by Dennis Crouch
The Supreme Court is now open for business for its 2018-2019 Calendar. The only pending patent case before the court is Helsinn v. Teva, which focuses on the meaning of “on sale ” in the Section 102 of the Patent Act as revised by the 2011 America Invents Act. When do pre-filing sales count as prior art — what level of public disclosure is necessary?
CVSG: On October 1, the Supreme Court asked for the views of the U.S. Government in the case of RPX v. ChanBond — Whether a party that asks for review of a patent has standing to appeal the U.S. Patent and Trademark Office’s final ruling on that review to the U.S. Court of Appeals for the Federal Circuit.
Early in the term, the court regularly denies a host of petitions that had accumulated over the summer as part of its “long conference.” The court has now done that with about 16 patent case denials out of the gate, including a few cases that I found interesting, including:
- Smartflash LLC v. Samsung Electronics America, Inc. et al., No. 18-189 (PTAB judges as principal officers; retroactive CBM reviews)
- Regeneron Pharmaceuticals, Inc. v. Merus N.V., No. 17-1616 (litigation misconduct and inequitable conduct).
- Bombardier Recreational Products Inc., et al. v. Arctic Cat Inc., No. 17-1645 (does the “should have known” standard for willful infringement under Seagatemeet the “intentional or knowing” requirement set forth in Halo v. Pulse).
- 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?”).
- Leon Stambler v. Mastercard International Inc., No. 17-1140 (Whether the Federal Circuit’s issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent and Trademark Office violates 35 U.S.C. § 144’s requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals.).
RPX (CVSG mentioned above) is the only case from the initial September conference that was not denied on the first round.
The next upcoming conference is October 5, 2018 and the court is scheduled to consider two cert petitions in patent cases:
- Advanced Audio Devices, LLC v. HTC Corporation, et al., No. 18-183 (Whether an IPR against patents filed before enactment of the AIA violates the Takings Clause of the 5th Amendment to the U.S. Constitution.?)
- Alexsam, Inc. v. Wildcard Systems, Inc., et al., No. 17-1483 (when does a breach of patent license case get to Federal Court?)
Both of these cases would interesting to see before the court.
Nonsubstantive *ChanBond with an O.
Looks like Greg was right: Supreme Court “appetite for meddling with patent law has crested.
Hard to say. Most of these petitions are weak to the point that I think of cert denial as more of an inevitability than a sign of the court’s interest in patent law. To note a couple of examples:
Integrated vs. First Bank–the Questions Presented make the petition a clear loser on its face. QP1 suggests that Alice and other recent 101 cases were based on a faulty premise that everyone overlooked. QP2 and QP3 are just rearguing the appeal.
In Smartflash, the petition itself was well written, but the brief in opposition was devastating. (Both are available at this link: link to supremecourt.gov ). As interesting as the questions might be, Smartflash wasn’t the case to bring them to the Supreme Court.
Leon Stambler — I haven’t read the briefs, but the “section 144 prohibits Rule 36 in PTO cases” argument has been debated ad nauseam on this blog, and (though I may ultimately eat these words) at this point it’s probably fair to assume that the Supreme Court isn’t interested in the argument.
[I]t’s probably fair to assume that the Supreme Court isn’t interested in the argument.
That is my Bayesian prior as well, although I thought the same about the separation of powers challenge to IPRs before the Court took Oil States.
Me too re: Oil States, hence the reference to potentially eating my words. Fpr Oil States think the Supreme Court may have decided that the issue wasn’t going away, so might as well grant one of the better-drafted petitions. Or maybe the Supreme Court’s level of interest changed after Justice Gorsuch arrived.
Having glanced at the Apple/Samsung reply, it is nowhere near “devastating” as you suggest.
Your “fair to assume not interested” comment actually supports the point that I presented (even as you appear to suggest the opposite).
I’m happy to agree to disagree re: “devastating.” Others can judge for themselves.
I have seen your past posts.
I am more than than comfortable with disagreeing with you.
as any anonymous internet commenter would be
And yourself…? How are the shards of your former glass house?
same. obviously.
Integrated vs. First Bank–the Questions Presented make the petition a clear loser on its face. QP1 suggests that Alice and other recent 101 cases were based on a faulty premise that everyone overlooked.
Being s00per d00per “clever” to the point where you can smell the desperation 100 miles away is a feature, not a bug, for the patent maximalists.
Now they might actually have to try to understand section 101 jurisprudence. Which is really really really hard! So hard. Almost impossible really. Except that 99% of the cases are drop de@d simple.
Malcolm’s “version” of “understanding” is as simple as it is wrong.
To Malcolm, that is a feature.
That he banters with his usual nonsense of “maximalist” only shows how little his actual understanding of innovation and legal mechanisms of protecting innovation is.
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