Supreme Court Petitions

Supreme Court Petitions

Supreme Court Petitions


WilmerHale compiles lists of certiorari petitions that raise patent-law issues. This page contains a consolidated list of all recently pending petitions, organized in reverse chronological order by date of certiorari petition.

Recently pending, granted and denied certiorari petitions

Dow AgroSciences, LLC v. Bayer CropScience AG, No. 17-372

Question Presented:

The United Nations Convention on the Recognition and Enforcement of Foreign Arbitral Awards (the “New York Convention”), as incorporated into Chapter 2 of the Federal Arbitration Act (“FAA”), 9 U.S.C. 201 et seq., authorizes a U.S. court to decline recognition and enforcement of an arbitral award that “would be contrary to the public policy” of the United States. Here, recognition and enforcement of a $455 million arbitral award based on duplicative and expired patents is contrary to the U.S. public policy that patents are granted only for “limited Times.” But the Federal Circuit held that award enforceable, ruling that a court may not entertain a public-policy challenge in the absence of a prior judicial decision on nearly identical facts.

The question presented is:

Whether a federal court must independently determine whether recognition and enforcement of an arbitral award under the New York Convention would be contrary to the public policy of the United States.

Cert. petition filed 9/11/17.

CAFC Opinion, CAFC Argument

Skky, Inc. v. MindGeek, S.A.R.L., No. 17-349

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves a Patent Office proceeding, in which the Patent Office invalidated Petitioner's patent and therefore involves the same issue in Oil States. That is, this petition presents the question of:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 9/5/17.

CAFC Opinion, CAFC Argument

PNC Bank Nat. Ass'n v. Secure Axcess, LLC, No. 17-350

Questions Presented:

The Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) (“AIA”), established new post-grant adjudicatory processes for challenging the validity of patents. Covered business method (“CBM”) review is available for “a patent that claims a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service, except that the term does not include patents for technological inventions.” AIA § 18(d)(1).

In this divided panel of the Federal Circuit reversed the Patent Trial and Appeal Board's (“Board's”) determination that the challenged patent was eligible for CBM review. In doing so, the panel majority conditioned eligibility for CBM review on whether a patent claim itself contains “a financial activity element.” App. 19a-20a; see also App. 12a-13a, 15a. The court of appeals denied rehearing by a vote of 6-5. App. 131a-132a.

In a separate appeal, the Federal Circuit affirmed a determination in an unrelated proceeding that certain claims of the same challenged patent, including all claims that Secure Axcess had asserted against Petitioners, were invalid. As a result, and while the period to petition for a writ of certiorari was pending, Secure Axcess dismissed its infringement claims against Petitioners with prejudice.

The questions presented are as follows:

  1. Whether the court of appeals' judgment should be vacated and remanded with instructions to dismiss the appeal as moot, in accordance with United States v. Munsingwear, Inc., 340 U.S. 36 (1950), where the claims of the challenged patent are invalid and there is no longer a live case or controversy between Petitioners and Respondent.
  2. If the case is not moot, whether the court of appeals erred in holding that the statutory definition of a patent eligible for CBM review requires that the claims of the patent expressly include a “financial activity element”—in other words, that the claim have no use outside of financial activity—rather than making CBM review available for patents that claim “a method or corresponding apparatus for performing data processing or other operations used in the practice, administration, or management of a financial product or service.”

Cert. petition filed 9/4/17.

CAFC Opinion, CAFC Argument

WilmerHale represents petitioners PNC Bank National Association et al.

Google Inc. v. Unwired Planet, LLC, No. 17-357

Questions Presented:

  1. Whether the Federal Circuit has jurisdiction to review the Patent Trial and Appeal Board''s determination that a patent is a “covered business method” patent.
  2. Whether a court should extend deference to an agency interpretation contained in a regulatory preamble.

Cert. petition filed 9/1/17.

CAFC Opinion, CAFC Argument

Chan v. Yang, No. 17-311

Questions Presented:

The Questions Presented by this Petition are:

  1. Whether the USPTO had exceeded its statutory authority in declaring and conducting an interference proceeding based on claims in a pending patent application that were neither directed to patent eligible subject matter under 35 U.S.C. § 101 nor in allowable form?
  2. Whether the Federal Circuit's affirmance without opinion in appeals from USPTO's decision violates 35 U.S.C. § 144? Should the determination of which USPTO appeals require a written opinion rather than a Fed. Cir. Rule 36 Judgment depend primarily on whether the written opinion might benefit further proceedings in the case in the USPTO?
  3. Whether the USPTO's practice to cancel the claims of an issued patent in an interference proceeding is unconstitutional, violating the Seventh Amendment and Article III?

Cert. petition filed 8/25/17.

CAFC Opinion, CAFC Argument

Tomita Technologies USA, LLC v. Nintendo Co., Ltd., No. 17-292

Questions Presented:

35 U.S.C. § 112, ¶ 6 (now § 112(f)) and the Doctrine of Equivalents both involve similar tests for equivalence to determine patent infringement. In Warner-Jenkinson Co. v. Hilton Davis Chem. Co., this Court provided governing principles for determining equivalence, including consideration of (i) the “known interchangeability” of the accused and claimed elements as an “important factor,” and (ii) “the role played by each element in the context of the specific patent claim.” 520 U.S. 17, 25, 36, 40 (1997). In this case, the Federal Circuit has disregarded those principles, (i) holding that a court need not consider evidence of “known interchangeability,” and (ii) analyzing equivalence not in the context of the patent claim, but based on features in the accused product unrelated to the claimed invention. The questions presented are:

  1. Whether the Federal Circuit erred in holding that there is no requirement that a court consider evidence in the record of known interchangeability when evaluating equivalence under 35 U.S.C. § 112, ¶ 6 (now § 112(f)) and the Doctrine of Equivalents in light of this Court's instruction that known interchangeability is an “important factor” in such a determination.
  2. Whether the Federal Circuit erred in evaluating equivalence based on differences between the structures of an accused device and patented device whose sole significance relates to performing unclaimed functions.

Cert. petition filed 8/22/17, waiver of respondent Nintendo Co., Ltd. filed 9/5/17, conference 9/25/17.

CAFC Opinion, CAFC Argument

Milo & Gabby LLC v. Amazon.com, Inc., No. 17-287

Questions Presented:

A long standing feature of both copyright and patent law is that liability extends not only to those who make infringing goods, but to those who commercially exploit them as well. This makes sense, given that the actual creators of infringing goods are frequently unknown or are otherwise beyond the reach of United States courts. Extending liability to those who profit from infringing sales ensures that innocent victims of copyright and/or patent infringement are not left helpless while others reap the benefit of their creations.

To protect authors and inventors from such injustice, Congress long ago enacted appropriate legislation. In the case of authors, Title 17 U.S.C. § 106(3) grants copyright owners the exclusive right “to distribute copies . . . of the copyrighted work to the public by sale or other transfer of ownership.” In the case of inventors, Title 35 U.S.C. § 271(a) imposes patent infringement liability on “whoever makes, uses, offers to sell, or sells any patented invention . . . or imports into the United States any patented invention . . . .”

In the case below, both the District Court for the Western District of Washington, and the Federal Circuit, held that Amazon.com, Inc.,—often described as one of the “world's largest retailers”—faced no liability for otherwise admitted Copyright and Patent infringement on the basis that it does not actually sell anything or offer anything for sale. In particular, the Federal Circuit held that, because Amazon.com does not hold legal title to the infringing goods that appear for sale on its website, it does not “offer,” “sell” or “distribute” them within the context of applicable copyright and patent law.

The questions presented are:

  1. Whether for purposes of copyright and patent law, one must hold actual legal title to goods in order to “sell,” “offer to sell,” “transfer ownership” or “distribute” such goods within the meaning of 17 U.S.C. § 106(3) and 35 U.S.C. § 271(a).
  2. Whether Internet retailers can properly escape liability for otherwise admitted copyright and patent infringement on the basis that they only “facilitate” sales and never actually “sell,” “offer to sell,” “distribute” or otherwise “transfer ownership” of infringing goods.

Cert. petition filed 8/21/17, waiver of respondent Amazon.com filed 9/7/17.

CAFC Opinion, CAFC Argument

TMC Fuel Injection System, LLC v. Ford Motor Co., No. 17-234

Questions Presented:

  1. Did the Federal Circuit fail to follow Supreme Court precedent in finding a disclaimer where the alleged disavowal is ambiguous?
  2. Did the Federal Circuit fail to follow Supreme Court precedent by elevating and misinterpreting inventor comments from the prosecution history over express language in the specification and claims?

Cert. petition filed 8/10/17, waiver of respondent Ford Motor Co. filed 8/21/17, conference 9/25/17.

CAFC Opinion, CAFC Argument

Paice LLC v. Ford Motor Co., No. 17-220, -222, -229

Question Presented (same QP in each petition):

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 8/7/17, waiver of respondent Ford Motor Co. filed 9/6/17.

CAFC Opinion, CAFC Argument

Affinity Labs of Texas, LLC v. Matal, No. 17-233

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves a Patent Office proceeding, in which the Patent Office invalidated Petitioner's patent, and therefore involves the same issue in Oil States. That is, this petition presents the question of:

Whether a reexamination proceeding—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 8/3/17.

CAFC Opinion, CAFC Argument

In Re: Affinity Labs of Texas, LLC, No. 17-232

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves a Patent Office proceeding, in which the Patent Office invalidated Petitioner's patent, and therefore involves the same issue in Oil States. That is, this petition presents the question of:

Whether a reexamination proceeding—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 8/3/17.

CAFC Opinion, CAFC Argument

Security People Inc. v. Matal, No. 17-214

Question Presented:

The Question Presented by this Petition is the same for which certiorari was granted in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712 (granted June 12, 2017):

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Given the pending Oil States case, Petitioner requests a hold on this petition pending disposition of Oil States, and at that time the granting of certiorari for plenary review or certiorari should be granted, vacating the decision below and remanding for further proceedings.

Cert. petition filed 8/2/17.

No CAFC Opinion, No CAFC Argument

Leak Surveys, Inc. v. Flir Systems, Inc.,  No. 17-194

Questions Presented:

Arising from perhaps the largest factual and testimonial record compiled to date at the Patent Trial and Appeal Board (“PTAB”), the highly unusual factual and procedural record of this case presents a rare opportunity for the United States Supreme Court to address the following questions:

  1. Does the Federal Circuit Court of Appeals necessarily exceed the scope of its limited appellate jurisdiction when it affirms a PTAB inter partes review (“IPR”) decision that rests upon a plain and egregious error, such as a PTAB claim construction that literally strikes a key word from the claims that was added during prosecution to distinguish the scope of the claims from prior art?
  2. On appeal of an IPR decision by the PTAB to invalidate a patent or patent claim, when is the Federal Circuit required to provide a statement of its reasons for affirming—in order to safeguard constitutional limits on the Federal Circuit's administrative appellate jurisdiction (S.E.C. v. Chenery Corp., 318 U.S. 80 (1943)), and/or to comply with statutory requirements such as 35 U.S.C. § 144 and 5 U.S.C. §§ 702, 704, and 706.
  3.  On appeal of an IPR decision by the PTAB to invalidate a patent or patent claim, when does the Federal Circuit violate a patent owner's constitutional due process rights by considering and affirming based on arguments that were not previously considered by the PTAB, and/or for reasons apart from those stated by the PTAB itself in its written decision?

Cert. petition filed 8/1/17.

CAFC Opinion, No CAFC Argument

IPR Licensing, Inc. v. ZTE Corp., No. 17-159

Question Presented:

Whether inter partes review—an adversarial process used by the Patent Trial and Appeal Board (PTAB) of the Patent and Trademark Office to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 7/28/17.

CAFC Opinion, CAFC Argument

Openet Telecom, Inc. v. Amdocs (Israel) Ltd., No. 17-136

Question Presented:

To be patent eligible, a patent must claim “the means or method of producing a certain result, or effect, and not [the] result or effect produced.”  Corning v. Burden, 56 U.S. 252, 267-68 (1854). This principle has driven this Court's patentable subject matter jurisprudence for over 150 years, including most recently the “search for an inventive concept” described in the second step of the Alice/Mayo framework. Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347, 2355 (2014) (quoting Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66, 72 (2012)). Because a patent's claims define the scope of the invention, this Court stated in both Alice and Mayo that this second step of the eligibility analysis turns on what is “in the claims.” 134 S. Ct. at 2355; 566 U.S. at 78.

The question presented is: Whether the Federal Circuit erred by looking beyond the claims to the patent specification to assess patent eligibility?

Cert. petition filed 7/24/17.

CAFC Opinion, CAFC Argument

WilmerHale represents respondents Amdocs Ltd.

 

Paice LLC v. Ford Motor Co., No. 17-113

Question Presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17.

CAFC Opinion, CAFC Argument

Paice LLC v. Ford Motor Co., No. 17-112

Question Presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17.

CAFC Opinion, CAFC Argument

Paice LLC v. Ford Motor Co., No. 17-111

Question Presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17.

CAFC Opinion, CAFC Argument

Paice LLC v. Ford Motor Co., No. 17-110

Question Presented:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 7/20/17, waiver of respondent Ford Motor Co. filed 8/17/17, response requested 8/31/17.

CAFC Opinion, CAFC Argument

In Re: Affinity Labs of Texas, LLC, No. 17-117

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves a Patent Office proceeding, in which the Patent Office invalidated Petitioner's patent and therefore involves the same issue in Oil States. That is, this petition presents the question of:

Whether inter partes reexamination—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 7/14/17.

CAFC Opinion, CAFC Argument

Affinity Labs of Texas, LLC v. Samsung Electronics Co., Ltd., No. 17-116

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017) to consider the constitutionality of Patent Office proceedings that analyze the validity of patents. This case involves an inter partes review proceeding at the Patent Office, in which the Patent Office invalidated Petitioner's patent and therefore involves the same question in Oil States. That is, this petition presents the question of:

Whether inter partes review—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?

Cert. petition filed 7/14/17.

CAFC Opinion, CAFC Argument

Depomed Inc. v. Matal, No. 17-114

Question Presented:

Whether inter partes review comports with Article III and the Seventh Amendment.

Cert. petition filed 7/21/17.

CAFC Opinion, CAFC Argument

Hillcrest Laboratories, Inc. v. Movea, Inc., No. 17-39

Question Presented:

Whether inter partes reexamination—an adversarial process used by the Patent Trial and Appeal Board (PTAB) of the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.

Cert. petition filed 7/5/17.

CAFC Opinion, CAFC Argument

Celgard, LLC v. Matal, No. 16-1526

Questions Presented:

  1. Whether inter partes review—an adversarial process used by the Patent and Trademark Office (“Patent Office”) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury?
  2. Whether the Federal Circuit's issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent Office violates 35 U.S.C. § 144's requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals?
  3. Whether the Federal Circuit's pervasive practice of issuing Rule 36 judgments without opinions to affirm more than 50% of appeals from the Patent Office has exceeded the bounds of reasonableness and is inconsistent with “principles of right and justice”?
  4. Whether the Patent Office's consistent practice of failing to consider the claimed invention “as a whole” and failing to consider whether the combination of elements would lead to “anticipated success” in an obviousness determination conflicts with 35 U.S.C. § 103 and this Court's precedent in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)?

Cert. petition filed 6/19/17, conference 9/25/17.

CAFC Opinion, CAFC Argument

Voter Verified, Inc. v. Election Systems & Software LLC, No. 16-1505

Questions Presented:

The following important question of federal law is presented:

Whether direct infringement under 35 U.S.C. § 271(a) occurs as a necessary result when multiple independent entities each perform one or more steps of a patented method in the practice thereof without authority? 

The Petitioner answers this question in the affirmative.  This Court on certiorari in Limelight Networks, Inc. v. Akamai Technologies, Inc., 134 S. Ct. 2111 (2014) reversed and remanded the Federal Circuit decision in Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1319 (Fed. Cir. 2012) (“Akamai II”) noting that “the Federal Circuit will have the opportunity to revisit the § 271(a) question if it so chooses”. On remand the Federal Circuit en banc in Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 102 (Fed. Cir. 2015) (“Akamai IV”), ultimately overruled the single-entity precedents: Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008); and BMC Resources, Inc. V. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007).  However, it appears as a necessary conclusion that the Federal Circuit has adhered to those overruled single-entity precedents in affirming without opinion the district court's denial of relief from a judgment declaration of non-infringement.

Cert. petition filed 6/13/17, conference 9/25/17.

CAFC Opinion, CAFC Argument

Lakshmi-Arunachalam v. SAP America, Inc., No. 16-1442

Questions Presented:

  1. Whether the Legislative ultra vires America Invents Act (AIA)'s Repugnant Authorization to Quash Patent Grants once Given in USPTO's “Material Breach of Contract” with Inventors usurps the “Separation of Powers” clause in the U.S. Constitution [Where no social or economic circumstances exist.] by de facto overruling U.S. Supreme Court “First Impression” Constitutional res judicata decision by Chief Justice Marshall's finding in Fletcher v. Peck in 1810, prohibiting the Government from quashing or rescinding grants once given.
  2. Whether the stated intent of the America Invents Act (ALA) was a Legislative ruse coloring the PTAB's preexisting quashing of Government grants with wanton ignorance and indifference to Chief Justice Marshall's “First Impression” Contract finding on Government Grants in Fletcher v. Peck in 1810; with, supplemental Legislative authority to continue quashing issued grants patently in willful compromise of individual Professional Oaths of Office and USPTO Mission in contempt of individual duty to protect and uphold the Constitution and Laws of the Land established by the U.S. Supreme Court; constitute, treason on the Constitution itself.
  3. Whether USPTO and District and Appellate Courts standing in Breach of Contract with Inventors in support of the America Invents Act (ALA), denying a fair hearing to Inventors every step of the way to the Supreme Court demonstrates professional contempt for Chief Justice Marshall's “First Impression” Constitutional precedent in Fletcher v. Peck in 1810, prohibiting the Government from quashing or rescinding *ii grants once given, for which they should be held professionally accountable.
  4. Whether USPTO and District and Appellate Courts standing in support of the America Invents Act (AIA) in USPTO's “Material Breach of Contract” with Inventors violates an Inventor's rights to Constitutional Res Judicata of the Law of the Land.

Cert. petition filed 5/25/17, waiver of respondent SAP America, Inc. filed 6/15/17, conference 9/25/17.

No CAFC Opinion (appeal dismissed), No CAFC Argument

Oleksy v. General Electric Co., No. 16-1427

Questions Presented:

Should this Court exercise its supervisory power to reverse Federal Circuit's affirmance without an opinion of a non-infringement decisin which was based on district court's patent claim construction that departed from several well-established fundamental principles of patent law, namely that:

  • claims are construed from the perspective of one of ordinary skill in the pertinent art;
  • limitations may not be imported into the claims from the specification;
  • limitations not disclosed in the patent may not be imported into the claims; and,
  • claim construction should not exclude the preferred embodiment;
  • where the faulty construction led to an absurd result of excluding from the claims the process disclosed in the patent specification; and,
  • where the Federal Circuit was established, inter alia, to increase uniformity in the application of patent law

Cert. petition filed 5/30/17, waiver of respondent General Electric Company filed 6/9/17, conference 9/25/17.

No CAFC Opinion, CAFC Argument

Synopsys, Inc. v. Mentor Graphics Corp., No. 16-1288

Questions Presented:

In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Court reaffirmed the two-part test for determining whether an invention is patent-eligible under 35 U.S.C. § 101: (1) whether the patent claims are directed to a patent ineligible concept, such as laws of nature, natural phenomena, or abstract ideas, and (2), if so, whether the elements of the claim contain an “inventive concept” that transforms the ineligible concept into an invention that is patent-eligible. Here, a panel of the Federal Circuit held that in determining whether a patent is directed to an abstract idea, a court must ignore the specification and evaluate only the express limitations in the claims. The panel further held that the accused patents failed the second step of Alice because the claims do not explicitly call for involvement of a computer and therefore could not be characterized as an improvement to computers.

The questions presented are:

  1. Whether the § 101 inquiry requires courts to ignore the specification, as the Federal Circuit held, or whether courts should ascertain the true scope of the claims in light of the specification and intrinsic record in determining whether they are drawn to a patent-ineligible concept.
  2. Whether an otherwise revolutionary technological breakthrough is not an “inventive concept” under the second step of Alice merely because the court believed the breakthrough could theoretically be implemented without a computer.

Cert. petition filed 4/27/17, conference 9/25/17.

CAFC Opinion, CAFC Argument

Samsung Electronics Co., Ltd. v. Apple Inc., No. 16-1102

Questions Presented:

This petition presents three questions of great importance to patent law that arise from the decisions of a deeply divided Federal Circuit:

  1. Do this Court''s decisions in Graham v. John Deere Co., 383 U.S. 1 (1966), and KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), require a court to hold patents obvious as a matter of law under 35 U.S.C. § 103 where the patents make at most trivial advances over technologies well-known to a person of skill in the art?
  2. Does this Court''s decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), require application of the four-factor test for injunctions in accordance with traditional equitable principles, and therefore require more than merely “some connection” between an infringing feature and asserted irreparable harm to support issuance of an injunction for patent infringement?
  3. Does this Court''s decision in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), require evidence that an accused product meets all elements of the relevant claim to support entry of a judgment of patent infringement?

Cert. petition filed 3/10/17, CVSG 6/26/17.

WilmerHale represents respondent Apple Inc.

CAFC Opinion, CAFC Argument

WesternGeco LLC v. ION Geophysical Corp., No. 16-1011

Questions Presented:

Under 35 U.S.C. § 271(f), it is an act of patent infringement to supply “components of a patented invention,” “from the United States,” knowing or intending that the components be combined “outside of the United States,” in a manner that “would infringe the patent if such combination occurred within the United States.”

Under 35 U.S.C. § 284, patent owners who prevail in litigation are entitled to “damages adequate to compensate for the infringement.”

In this case, despite affirming that Respondent was liable for infringement under § 271(f), the majority of a divided panel of the court of appeals held that Petitioner was not entitled to lost profits caused by the proscribed combination. The court of appeals reasoned that even when Congress has overridden the presumption against extraterritorial application of the law in creating liability, the presumption must be applied a second time to restrict damages.

The question presented is:

Whether the court of appeals erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases where patent infringement is proven under 35 U.S.C. § 271(f).

Cert. petition filed 2/17/17, conference 5/25/17, CVSG 5/30/17.

CAFC Opinion, CAFC Argument