Supreme Court on Patent Law May 2022

by Dennis Crouch

  1. The Supreme Court has denied certiorari in the pending case of PersonalWeb Techs. v. Patreon.  The case questioned the unique patent-law preclusion doctrine known as the “Kessler doctrine.”  I previously argued that the court should hear the case and clarify the law. On the same day, the court also denied petitions in Universal Secure Registry LLC v. Apple Inc. (eligibility) and Cisco Systems, Inc. v. SRI International, Inc. (willfulness).
  2. In Olaf Sööt Design v. Daktronics, the patentee argues that unduly aggressive claim construction undermined its 7th Amendment jury trial right.  This case argues against 02Micro‘s requirement that any disputed term be construed by the court.  In a new filing, the US Solicitor General has recommended against certiorari — concluding that it is the Judge’s role to construe the claims.
  3. We are still waiting for a Gov’t brief in the pending eligibility case of American Axle & Manufacturing, Inc. v. Neapco Holdings LLC.  The court requested the CVSG brief on May 3, 2021–more than a year ago.  Pending follow-on cases include Ameranth, Inc. v. Olo, Inc., Spireon, Inc. v. Procon Analytics, LLC and Interactive Wearables, LLC v. Polar Electro Oy. 
  4. The parties are also awaiting the Gov’t CVSG brief in Apple Inc. v. Qualcomm Incorporated (licensee appellate standing) and Amgen Inc. v. Sanofi (written description requirement).
  5. Hyatt v. USPTO challenges the district court’s APA trial procedures as part of his effort to force the Patent Office to issue patents for applications that have been pending for decades.

Top six pending cases:

  1. Eligibility: American Axle & Manufacturing v. Neapco Holdings – pending petition for writ of certiorari awaiting CVSG amicus brief from Gov’t.
  2. Written Description: Amgen v. Sanofi – pending petition for writ of certiorari awaiting CVSG amicus brief from Gov’t.
  3. Appellate Standing: Apple . Qualcomm  pending petition for writ of certiorari awaiting CVSG amicus brief from Gov’t.
  4. Nexus Requirement for Secondary Considerations: Zaxcom, Inc. v. Lectrosonics – pending en banc petition before the Federal Circuit.
  5. Deference to Examiner on Definiteness: Nature Simulation Systems Inc. v. Autodesk, Inc. – pending en banc petition before the Federal Circuit.
  6. Level of Possession for WD negative claim limitations: Novartis Pharmaceuticals v. Accord Healthcare Inc. – pending en banc petition before the Federal Circuit.

23 thoughts on “Supreme Court on Patent Law May 2022

  1. 4

    I never want to see the SCOTUS take cert. in a patent case—may God bless and keep the SCOTUS… far away from us. Therefore, I do not actually want to see the SCOTUS take cert. in Amgen v. Sanofi.

    It would be interesting, nevertheless, in that WD law as it currently stands is entirely a creation of the CCPA/CAFC. The SCOTUS has never actually addressed the idea of WD as a separate legal requirement from enablement.

    Insofar as Amgen v. Sanofi has seen two trips to the CAFC—one to address WD, and one to address enablement—this would actually be a good case by which the SCOTUS could address whether they want to see two separate legal requirements from the same sentence in §112(a), or only one. As I said, however, I definitely do not want to see the SCOTUS take cert. here.

    1. 4.1

      If SCOTUS never engages, they can never SELF-correct (for example, it is only SCOTUS that could wield the Kavanaugh Scissors).

      It would be preferential for self-correction.

      That is not to say that if self-correction were not embraced, that other means are lacking.

      One such other means that I have oft presented is Congress employing its rightful Constitutional power of jurisdiction stripping of the non-original jurisdiction of patent appeals from the Supreme Court.

      Of course, in order to preserve Marbury, an Article III Court would need preserve the power of judicial review. That though is NOT to say that such a court must be the (current – and currently brow-beaten) CAFC, but Congress in one fell swoop both employ jurisdiction stripping AND set a new Article III patent court.

  2. 3

    Since IPRs have been the subject of a number of certs, and have often been attacked on blogs as rehashes of the application examination, a recent IPR institution denial is a reminder that that can be avoided. Under 35 U.S.C. § 325(d), the Director may decline to institute a petition when “the same or substantially the same prior art or arguments previously were presented to the Office” under Advanced Bionics LLC v. Med-EL Elektromedizinische Geräte GMBH, designated precedential on March 24, 2020. Providing that “the Examiner considered the same or substantially the same prior art or arguments asserted in the Petition” and, if so, the Board must then “resolve whether Petitioner shows sufficiently that the Examiner erred in a manner material to the patentability of the challenged claims.”

    1. 3.1

      and have often been attacked on blogs as rehashes of the application examination,

      Certainly this is not the case for this blog.

      That denial of institution is hardly surprising, so I have to wonder why you think it important to add that point here.

  3. 2

    >Eligibility: American Axle & Manufacturing v. Neapco Holdings – pending petition for writ of certiorari awaiting CVSG amicus brief from Gov’t.

    That would be a very telling brief.

    1. 2.1

      Yes – and as hinted at below, it is telling that the “telling” remains silent — what does it take to drag out this telling?

    2. 2.2

      Believe it or not, American Axle makes perfect sense in light of Justice Stevens’ ramblings . . . er . . . um, “reasoned opinion” in Flook.

      The DoJ, however, hasn’t had enough collective brain damage to fully comprehend Stevens’ approach to patent eligibility, i.e., things like math and laws of physics don’t belong in patents – not even remotely.

      The SCOTUS is now waiting on the DoJ for comment, but personally I don’t think the DoJ knows how to comment.

    3. 2.3

      With two different shaft vibrations involved, the delayed American Axle CVSG may be a bit shaky?

      1. 2.3.1

        Are not the claims removing that “bit shaky” (punchline)?

      2. 2.3.2

        Paul,

        Under Flook all things are possible

        1. 2.3.2.1

          Ha!

        2. 2.3.2.2

          B,

          I would restate this as under Mayo all things are possible.

          Prior to Mayo, Flook (and Benson) had been cabined by Diehr – See Bilski.

          After Mayo – which at the same time proclaimed that Diehr was most on point — AND NOT BEING CHANGED — Flook (and Benson) were ‘strung’ back in to create the massive Gordian Knot.

          Alice took that Gordian Knot down the rabbit hole.

          1. 2.3.2.2.1

            In re Chakrabarty also gave the world a few moments of sanity.

            It was actually Bilski that did away with the MoT test that started the recent mudslide, but I’m not going to argue which of Benson, Flook, Bilski, Alice, and Mayo is the worst POS opinion. The problem is that, together, they create an evil synergy of insanity

            1. 2.3.2.2.1.1

              The problem is that, together, they create an evil synergy of insanity

              I did chuckle at your choice of analogy – thanks for that.

              I still prefer my Gordian Knot — in part because one form of ‘self-correction’ is a CUTTING of that same Gordian Knot with my analogy of the Kavanaugh Scissors.

              I am not sure that “evil synergy of insanity” carries any sense of self-correction to BE possible.

            2. 2.3.2.2.1.2

              +1 B

              Just think if Scalia had gone along with Thomas in Bilski all this would be moot and 101 would have a solid sane basis.

              Remember that foul concurrence by Stevens? Stevens–I think–believes that thought occurs in the ether.

  4. 1

    More than a year ago…

    Maybe the Court needs to “leak” an internal discussion point about its sister branch’s lack of timeliness….

    1. 1.1

      Have you read Alito’s leaked opinion?

      It’s a gold mine – Henry Shein on steroids

      1. 1.1.1

        I have read it – including what appears to be a heavy dose of inoculation against dissents (and to which, I note that the Mass Media clearly does not comprehend).

        1. 1.1.1.1

          The Mass Media are tools, and strangely enough, no dissenting opinion was “leaked.” I intend on using Alito’s opinion like a road map.

          As soon as Roberts releases the opinion, I’m filing a Rule 28(j) memo

          Anyway – you heard it from me – under a proper mental steps analysis (see Rep.Massy’s proposed language) that has a basis in due process of law under Alito’s majority opinion – many of Judge Taranto’s decisions were rightly decided for the wrong reasons. Berkheimer and McRO were wrongly decided. Enfish was rightly decided for the wrong reasons. Half was Investpic was rightly decided for the wrong reason.

        2. 1.1.1.2

          What you call Alioto “dissent inoculation” is in the form of “we are not reversing those other personal rights decisions now” BUT only after his gratuitous specific listing of such decisions as equally wrongly decided, and without providing distinctions as to why their reversal is less likely – thus inviting media speculation. Not to mention that so much of major and social media these days, right and left, thrives on scare hyperbole.

          1. 1.1.1.2.1

            More than certain Paul that the draft had NO “inviting media speculation” in its body – content OR intent.

            The fact of the matter that this WAS leaked should be a bigger deal than WHAT was leaked.

            I am cynical enough to entertain at this point at least THREE different reasons WHY the leak occurred, even as these three reasons do not have the same likelihood.

            To B’s point, a first draft such as this will not have the dissenting opinions, as this is the item that is circulated in order to prompt any dissenting views. This is also why I used the term inoculation.

            Further, it was abundantly clear that abortion was expressly singled out as varying in both degree and kind. This was abundantly clear — and something the scare mongers in Mass media grossly missed.

      2. 1.1.2

        Henry Shein on steroids

        Are you referring to the oral arguments that supplied one of the two Shears of the Kavanaugh Scissors?

        1. 1.1.2.1

          Merely the written opinion

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