Patent Law at the Supreme Court September 2021

by Dennis Crouch

So far, the Supreme Court has not granted certiorari in any patent cases for its 2021-2022 Term.  Still, there are a couple dozen cases pending that may offers some interest.  On September 27, 2021, the court is meeting privately for what is known as the “long conference” to decide the fate of the petitions for writ of certiorari that have piled-up over the summer.  There are also a host of additional petitions scheduled for a later conference or not yet scheduled.  Although the total number of petitions is down from last year, there is much more diversity since we have now largely moved past the appointments-clause issues.

Capacity to Sue: My favorite pending case is Tormasi v. Western Digital.  Tormasi is a convicted murderer and also a patentee seeking to enforce his disk-drive patent. The Federal Circuit held that Tormasi lacked the “capacity to sue” under Fed. R. Civ. Pro. 17(b).  That provision states that an individual’s capacity to sue is determined by “the law of the individual’s domicile.” Tormasi lives in New Jersey (state prison) and the administrative rule in N.J. bars a prisoner from conducting business activities without the Wardon’s approval.  The courts held that his enforcement action is an “unauthorized patent monetization business” and thus that he has no capacity to sue.  Tormasi argues that this conclusion violates his due process and other constitutionally protected rights.  There are other standing-related cases pending in the trademark context: Naked TM, LLC v. Australian Therapeutic Supplies Pty. Ltd. (standing to petition cancel a TM registration); See also Kaszuba v. Hirshfeld (pro se, standing of USPTO to intervene in TM appeal).

Eligibility: The Supreme Court has shown the most interest in hearing American Axle & Manufacturing, Inc. v. Neapco Holdings LLC by Calling for the Views of the Solicitor General (CVSG).  I expect for the SG to file a brief by the end of calendar year 2021.  And, there is a good chance that the SG brief will support the petition. At that point, there would still be time for the Court to grant certiorari and decide the case before the end of June 2022. American Axle asks two questions:

1. 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?

2. 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?

There are Am.Axle follow-on cases asking the same questions: iLife Technologies, Inc., v. Nintendo of America, Inc.;, Inc. v. Apple, Inc. (also raising 112/101 coordination issue). See also Mohapatra v. Hirshfeld (pro se)

Preclusion: I am generally interested in the concept of preclusion. This typically comes in the forms of issue and claim preclusion. In patent law, we also have the “Kessler doctrine,” which sits between the two.  PersonalWeb Technologies, LLC v. Patreon, Inc. challenges the ongoing viability of Kessler, especially as expanded by the Federal Circuit in recent cases.  Kessler allows for non-mutual issue preclusion even in cases where the particular issue was not actually litigated or decided.

Process-by-Product Claim: In Biogen MA Inc., Petitioner v. EMD Serono, Inc., the Federal Circuit found the claimed treatment method anticipated by use of a naturally occurring protein. But, the claims required use of a “recombinant” protein — i.e., genetically modified.   Can Biogen distinguish the prior art by simply adding a “man made” limitation? “Whether courts may disregard the express claim term “recombinant” so as to render a method-of-treatment patent anticipated—and thus invalid—in light of prior-art treatments that used the naturally occurring human protein, where it is undisputed that the recombinant protein was not used in the prior art?”

Printed Publication: A core patent law question is what can qualify as a printed publication under 35 U.S.C. § 102(a).  Centripetal Networks, Inc. v. Cisco Systems, Inc., asks whether a user-manual counts for a machine that costs $25,000. (The Federal Circuit said “yes, it counts.”)

Writing Opinions: A few years ago, I wrote a paper arguing that the Patent Act requires the Federal Circuit to actually write opinions when judging appeals from the USPTO. Although dozens of briefs have subsequently argued this point, the Federal Circuit has refused to make any statement regarding its ongoing practice of no-opinion R.36 judgments.  Ultratec, Inc. v. CaptionCall, LLC asks the Supreme Court to weigh in on the question of whether the use of Federal Circuit Rule 36 to summarily affirm decisions from the PTAB “without opinion” violates 35 U.S.C. § 144.  A second case, Bobcar Media, LLC v. Aardvark Event Logistics, Inc., also argues that R.36 decisions are improper, although relies upon Constitutional principles rather than statutory guidance.

IPR IssuesUltratec, Inc. v. CaptionCall, LLC (retroactive application of IPR to already issued patents). Mylan Laboratories Ltd., v. Janssen Pharmaceutica (appealing institution denials); Apple Inc. v. Optis Cellular Technology, LLC (appealing institution denials); Infineum USA L.P. v. Chevron Oronite Company LLC (post-arthrex timing issue)

Utility: Hu v. Hirshfeld, focuses on a heightened utility requirement that seems to appear when a patentee seeks rights covering an invention that pushes the bounds of traditional scientific principles.  Hu’s inventions, for instance, cover various ways to make use of quantum entanglement.  Hu argues that the court moved the standard from a preponderance of the evidence to something akin to “a statistical certainty.”

Indefiniteness: Rain Computing, Inc. v. Samsung Electronics America, Inc. focuses on the intersection of Sections 112(b)/112(f). The Federal Circuit uses an algorithmic approach: if a claim is interpreted under Section 112 and the specification fails to include corresponding structure, then the claim is invalid as indefinite.  Rain says ‘not so fast.’  The court is forgetting to ask the actual pertinent question: whether the scope is reasonably certain to a person of skill in the art.  The petition also argues that underlying issues of fact tending to show invalidity must be proven with clear and convincing evidence. Infinity Computer Products, Inc. v. Oki Data Americas, Inc. also raises an indefiniteness question — again arguing that the Federal Circuit took a shortcut in its analysis and refused to give deference to factual findings.

26 thoughts on “Patent Law at the Supreme Court September 2021

  1. 8

    Dennis, if I had to try to predict what current patent law issue is most highly likely to eventually obtain cert to to the Sup. Ct., it would be judicial decisions holding that any private contract involving a patent containing a designation of any legal forum anywhere can deprive parties of any right to any AIA or other post-grant in rem PTO administrative proceeding.

  2. 7

    OT but worth noting in IPWatchdog today is “Where Have All of the Ex Parte Appeals Gone? By Kate Gaudry on Sep 20, 2021.” The charts of the big swings and current downward trends are interesting, but the unusually substantive explanatory comments even more so.

    1. 7.1

      meh, I would not go so far as to say “unusually.”

      But yes, I tend to agree that the comments augment the article quite nicely.

  3. 6

    I wish there would be a case on the docket where the SCOTUS finally deals with the reality that the USPTO’s approach to skill level determination is to avoid determining the level of ordinary skill in the art.

    1. 6.2

      But, how many applicants ever file a declaration in a pending application file as to the 103 POSITA skill level for the invention subject mater which could provide a challenge at the Fed. Cir. that the PTO is ignoring that skill level in its 103 rejections?

      1. 6.2.1


        You misstate BOTH the issue and the required actions.

        There is NO need for applicants to do anything in view of what is required of the Office to establish what needs be established.

  4. 5

    You guys seen the dust up between the other main patent blogger and Josh Malone under “A Kinder, Gentler ‘Death Squad’”?

    It’s almost enough to give one hope that there may room for compromises in the future.

    1. 5.2

      “It’s almost enough to give one hope that there may room for compromises in the future.”

      The day is still young.

    2. 5.3

      That article makes the same point about the AIA 1oth I had made recently here:
      “The real story of the change to first-to-file is that much more is now prior art, including foreign filed applications as of their foreign filing date ..”

      1. 5.3.1

        Gene Quinn’s published rebuttal comment to Malone’s [and others] comments re patent law legislation:
        “That is your problem, Josh, you take extreme positions and then blame everyone else who takes a reasonable position. For whatever reason, you do not want to achieve the obtainable. You instead want to fight for what is impossible. It is sad that inventors are listening to you and not putting their support behind real reforms that would have made the system better and which could have been obtained.”


          There is real danger in settling for what some may label as “the achievable” as this tends to remove the impetus from reforming that which is necessary.

          It’s a bit like “a little peace in our time.”

  5. 4

    >Whether courts may disregard the express claim term “recombinant” so as to render a method-of-treatment patent anticipated

    Even if true, wouldn’t 103 be the obvious way to re-invalidate the claims?

  6. 3

    I’m interested in Rain Computing, Inc. v. Samsung Electronics America, Inc., as it does not make sense to me that what one skilled in the art knows ends at MPF claims. For instance, reciting a “means for creating a (pseudo-)random number” without any algorithm for this means the claim is invalid. Yet, it’s easy for anyone to find many of these algorithms within minutes of searching online. One does not even have to be skilled in this area.

    Why is such a claim invalid?

    1. 3.1

      Because Williamson and its progeny are judicial activism and exclude the person skilled in the art.

      Williamson is utter garbage and total disgrace. It basically says that in the field of algorithm design and analysis that a person of ordinary skill would need the entire algorithm and not just a change to a known algorithm. This is Taranto knowingly misrepresenting patent law to narrow the patent right and invalidate 100’s of thousands of patents.

      Rain Computing is just an extension of this judicial activism.

    2. 3.3

      “Why is such a claim invalid?”

      Because it’s one of the CAFC’s tools they can utilize to extinguish patents.

      That’s all the reason they need.

    3. 3.4

      > For instance, reciting a “means for creating a (pseudo-)random number”
      > without any algorithm for this means the claim is invalid. Yet, it’s easy
      > for anyone to find many of these algorithms within minutes of searching
      > online. One does not even have to be skilled in this area.
      > Why is such a claim invalid

      Because this is how Congress drafted 112(6)/112(f), which expressly requires that a means-plus-function claim limitation be construed to cover the corresponding structure “described in the specification,” not an undisclosed structure that a skilled artisan could find by doing a Google search. This same principle is what distinguishes the core requirements of written description and enablement.

      You can always come up with contrived examples (such as your random number example which did not come from Rain Computing) to show the potential unfairness and harshness of the rule, but the courts are constrained by the plain language of the statute.

      1. 3.4.1

        ..and courts tend to MISAPPLY the optional choice (that choice belonging to the patent writer) of choosing 35 USC 112(f).

        As a general rebuttal, think: “Vast Middle Ground” (a phrase coined by none other than Prof. Crouch on these very boards.

      2. 3.4.2

        “the courts are constrained by the plain language of the statute.”

        Were they so constrained . . . when it comes to 101.

  7. 2

    link to

    You can watch here the downfall of the Constitution and the rise of the Supreme Nine (and this is why our society is broken into two.)

    Breyer (Mr. I feel the Pharaoh would have known this) and Scalia (let’s stick to what we know.)

    1. 2.1

      And this explains how people (yes they are just people) decide to turn patents into a public right with no right to a jury.

  8. 1

    It’s interesting how our understanding of utility requires a claim to be operable. A perpetual motion machine, if it could exist, would very clearly be useful. And we already have a word for claims which can’t be implemented. Perhaps Hu’s cases will summon that familiar rallying cry: these claims should be rejected under 112, not 101.

    1. 1.2

      >>that familiar rallying cry: these claims should be rejected under 112, not 101.

      The only “rallying cry” is for the courts to stop conflating 101 with 102, 103, and 112.

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