Supreme Court End of Term Updates

by Dennis Crouch

The Supreme Court decided only two patent cases this term.  Helsinn is somewhat important for many patentees and certainly the PTO; while Return Mail more narrowly focuses on the role of Federal Government agencies in challenging patents:

  • Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 139 S.Ct. 628 (2019) (non-public sales are still “on sale” under the America Invents Act (AIA) rewriting of 35 U.S.C. 102).
  • Return Mail, Inc. v. United States Postal Service, et al., 139 S.Ct. 397 (2019) (IPR statute does not provide for petitions filed by the Federal Gov’t.).

Certiorari has been granted in only one additional patent case: Peter v. NantKwest. That case asks whether the USPTO is permitted by statute to recover attorney fees associated with § 145 civil actions.

An applicant dissatisfied with the decision of the [PTAB] . . . may . . . have remedy by civil action. . . . The court may adjudge that such applicant is entitled to receive a patent for his invention, as specified in any of his claims. . . . All the expenses of the proceedings shall be paid by the applicant.

35 U.S.C. § 145. In this case Laura Peter, USPTO Deputy Director, is the named petitioner on behalf of the Government, standing in for Dir. Iancu who has a conflict of interest in the case. (Irell & Manella represents NantKwest, and Iancu was managing partner at Irell when the representation began.)

In many other countries, litigation losers commonly pay the attorney fees of the victor.  One argument against that approach is an access-to-justice problem — parties without much money will not be able to find representation if there is a good chance that they’ll have to pay the other-side’s attorney fees upon losing.  In its amicus brief supporting the Government, R Street (Charles Duan) argued that only rich pharmaceutical companies are bringing these cases. “There is thus little reason to believe that those additional expenses will greatly affect the strategic calculus of those patent applicants likely to make legitimate use of § 145.”

As R Street‘s brief outlines, § 145 are used rarely — usually for the most potentially valuable pharmaceutical patents – with top lawyers handling the case (such as Irell & Manella).  The real shift from the outcome may come from the USPTO — if it knows someone else is footing the bill, the USPTO may fight these cases harder.

Upcoming Soon: The Supreme Court has one final conference set this term (June 20) and is slated to rule on a number of pending petitions for certiorari:

  • InvestPic, LLC v. SAP America, Inc., No. 18-1199  (physicality requirement for eligibility);
  • Romag Fasteners, Inc. v. Fossil, Inc., et al., No. 18-1233 (profit disgorgement under the Lanham Act);
  • Ariosa Diagnostics, Inc. v. Illumina, Inc., No. 18-109 (prior art date for unclaimed disclosures in a provisional filing);
  • Texas Advanced Optoelectronic Solutions, Inc. v. Renesas Electronics America, Inc., fka Intersil Corporation, No. 18-600 (infringement associated with and “offer” made in the US to actually “sell” a product in a foreign country);
  • Dex Media, Inc. v. Click-To-Call Technologies, LP, et al., No. 18-916 (Is the 315(d) time-bar triggered by prior lawsuits that were 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). .

Rather than guessing at the court’s potential decisions as to whether or not to grant certiorari, I’ll just wait a few days on these to know the outcome.

We also have the beginnings of a heap of new cases for consideration next term:

  • HP Inc., fka Hewlett-Packard Company v. Steven E. Berkheimer, No. 18-415 (fact-law divide in eligibility);
  • Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals Inc., No. 18-817 (threshold of a natural phenomenon);
  • Google LLC v. Oracle America, Inc., No. 18-956 (copyright for software interfaces).
  • Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., et al., No. 18-1280 (obviousness and blocking patents)
  • Hyatt v. Iancu, No. 18-1285 (reopening prosecution after successful appeal; “Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.”);
  • Senju Pharmaceutical Co., Ltd., et al. v. Akorn, Inc., No. 18-1418  (R.36 judgments; holistic approach to obviousness)
  • Glasswall Solutions Limited, et al. v. Clearswift Ltd., No. 18-1448 (eligibility on the pleadings; Berkheimer question);
  • Enplas Display Device Corporation v. Seoul Semiconductor Company, Ltd., No. 18-1530 (can foreign sales qualify as induced infringement of a U.S. patent — if defendant knew that “the components might be incorporated by third parties into infringing products that might be sold by other third parties in the United States.”)
  • Zimmer, Inc., et al. v. Stryker Corporation, et al., No. 18-1549 (more on treble damages — is negligence enough?)

This last set of cases won’t see any light until at least October 2019 when the Court returns from its summer break.

31 thoughts on “Supreme Court End of Term Updates

  1. 7

    Another addition for this list:

    Allen v. Cooper (propriety/reach of legislative law making)

  2. 6

    I wish there had been more academic support for the Supremes taking cert in Ariosa Diagnostics, Inc. v. Illumina, Inc., No. 18-109 (prior art date for unclaimed disclosures in a provisional filing) since it creates such absurd Congressionally-unintended variations in 103 prior art dates with claim changes.

    1. 6.1

      Seems like low-hanging fruit for a statutory correction as long as there are Congresscritters with their fingers in the soup already.

      1. 6.1.1

        As understood, unless a patent law statutory fix is completely unopposed and can get approved for the “consent calendar” it would probably need to get attached to other, major, patent legislation supported by those with enough interest and influence. As for example the number of small statutory fixes made as part of the big AIA legislative package.
        For example, when a Fed. Cir. panel decision made a Congressionally unintended narrowing interpretation of the reexamination statute some years ago it took 5 years to get the non-controversial legislative fix for it.

        1. 6.1.1.1

          Are you basing your understanding on “mega-fixes?”

          Other flavors of Law have substantive legislative changes occur all the time.

          Quite in fact, the takeaway that I have from all that I have read and watched is that the degree of focus by Tillis et al shows a very high probability of new patent law before the end of this Legislative term.

  3. 5

    “Certiorari has been granted in only one additional patent case: Peter v. NantKwest. That case asks whether the USPTO is permitted by statute to recover attorney fees associated with § 145 civil actions.”

    It looks like another poison arrow aimed at Hyatt.

    1. 5.1

      Re: “another poison arrow aimed at Hyatt?
      Surely you jest. Anyone who can pay all the excess claim fees and attorney fees for thousands of new claims added to hundreds of pending applications, plus several lawsuits and a Sup. Ct. appeal, is not going to be even fazed by the low hourly rates of a PTO Solicitor defending his § 145 civil actions.

      1. 5.1.1

        Paul — I took No One’s “poison arrow” comment to mean; not that Hyatt could not afford to fight; but that Hyatt is yet again having to unnecessarily do so (for what is right / what he believes in).

        Relatedly, I’m not the first to suggest it, but it does seem as if the Patent Office is waiting for Gil to die; figuring (wrongly I hope) that his heirs will either give up his fights; or at least not fight so hard.

        1. 5.1.1.1

          ? Pro Say, were you adressing Hyatt v. Iancu, No. 18-1285 (attacking reopening prosecution after successful appeal) rather than Peter v. NantKwest? If those were Multiple PTO re-openings for delays after appeals I also wish him good luck as a torchbearer on APA and due process grounds.
          But by no means all of his delays were due to the PTO, and all of them will extend the terms of his patents when they finally issue, for no matter how many more years, since they are applications filed under the old patent term law even though claims were re-written generations later to cover current products, a la Lemelson.

          1. 5.1.1.1.1

            As you snipe from the sidelines, you wish “good luck.”

            This comes across as worse than disingenuous.

            Or should justice only be meted out to those we like? Sir Thomas More has a thing to say about this.

      2. 5.1.2

        Whether or not someone (individual or even select group( can “handle” a hit is a rather P00R way of evaluating a legal mechanism that applies across the board.

        Further, I can easily see the Office “tacking on” all of the costs of the “Purely-Hyatt Dedicated” internal resources that have been “operating” (if ‘delay mode’ can be seen as “operating”) for years.

        1. 5.1.2.1

          No one could rationally “easily see” how the Solicitor could “tack on” examining corp examination costs to the District Court litigation costs of a § 145 civil action under that statute.

          1. 5.1.2.1.1

            Your feelings are noted.

  4. 4

    Should we have an “honorable mention” of Supreme Court cases that while not dealing with “patents per se” provide some possible patent-related impacts?

    If so, certainly the cases of Schein and California Franchise Tax Board v. Hyatt make that short list.

    Prior to recent Congressional activity (specifically, the Tillis hearings), I would have put even money on the Court versus the Legislature as being the one to cut through the current Gordian Knot of 101 (mis)jurisprudence.

    Odds though have shifted dramatically to the Legislature being the one to make changes.

    1. 4.1

      Odds though have shifted dramatically to the Legislature being the one to make changes.

      If anything remotely resembling the current br@ indead revision to Section 101 passes, it will be declared unconstitutional within 18 months.

      Speaking of which, isn’t it so very odd that the shrieking maximalist whiners who are perpetually “confused” about the current interpretation of 101 and who complain about how “vague” it all is aren’t presently demanding that a coherent non-circular definition of the term “useful” be provided? Or that a reasonable non-face-palming definition of the term “structure” be provided?

      Of course, it’s not odd when one appreciates that all that is happening here is an attempt to temporarily turn the clock back so the world’s worst attorneys can get their grift on.

      The important thing, of course, is to keep the historical record clear about what is happening and why, who supported this debacle, who sat on their hands and watched it happen, and who pointed out the problems in real time. That way we’ll know who to blame when the cr-@-p starts hitting the fan and the public learns that companies (some of them comprised solely of patent attorneys!) can now use the patent system to control (and extort payment for, through the Federal courts) correlations, including medically relevant correlations applied to data that was obtained using prior art methods. And we’ll know who to blame when the public learns that companies (some of them comprised solely of patent attorneys!) can now use the patent system to control (and extort payment for) who gets to use prior art detection methods to detect natural products inside our own bodies, and everywhere else.

      Right now the short list includes Kevin Noonan, Dennis Crouch, Jason Rantanen and Jeffrey Lefstin. All of these people have been asked to step up and explain themselves. But they won’t. Their choice. And lo and behold, none of them is poor or in danger of losing their health insurance. As Noonan pointed out, these folks will benefit no matter what happens. Surprised? Don’t be.

      1. 4.1.1

        it will be declared unconstitutional within 18 months.

        I would love to make that bet.

        As for definition of useful, that’s already there: the Useful Arts.

        As to “keep the records clear,” your Internet Toughguy schlock is noted (and also looking forward to that “Book” of yours )

        1. 4.1.1.1

          Tell everyone exactly what is and is not included within the term “useful arts”, Bildo. It would be shocking to discover that the maximalists are just moving the deck chairs around with respect to what can be protected with a patent. So shocking …

          So go ahead, Mr. “Void for Vaguness”. Maybe for bonus points you can tell us how Clarence would determine what the term means.

          1. 4.1.1.1.1

            Anything not Fine Arts.

            There, that was easy.

            1. 4.1.1.1.1.1

              So tell me when your “Book” is coming out.

            2. 4.1.1.1.1.2

              Anything not Fine Arts.

              Anybody else get the joke here?

        2. 4.1.1.2

          I’m being aggressive with the timing but the end result (unconstitutionality) is guaranteed absent some major changes to the statute that’s been bandied about (and Mayo ultimately rests on the Constitution so Congress can’t sweep it away by statute). Let’s say 36 months and $5,000.00? And if I’m off by a year, you get half that. I can’t be blamed if the courts move slow.

          1. 4.1.1.2.1

            Even better – why don’t you provide a cogent legal argument for this supposed ruling of unconstitutionality?

      2. 4.1.2

        Or that a reasonable non-face-palming definition of the term “structure” be provided?

        Maybe they are waiting for you to supply that “objective physical structure” for the mythological “generic computer.”

        (since we all know that you provide that same level of exacting detail that you want from others )

  5. 3

    Imagine for once of the sentence read: ” In its amicus brief supporting the Government, R Street (Charles Duan) argued that only rich [pharmaceutical] SILICON VALEY companies are bringing these cases. ”

    would it make a difference?

  6. 2

    Romag Fasteners, Inc. v. Fossil, Inc., et al., No. 18-1233 (profit disgorgement under the Lanham Act)

    I hope they take this one. There has been a major Circuit split on this issue for thirty years, and that was compounded by certain amendments to the Lanham Act in 1999, which some courts believe changed the law on this issue and some do not.

  7. 1

    “One argument against that approach is an access-to-justice problem — parties without much money will not be able to find representation if there is a good chance that they’ll have to pay the other-side’s attorney fees upon losing.”

    Say what? The problem is not being unable to find representation – if the party can pay its lawyers, it will have representation.

    The problem is the party’s concern that it may lose and be unable to afford the lawyers’ and expert fees for the other side, and therefore be reluctant to bring its case in the first place.

    1. 1.1

      The traditional rationale for the American rule has broken down. With plaintiff’s expenses in the tens of millions of dollars the doors to our courthouses have been shut to all but the super wealthy. With expert fees and ESI running several million, no upside IPRs, and 50,000+ hours of attorney work inventors on the U.S. cannot obtain effective contingency representation.

      We would be better off with loser pays.

      It is sad that our nation that was founded on equal justice for all has become the epitome of the privileged aristocracy our founders renounced.

      1. 1.1.1

        Your complaint runs true to any litigation and is not a function of the specific litigation being patent litigation (per se).

        The danger here is that a fundamental root cause analysis won’t be properly done on “the problem,” and instead patent rights will be denigrated, or “alternatives” will be crafted (and those alternative “cures” will be worse than the malady being attempted to be corrected). Witness: executive branch adjucations that remove the full force and weight of all aspects of a granted property right.

        1. 1.1.1.1

          I know. Progressive elites and conservative elites will never countenance a speedy trial by a jury of the People.

    2. 1.2

      problem is the party’s concern that it may lose and be unable to afford the lawyers’ and expert fees for the other side,

      That would be in addition to the relatively known, chosen and more controlled costs of one’s own attorneys.

      With a “loser pays,” what this does is fortify the Efficient Infringer’s relative strength of being a monied and established entity. Such an entity can leverage probabilities and any one instance is not likely to be a “bet the company” situation – quite opposite the scenario of the putative little guy who only has the protection of a patent for his disruptive innovation and often does not have the basis of either a large bankroll or established means of competing in non-innovation factors.

      For every instance of an innovator that can/has bankrolled the “big fight,” there are likely dozens who cannot, while most all of the Efficient Infringer types can easily not only bankroll any particular fight, may well see “piling on” as competitive strength.

      After all, such “piling on” of legal costs matches the “Armageddon” approach of patent stockpiling and Game of Kings that the established entities enjoyed (until that business model was wrecked by non-practicing entities (that THEN generated the “0h N0es Tr011s” propaganda).

Leave a Reply

Your email address will not be published. Required fields are marked *

You can click here to Subscribe without commenting

Add a picture