The US Supreme Court has almost cleaned-up its patent docket for the October 2020 term. I still expect a decision at some point this week (by July 2) in Minerva Surgical, Inc. v. Hologic, Inc. focusing on the ongoing viability of assignor-estoppel. The court has already decided its one other patent-focused case for the term–United States v. Arthrex, 594 U. S. ___ (2021). In Arthrex, the court altered the power of the PTO Director beyond statutory limitations in order to preserve the PTAB’s constitutional authority during IPR proceedings. A number of parallel petitions had raised the same or similar questions to Arthrex. The Court vacated and remanded some cases back to the Federal Circuit “for further consideration in light of United States v. Arthrex, Inc.” For other cases, the court simply denied certiorari. There are also several Arthrex-follow-on petitions pending that have not yet been fully briefed. I expect these will also be denied.
The court also denied certiorari in TCL Communication v. Godo Kaisha IP Bridge 1, No. 20-1545. That case asked a couple of interesting questions regarding proof of literal infringement. The court allowed the patentee to make assumptions about the accused devices based upon admissions that the devices conform to certain industry standards.
The lone hold-over case is American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, 20-891 focusing on patent eligibility. A petition for certiorari was filed in that case back in December 2020. After briefing was completed, the Supreme Court then requested the views of the U.S. Government on whether the court should grant certiorari. Those views will come from the US Solicitor General, but probably will not be submitted until November or December 2020. The CVSG signals some amount of interest, making this case the most likely to be granted cert next year. Am. Axle asks two questions:
- What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?
- Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?
A follow-on petition asks the identical questions in iLife Technologies, Inc. v. Nintendo of America, Inc.
New cases have already begun to line-up for consideration next term, starting at the end of September 2021:
- Standing: Trademark – Standing to Cancel a TM Registration – Naked TM, LLC v. Australian Therapeutic Supplies Pty. Ltd.; See also Kaszuba v. Hirshfeld (similar issues, pro se).
- Standing: Prisoner’s right to protect his patent rights via court action – Tormasi v. Western Digital Corp.
- Preclusion: Ongoing viability of the Kessler Doctrine as an expansion of traditional issue and claim preclusion. PersonalWeb Technologies, LLC v. Patreon, Inc.
- Anticipation: Is a method claim expressly requiring use of a man-made protein anticipated by use of a naturally-occurring version of the protein. Biogen MA Inc., Petitioner v. EMD Serono, Inc.
- Due Process: Many of the patents cancelled via IPR had already been applied-for or issued prior to the America Invents Act of 2011. Does that “retroactive application … violate the Due Process Clause of the Fifth Amendment to the United States Constitution?” Ultratec, Inc. v. CaptionCall, LLC
- Writing Opinions: Does the use of Federal Circuit Rule 36 to summarily affirm decisions from the PTAB “without opinion” violate 35 U.S.C. § 144? Ultratec, Inc. v. CaptionCall, LLC (see alternative question on due process)
The court will likely act on these certiorari petitions within the first couple of weeks of the October 21 term. Each of these cases are interesting and important. Still, it is quite possible that the Court will not grant certiorari in any new patent case for the next year.