Supreme Court Patent Rundown

by Dennis Crouch

Two patent cases are pending before the Supreme Court on their merits:

  • Return Mail, Inc. v. United States Postal Service, No. 17-1594 (Can a US Gov’t entity petition for AIA review?)
  • Iancu v. NantKwest, Inc., No. 18-801 (Are attorney fees automatically shifted in Section 145 Civil action to obtain patent?)

Neither of these cases address core patent law issues and so their outcome will have little impact on patent law practice.

The Court has indicated some interest in four additional cases — requesting the views of the Solicitor General in those cases:

  • RPX Corporation v. ChanBond LLC, No. 17-1686 (What level of injury-in-fact is required to appeal of a PTAB IPR final decision?)
  • Ariosa Diagnostics, Inc. v. Illumina, Inc., No. 18-109 (What is the prior art date for unclaimed disclosures in provisional filing?)
  • Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., fka Intersil Corporation, No. 18-600 (Is an “offer to sell” infringement as of the date of the offer or the date of the proposed sale?)
  • HP Inc., fka Hewlett-Packard Company v. Berkheimer, No. 18-415 (Should patent eligibility be treated as a pure question of law?)

These four are the most likely cases to be heard by the court. However, the Solicitor General often takes a full-year to file a brief — meaning that the certiorari question may well be pending until the September 2019.

One additional case can be seen as a follow-on to the RPX standing-to-appeal question:

  • JTEKT Corporation v. GKN Automotive Ltd., No. 18-750 (direct competitor but no injury-in-fact sufficient to provide appellate jurisdiction)

Note here that JTEKT adds the nuance of being a direct competitor while RPX is ostensibly not a competitor.

In addition to the standing question, several pending petitions also address the scope and review of time-bar decisions under Section 315(b)(“An inter partes review may not be instituted if the petition requesting the proceeding is filed more than 1 year after the date on which the petitioner, real party in interest, or privy of the petitioner is served with a complaint alleging infringement of the patent.”)

  • RPX Corporation v. Applications in Internet Time, LLC, No. 18-1075 (May a PTO 315(b) time-bar decision be appealed — or is it subject to the 314(d) “no appeal” rule?)
  • Dex Media, Inc. v. Click-To-Call Technologies, LP, et al., No. 18-916 (Is the 315(d) time-bar triggered by prior lawsuits dismissed without prejudice?)
  • Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., No. 18-999 (same)
  • Superior Communications, Inc. v. Voltstar Technologies, Inc., No. 18-1027 (same)

The final pending petition regarding PTAB reviewability focuses on sovereign immunity:

  • Saint Regis Mohawk Tribe. et al. v. Mylan Pharmaceuticals, Inc., et al., No. 18-899 (May tribal sovereign immunity may be asserted to bar IPR review of patents owned by the tribe?)

I mentioned the Berkheimer eligibility case above. An important follow-on case is TS Patents.

  • TS Patents LLC v. Yahoo! Inc., No. 18-1114 (Is a R. 12(b)(6) dismissal for lack of eligibility appropriate when the complaint and patent both assert novel technical improvements?)

An additional eligibility cases goes to the core of the Supreme Court’s eligibility analysis and asks whether method-of-treatment claims are always patent eligible?

  • Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals Inc., No. 18-817 (presumptive eligibility of method-of-treatment claims)

Two final pending cases have to do with defining prior art and priority:

  • Macor v. United States Patent and Trademark Office, No. 18-1072 (What is the standard for determining whether prior art is “analogous”?)
  • Natural Alternatives International, Inc. v. Iancu, No. 18-1144 (Do amendments to a filing relied upon for priority impact the already-claimed priority?)

Overall, this is an interesting group of cases that address a set of important questions. Unfortunately, the two least impactful cases are the ones the court has agreed to hear.

37 thoughts on “Supreme Court Patent Rundown

  1. 7

    Regarding the TS Patents case:

    What’s “technical” about writing instructions which govern what information to display on a prior art display device hooked up to the Internet? If writing instructions (e.g., by typing into a keyboard) is “technical”, can I claim the method of writing the instructions? Maybe someone should ask Fraud Iancu about this.

    And are those instructions actually recited in the claim? Or does the claim merely recite the desired result?

      1. 7.1.1

        Answer the questions. After all, Billy, you’re a very very serious person.

        This issue is going to the Supreme Court, after all. Either writing instructions for applying logic to data is “technical” or it isn’t. Typing numbers into a calculator to solve a math problem might be “technical”, too.

        What do you think? Just tell everyone, unless you’re ashamed or afraid to do so. Is writing instructions for carrying out a logical operation “technical” in the context of patent law?

        Slightly off topic: is “computer science” actually “science”? Or is more like math … on a computer?

        Now if you’ll excuse me I have to go teach my comment science class. Thirty students this semester. Thank goodness I took the grading science course last year (got an A-).


          Maybe I have already answered your questions — and it’s just a bit too “nuanced” for you.


              I HAVE answered them – many times now Malcolm.

              The nuance (that you yet again cannot grasp) is that your questions are answered with the understanding of the exceptions to the judicial doctrine of printed matter.

              It’s funny that I have provided to you an easy to understand, and in direct English Set Theory explication, and while I have repeatedly invited you to discuss that explication, you have done nothing but run away (and repeat your trite and tired points as if counter points and such had never been presented – in your inimical Internet-Style shoutdown, drive-by monologue type of propaganda spreading.

              This too is an area that you had once upon a time attempted to do more than mouth your drive-by and you ended up making admissions against your interest in knowing and understanding the controlling law in this area.

              Instead of wanting things from others. the onus is (and long has been) on you.

              (cue the vapid “I don’t understand what you are saying” excuse…)

  2. 6

    The published comments regarding the revised subject matter eligibility guidance now include comments from the day of the deadline.

    If anyone bothers picking through the individuals’ comments for the ones which are not copypasta, it’d be really nice of you to share your finds.

    1. 6.1

      Also, so far there’s exactly one lonely individual comment regarding computer-implemented functional claim compliance with 112. If that list remains resoundingly empty, it should forever be linked in response to comments of ‘if only the office would handle claims like these under 112 instead of 101’.

      1. 6.1.1

        ..and even that single one comment (Robert Armitage) currently is a broken link (leads to a 404 message).

      2. 6.1.2

        Still “404” on the Armitage, but a host of industry and the like are now posted (and accessible).

    2. 6.2

      It’ll be interesting to see if Iancu actually cares about the comments that are critical of the guidelines. I’m guessing he does not, given that he obviously lives in a bubble and knows that the only way he can please his eternally frustrated “base” is to engage in an illegal fraud at the public’s expense.

      1. 6.2.1

        97% of the critical comments are nothing but the Efficient InFringer Front mechanism.

        The words “consider the source” could not be more opportune.

  3. 5

    While not a patent law case, Kisor v. Wilkie, no. 18-15, is potentially relevant to patent practitioners, as it concerns judicial deference to an agency’s interpretation of its own regulations.

    In particular, the Petitioner asks whether the Court should overrule Auer v. Robbins, 519 U.S. 452 (1997) and Bowles v. Seminole Rock & Sand Co., 325 U.S. 410 (1945).

    As background, the Court’s pre-APA suggestion in Seminole Rock that “the ultimate criterion is the administrative interpretation, which becomes of controlling weight unless it is plainly erroneous or inconsistent with the regulation,” Seminole Rock, 325 U.S. at 414, has, over time, evolved into a doctrine of judicial deference under which a court “will enforce an agency’s interpretation of its own rules unless that interpretation is ‘plainly erroneous or inconsistent with the regulation.’” Decker v. Northwest Environmental Defense Center, 568 U.S. 597, 617 (2013) (Scalia, J., concurring in part and dissenting in part) (quoting Seminole Rock, 325 U.S. at 414).

    1. 5.1


      Are these types of cases easily distinguishable based on the fact that executive agencies have a wide range of “deference” due associated with the level of authority that such agencies may possess (and the Patent Office does NOT posses rule-making authority – see Tafas)….?

      1. 5.1.1


        Great question. You’re referring to Tafas v. Doll, where the Federal Circuit outlined that “[b]efore a reviewing court grants Chevron deference, it must first determine whether the agency’s interpretation of the statute was made pursuant to ‘a congressional delegation of administrative authority.'” Tafas v. Doll, 559 F.3d 1345, 1353 (Fed. Cir. 2009) (quoting Adams Fruit Co. v. Barrett, 494 U.S. 638, 649 (1990)).

        As Paul noted below, the issue of judicial deference under Auer / Seminole Rock to an agency’s interpretation of its own regulations is different from (although it can have interplay with) the issue of judicial deference under Chevron to an agency’s interpretations of a statute.

        As usual, David Boundy is the go-to source for anything at the intersection of patent law and administrative law, and he discusses Chevron and Auer deference in the first part of his recent article series (David E. Boundy, The PTAB is Not an Article III Court, Part 1: A Primer on Federal Agency Rulemaking, American Bar Ass’n, Landslide, vol. 10 no. 2 (Nov-Dec 2017)), and discusses potential application of such deference doctrines in a patent law context in the second part (David E. Boundy, The PTAB is Not an Article III Court, Part 2: Aqua Products v. Matal and Chevron Deference, American Bar Ass’n, Landslide (the magazine of the ABA Intellectual Property Law Section), vol. 10 no. 5 (May-Jun 2018)).

        With respect to the specific question here, a first order answer might be that Auer / Seminole Rock generally operates with respect to an agency’s interpretation of a promulgated regulation, but if the agency lacked authority to promulgate the regulation, the regulation itself could be challenged.

        However, the question of whether the scope of delegated authority has an impact on judicial deference to an agency’s interpretations of its own regulations is more nuanced, and hasn’t really been squarely addressed by the Court to my knowledge. Notably, this analysis is complicated by the fact that Auer / Seminole Rock deference doesn’t even really have an articulated underpinning.

    2. 5.2

      JCD, the present Sup. Ct. majority might not like either one, but isn’t “an agency’s interpretation of its own rules unless that interpretation is ‘plainly erroneous or inconsistent with the regulation” a somewhat different issue from Chevron deference to a STATUTES interpretation by an agency?

      1. 5.2.1


        Great point. Various members of the Court of late do not seem particularly enamored with one or both doctrines. It will be interesting to see what the Court does in Kisor, and it will likewise be interesting to see what the Court does the next time it has an opportunity to address Chevron deference.

        Notably in this regard, in a recent dissenting opinion Justice Gorsuch referenced “mounting criticism of Chevron deference,” expressed disapproval for an approach of “throwing up our hands and letting an interested party—the federal government’s executive branch, no less—dictate an inferior interpretation of the law that may be more the product of politics than a scrupulous reading of the statute,” and expressed approval for “rightly afford[ing] the parties before us an independent judicial interpretation of the law.” BNSF Railway Company v. Loos, no. 17-1042, slip op. at 9 (Mar. 4, 2019) (Gorsuch, J., dissenting).

  4. 4

    Dennis, Excellent list. Thank you very much! I have been following all the standing to appeal cases from the FC for last couple of years. In the pending cert petition RPX Corporation v. ChanBond LLC, No. 17-1686, I hope the Court will revise the proposed cert. question: What level of injury-in-fact is required to appeal of a PTAB IPR final decision? because under the long line of cases starting with Federal Communications Comm’n (FCC) v. Sanders Brothers Radio Station, 309 U.S. 470 (1940) (8:0) (Roberts, J.) no such requirement is necessary for a finding of standing to appeal from an adverse final agency adjudication.

    1. 4.1


      I will say this: you are persistent in your efforts to bootstrap into the Article III forum.

      Perhaps a simple matter for you is to note your own long list of adversity and separate out any adversity against a right that may be at stake for the entity versus merely a known non-Article III forum right to lodge a “complaint” against the actual rights holder.

      It’s kind of important to keep in mind BOTH that Congress knowingly set up part one of the mechanism to be explicitly outside of an Article III standing requirement (which impugns the attempt that you do of having wholesale the mechanism reflect an automatic Article III sufficiency), as well as understand just whose rights ARE under review in that non-Article III forum.

      It’s bad enough that we have had the Supreme Court move the goalposts from patents being a Private personal property (something NOT changed by Congress, even in the AIA) to being a Public franchise property, you want to have created some sui generis mirror “right” belonging to ANY member of the public.

  5. 3

    The above pending cert petition with requested views of the Solicitor General in RPX Corporation v. ChanBond LLC, No. 17-1686 (What level of injury-in-fact is required to appeal of a PTAB IPR final decision?) is the subject of extensive substantive case law comments in the below March 11, 2019 Patently-O blog “Appellate Standing, Biosimilars, and the Federal Circuit,”

  6. 2

    (Do amendments to a filing relied upon for priority impact the already-claimed priority?)

    Strange question. Seems like the only correct answer is “It depends on the amendment and the text of the claims in the later filed case but, in some instances, of course the priority claim can be affected.”

    1. 2.1

      Malcolm, the item here is the subject of the recent “Ex Post Breaks” thread.

      This has precious little (if anything) to do with actual claims (and zero to do with claim amendments), and everything to do with application to application chain treatment.


              Maybe too nuanced for you, but there was nothing in the way Crouch wrote the item that even begins to lend itself to your excuse.

              All we have is the usual Malcolm anti-patent “jump without looking” and now (since you are obviously b0red), you engaging in your typical mindless drive-by ad hominem dumps.

    1. 1.1

      9,280,547: “This hierarchical list is collapsible, so that the web browser does not have to display the entire hierarchy at once.” Petitioner asserts that “the invention improves network proficiency.”

      8,799,473: parallel processing of tasks initiated from a web browser — an improvement over prior technology

      8,713,442 and 8,396,891: “dynamic and instantaneous technical solution for sharing and un-sharing files”

      1. 1.1.1

        How does a network even have “proficiency”? Anthropomorphic at best, nonsense at least.


          The more salient point is that these are technical and factual aspects that should not be dismissed at the 12(b)(6) stage. If it is nonsense, prove that in fact discovery.


            What’s “technical” about writing instructions which govern what information to display on a prior art display device hooked up to the Internet? If that’s “technical”, can I claim the method of writing the instructions?

            And are those instructions actually recited in the claim? Or does the claim merely recite the desired result?

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