RPost Comm. v. GoDaddy, LLC (Supreme Court 2017)
Like Oil States, the new petition for certiorari by RPost is a home-run swing — but will it connect? The question presented:
Is patent ineligibility under 35 U.S.C. § 101, which Congress did not codify in 35 U.S.C. § 282(b), not a cognizable defense in a patent litigation?
This question stems from Prof. David Hricik’s 2012 Patently-O post on the topic where he similarly asked: Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid?
The idea here is that the defenses to patent infringement are expressly codified in 35 U.S.C. § 282(b). Some failures of a patent can be raised in court as defenses to take-down an issued patent (such as lacking written description) while others simply cannot (such as improper revival or lack of best mode).
The petition here is timely – not only because so many patents are being invalidated under Section 101 – but also because the Supreme Court in SCA Hygiene (2017) reaffirmed the power of Section 282(b) — holding that laches was not a congnizable defense under the provision. The petition argues:
The same type of statutory analysis [applied in SCA] must be applied here because no word or phrase in § 282(b) codifies ineligibility as a litigation defense.
Note here, that the same question was asked in Retirement Capital Access Mgm’t Co. v. U.S. Bancorp and Michelle Lee (cert denied 2015). The Federal Circuit has refused to rule directly on this issue — instead affirming the lower-tribunal holdings without opinion (R.36).
A difficulty with the the whole approach is that the Supreme Court has already expressly refused to be bound by the statute in its eligibility analysis.
Top-side amicus briefs will be due in early December.
- David Hricik, Are the Courts Correct in Their Assumption that a Patent Issued on Non-patentable Subject Matter is Invalid? (Aug. 2012)
- David Hricik, Why Section 101 is Neither a “Condition of Patentability” nor an Invalidity Defense (2013)
- Dennis Crouch, Can a Third Party Challenge Section 101 Subject Matter Eligibility in the USPTO’s new Post-Grant Review Procedure? (Aug. 2012)