Supreme Court 2019-2020: Introduction to the Term’s Patent Cases

by Dennis Crouch

The Supreme Court heard oral arguments this week in NantKwest (attorney fees for PTO in §145 actions) – and I provided my expectation that the Court will affirm the Federal Circuit’s no-attorney-fees holding. The Court has one other patent case on the merits calendar Thryv, Inc., fka Dex Media, Inc. v. Click-To-Call Technologies, LP,  No. 18-916 (appellate jurisdiction over challenge to PTO’s finding of no time-bar under §315(b)).  Click-to-Call is set for oral arguments December 9, 2019.

Petitions Denied: A number of petitions that were pending last week have now been denied by the court:

  1. Acorda Therapeutics, Inc. v. Roxane Laboratories, Inc., No. 18-1280 (obviousness and secondary indicia)
  2. Hyatt  v. Iancu, No. 18-1285 (“Whether MPEP § 1207.04 violates patent applicants’ statutory right of appeal following a second rejection.”)
  3. Glasswall Solutions Ltd. v. Clearswift Ltd., No. 18-1448 (eligibility on the pleadings; Berkheimer question)
  4. StrikeForce Tech., Inc. v. SecureAuth Corp., No. 19-103 (Berkheimer question)
  5. IBG LLC  v. Trading Technologies Int’l., Inc., No. 19-120 (definition of  “technological invention” for CBM)
  6. Zimmer, Inc. v. Stryker Corp., No. 18-1549 (is negligence enough for treble damages?)
  7. Xitronix Corp. v. KLA-Tencor Corp., No. 19-58 (Federal Circuit jurisdiction over Walker Process antitrust claims)
  8. Senju Pharma. Co., Ltd. v. Akorn, Inc., No. 18-1418 (propriety of R.36 judgments; obviousness)
  9. Imperium IP Holdings (Cayman), Ltd. v. Samsung Electronics Co., Ltd., No. 19-101 (reviewing jury verdict and 7th Amendment)
  10. Arunachalam v. International Business Machines Corp., No. 19-5033  (low quality)
  11. Huang v. Huawei Tech. Co., Ltd., No. 18-1275 (low quality)

Note here that a couple of cases asking Berkheimer style questions were denied — suggesting the likely outcome in Berkheimer.

Speaking of Section 101 — there are a number of pending petitions on the subject. We are particularly waiting for the Solicitor General to provide the Supreme Court with its input in Berkheimer and Vanda.  I had expected those to be filed by this week — they are not yet filed.

  1. HP Inc., fka Hewlett-Packard Company v. Steven E. Berkheimer, No. 18-415 (fact-law divide in eligibility) (waiting for views of Solicitor General)
  2. Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals Inc., No. 18-817 (threshold of a natural phenomenon)  (waiting for views of Solicitor General)
  3. Trading Technologies International, Inc. v. IBG LLC, No. 19-353 (patentability of an improved user interface)
  4. Garmin USA, Inc., et al. v. Cellspin Soft, Inc., No. 19-400 (Berkheimer questions)
  5. Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, No. 19-430 (did the Supreme Court mean to invalidate all diagnostic methods on eligibility grounds?)
  6. Power Analytics Corporation v. Operation Technology, Inc., No. 19-43 (Has the Federal Circuit correctly implemented the standards for patent eligibility)

Other pending petitions:

  1. Atlanta Gas Light Company v. Bennett Regulator Guards, Inc., No. 18-999 (same question as Click-to-Call); Superior Communications, Inc. v. Voltstar Technologies, Inc., No. 18-1027 (same question as Click-to-Call); Arris International Limited v. ChanBond, LLC, et al., No. 19-455 (same question as Click-to-Call)
  2. 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.”)
  3. Eli Lilly and Company v. Erfindergemeinschaft UroPep GbR, No. 18-1515 (functional single step claim and Halliburton (1946))
  4. Technology Properties Limited LLC v. Huawei Techs. Co., Ltd., No. 19-324 (“prosecution history disclaimer” and separation of powers)
  5. Regents of the University of Minnesota v. LSI Corporation, No. 19-337 (state sovereign immunity against IPR challenge)
  6. Medtronic, Inc. v. Mark A. Barry, No. 19-414 (when is a process-invention “ready for patenting” so that a public use or offer to sell would create a bar to patentability)
  7. Time Warner Cable, Inc., et al. v. Sprint Communications Company, L.P., No. 19-211 (damage apportionment; scope of written description)
  8. Brigham and Women’s Hospital, Inc v. Perrigo Company, No. 19-450 (setting aside jury verdicts)
  9. Neology, Inc. v. International Trade Commission, et al., No. 19-445 (due process — is it proper to invalidate a patent without first notifying the patentee of the “specific invalidity challenge posed” and allow for an opportunity to be heard)
  10. Straight Path IP Group, LLC v. Apple Inc., No. 19-253 (R.36 judgments on pure issues of law is a due process violation).
  11. Princeton Digital Image Corporation v. Adobe Inc., No. 18-1343 (impact of a consent judgment on appellate power)

A few petitions likely to be filed soon:

  • Intel Corporation v. Continental Circuits LLC (claim construction)
  • Cisco Systems, Inc. v. SRI International, Inc. (eligibility)
  • Kaneka Corporation v. Xiamen Kingdomway Group Company (Did this R.36 affirmance violate the patentee’s Constitutional right — 5th & 7th Amendments; and Article I, Section 8, Clause 8)

3 thoughts on “Supreme Court 2019-2020: Introduction to the Term’s Patent Cases

  1. 2

    At least as of 1:35 EDT today, there is still no solicitor general response showing up on the SCotUS website in either Vanda or Berkheimer. Pity. I was also hoping for something to be filed this week (although I suppose that there is probably a delay between when it is submitted and when it posts to the SCotUS website, so maybe it will be there early next week).

    1. 1.1

      I do not think that just because the result is cert denial, that the underlying matter is actually “confirmed” in accord with the Dowd article.

      To confirm, the Court would need to accept cert and render an opinion in accord with the suggestions of the article. Denial of cert only means that the Court would neither confirm nor deny the matter.

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