Patent Law at the Supreme Court October 2021

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.

  1. Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., No. 21-202 (NHK-Fintiv rule for denying petitions; appealability of IPR petition denial);
  2. Apple Inc. v. Optis Cellular Technology, LLC, No. 21-118 (mandamus review of IPR petition denial);
  3. 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
  4. 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.

= = =

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);

31 thoughts on “Patent Law at the Supreme Court October 2021

  1. 6

    The two trade dress/functionality petitions are sure losers. In both cases, the respective Circuit courts applied the functionality doctrine as it has been articulate by the Supreme Court. I very much doubt SCOTUS will get involved.

  2. 5

    Much of the now-huge pending patent suits docket* of J. Albright in Waco WDTX was presumably filed there in anticipation of its becoming a patent owner Valhalla, including trial dates so quick they could even out-gallop IPRs on PTAB Fintiv saddles. But I just gleaned the following data from a new law firm table of ALL U.S. patent Jury trials conducted since March 2020. [Many in other states have been worse-delayed by Covid-19, of course.] I counted that he had concluded 6 of his, and that in only two of them the plaintiff had won. [Meanwhile, back at the other big patent suits ranch in EDTX, J. Gilstrap did 14 jury trials.]
    *Only a small portion of which big docket has been transferred-away so far, in spite of the mandamus efforts of the Fed. Cir.

  3. 4

    American Axle may not be the best case to take to the Supreme Court, but it isn’t a bad one.

    If I was arguing this case, I would focus on the Federal Circuit’s identification that the claim is “directed to the mere application of Hooke’s law.” Unlike a lot of technology, Hooke’s law is pretty easy to explain and the utter lack of anything even remotely resembling Hooke’s law in the claims could prove fatal for an affirmance. Knowing that the Supreme Court isn’t about to do a 180 degree turnabout, what I would hope to get out of such a case is some additional language from the Supreme Court regarding what role preemption (or lack thereof) should play a part in during an analysis under 35 USC 101. Tuning shafts have been done for decades and decades and decades. Considering this, I very much doubt that the patent at issue here preempts Hooke’s law in any meaningful way. I would also hope that the Supreme Court indicates that whether an abstract idea is preempted (and what this means should be fleshed out) should be a finding of fact — not a legal conclusion.

    I think a better case (at least on the facts) to take to the Supreme Court would be Yu v. Apple, in which the Federal Circuit determined that an improved digital camera is directed to an abstract idea. The technology is really easy to understand, and Prost’s opinion is a poster-child for the Federal Circuit’s overreaching with regard to characterizing what constitutes an abstract idea. However, the full name of the parties are: YANBIN YU, ZHONGXUAN ZHANG v. APPLE INC. I am not naïve enough to ignore that the identity of parties can make a difference. I very much doubt that a conservative-led bench is going to side with Appellants having those names. It SHOULD NEVER make a difference, but the Supreme Court is not above the politics of the time.

    1. 4.1

      but the Supreme Court is not above the politics of the time.

      Not just conservative, at that (think RBG)

    2. 4.2

      “the Supreme Court indicates that whether an abstract idea is preempted (and what this means should be fleshed out) should be a finding of fact — not a legal conclusion.”

      Though not all that’s needed, this result alone would go a long way to returning the Alice / Mayo analysis to what SCOTUS actually intended.

      Alice was a fact-based decision.

      The innovation-killing, off-the-rails hand-waving by too many CAFC judges (and too many examiners) needs to be brought to a long-overdue end.

      Preemption matters.

      1. 4.2.1

        returning the Alice / Mayo analysis to what SCOTUS actually intended.

        Alice was a fact-based decision.

        There is this (enduring) fallacy that the mess is not what SCOTUS “actually intended.”

        This is simply not so.

        In Alice, actual physical claims were in fact deemed “abstract” (no matter how undefined).

        Further, as has been pointed out countless times, the sheer number of certs denied in which the Court could have easily corrected any “misunderstanding” as to what that “they actually intended.”

        That they have steadfastly declined seems to be something that is more than an elephant in the room for this continued effort to NOT put blame where that blame MUST originally be placed.

  4. 3

    Infinity argues that the court is not being too hard on patentees.

    Infinity is definitely arguing that the court should have gone easier on the patentee here. Did you mean “now” instead of “not”?

    1. 3.2

      Given how few claims go down each year on §122(b) grounds, it seems strange to say that the courts are being too demanding on this requirement. Infinity’s contention is not impossible, of course, but not intuitively plausible.

  5. 2

    Dennis, re the cert petition in “Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., No. 21-202 (NHK-Fintiv rule for denying petitions; appealability of IPR petition denial).” Have the plaintiffs in the 3 pending APA-based suits against the “NHK-Fintiv rule” [non-rule] filed amicus briefs in these cases?

    1. 2.1

      There are several of amicus briefs filed in those cases, but I have read them.

    2. 2.2

      The Supreme Court dockets are publicly accessible and have all of the amicus briefs posted.

      Mylan-Janssen here (with amicus briefs from J. Doerre, the main generics trade association, and Intel)
      link to

      Apple-Optis here (amicus briefs from J. Doerre, CCIA, “Leading Innovators,” ACT, and Roku)
      link to

      1. 2.2.1

        Thanks dcl.

  6. 1

    >>American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, No. 20-891 (eligibility);

    I did a deep dive into this case when it was first decided. I think there are a lot of issues regarding 112 and the EPO that make it a poor 101 case. So I would be surprised if the Scotus picks this one up. And if the Scotus picks this one up, I would be worried that it was just to further trash the patent right.

      1. 1.1.1

        I also think American Axle v. Neapco is not the most appropriate case for attempting to get the Sup. Ct. to reign in the Alice “abstraction” type of 101-exception software-related decisions, which are by far the most common and most complained about. The many people publicly touting its cert seem to be overlooking that this is not the only type of Sup. Ct. held unpatentable subject matter. As spelled out in Chakrabarty, and again here in Bilski: “The Court’s precedents provide three specific exceptions to § 101’s broad patent-eligibility principles: laws of nature, physical phenomena, and abstract ideas. While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be “new and useful.” And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.” Bilski v. Kappos, 561 U.S. 593, 601–02 (2010).
        Isn’t it likely that the Sup. Ct. would view American Axle’s broadest claims to fit better into the “laws of nature” or “physical phenomena” exceptions than Alice “abstractions”?


          You do realize that this

          And, in any case, these exceptions have defined the reach of the statute as a matter of statutory stare decisis going back 150 years.” Bilski v. Kappos, 561 U.S. 593, 601–02 (2010).

          is false given the Act of 1952 was expressly passed — in substantial part — to change what the Supreme Court had been doing.

          It’s one thing for the Supreme Court to engage in its own revisionist history. It’s quite another when YOU continue to ploy that deception.


            If you read all the Scotus patent cases like I have anon, you will find that the Scotus got around this technical difficulty by claiming that the 1952 Patent Act merely codified their precedent. Can’t remember the case but it was one of the first after the 1952 Patent Act was passed.


              That claptrap about “just codify” just does not cut it.

              Perhaps you are thinking of the case in regards to 103, Graham v Deere:

              We have concluded that the 1952 Act was intended to codify judicial precedents embracing the principle long ago announced by this Court in Hotchkiss v. Greenwood, 11 How. 248 (1851), and that, while the clear language of § 103 places emphasis on an inquiry into obviousness, the general level of innovation necessary to sustain patentability remains the same.


                by the by, the separation of the Supreme Court machinations of “Gist of the Invention” was precisely why Congress CREATED the separate sections of law of 101 and 103.

                This “just codify” is quite clearly B$.

                ANY and ALL attorneys should bristle at the ‘disinformation.’

                1. anon, you never seem to understand how the Scotus operates.

                  “just codifies” our law is without question “quite clearly B$.”

                  No arguments here.

                  But all the Scotus has to do is find some way to justify what they have done to their satisfaction and they are good to go. They don’t care. They are the ultimate power in the universe and they know it. The Congress rarely if ever does anything to question them and the President has very little power to do much about it either.

                  They live in their own world and make up abstract words and twist them around and as long as they can put up an argument, they are good to go.

                  You just don’t get it. You can’t fight it without first understanding them.

                2. It is FAR LESS whether or not “I know,” and FAR MORE that I know what is proper.

                  Even the Supreme Court is not above our Constitution.

                  There is a reason why our system has its checks and balances across all three branches of the government.

                  I simply refuse to acquiesce to power misapplied.


              “Claiming that the 1952 Patent Act merely codified their precedent” was also how the authors of that statute presented it to Congress to enact.


                That is plainly false, Paul.


            So direct quotes from actual Sup. Ct. decisions are to be misrepresented here as personal opinions, but endless unsubstantiated imperial personal opinions that the Sup. Ct. is “wrong” are to be treated as legally useful?



              When those direct quotes misapply the law, you are under an ethical obligation (in most states) to NOT agree with the error.

              That you seem to have such an issue with this AND seek to portray this as somehow me employing “unsubstantiated imperial personal opinion” is you only being also wrong.

              I have attempted to engage you in the Constitutional discussions, but you simply would rather snipe from the sidelines.

              How “legally useful” are YOUR actions?
              How much do your actions only contribute to the errors of the Court, glossing them over?

              What state are you barred in? What does your state attorney oath tell you in regards to the Constitution (and have you forgotten that the Supreme Court is not above the Constitution?).

              Do more than snipe and run away.


          >While these exceptions are not required by the statutory text, they are consistent with the notion that a patentable process must be “new and useful.”

          Great quote, basically admitting the whole thing relies on penumbras and emanations.


            Not sure that I would say “the whole thing,” (emphasis added). Most of the “exceptions” really are just the natural working of the statutory text (i.e., not really “exceptions” at all, but really just “applications”).

            1) Insofar as a claim reads on an instantiation that is limited to nothing but an abstract idea (i.e., a phenomenon or process that occurs only in one’s head), it is not “useful” in the sense of the statute.

            2) Insofar as a claim reads on an instantiation that is limited to nothing but a natural product or a law of nature, it is not “new,” because the natural product or law of nature has been used in public before the filing date.

            In other words, much of what gets excluded under the “exceptions” is not really an “exception” to the statutory text, but rather an application of the statutory text.

            I agree, however, that some of the exceptions (as applied) amount to an (unwarranted) “emanation” from the statute—as when the court says that an explicitly computer implemented method is an “abstract idea.” Many such claims deserve to fail on §103 or §112 grounds, but §101 really should not touch those claims.


              (i.e., not really “exceptions” at all, but really just “applications”).

              I have this conversation with Paul Cole (from another angle – an exception to means exactly that: an exception), but the Court uses those words purposefully.

              You do not get to “re-interpret” because you may not like those words.

    1. 1.2

      I expect that you are correct, NW. My heart wants to believe that the Court is ready to rein in its Alice excesses, but my head keeps telling me that they have taken a pass on many better vehicles for that purpose (even after requesting SG input).

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