The Supreme Court has not granted a writ of certiorari in any patent cases this term, and has now denied certiorari in two dozen. Still, there are a number of important cases pending that could be transformative if granted.
Two leading petitions before the court are:
- American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 20-891 (eligibility); and
- PersonalWeb Technologies, LLC v. Patreon, Inc., No. 20-1394 (issue and claim preclusion).
In both of these cases, the Supreme Court has requested that the Solicitor General offer the views of the U.S. Gov’t on whether the court should grant certiorari. Although I am not privy to the exact timeline, I believe that there is a good chance that the SG’s brief in American Axle will be submitted by the end of December 2021. The PersonalWeb brief is unlikely to be submitted until later in the spring. American Axle clearly has the largest potential impact if the Supreme Court were to either (1) change course on eligibility; or (2) double-down on an expansive doctrine.
Two petitions will be considered by the court in upcoming days:
- ENCO Systems, Inc. v. DaVincia, LLC, No. 21-457 (eligibility); and
- Ultratec, Inc. v. CaptionCall, LLC, No. 20-1700 (R.36 and retroactive IPR).
I believe that American Axle is a better vehicle for Section 101 issues rather than ENCO, and I expect that the Supreme Court not will give much consideration to the ENCO petition. It will likely denied even before any action taken on American Axle. Ultratec is interesting to me personally because it relates to some of my prior academic work, and the Supreme Court called for responsive briefing in the case. That said, the Gov’t brief in opposition is extremely dismissive of Ultratec’s arguments. This suggests that the Supreme Court will not hear the case.
The Supreme Court has requested responsive briefing in three additional cases:
- Warsaw Orthopedic, Inc. v. Sasso, No. 21-540 (on petition from the Indiana Supreme Court; arising under jurisdiction)
- Infinity Computer Products, Inc. v. Oki Data Americas, Inc., No. 21-413 (indefiniteness); and
- Olaf Sööt Design, LLC v. Daktronics, Inc., No. 21-438 (using claim construction to overturn a jury verdict).
Responsive briefs are expected in the next couple of weeks for these cases. Although a request for responsive briefing is indicative of some interest in the case, the threshold is quite low and so it is much too early to suggest that these cases are likely to be granted certiorari. Infinity could be quite big if the Supreme Court took the case and again recalibrated the doctrine of indefiniteness. In Nautilus, the Supreme Court found that the lower court was too easy on patentees; Infinity argues that the court is now being too hard on patentees.
The remaining four patent petitions are listed roughly in order of their likelihood of being granted certiorari (in my opinion). I expect that the Mylan and Apple petitions would be granted as a pair, if granted at all.
- Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., No. 21-202 (NHK-Fintiv rule for denying petitions; appealability of IPR petition denial);
- Apple Inc. v. Optis Cellular Technology, LLC, No. 21-118 (mandamus review of IPR petition denial);
- Infineum USA L.P. v. Chevron Oronite Company LLC, No. 21-350 (mid-Arthrex issue, potential for GVR with instructions for PTO Director to place his imprint on the decision); and
- Bongiorno v. Hirshfeld, No. 21-6050 (pro se; eligibility).
There is one final case that has some filings at the Supreme Court:
- Apple Inc., v. Qualcomm Inc., No 21A39 (Standing of portfolio licensee to challenge individual patents in court).
Apple has not yet filed its petition but did indicate its plan to do so in a request for extension of time. Its initial petition is now due November 17, 2021.
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A few non-patent IP cases pending before the Supreme Court of some interest:
- Unicolors, Inc. v. H&M Hennes & Mauritz, L.P., No. 20-915 (referral of copyright litigation issues to copyright office) (this is the only one granted certiorari, oral arguments set for November 8, 2021);
- Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp., 19-3010 (functional trade dress)
- Sulzer Mixpac AG v. A&N Trading Co. (functional trade dress);
- Impax Laboratories, Inc. v. Federal Trade Commission, No. 21-406 (reverse payment patent settlement).
- Belmora LLC, et al. v. Bayer Consumer Care AG, No. 21-195 (impact of foreign use on trademark rights in the US);
- Australian Leather Pty. Ltd., et al. v. Deckers Outdoor Corporation, No. 21-513 (impact of foreign use on trademark rights in the US);