Supreme Court Update – July 2018

by Dennis Crouch

Each summer, the Supreme Court takes a recess and patent cases begin to pile-up in the high-court’s docket. Only a handful of intellectual property petitions are granted certiorari each year, but almost all of the petitions raise interesting and important issues of law and policy.

The following is a comprehensive list of Patent cases pending before the Supreme Court.  I have excluded a small handful that have (in my estimation) no shot at certiorari and also fail to raise interesting patent law issues.

Petitions Granted:

  1. Prior Art – On Sale Bar: Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., et al., No. 17-1229. This case questions whether 102(a) prior art under the AIA is limited to publicly available prior art. Particularly, does a pre-filing sale of the invention count as “on sale” prior art where the sale was a private sale that did not publicly disclose the invention? Merits briefing should be complete in October with oral arguments likely held in November 2018.

Petitions for Writ of Certiorari Pending:

  1. Inequitable Conduct: Regeneron Pharmaceuticals, Inc. v. Merus N.V., No. 17-1616. The question presented is “Whether a patent right can be fully extinguished based on misconduct committed by the patentee’s counsel during federal district court litigation to enforce the patent right.”
  2. Validity – Indefiniteness: American Technical Ceramics Corp. v. Presidio Components, Inc., No. 17-1497 (Can a patent’s definiteness be proven based wholly upon post-filing evidence?)
  3. Damages – Enhanced Damages: Bombardier Recreational Products Inc., et al. v. Arctic Cat Inc., No. 17-1645 (Can treble damages for “willful infringement” be based upon a “should have known” standard?)
  4. Validity – Obviousness: Nichia Corporation, et al. v. Everlight Electronics Co., Ltd., et al., No. 17-1707 (Treating obviousness as a question of fact vs law).
  5. Validity – Obviousness: B/E Aerospace, Inc. v. C&D Zodiac, Inc., No. 17-1252 (Process of obviousness analysis — is there first a prima facie obviousness analysis followed by consideration of objective indicia of non-obviousness?)
  6. Procedure – Standing for AIA Trials: Return Mail, Inc. v. United States Postal Service, No. 17-1594 (Whether the government is a “person” who can petition to institute a CBM;  Does a 1498(a) action count as an infringement action?)
  7. Procedure – Standing of AIA Trials: RPX Corporation v. ChanBond LLC, No. 17-1686 (What is required for a petitioner to have standing to appeal an AIA Trial final decision?)
  8. Procedure – Impact of Factual Stipulation: Allergan Sales, LLC v. Sandoz, Inc., et al., No. 18-21 (may the court “ignore a factual stipulation”).
  9. Procedure – Federal Court Patent Jurisdiction: Alexsam, Inc. v. Wildcard Systems, Inc., et al., No. 17-1483 (Does a breach-of-patent-license lawsuit arise under the Federal Patent laws?)
  10. Procedure – Joinder of Co-Owner: Advanced Video Technologies LLC v. HTC Corporation, et al., No. 18-77 (When we have co-owners of a patent, can one co-owner use Fed. R. Civ. Pro. R. 19 to force joinder of the other co-owner in an infringement lawsuit?)
  11. Procedure – Timing of New Trial Motion: Promega Corporation v. Life Technologies Corporation, et al., No. 17-1669.
  12. Inventor Rights: Leitner-Wise v. LWRC International, LLC, et al., No. 18-52.  Leitner-Wise (the inventor) assigned his patent rights as part of a royalty agreement that have not been by the subsequent assignee.  May he now sue the assignee for infringement?
  13. Patent Eligibility: Integrated Technological Systems, Inc. v. First Internet Bank of Indiana, No. 17-1590 (“Does 35 U.S.C. § 282 allow for challenges to a patent’s validity based on patent eligibility under 35 U.S.C. § 101?”)
  14. AIA Trials and Appeals: Stambler v. Mastercard International Inc., No. 17-1140 (Can Congress revoke a patent owner’s right to have the validity of his patent determined by a jury trial before an Article III forum after his patent issues; and (2) whether Federal Circuit Rule 36 contravenes 35 U.S.C. § 144.).
  15. Infringement — Ensnarement as a Defense: Jang v. Boston Scientific Corporation, et al., No. 17-1332 (“Whether the Federal Circuit’s “ensnarement” defense to infringement [under the doctrine of equivalents] violates patent holders’ Seventh Amendment jury-trial rights.”)
  16. Prior Art – Effective Date of Prior Art: Ariosa Diagnostics Inc. v. Illumina Inc, No. 18-****.  (“If a patent discloses but does not claim an invention, does that disclosure qualify as prior art as of the date of the application in which it was first made, such that no one else may patent the same invention based on a later-filed application?”)


5 thoughts on “Supreme Court Update – July 2018

  1. 3

    Almost no one so far seems to think that the outcome of the Fed. Cir. decision in Ariosa Diagnostics Inc. v. Illumina Inc. makes sense, and it will have a wide impact given the very large number of patent applications first filed as provisionals. So let us hope the AIPLA, IPR and others file effective amicus briefs. Especially as this decision creates a bizarre result that the teaching contents of a publicly available provisional patent application can be removed or added to as prior art with prior art date changes simply by amendments of the CLAIMS in the subsequent non-provisional application! As was also noted in the comments in the blog on this case below, it can be argued that there is no basis in the AIA or its history for assuming that Congress intended to overrule the Supreme Court’s decision in Hazeltine Research when it enacted AIA 35 USC 119(e)(1).

    1. 3.1

      it can be argued that there is no basis in the AIA or its history for assuming that Congress intended to overrule the Supreme Court’s decision in Hazeltine Research when it enacted AIA 35 USC 119(e)(1).

      I agree.

      Of course, this “not over-rule” cannot woodenly look only at the Hazeltine decision itself, and should consider the various interplay of the state of patent prosecution capabilities available at the point of that decision and how any ensuing items (such as provisionals, PTA, and the like) inform that larger context.

      Conversation on the entire context of the state of the law at the time of the Hazeltine Research case has been initiated previously, and key insights may be found here:

      link to

    2. 3.2

      Here’s another logic test for Ariosa Diagnostics Inc. v. Illumina Inc. Why could not a party needing the prior art filing date benefit of unclaimed parts of the provisional application of a patent pay the owner of that patent to file a reissue application adding dependent claims to those unclaimed parts?

  2. 2

    No. 10, re compelling joinder of a patent co-owner, is an important long-standing issue. [Increasing with the considerable expansion of corporations hiring university personel for their research.] Refusal of any one part-owner to voluntarily join in patent infringement suits effectively prevents any and all part-owners from enforcing the patent against infringers, greatly reducing its value. But since universities are now the most frequent demanders of joint ownership [in spite of this and other serious legal problems],* and since universities also frequently refuse voluntary joinder, I suspect some will oppose cert?
    *Better-run university patent operations require co-ownership licensing agreements to have detailed contractual “work-arounds” for the inherent legal problems.

  3. 1

    8. Procedure – Impact of Factual Stipulation: Allergan Sales, LLC v. Sandoz, Inc., et al., No. 18-21 (may the court “ignore a factual stipulation”).

    See Alice.

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