Supreme Court Patent Cases: Previewing the October Term 2016

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by Dennis Crouch

When the Supreme Court’s October 2016 Term begins in a few weeks, its first patent hearing will be the design patent damages case of Samsung v. Apple. In Samsung, the Court asks: Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?  The statute at issue – 35 U.S.C. § 289 – indicates that, someone who (without license) “applies” the patented design (or colorable imitation thereof) to an article of manufacture, “shall be liable to the owner to the extent of his total profit.”  Up to now, courts have repeatedly held that the “profits” are profits associated with the product (i.e., the article of manufacture) being sold, but Samsung is asking that the profits be limited only to components of the product closely associated with the patented design.  Although Apple’s position is supported by both the text and history and is the approach easiest to calculate, I expect that many on the Court will be drawn to the potential unjust outcomes of that approach.  Apple wins in a 4-4 split.  Oral arguments are set for October 11, 2016.

The court has granted certiorari in two other cases for this October 2016 term with briefing ongoing. In Life Tech v. Promega, the court again takes up the issue of exporting components of a patented invention and the extraterritorial application of US law.  35 U.S.C. § 271(f)(2). The question here is whether export of one component can legally constitute the “substantial portion of the components” required by statute for liability to attach.  In the case, the component (Taq) is a commodity but is also an admitted critical aspect of the invention. In SCA Hygiene v. First Quality, the Court asks whether the equitable defense of laches applies in patent cases.  The case is a follow-on to the Supreme Court’s 2014 holding in Petrella v. MGM that laches does not apply in copyright cases.  In its decision, the Federal Circuit distinguished Petrella based both upon statutory and policy arguments. Oral arguments in SCA are set for November 1, 2016.

The three pending petitions most likely to be granted certiorari are Impression Products (exhaustion); Amgen (BPCIA); and GlaxoSmithKline (antitrust reverse payments)   However, these cases are awaiting views of the Solicitor General — which likely will not be filed until well after the presidential election.

A substantial number of cases are set for the Supreme Court’s September 26 conference.  These include the constitutional challenges to IPR coming in MCM and Carl Cooper as well as the interesting eligibility case of Genetic Tech v. Merial.

It looks to be an interesting term.

The big list:

1. Petitions Granted:

2. Petitions awaiting invited Views of SG: 

  • Exhaustion: Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189 (unreasonable restraints on downstream uses)
  • 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)
  • Antitrust Reverse Payments: GlaxoSmithKline, et al. v. King Drug Company of Florence, Inc., et al., No. 15-1055 (antitrust reverse payment – appeal from the 3rd Cir.)

3. Petitions for Writ of Certiorari Pending:

  • Obviousness: MacDermid Printing Solutions, LLC v. E.I. DuPont de Nemours & Company, No. 15-1499 (is proof of a “reasonable expectation of success” necessary to combine references in an obviousness case against a claimed combination invention)
  • Laches: Medinol Ltd. v. Cordis Corporation, et al., No. 15-998 (follow-on to SCA); Endotach LLC v. Cook Medical LLC, No. 16-127 (SCA Redux); Romag Fasteners, Inc. v. Fossil, Inc., et al, No. 16-202 (SCA Redux plus TM issue)
  • Safe Harbor: Amphastar Pharmaceuticals, Inc., et al. v. Momenta Pharmaceuticals, Inc., et al., No. 15-1402 (scope of 271(e) safe harbor)
  • Post Grant Admin: MCM v. HP, No 15-1330 (separation of powers and right to jury trial).
  • Post Grant Admin: Cooper v. Lee, No. 15-955 (whether IPRs violate Separation of Powers; two amici now filed in support); same question presented by Cooper in Cooper v. Square, No. 16-76.
  • Post Grant Admin: Trading Technologies International, Inc. v. Lee, No. 15-1516 (mandamus challenging CBM initiation)
  • 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 Admin: Merck & Cie, et al. v. Gnosis S.p.A., et al., No. 16-125 (standard of appellate review of PTAB fact-finding in IPR proceedings)
  • Post Grant Admin: Automated Creel Systems, Inc. v. Shaw Industries Group, Inc., et al., No. 16-108 (Achates redux – review of statute-of-limitations for filing IPR requests)
  • Post Grant Admin: Pactiv LLC v. Lee, No. 16-205 (Does the “substantial new question of patentability” identified in a reexamination order limit the scope of the ex parte reexamination)
  • Design Patents: Systems, Inc. v. Nordock, Inc., No. 15-978 (design patent damage calculations – similar issues as Samsung v. Apple)
  • Appellate Review: Commil USA, LLC v. Cisco Systems, Inc., No. 15-1446 (appellate disregard of factual evidence)
  • Eligibility: Jericho Systems Corporation v. Axiomatics, Inc., et al., No. 15-1502 (Eligibility of Patent No. 8,560,836 under Section 101 – Abstract Idea)[Jericho]
  • Eligibility: Genetic Technologies Limited v. Merial L.L.C., et al., No. 16-188 (Sequenom redux; also question whether ineligibility is a proper subject of a motion to dismiss on the pleadings)
  • Eligibility: Essociate, Inc. v. Clickbooth.com, LLC, et al., No. 16-195 (please clarify the meaning of ‘abstract idea’ and ‘inventive process’)
  • Post Grant Admin: James L. Driessen, et ux. v. Sony Music Entertainment, et al., No. 15-1518 (Claim construction in IPRs – pro se case)
  • Interference: Edward Tobinick v. Kjell Olmarker, et al., No. 15-1544 (question of procedure in interference case involving allegations of fraud)
  • Arbitration: Neev v. Alcon Lensx, Inc., No. 16-48 (limits on arbitrator autonomy in patent cases)
  • ITC Jurisdiction: DBN Holding, Inc. v. International Trade Commission, No. 16-63 (Does the USITC have jurisdiction over articles imported in order to infringe, but that do not themselves practice the invention at import).
  • Claim Construction: CSP Technologies, Inc. v. Sud-Chemie AG, No. 16-238 (unduly narrow claim construction)
  • Claim Construction: Google, Inc. v. Alfonso Cioffi, No. 16-200 (holding prosecution history against the patentee)
  • Jurisdiction: GeoTag, Inc. v. Google Inc., No. 16-268 (Whether a compulsory counterclaim can satisfy the case or controversy requirement under Article III of the Constitution if there was no case or controversy at the time the complaint was filed?)

4. Petitions for Writ of Certiorari Denied or Dismissed:

  • None so far this term.

5. Prior versions of this report:

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11 thoughts on “Supreme Court Patent Cases: Previewing the October Term 2016”

  1. 3

    15-1890 KomBea Corporation v. Noguar L.C.

    District Court decision: link to leagle.com.

    Judges: Moore, Chen, & Hughes

    link to google.com

    Try to believe this junk:

    1. A method for customer contacting, the method comprising:

    providing a system for interaction with a contact, the interaction being selectable between human and computer delivery;

    executing an interaction protocol to create an interaction with the contact;

    initiating a call to the contact; and

    allowing an agent to selectively interleave recorded scripts during the call, the recorded scripts comprising recorded scripted responses and recorded interjection responses, and wherein the recorded scripted responses are selected from a script menu by the agent and wherein the recorded interjection responses are selected from an interjection menu by the agent.

    It’s a method! For contacting a person! And you’re “allowed” to select scripts to be recited! And the scripts can be recorded!

    Somehow the attorney for the patentee in this case (who saw their claim tanked under 101) has decided he should lead off with a strange hypothetical about speaking with James Earl Jones’ voice. It’s doubly strange because the attorney sounds exactly like Tom Brokaw. Who needs James Earl Jones? Tom Brokaw is calling grandma up and trying to get her to buy some antique doll replicas! Quick, betteer get grandpa over to the phone quick!

    The game being played by the patentee here is to pretend that the secret sauce to the eligibility of the claim lies in the phrase “interaction protocol” which is a computer-implemented “protocol” encompassing all kinds of magical “voice interleaving” “technologies” that allow for “perfect” “impedence matching” and “seamless” audio between a live voice and the “interleaved” recording. Oh, but wait: none of these arguments were made before the district court! Oops.

    The spec defines ” interaction protocol” as a protocol that “allows” “the agent to select and present content to a contact in the selected voice type and pose a question or statement to a contact in response to a contact’s response or statement.” First, this is what we call functionally claimed g@rbage. I mean, why stop there, super geniuses? For instance, why doesn’t this magical “protocol” make decisions about what content to present (or at least provide guidance) based on information about the caller? Was that too difficult to dream up?

    Look for a Rule 36 affirmation of the district court’s ineligibility decision within the next week.

  2. 2

    Is anyone else shocked by how much patent litigation there is?

    I know the above list is primarily due to the elongated break in SCOTUS deciding whether to grant cert, but it just seems like a very active practice.

    For instance, we all know the PTAB is busy with post-grant work and that patent lawsuit filings are up (by certain metrics). We also know that the CAFC sees a lot of appeals from both (on a vast array of topics, often sent back to resolve more issues).

    Are all these cert petitions for litigation/matters with that much money/equity on the line that people are looking at small odds times huge payday that it makes it worth it to pay a group of lawyers to draft cert petitions (at high rates I assume)?

    Note: I am not saying its a bad thing, just that it seems like a lot. I guess my interest is in relation to how much general corporate litigation (contracts and torts, which are mostly state-level issues or diversity jurisdiction), but would seem to be a busier practice (because business). If so, do these number pale in comparison?

    Furthermore, w.r.t. Copyright and trademark litigation are they equal to, more than, or less than patent litigation. I would hazard the guess that they are less than (copyright litigation takes some evidence of copying and some similar work and trademark litigation takes close competitors, usually, with similarly named brands; whereas, patent litigation can be based on direct infringement, i.e., “innocent infringement”)

    1. 2.1

      “Seems like a lot”

      That entirely depends on whether you have bothered to calibrate the number against any particular norming factor (say, for example, the total number of possible claims that a law suit could be brought under).

      Your way, one would wonder why we would not switch back to horse drawn carriages given the shear number of automobile deathes when compared to horse traffic deathes.

    2. 2.2

      It does seem like cert petitions are being filed in a high percentage of patent decisions of the CAFC.
      If clients placed that kind of money on horses running under the same 300 to 1 odds would there be auditor inquires?

      1. 2.2.1

        cur, it is clear from reading a lot of these cert petitions that the petitioners do not understand what the Supreme Court is looking for in a petition: something really important, not just for error in the lower court.

        And, the Supreme Court does not like cases where the facts are in dispute.

    2. 1.2

      Anony,

      Scotusblogpublishes a calendar, listing the dates of orders, conferences, and arguments. Looks like orders from the Sept. 26 conference won’t come out until Oct. 3 at the earliest.

    3. 1.3

      I believe it is always the first Monday in October, which by statute is the start of the Court’s new session.

      1. 1.3.1

        Yeah, there was a SCOTUS related tv series in 2002 called “First Monday”. Only lasted 13 episodes – no patent cases.

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