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.