Supreme Court’s Patent Docket: A Preview of the October 2024 Term

by Dennis Crouch

The Supreme Court’s October 2024 term begins a day early this year. On September 30, the Court will meet for what has become known as the “long conference” — passing judgment on dozens of petitions that have been briefed over the summer break.  The long conference is primarily a time to deny a large swath of petitions with very few certiorari grants.  Petitioners are usually simply hoping for a relist — holding over their case for some future conference and a more complete consideration.

A number of patent cases will be reviewed that day.  The following are patent cases scheduled for the Long Conference, listed roughly in the decreasing order of likelihood of being granted certiorari (in my estimation):

• Double Patenting: Cellect, LLC v. Vidal, Case No. 23-1231 (whether the prohibition on unjust extension that animates the non-statutory obviousness type double patenting doctrine applies to cases receiving patent term adjustment). I list this case on top because of the strong amicus support, but the case for certiorari was substantially undermined by the Federal Circuit in Allergan. I would expect the Supreme Court would request the Administration’s views (CVSG) before granting certiorari. Roy Englert (Kramer Levin) represents the petitioner with Elizabeth Prelogar (United States Department of Justice) for respondent.  The case includes a number of amici being represented as follows: David Barr (Venable) for Sanofi, et al.;  Paul Berghoff (MBHB) for IPO; Melanie Bostwick (Orrick) for Sonos, Inc., et al.; Jeffrey Kushan (Sidley Austin) for PhRMA and BIO; Jeffrey Lewis (Foley Hoag) for NYIPLA; Scott McKeown (Wolf Greenfield) for Inari Ag; Teige Sheehan (Heslin Rothenberg) representing himself; and Sophie Wang (Choate Hall) for AIPLA. 
• Eligibility: Eolas Technologies Incorporated v. Amazon.com, Inc., et al., Case No. 23-1184 (Whether claims drawn to solving specific problems restricting the usefulness of an existing computer-network technology recite patent-eligible subject matter). John Campbell (McKool Smith) represents the petitioner with multiple attorneys representing different respondents: Deepa Acharya (Quinn Emanuel) for Google LLC; Gabriel Bell (Latham) for Amazon.com, Inc.; Bijal Vakil (Allen Overy) for Walmart, Inc.; Additional Burman Mathis filed an amicus for U.S. Inventor, Inc.
• USPTO Notice and Comment Duty: Chestek PLLC v. Vidal, Case No. 23-1217 (Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2)). Andrew Grossman (Baker & Hostetler) represents the petitioner with US Solicitor Prelogar for respondent.  Additionally, there are several other parties represented: William Atkins (Pillsbury) for BADC; Thomas Berry of and for the Cato Institute; Prof. Gregory Dolin for the New Civil Liberties Alliance; Brandon Huffman (Odin Law) for International Game Developers Association; and Maura Moran (Cambridge Technology Law) for IEEE-USA.
• On Sale Prior art in IPR: Provisur Technologies, Inc. v. Weber, Inc., Case No. 23-1349 (Whether the Federal Circuit erred in holding that a product manual distributed with an on-sale product constitutes a printed publication that can be asserted in an IPR, despite considerations like limited distribution, high cost, confidentiality, and industry practice). Craig Martin (Willkie Farr) represents the petitioner with Richard Crudo (Sterne Kessler) for respondent.
• IPR Procedure Standard of Review: United Therapeutics Corporation v. Liquidia Technologies, Inc., Case No. 23-1298 (Whether the IPR statute and SAS require the Federal Circuit to review de novo, or only for an abuse of discretion, the PTO’s reliance on new grounds and new printed publications—not raised in the initial petition— when deciding to cancel patent claims). Douglas Carsten (McDermott Will & Emery) represents the petitioner with Kathleen Hartnett (Cooley) for respondent.
• Divided-rights Standing to Sue: Zebra Technologies Corporation v. Intellectual Tech LLC, Case No. 24-114 (Whether a party has Article III standing to assert a claim for patent infringement against an accused infringer, if there exists a third party with who has legal rights to grant a license to the accused infringer). William Peterson (Morgan Lewis) represents the petitioner with James Perkins (Cole Schotz) for respondent.
• R.36: Hebert v. Allied Rubber & Gasket Co., Case No. 24-5152 (Is R.36 affirmance without opinion permissible, pro se).
• Surti v. Fleet Engineers, Inc., Case No. 23-1142 (Plaintiff argues pro se that he should have won). Tarun Surti (representing himself) with George Williams (McGarry Bair) for respondent.

In my view, the potentially biggest Supreme Court cases are not set for the long conference, but instead are still in ongoing briefing, particularly the first two in the list below:

• Hatch Waxman Injunction Breadth: Norwich Pharmaceuticals Inc. v. Salix Pharmaceuticals, Ltd., et al., Case No. 24-294 (Whether 35 U.S.C. § 271(e)(4)(A) requires courts to issue injunctive orders that are broader in scope than the underlying infringement, thereby delaying FDA approval of generic drug applications for indications that have not been found to infringe any valid patent.)  Response due October 15, 2024. Thomas Hedemann (Axinn) represents the petitioner. No attorney is listed for respondent (yet).
• ITC Domestic Industry: Roku, Inc. v. International Trade Commission, et al., Case No. 24-180 (Roku is attempting to strengthen the ITC’s domestic industry requirement). Response due September 19, 2024.  Matthew Rizzolo (Ropes & Gray) represents the petitioner with Ryan Koppelman (Alston & Bird) for respondent Universal Electronics, Inc. and US Solicitor Elizabeth Prelogar for Federal Respondents.
• Eligibility: Return Mail, Inc. v. United States, Case No. 24-47 (Whether the claimed invention is ineligible for patent protection under the abstract-idea exception to 35 U.S.C. §101.) Response due October 16.  Cameron Norris (Consovoy) represents the petitioner with US Solicitor Prelogar for respondent.
• Reviewing Bench Trial on Appeal: Salix Pharmaceuticals, Ltd., et al. v. Norwich Pharmaceuticals Inc., Case No. 24-292 (Whether courts of appeals may affirm bench trial decisions based on evidence not credited by the district court, particularly when that evidence depends on unresolved factual disputes). Response due October 15, 2024. William Peterson (Morgan Lewis) represents the petitioners. No attorney yet for the respondent.
• Inventorship and Procedure: Campbell v. Tube-Mac Industries, Inc., et al., Case No. 24-236. Steven Campbell, the pro se petitioner, is challenging lower court rulings that added  two co-inventors to his patent, alleging fraud on the court, perjury, and other improprieties in how the case was handled.  Response due September 30, 2024.

I have heard of a handful of additional petitions that will be filed in the next couple  of months, but we’ll save that for an upcoming post.