Supreme Court 2017 – Patent Preview

by Dennis Crouch

A new Supreme Court justice will likely be in place by the end of April, although the Trump edition is unlikely to substantially shake-up patent law doctrine in the short term.

The Supreme Court has decided one patent case this term. Samsung (design patent damages).  Five more cases have been granted certiorari and are scheduled to be decided by mid June 2017. These include SCA Hygiene (whether laches applies in patent cases); Life Tech (infringement under 35 U.S.C. § 271(f)(1) for supplying single component); Impression Products (using patents as a personal property servitude); Sandoz (BPCIA patent dance); and last-but-not-least TC Heartland (Does the general definition of “residence” found in 28 U.S.C. 1391(c) apply to the patent venue statute 1400(b)).

Big news is that the Supreme Court granted writs of certiorari in the BPCIA dispute between Sandoz and Amgen.   The BPCIA can be thought of as the ‘Hatch Waxman of biologics’ – enacted as part of ObamaCare.   The provision offers automatic market exclusivity for twelve years for producers of pioneer biologics.   Those years of exclusivity enforced by the FDA – who will not approve a competitor’s expedited biosimilar  drug application during the exclusivity period.   The statute then provides for a process of exchanging patent and manufacturing information between a potential biosimilar producer and the pioneer – known as the patent dance.  The case here is the Court’s first chance to interpret the provisions of the law – the specific issue involves whether the pioneer (here Amgen) is required to ‘dance.’ [Andrew Williams has more @patentdocs]

A new eligibility petition by Matthew Powers in IPLearn-Focus v. Microsoft raises eligibility in a procedural form – Can a court properly find an abstract idea based only upon (1) the patent document and (2) attorney argument? (What if the only evidence presented supports eligibility?).  After reading claim 1 and 24 (24 is at issue) of U.S. Patent No. 8,538,320, you may see why the lower court bounced this. Federal Circuit affirmed the district court’s ruling without opinion under Federal Circuit Rule 36 and then denied IPLF’s petition for rehearing (again without opinion).

1. A computing system comprising:

a display;

an imaging sensor to sense a first feature of a user regarding a first volitional behavior of the user to produce a first set of measurements, the imaging sensor being detached from the first feature to sense the first feature, the first feature relating to the head of the user, and the first set of measurements including an image of the first feature, wherein the system further to sense a second feature of the user regarding a second volitional behavior of the user to produce a second set of measurements, the second feature not relating to the head of the user; and

a processor coupled to the imaging sensor and the display, the processor to:

analyze at least the first set and the second set of measurements; and determine whether to change what is to be presented by the display in view of the analysis.

24. A computing system as recited in claim 1, wherein the system capable of providing an indication regarding whether the user is paying attention to content presented by the display.

=== THE LIST===

1. 2016-2016 Decisions:

  • Design Patent Damages: Samsung Electronics Co. v. Apple Inc., No 15-777 (Total profits may be based upon either the entire product sold to consumers or a component);  GVR order in parallel case Systems, Inc. v. Nordock, Inc., No. 15-978.  These cases are now back before the Federal Circuit for the job of explaining when a component

2. Petitions Granted:

3. Petitions with Invited Views of SG (CVSG): 

4. Petitions for Writ of Certiorari Pending:

  • Is it a Patent Case?: Boston Scientific Corporation, et al. v. Mirowski Family Ventures, LLC, No. 16-470 (how closely must a state court “hew” federal court patent law precedents?) (Appeal from MD State Court)
  • Anticipation/Obviousness: Google Inc., et al. v. Arendi S A.R.L., et al., No. 16-626 (can “common sense” invalidate a patent claim that includes novel elements?) (Supreme Court has requested a brief in response)
  • Civil Procedure – Final Judgment: Johnson & Johnson Vision Care, Inc. v. Rembrandt Vision Technologies, L.P., No. 16-489 (Reopening final decision under R.60).
  • Anticipation/Obviousness: Enplas Corporation v. Seoul Semiconductor Co., Ltd., et al., No. 16-867 (“Whether a finding of anticipation under 35 U.S.C. § 102 must be supported by findings that each and every element of the subject patent claim is disclosed in the prior art?”)
  • Post Grant Admin: Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., No. 16-712 (“Whether inter partes review … violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.”) [oilstatespetition]
  • Eligibility: IPLearn-Focus, LLC v. Microsoft Corp., No. 16-859 (evidence necessary for finding an abstract idea)
  • Post Grant Admin: SightSound Technologies, LLC v. Apple Inc., No. 16-483 (Can the Federal Circuit review USPTO decision to initiate an IPR on a ground never asserted by any party)
  • Is it a Patent Case?: Big Baboon, Inc. v. Michelle K. Lee, No. 16-496 (Appeal of APA seeking overturning of evidentiary admission findings during reexamination – heard by Federal Circuit or Regional Circuit?)
  • LachesMedinol 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)
  • Eligibility and CBM: DataTreasury Corporation v. Fidelity National Information Services, Inc., No. 16-883 (I have not seen the petition yet, but underlying case challenged whether (1) case was properly classified as CBM and (2) whether PTAB properly ruled claims ineligible as abstract ideas) (Patent Nos. 5,910,988 and 6,032,137).

5. Petitions for Writ of Certiorari Denied or Dismissed:

  • Licensing: DataTreasury Corp. v. JP Morgan, No. 16-359 (appeal from 5th Circuit) (Whether a most-favored licensee (“MFL”) clauses in an intellectual property license agreement applies retrospectively to require refund if better terms are later given to another licensee?) [DataTreasuryPetition]
  • 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)
  • Patent Claim Construction: David Netzer Consulting Engineer LLC v. Shell Oil Company, et al., No. 16-713
  • BPCIA – Notice of Commercial Marketing: Apotex Inc., et al. v. Amgen Inc., et al., No. 16-332 (effectively extending exclusivity to 12 1/2 years; complement to the Sandoz petition)
  • Anticipation/ObviousnessMerck & Cie, et al. v. Watson Laboratories, Inc., No. 16-493 (pre-AIA, do secret sales count as prior art?)
  • Extraterritoriality – Trade Secrecy: Sino Legend (Zhangjiagang) Chemical Co. Ltd. et al. v. International Trade Commission, et al., No. 16-428 (Whether Section 337(a)(1)(A) permits the ITC to adjudicate claims regarding trade secret misappropriation alleged to have occurred outside the United States.)
  • Post Grant AdminEthicon Endo-Surgery, Inc. v. Covidien LP, et al., No. 16-366 (separation-of-function – can the PTO Director delegate IPR institution decisions to PTAB); Same question presented in LifeScan Scotland, Ltd. v. Pharmatech Solutions, Inc., No. 16-377
  • Claim Construction: Google, Inc. v. Alfonso Cioffi, No. 16-200 (holding prosecution history against the patentee)
  • Civil Procedure – Personal Jurisdiction: Mylan Pharmaceuticals, et al. v. Acorda Therapeutics, et al., No. 16-360 (does an ANDA filing create nationwide specific jurisdiction?)
  • Civil Procedure – Preserving Appeal: EON Corp. IP Holdings LLC v. Silver Spring Networks, Inc., No. 16-551 (Appeal of question of law without Fed. R. Civ. Pro. R. 50 JMOL motion)
  • Farstone Technology, Inc. v. Apple Inc., No. 16-651
  • 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.)
  • Anticipation: Grunenthal GmbH v. Teva Pharmaceuticals USA, Inc., et al., No. 16-296 (OxyContin patent – when is an element ‘inherently’ disclosed by the prior art for anticipation purposes)
  • Obviousness: Purdue Pharma L.P. v. Epic Pharma, LLC, 16-289 (whether the circumstances of invention can help prove non-obviousness) (The Purdue and Grunenthal cases stem from the same Federal Circuit decision but involve separate patents owned by the respective petitioners)
  • Claim Construction: CSP Technologies, Inc. v. Sud-Chemie AG, No. 16-238 (unduly narrow claim construction)
  • Eligibility: Trading Technologies International, Inc. v. Michelle K. Lee, No. 16-446 (Eligibility of new use of old manufacture – blackjack game)
  • 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)
  • 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 AdminCooper 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: Cooper v. Square, No. 16-76 (whether IPRs violate Separation of Powers; two amici now filed in support); same question presented by Cooper in Cooper v. Lee (denied)
  • Post Grant AdminTrading Technologies International, Inc. v. Lee, No. 15-1516 (mandamus challenging CBM initiation)
  • Post Grant AdminGEA 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)
  • 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)
  • Arbitration: Neev v. Alcon Lensx, Inc., No. 16-48 (limits on arbitrator autonomy in patent cases)
  • Interference: Edward Tobinick v. Kjell Olmarker, et al., No. 15-1544 (question of procedure in interference case involving allegations of fraud)
  • 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)
  • Eligibility: Essociate, Inc. v., LLC, et al., No. 16-195 (please clarify the meaning of ‘abstract idea’ and ‘inventive process’)
  • 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)
  • 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?)
  • Post Grant AdminJames L. Driessen, et ux. v. Sony Music Entertainment, et al., No. 15-1518 (Claim construction in IPRs – pro se case)
  • 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]
  • Patent Attorney Malpractice: Encyclopaedia Britannica v. Dickstein Shapiro, No. 16-305 (Does the fact that the search-system is no longer patentable under Alice Corp excuse patent prosecutors from alleged prosecution errors made well prior to that decision – the patent).

6. Prior versions of this report:

38 thoughts on “Supreme Court 2017 – Patent Preview

  1. 10

    link to

    Researchers at the Massachusetts Institute of Technology are asking people worldwide how they think a robot car should handle such life-or-death decisions. Their goal is not just for better algorithms and ethical tenets to guide autonomous vehicles


    Ethical tenets “on a computer”.

    But software isn’t logic! Nope. It’s totally different! Because the patent maximalists say so.

    Please, please, please someone step up and defend the eligibility of “ethical tenets on a computer” claims. We could all use the laughs.

    1. 10.1

      Ethical tenets on a computer are the only thing that will save us. As such, they are the sort of thing in which we want to promote advancement.

      “A robot may not injure a human being or, through inaction, allow a human being to come to harm.

      A robot must obey the orders given it by human beings except where such orders would conflict with the First Law.”

      If those aren’t embedded in the firmware but good, our robot overlords will wipe us out around day three.

      Getting A MACHINE to implement such tenets is clearly eligible subject matter.

      1. 10.1.1

        Ethical tenets on a computer are the only thing that will save us.

        Well, I thought I’d heard pretty much everything but never underestimate the ability of the patent maximalists to punch through the bottom of the ce ss p00l if they think it will keep the merry-go-round turning a bit longer.

        our robot overlords will wipe us out around day three.

        Maybe that’s what Gob wants.


        Good grief someone please take the steering wheel away from these twelve year olds.

  2. 8

    Super slimy Keith Raniere got Rule 36’d into oblivion in his attempt to avoid sanctions (attorney fees on the order of $1 million dollars) for his miserably failed lawsuit against Microsoft and AT&T.

    In her ruling, the judge said she determined that it was unlikely that Raniere would ever be able to cure his standing problem. For example, during the March hearing on the defendants’ motion to dismiss, Raniere testified that his ex-girlfriend held her interest in the corporation that owned the patents “in trust” for him and that the trust arrangement was documented by a written “side letter,” but that he did not know the whereabouts of the side letter….

    The court also rejected Raniere’s arguments that his conduct was mereley “zealous pursuit” of his good faith claim of ownership,” saying he made false and misleading representations during the litigation.

    Poor widdle David. Mean old Goliath has a better bookkeeper which is sooooooooooo unfair!

    This is why the patent maximalists can’t have nice things. Grow up and take a bath.

      1. 8.1.1

        What’s that “anon”? I can’t hear you from where you’re sitting at the bottom of the bucket.

        On the day when you find it in your awesome self to post some news about a b0ttom feeder like Raniere here, I’ll think about putting you in a different bucket.

        But that’s never going to happen, is it? Nope. You know it and I know it.

        So just shut your little trap for a change.


          What you want does not matter.

          You are still doing that one bucket thing.

          Maybe you should grasp that from the start…

  3. 7

    The CAFC has done a surprisingly quick turn around on Trading Techs. v. CQG Inc., No. 16-1616 (Fed. Cir. Jan. 18, 2016), given that they only just heard oral arguments on this one eight days ago. It is a humdinger. Another computer implemented invention claim that has come through the 35 USC 101 meatgrinder unscathed.

    Presumably CQG will be petitioning for cert. on this one. I guess this will be a good test case for Mark Perry’s speculation that the SCotUS is done with 101 for a while. If the SCotUS refuses to take this case, then they really will have said their peace and are done with 101 for the foreseeable future.

    Incidentally, the CAFC decided this one in a non-precedential disposition. Why? Do they really not think that a claim surviving 101 is so unimportant as not to merit precedential treatment? Or are they deluding themselves into thinking that the SCotUS will be less likely to take the case if it is only a non-precedential decision? It just makes no sense to render such a verdict for publication in the Federal Appendix.

    1. 7.1

      Just to be clear, the reason why I expect CQG to petition for cert. is that Trading Tech’s claim here looks an awful lot like the claims in Alice. I am sure that one can contrive this or that distinction between the two sets of claims, but none that really strike me as material. If this case is allowed to stand, it represents a significant movement of the CAFC toward confining Alice to its particular facts. If the SCotUS does not want Alice so confined, they pretty much have to remark on this case (at least by GVR or a Breyer-authored dissent from a denial of cert, probably joined by Justices Sotomayor & Ginsburg).

      1. 7.1.1

        it represents a significant movement of the CAFC toward confining Alice to its particular facts.

        Except that it’s non-precedential.

        All it shows is something that everyone already knew: the CAFC has absolutely no idea what it’s doing but on certain days certain panels will do backflips for a “stakeholder” asserting a junky “do it on a computer” and/or a “display this content” claim.

    2. 7.2

      Greg: Incidentally, the CAFC decided this one in a non-precedential disposition. Why?

      Presumably because the reasoning is even more of an embarassment than their recent precedential cases. This one is just as bad as McWrong which was, unfortunately, precedential. Another reason is to minimize its importance and decrease the otherwise phenomenal likelihood that the Supremes will crush the opinion into dust.

      Just how bad is it? Well, try to wrap your head around all this nonsense:

      The court found that these patents are directed to improvements in existing graphical user interface devices that have no “pre-electronic trading analog,”

      News flash: graphics were used to present data before electronics. Also, data was presented using graphics generated electronically eons before this patent was filed. That technology and those “analogs” were in the public domain and that is all that matters for the analysis.

      The district court explained that the
      challenged patents do not simply claim
      displaying information on a graphical user interface.

      LOL Get ready for this next part. Scrivener’s delight!

      The claims require a specific, structured graphical user interface

      There is a things displayed on parts of the screen! Therefore: “structured.” Yes, friends, the US patent system is a j0ke.

      paired with a prescribed functionality directly related to the graphical user interface’s structure

      Oh, wowee zowee! The things are in locations for a reason! And what’s this about “prescribed”? Is that different from “recited”? Of course it isn’t. But it sounds so much more … serious! And the more window dressing the better.

      The short version is that the claim recites a user interface in functional terms. Why not just say that? We all know the answer to that question …

      that is addressed to and resolves
      a specifically identified problem in the prior state of the art.

      That’s just boiler plate bal0ney recited by every patentee using functional claiming to protect logic “on a computer.”

      But here’s where the decision goes completely off the deep end (this is page 7). First Newman attempts to compare this claim to the claim at issue in the CAFC’s equally r0tten DDR decision, i.e., she suggests that the claim solves “a problem specifically arising in the realm of computer networks”. That’s absurd. The claim tells you right off the bat what it is: “a method for displaying market information.” If these guys thought they were solving a “computer networking problem”, don’t you think they would have simply claimed that instead of this narrow pile of ineligible g@rb@ge?

      But wait! That’s not all. The best part comes at the end of this paragraph where Newman states ” the graphical user interface system of these two patents is not an idea that has long existed, the threshold criterion of an abstract
      idea and ineligible concept

      Say what?! Since when? As the CAFC itself has explained on literally dozens of occasions: the novelty of the ineligible abstraction or concept doesn’t matter for squat. The Supreme Court as well is crystal on this point. So where did Newman dig this up? Unbelievably, she tries to pin it on Mayo! And even more unbelievably, the cite she provides is completely off point (“the patent must “amount to significantly more in practice than a patent upon the [ineligible concept itself]”).

      The rest of the analysis is an absolutely unintelligible attempt to distinguish this case from reams of cases where the CAFC has found the claims ineligible (and remember: those cases don’t include the dozens of Rule 36 smackdown of ineligible claims that the CAFC has published, including a couple more this morning).

      The farce continues.

    3. 7.3

      The decision here was right because the claims were directed to a way to improve the “way” computers and computer systems operate. Fundamentally statutory.

      But what did the court say?

      “The claims require a specific,
      structured graphical user interface paired with a prescribed
      functionality directly related to the graphical user
      interface’s structure that is addressed to and resolves a
      specifically identified problem in the prior state of the art.
      The district court concluded that the patented subject
      matter meets the eligibility standards of Alice Step 1. We
      agree with this conclusion, for all of the reasons articulated
      by the district court, including that the graphical user
      interface system of these two patents is not an idea that
      has long existed, the threshold criterion of an abstract
      idea and ineligible concept…”

      This is where the opinion is flaky. The long existence of an idea is not the problem with business methods or math or the like. These things are simply nonstatutory.

      The result is right, but the reasoning unsound. That is probably why the rest of the court did not approve this for precedential purposes.

    1. 6.1

      Agreed. I will be impressed if Justice Scalia’s replacement is sworn in before the end of the current term. I will not be surprised if the replacement is not confirmed by August.


          If the replacement is in by April, it will not be the first time I have made a wrong prediction either. I guess we will see.

  4. 5

    Slight correction: SCA is whether laches applies to patent damages, such as reasonable royalties. Laches can still be applied for equitable remedies such as an injunction

    1. 4.1

      Someone better order a big box of kleenex for Scott Sander and Art Hair, two of the biggest crybabies who ever existed.

  5. 3

    Ned – looks like there is another one. 16-712. Unclear why they are pursuing so early in the game.

    Is there a link to the petition?

    1. 3.2

      anony, the timing does seems just a tad off if the court needs on more Justice before they could take the case.

      Scalia’s departure seems to be an act of God saving IPRs.

      1. 3.2.1

        They did a good job with the arguments, though did struggle somewhat in my view to distinguish Cooper and MCM. This isn’t a criticism – they aren’t easily distinguished.

        The reality is that the Court passed on MCM and Cooper either because (1) they weren’t prepared to rule on the issue with 8, or (2) they agree that the CAFC got it right in MCM.

        Both Thomas and Alito appear to be on board with the CAFC’s point of view, if the Teva v Sandoz dissent is any indication.

        Nonetheless, it appears that these petitions will keep coming until a full panel of 9 considers at least one.


          I agree.

          Even though some naysayers wanted to portray the past term’s denial of certs as the be all and end all of the matter.



          or (3) decided to pass for now and let it play out some more. As I recall, the New Deal was on the books for many many years before the Sick Chicken case, et al.

          Let’s say at least three of the political appointees who comprise the Admin Court decide to seat themselves and invalidate a patent that was subject to an active injunction enforcement proceeding?

  6. 2


    1. Collecting info about a person’s head and some other part of the person, wherein the person is watching a display, and using that info to determine if the display should be changed.

    2. Wherein it looks like the person is bored.

    Heckuva job, PTO. Just the tip of the iceberg, remember. There is junk waaaaaaaay worse than this and the PTO is pumping it out like there’s no tomorrow.


          Sounds like an abstraction to me, at least as you just stated it.

          If you want to claim a novel concrete tangible structure for performing the task that is described in structural terms distinguishing it from the prior art, go right ahead.


            Are you pretending that an optional claim format is somehow more than just an option again, Malcolm?


            How is it any more an abstraction than say : Stir the mixture until it has the calculated viscosity?


            Is it your position that methods are all abstract? If not, why bring structure into the discussion?



              Method claims as “mere process” give the anti-software people fits.

              Note that this is also makes Ned run away.

              Any time they ride the Merry Go Round and resurface with their same old mantras, all one has to do is point to the words of Congress in 35 USC 100(b), and state plainly that the branch of the government authorized (constitutionally) to write patent law have provided a different system than the one that the anti’s feel should be in place.

  7. 1

    A new Supreme Court justice will likely be in place by the end of April

    Wow. That’s optimistic.

    $500 you’re wrong, Dennis. Let me know.

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