rising through a petition for mandamus, but my view is that the petition fails to show why transfer is so harmful (except for the reality that patent plaintiffs are usually given more respect in E.D.Tx.).

The court was scheduled to discuss Cooper v. Lee at its May 12 conference. No action was taken following that conference – lightly suggesting to me that the court is holding judgment until it resolves Cuozzo.  Apart from the AIA Trial challenges, most potential life changing case on the docket for patent attorneys is Cubist v. Hospira that focuses on the role of secondary indicia of non-obviousness. As with most Supreme Court patent cases over the past decade, Cubist argues that the Federal Circuit’s rules are too restrictive and should instead follow a looser factor-based analysis when considering the issue.  In the next couple of weeks, the court will consider the Cubist petition as well as that of Dow v. NOVA  (appellate review standard); Vehicle Intelligence (abstract idea); and WesternGeco (damages calculation for 271(f) infringement by exporting components).

Secret Offers to Sell: The Federal Circuit is not slowing down its patent jurisprudence in any way – except for the rash of R.36 affirmances. An important case is Helsinn that focuses on whether the AIA abrogated the rule in Metallizing Engineering.

The big list:

1. Petitions Granted:

2. Petitions Granted with immediate Vacatur and Remand (GVR)

3. Petitions for Writ of Certiorari Pending:

  • LachesMedinol Ltd. v. Cordis Corporation, et al., No. 15-998
  • IndefinitenessThe Dow Chemical Company v. Nova Chemicals Corporation (Canada), et al., No. 15-1160 (standard for appellate review of jury verdict of definiteness that is inherently based upon the jury’s factual findings) [DowPetition]
  • Exhaustion: Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189 (unreasonable restraints on downstream uses)
  • Obviousness: Cubist Pharmaceuticals, Inc. v. Hospira, Inc., No. 15-1210 (bright line limits on secondary indicia of nonobviousness) [CubistPetition]
  • Post Grant Admin: MCM v. HP, No 15-1330 (separation of powers and right to jury trial).
  • Post Grant Admin: Versata v. SAP, No. 15-1145 (scope of CBM review)
  • Post Grant AdminCooper v. Lee, No. 15-955 (whether IPRs violate Separation of Powers; two amici now filed in support)
  • Post Grant AdminClick-to-Call Tech, LP v. Oracale Corp., No. 15-1014 (Same questions as Cuozzo and now-dismissed Achates v. Apple)
  • Post Grant Admin: GEA Process Engineering, Inc. v. Steuben Foods, Inc., No. 15-1075 (Flip-side of Cuozzo: Can there be no appeal when the PTAB exceeds its authority by terminating an instituted IPR proceeding?)
  • Post Grant AdminInterval 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?)
  • Post Grant Admin: Stephenson v. Game Show Network, LLC, et al., No. 15-1187 (is BRI proper for IPR validity challenges?; Same as Cuozzo) [GameShowNetworkPetition]
  • Assignment: Shukh v. Seagate, No. 15-1285 (pre-invention assignment of future patent rights)
  • Biologics Notice of Commercial Marketing: 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?) (cross-petition asks for recourse on failure to dance).
  • Attorney FeesNewegg Inc. v. MacroSolve, Inc., No. 15-1369 (district court’s too-high burden)
  • Design Patents: Systems, Inc. v. Nordock, Inc., No. 15-978 (design patent damage calculations – similar issues as Samsung v. Apple)
  • InducementLife Technologies Corporation, et al. v. Promega Corporation, No. 14-1538 (whether an entity can “induce itself” under 271(f)(1))(CVSG, awaiting government brief)
  • Preclusion or JurisdictionGlobus Medical, Inc. v. Sabatino Bianco, No. 15-1203 (Appellate jurisdiction of the Federal Circuit) [GlobusMedicalPetition]
  • Eligibility Challenges: Sequenom, Inc. v. Ariosa Diagnostics, Inc., et al., No. 15-1182 (scope of the natural phenomenon eligibility exclusion)
  • Eligibility Challenges: Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC, et al., No. 15-1201 (abstract idea eligibility) [VehicleIntelligencePetition]
  • Damages: Innovention Toys, LLC v. MGA Entertainment, Inc., et al., No. 15-635 (Stryker/Halo follow-on – potential wait-and-see)
  • DamagesWesternGeco LLC v. ION Geophysical Corporation, No. 15-1085 (consequential lost-profit damages for infringement under Section 271(f))

4. Petitions for Writ of Certiorari Denied or Dismissed:

  • Cloud Satchel, LLC v. Barnes & Noble, Inc., et al., No. 15-1161 (abstract idea eligibility) [CloudSatchelPetition]
  • 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?)
  • Hemopet v. Hill’s Pet Nutrition, Inc., No. 15-1062 (natural phenom case of tailoring a diet to a pet’s genomic characteristics)
  • Tas v. Beach, No. 15-1089 (written description requirement for new drug treatments)
  • 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))
  • Vermont v. MPHJ Technology Investments, LLC, No. 15-838 (Federal court jurisdiction in anti-troll consumer protection case)
  • 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)
  • Parkervision, Inc. v. Qualcomm Incorporated, No. 15-1092 (“Whether and under what circumstances an inconsistency in expert testimony permits a court to set aside a jury verdict and grant the losing party judgment as a matter of law.”)
  • Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc., No. 15-974 (defining an abstract idea)
  • 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.)
  • BriarTek IP, Inc. v. DeLorme Publishing Company, Inc., et al., No. 15-1025 (Preclusive impact of ITC consent judgment).
  • Morales v. Square, No. 15-896 (eligibility under Alice)
  • ePlus, Inc. v. Lawson Software, Inc., No. 15-639 (what happens with a finally-determined permanent injunction after PTO cancels the patent claim?)
  • 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.”)
  • Alexsam, Inc. v. The Gap, Inc., No. 15-736 (appellate jurisdiction over patents that were dropped from case pre-trial)
  • Universal Lighting Technologies, Inc., v. Lighting Ballast Control LLC, No. 15-893 (intrinsic vs extrinsic evidence for claim construction).
  • 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.)
  • 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) [Note – This case was dismissed after being settled by the parties]
  • 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., 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
  • Arthrex, Inc. v. Smith & Nephew, Inc., et al., No. 15-559 (Commil re-hash – if actions were “not objectively unreasonable” can they constitute inducement?)
  • 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
  • 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

5. Prior versions of this report:

60 thoughts on “Pending Supreme Court Patent Cases 2016 (May 18 Update)

  1. 7

    Just fyi: CRST Van Expedited v. EEOC held that a defendant need not win on the merits to be a prevailing party, for purposes of an award of attorney’s fees under Title VII. The opinion is here.

    Unanimous decision, written by Kennedy, with Thomas concurring.

    Possibly the Court’s reasoning will impact interpretation of fee shiftting statutes in the patent litigationsphere ….

    [A] defendant seeks to prevent an alteration in the plaintiff ’s favor, and that objective is fulfilled whenever the plaintiff ’s challenge is rebuffed, irrespective of the precise reason for the court’s decision, i.e., even if the court’s final judgment rejects the plaintiff’s claim for a nonmerits reason. There is no indication that Congress intended that defendants should be eligible to recover attorney’s fees only when courts dispose of claims on the merits. Title VII’s fee-shifting statute allows prevailing defendants to recover whenever the plaintiff’s “claim was frivolous, unreasonable, or groundless.” Christiansburg Garment Co. v. EEOC, 434 U. S. 412, 422.

  2. 6

    In MCM, the Federal Circuit held that patent rights are public rights.

    Think about that, drug companies, as you argue against compulsory licensing both here and abroad.

    Think carefully whether the government would even have to pay compensation for taking under the 5th Amendment if patents are public rights and not property. Think.

    Could the government simply take licenses, royalty free, for the public benefit to supply the poor? If not, why not? Only if patents are property can the government be constitutionally forbidden.

    May 21 is the deadline to notify the Supreme Court of intention to file briefs in MCM Portfolio v. Hewlett Packard. May 31 is the deadline to file amicus briefs.

  3. 5

    “The court was scheduled to discuss Cooper v. Lee at its May 12 conference. No action was taken following that conference – lightly suggesting to me that the court is holding judgment until it resolves Cuozzo. ”

    Might I suggest that the Court might want to review both MCM and Cooper at the same time? That to me would make a lot of sense, and might be a better explanation as to why Cooper is on hold until briefing in MCM is complete.

    1. 5.1

      From the Supreme Court docket:

      Apr 26 2016 DISTRIBUTED for Conference of May 12, 2016.
      May 2 2016 Rescheduled.

      What happened on April 29?


            And what happened on April 25? The Cuozzo oral argument.

            Cuozzo was argued on Monday; the clerk distributed Cooper on Tuesday; and the Court rescheduled Cooper the following Monday.

            It makes sense that the Court might wait to evaluate the MCM briefs. However, Roberts is recused from MCM, so what value do the additional petition-stage briefs really add? It is inconceivable that the Court would elevate MCM over Cooper – where provided with the option, the Court will vote on this with 8, not 7. But for the recusal, these petitions would likely go up in parallel.

            Additionally, the Court during the Cuozzo oral argument appeared to ask a “not insignificant” number of questions addressing the separation of powers. It is likely that the Court is aware of these pending public rights challenges.

            Thus: IF this represents an unconstitutional delegation of the judiciary’s power; IF the Court is dissatisfied by the CAFC’s treatment of its public rights exception; IF the Court is concerned by the harm caused to the public by the deprivation of access to an Article III court; IF the Court by concerned about the continued expansion of executive power via the PTAB; IF the Court wants to prevent the allocation of additional tax payer resources to an administrative mechanism that may become “advisory” — then perhaps you might see resolution of the constitutional question in Cuozzo. It would not be beyond the Court’s authority to do so.



              You mention in passing, but I am curious as to what mechanism you might imagine to be used for your view of “mechanism that may become “advisory”

              Did you have something in mind? Judicial fiat? New legislation from Congress?

  4. 4

    There have already been a historically unusual number of patent cases for which cert was granted. It seems hard to imagine that they would grant cert for more than a half-dozen a term?
    [Perhaps the present 8 member Court makes patent cases [which they can so often decide unanimously] more appealing?]

    1. 4.1

      Paul, do you know whether this year represents an unusual year with respect to the sheer number of petitions. I counted well into the 60’s, and that must represent better than 50% of all precedential opinions this year. And, because many of those are not appeals involving patents or trademarks, but appeals from the likes of merit review boards, I am willing to bet that close to 80-90 percent of Federal Circuit patent and trademark precedential cases are being petitioned.

    2. 4.2

      [Perhaps the present 8 member Court makes patent cases [which they can so often decide unanimously] more appealing?]

      I definitely think that is the case. The court wants to avoid weighty subjects, yet still be “doing” something, and the way they can do that is to take things they can still reach five votes on, and IP is a traditional area of unanimity and is niche enough that even if they were to originally vote 4-4 you could swing a judge to make it 5-3.

      1. 4.2.1

        Thanks, and BTW, the Economist just suggested that the Sup. Ct. may only take about 70 cases or less in total for their fall term, which makes the number of patent cases being taken even more amazing.

  5. 3

    I am gratified to see the Court calling for a response in GEA Process Eng’g. That shows that they are considering thinking carefully about institution decision issues, which are the more interesting, but less talked-about, end of Cuozzo. This bodes well for my hope that Cuozzo scales back the CAFC’s exaggerated view of what §314(d) is meant to accomplish.

    1. 3.1


      Can you add a little meat to your comment? I am not sure I understand what your thinking is regarding the scope of §314(d) and what you think is being exaggerated.


    2. 3.2

      I agree, although that would be a surprise to almost everyone else, obsessed with the other [BRI] cert issue in Cuozzo.

      1. 3.2.1

        The obsession is so strange, because there is so little reason to believe that the claim construction rule makes much difference most of the time.

        Just today, for example, the CAFC handed down a decision in Black & Decker v. PosiTec. The parties were fighting in an IPR over the proper construction of “fixedly secured.” The PTAB used BRI, but it should have used Philips because the patent had expired before the final decision. On review, however, the CAFC said that it does not make a difference. The construction of “fixedly secure” is the same regardless of BRI or Philips.

        I expect that this is true >9 times out of 10. That is to say, the BRI and the Philips construction are usually identical. I am hard pressed to understand why some many people are so invested in the outcome of this particular dispute.


          As I have remarked previously, the “but they are essentially the same” position may be all well and good until it is suggested to them just use the format for granted claims – and then “all of a sudden,” the after-grant version is not “good enough” (but a cogent explanation for this is never put forth).


          Greg, in most cases, it is the same because BRI must be reasonable in light of the specification. It makes a difference when, however, a claim term has two or more possible meanings consistent with the specification, as (allegedly) occurred in In re Morris. The PTO is commanded to take the broader, courts, the narrower.

          I object that a claim be invalidated by the PTO on evidence that could not be used in court, and moreover, with a standard of proof that does not resolve doubts in favor of validity. What is going on with reexaminations and IPRs effectively renders most patents issued from the patent office invalid as they are no longer given any benefit of the doubt. Patent owners cannot now rely on their patents for any reason. People will soon begin to understand that spending money on obtaining a patent is a waste of money.



            You continue to avoid comparing the bundle of sticks in your property – which makes your protest of “with a standard of proof that does not resolve doubts in favor of validity.” more than just a little suspect.

            Here is a hint: at the point of initiation – before and quite separate from any further judgement on the merits, your presumption of validity has been taken by the executive branch, non-Article III judge.

            Can you tell me why you refuse to do the simple comparison pre-initiation point to immediately after initiation? Can you at least have the curtesy of telling me why you won’t perform this very simple exercise?

            Or perhaps you can explain why you feel that once back in the patent office, you (somehow) deserve this presumption of validity (in direct contradiction to the unmistakable words of Congress)…?


              your presumption of validity has been taken by the executive branch

              More accurately, the presumption has been properly met by the art and arguments clearly and convincingly presented in the petition.

              It is, after all, only a presumption. And in most cases the patentee doesn’t deserve the presumption in the first instance.


                clearly and convincingly

                That would be a big NO.

                But you already knew that, didn’t you?

                It is, after all, only a presumption.

                Absolutely. But I never said anything to the contrary. There is however, the words of Congress that inure upon grant. Do you need a citation?

                And in most cases the patentee doesn’t deserve the presumption in the first instance.

                How nice of you to simply disband with the words of Congress that you feel should not apply…

                Do you even think about what you vom1t forth?


              anon, I beg to differ. The standard of proof is provided by statute. If that statute is valid, one has no presumption of validity because it is incoherent to say both that one has a presumption of validity and that one does not have a presumption of validity, just like Nies observed in Lockwood, that one cannot both have and not have a right to trial by jury for validity.

              MM, the presumption of validity is more than a burden of proof issue. It provides standard of proof, clear and convincing, that does not go away. C&C requires that doubts be resolved in favor the patent owner.

              But the powers behind the AIA killed the presumption of validity when they statutorily lowered the standard of proof for invalidity in the PTO. Those powers, and we know they were, should be ashamed of themselves.



                You can “beg” all you want – just remember to come back and realize what Congress did with the AIA and what happens at the initiation point to the presumption of validity.

                Hint: it’s taken.

                You seem to “get” that it is different, but for some completely bizarre reason, cannot make yourself actually speak the difference in a meaningful way. All you have to do is compare what you have prior to the initiation point to what you have immediately after the initiation point – and I cannot get you to do that in a simple and straightforward manner.

                Why is that?


                the presumption of validity is more than a burden of proof issue. It provides standard of proof, clear and convincing, that does not go away.

                Doesn’t clear and convincing only apply to factual questions, or not anymore? And don’t IPRs require a substantial new question (i.e. new art)?

                The only findings (or similarly, non-findings) that are going to lead to an allowance is a finding that the art didn’t know X or wouldn’t have been motivated to Y, and doesn’t a new reference that shows X or Y provide a clear and convincing rebuttal to the allowance logic?

                I don’t necessarily buy this argument, but an argument could be made that anyone could raise a defense in court, but IPRs require an initial finding by the office to even insatitute them, and that clearing the initial hurdle is a statement that if the cited evidence is true, it would meet the clear and convincing standard. i.e. Can’t the court just bake in clear and convincing into the institution question?

                1. Random, from footnotes 4 and 5 of MS v. i4i

                  Here we use “burden of proof” interchangeably with “burden of persuasion” to identify the party who must persuade the jury in its favor to prevail. We use the term “standard of proof” to refer to the degree of certainty by which the factfinder must be persuaded of a factual conclusion to find in favor of the party bearing the burden of persuasion. See Addington v. Texas, 441 U.S. 418, 423, 99 S.Ct. 1804, 60 L.Ed.2d 323 (1979). In other words, the term “standard of proof” specifies how difficult it will be for the party bearing the burden of persuasion to convince the jury of the facts in its favor. Various standards of proof are familiar—beyond a reasonable doubt, by clear and convincing evidence, and by a preponderance of the evidence. See generally 21B C. Wright & K. Graham, Federal Practice & Procedure § 5122, pp. 405-411 (2d ed.2005) (hereinafter Fed. Practice) (describing these and other standards of proof).

                  [5] Among other cases, Justice Cardozo cited Cantrell v. Wallick, 117 U.S. 689, 695-696, 6 S.Ct. 970, 29 L.Ed. 1017 (1886) (“Not only is the burden of proof to make good this defence upon the party setting it up, but … every reasonable doubt should be resolved against him” (internal quotation marks omitted)); Coffin v. Ogden, 18 Wall. 120, 124, 21 L.Ed. 821 (1874) (“The burden of proof rests upon [the defendant], and every reasonable doubt should be resolved against him”); The Barbed Wire Patent, 143 U.S. 275, 285, 12 S.Ct. 443, 36 L.Ed. 154 (1892) (“[This] principle has been repeatedly acted upon in the different circuits”); and Washburn v. Gould, 29 F. Cas. 312, 320 (No. 17,214) (CC Mass. 1844) (charging jury that “[i]f it should so happen, that your minds are led to a reasonable doubt on the question, inasmuch as it is incumbent on the defendant to satisfy you beyond that doubt, you will find for the plaintiff”).

                2. Consider KSR. Two references. The proof is that they combined do what they did singly, in series. That proof is one of fact; it is not a presumption as it is being treated now by the PTAB (which is why I think many patent owners are losing.)

                  Consider whether a reference discloses X to one of ordinary skill in the art. One need expert testimony to prove this.

                  Etc., etc., etc. Proof of invalidity is usually heavily fact intensive unless the invention is identically disclosed in one reference, which is hardly ever the case.

                  In court, reasonable doubts must be resolved in favor of validity. In the PTO, they do not. That is another major reason IPRs are deadly to patent rights.

                3. And again Ned, your “protests” fall flat.

                  So while you may state “In court, reasonable doubts must be resolved in favor of validity. In the PTO, they do not. That is another major reason IPRs are deadly to patent rights.” you inexplicably refuse to answer my simple directives to compare the bundle of sticks in your granted property rights from the point after grant but prior to the IPR institution decision to the bundle of sticks in your “property” immediately after the initiation decision (and prior to ANY future decision on the merits.

                  You won’t even give me the curtesy of explaining why you will not perform this simple task.

                4. Random, regarding IPRs, what if the PTAB makes a mistake on institution, for example, instituting when the references do not disclose all limitations? What in the world is the patent owner going to do with that?

                5. Ned,

                  Your silence screams volumes.

                  One is left to wonder why you place yourself in such an awkward position.

                6. and that clearing the initial hurdle is a statement that if the cited evidence is true, it would meet the clear and convincing standard

                  As answered above: this is a big NO.


            Ned, if a claim has two or more reasonable but quite different interpretations, then is it not in danger, these days, of being held ambiguous? [Since Nautilus v. BioSig overruled the prior Fed. Cir. “salvage construction” cases.]
            As to: “I object that a claim be invalidated by the PTO on evidence that could not be used in court” so would most folks, but what such evidence are you referring to?
            If this is what you meant, how often has the “clear and convincing evidence” burden been used to preclude evidence of the contents of patents or publications, which is what IPRs are about? That is about as far as you can get from mere alleged old oral recollections of a paid witness as in the doctrinal parent “Barbed Wire Cases.”


              Paul, you do raise an interesting question there about Nautilus.

              Regarding evidence, I have been in reexaminations where the claims were construed in a manner far differently than one would in court so the examiner rejected the claims over references that would not even be relevant to the claims as properly construed in court. (Actually, this is a very common occurrence in ex parte — see In re Morris for a real life example.)

              Consider two clocks that are said to be independent. Now the specification shows two clocks on a circuit spaced from each other on the same IC. The spec also says the clocks are asynchronous. A construction of independent that means the two clocks are physically separate on the same IC would yield relevant art A. A construction that the two clocks are asynchronous would yield relevant art B.


                Ned, ex parte claim construction by non-attorney ex parte examiners is not comparable to IPR claim interpretations made by APJ patent attorneys after the opposing sides have had the inter-party opportunity to argue their desired claim constructions. And in the few cases [out of many appeals] where the Fed. Cir. thinks their claim interpretation was wrong, the Fed. Cir. has not hesitated to remand.
                P.S. How can two clocks be synchronized to one another and still be reasonably called “independent” unless that abnormal usage is spelled out in the spec?


                Courts get claim construction wrong all the time. Patentees make ridiculous sanction-worthy arguments about “irrelevant references” all the time, and courts buy it.

                “Different from a court” isn’t really meaningful unless you can prove that courts “do it better.” And you’re never going to be able to prove that because it simply isn’t true.

                1. I am not sure that “better” is the proper legal focus….

                  But it does make a pretty strawman.


              FYI, the PTO is a mess in applying 112b to ambiguities.

              The MPEP requires examiners to apply BRI, and THEN test for ambiguities. In other words, if not-BRI is actually the more reasonable interpretation, but BRI is still reasonable, and BRI *in and of itself* is definite, the claim will have no 112b issue and a BRI meaning.


                Random, the MPEP puts examiners in straightjackets, which is why we do not on too, too many occasions get proper examination. Once patent attorneys figure out how an examiner is hamstrung, they seem to exploit this “loophole” to the max, getting, as a result, invalid patents for their clients, but nevertheless upping their win rate and reputation in the firm. Which is more important to the patent attorney?

    1. 2.1

      Cooper’s [or Ned’s] cert petition has not even been considered yet, much less granted. Neither party in Cuozzo has briefed or argued any constitutional issue, nor have they been asked to.

      1. 2.1.1

        Where interpreting a particular statute, the Court can technically resolve any issues of constitutionality as well.


          The Supreme Court does not lightly overrule acts of Congress as unconstitutional, especially sua sponte with no input or participation by any party or amici either below or at the Court.
          Wait to see if Ned’s cert petition is granted or not, since it was fully briefed and argued below: MCM v. HP & Michelle Lee.


            Paul, there were amici in support in MCM below, and two were filed in connection with Cooper’s petition. There may be a few filed in MCM’s petition as well. The amicus briefs are based, of course, on the law; and further explain why patent rights are not public rights, a concept that ought to gall most inventors, patent owners and every patent attorney.

            But not a single amicus has been filed in support of the constitutionality of IPRs. Does the lack of opposition mean anything at all?


              Ned, if cert is actually granted in either or both of Cooper and MCM, then as soon as legal academia recovers from the surprise and shock there should be ample cert petitions filed.
              But could the absence of amicus interest now [before cert decisions are made] lead the Supremes to think these cert petitions are not being taken seriously even by far-out law school professors?


                Paul, Name just one professor, just one, who supports the idea that patent rights are public rights?

  6. 1

    DC: The Solicitor General has finally filed its brief in Life Tech v. Promega. The brief supports certiorari — but only for one of the two questions presented: namely,

    whether a supplier can be held liable for providing ‘all or a substantial portion of the components of a patented invention’ from the United States when the supplier ships for combination abroad only a single commodity component of a multi-component invention

    Perfect. That’s the question with the slam dunk answer (“no”) and it’s all that’s needed to resolve the case in Life Tech’s favor.

    1. 1.1

      Just to clarify, Life Tech was also found liable on shipping the completed infringing product back into the United States, so it will still be liable for those damages. The end result is splitting the baby, regarding actual money (not sure of the exact proportion of damages).

      1. 1.1.1

        Life Tech was also found liable on shipping the completed infringing product back into the United States, so it will still be liable for those damages.

        Right. That’s no longer a contested issue in this case, of course, just as Promega’s non-enabled invalid patents are no longer an issue.

    2. 1.2

      slam dunk“…


      and it’s all that is needed

      Not a chance. Talk about your “kindergarten” approach…

      1. 1.2.1

        “and it’s all that is needed”

        Not a chance.

        Not a chance of what?

        Addressing the easy question posed by the solicitor resolves the case. And that’s what’s going to happen. 8-0.


          The solititcor’s “rewrite” of the cert. question is NOT the question that cert. was provided for.

          I “get” the “shading” that each side likes to take in preparing its position to the Court, but clearly the kindergarten approach here (funny you missed that) is just not what the case is about. Had that been the actual question and issue below, the case would not BE at the Supreme Court.

          They did themselves no favors by so overplaying the “spin” of the cert. question.


            Had that been the actual question and issue below, the case would not BE at the Supreme Court.

            Maybe you’re thinking about some other case.

            Whether 271(f) creates liability for the provision of a single commodity component of a multi-component invention certainly is the issue. And the CAFC set it up for Supreme Court review by construing the statute incorrectly.

            Now the Supreme Court is going to fix that, in an 8-0 opinion, exactly as predicted.*

            If you’ve got a different prediction, let’s hear it. After all, you’re totally not evasive and you don’t just comment here to spew insults and negativity. You’ve got lots of real insights to offer! You’re a very serious person.

            *Technically, the prediction was 9-0 but we all know what happened between December and today.


              Asked and answered – maybe you forgot that I directly gave you a lesson on statutory construction with a term in the singular/plural….

              Your memory does tend to be rather selective.


              (plus, your “response” really does not address what I actually stated above – maybe you want to try addressing what I actually stated)


                maybe you want to try addressing what I actually stated)

                Wheeee!! Look at the spinning!

                And he still manages to say precisely nothing. Very very impressive, “anon.”

                1. Precisely nothing…?

                  No, Malcolm, that would be you (your favorite past time of AccuseOthers… in full bloom I see).

                  So, once again, feel free to address (yes, in an inte11ectually honest manner) what I actually stated.

                  (I won’t be holding my breath)

                2. It’s okay, “anon.”

                  I wouldn’t want to be predicting anything either if I was in your shoes. And rest assured: your “lesson” on statutory construction has been forgotten by everybody. Nobody cares what you think about anything, and nobody ever will.

                3. Nice attempted spin Malcolm – it is NOT a matter of me “predicting something – it is a matter of you answering my question.

                  SO once again, it is you NOT answering AND turning around and accusing me of being “evasive.”

                  Funny (not really), how one can almost always take one of you accusations and be pretty DAMM sure that you are doing exactly what you are accusing someone else of.


                  As to the lesson – you would be woefully wrong (I know, “go figure”) on multiple accounts. First, the statutory construction lesson was NOT “mine.” I merely provided you citation and the meaning. Second, you DO NOT speak for anybody but yourself (and your little Echoes) – so “everybody” will not be forgetting the statutory construction lesson on singular/plural – for which, ANY attorney worth their salt would look at you and ask you what alternate reality that you come from that you can think that such a fundamental construction concept can be so “gleefully” dismissed just because YOU find it inconvenient to the case at hand.

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