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

EVE-USA, Inc. v. Mentor Graphics Corp., No. 17-804

Questions Presented:

  1. The Federal Circuit has carved out an exception in the Patent Act with a judge-made rule known as “assignor estoppel.” Assignor estoppel precludes an inventor who has assigned her patent, and those in privity with her, from contesting the patent's validity in an infringement suit. The Patent Act has no such bar. And, this Court in Lear, Inc. v. Adkins, 395 U.S. 653 (1969), abolished the analogous doctrine of “licensee estoppel,” which barred licensees from challenging the validity of patents they licensed, as contrary to the important public interest of eliminating invalid patents. The question is whether, and under what circumstances, assignors and their privies are free to contest a patent's validity.
  2. This Court has long adhered to a rule requiring apportionment of damages: “When a patent is . . . not for an entire[] . . . machine or contrivance, the patentee must . . . separate or apportion . . . the patentee's damages between the patented feature and the unpatented features.” Garretson v. Clark, 111 U.S. 120, 121 (1884). In Garretson and multiple other cases, this Court applied that rule to damages in the form of lost profits. The Federal Circuit, however, permits patentees to recover lost profits damages for an entire multi-component product, without apportioning the value between patented and unpatented features, simply by showing that the patentee would have made the sale “but for” the infringement. Pet. App. 22a. Did the Federal Circuit err in holding that proof of but-for causation, without more, satisfies the requirement that damages be apportioned between patented and unpatented features? 

Cert. petition filed 11/30/17.

CAFC Opinion, CAFC Argument

Enova Technology Corp. v. Seagate Technology (US) Holdings, Inc., No. 17-787

Question Presented:

This Court recently granted certiorari in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, 639 F. App'x 639 (Fed. Cir. 2016), cert. granted, 2017 WL 2507340 (U.S. June 12, 2017) (“Oil States”) to consider the constitutionality of interpartes review (“IPR”) proceedings that analyze the validity of issued patents. The present case, in which the United States Patent & Trademark Office (“USPTO”) invalidated Petitioner's patent, involves the same question presented in Oil States: that is, whether IPR proceedings, an adversarial process used by the Patent Trial and Appeal Board (“Board”) of the USPTO 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 11/27/17.

CAFC Opinion, CAFC Argument

Wyeth LLC v. Rite Aid Corp., No. 17-771

Question Presented:

In FTC v. Actavis, Inc., 133 S. Ct. 2223 (2013), this Court held that a patentee who settles an infringement suit by making a “large” and “unexplained” payment to an alleged infringer in exchange for the competitor's agreement to refrain from entering the market is not protected by the antitrust immunity patentees otherwise enjoy. Actavis made clear, however, that its holding should not be construed as impinging upon any other “right” that the patent laws grant patentees, “whether expressly or by fair implication.” Id. at 2233. 

One such right granted by the patent laws is the right to grant a competitor an exclusive license—i.e., an authorization allowing the competitor to enter the market before patent expiry in exchange for payment from the competitor. See 35 U.S.C. §261. Despite Actavis' clear admonition that such rights should be respected, and notwithstanding the obvious differences between an exclusive license and the kind of “reverse payment” Actavis addressed, the Third Circuit held that a patente's decision to settle patent litigation by granting an exclusive license to the alleged infringer may trigger antitrust scrutiny, even when the license allows the competitor to enter the market before patent expiry, and even when the competitor provides robust consideration in exchange for its license.

The question presented is:

Whether a patentee's grant of an exclusive license to settle a single patent dispute may give rise to antitrust liability notwithstanding 35 U.S.C. §261. 

Cert. petition filed 11/20/17.

CA3 Opinion, CA3 Argument

Hitachi Metals, Ltd. v. Alliance of Rare-Earth Permanent Magnet Industry, No. 17-768

Question Presented:

This petition presents the same question that the Court is considering in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712:

Whether interpartes review—an adversarial process used by the United States 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 11/21/17, waiver of respondent Alliance of Rare-Earth Permanent Magnet Industry filed 12/13/17.

CAFC Opinion, CAFC Argument

Li v. Matal, No. 17-761

Question Presented:

Whether the Extraterritoriality Doctrine of Dormant Commerce Clause is applicable for a state or a federal agent to directly regulate professional service wholly out of the state's or agent's territories. Professionals include, but not limited to accountants, architects, economists, engineers, medical doctors, nurses, lawyers, morticians, optometrists, real estate brokers, scientists, and surveyors. 

Cert. petition filed 11/6/17, waiver of respondent Joseph Matal filed 12/4/17, conference 1/5/18.

CAFC Opinion, No CAFC Argument

Nidec Motor Corp. v. Zhongshan Broad Ocean Motor Co., Ltd., et al., No 17-751

Questions Presented:

  1. Whether the Federal Circuit has erred in holding that, for the purposes of an obviousness determination under 35 U.S.C. § 103(a), a reference “teaches away” from a proposed combination only if it expressly “criticize[s], discredit [s], or otherwise discourage[s]” the proposed combination.
  2. Whether inter partes review—an adversarial process used by the Patent and Trademark Office to analyze the validity of existing patents—violates the Constitution by extinguishing private party rights through a non-Article III forum without a jury. . 

Cert. petition filed 11/20/17, waiver of respondent Zhongshan Broad Ocean Motor Co., et al. filed 12/8/17.

CAFC Opinion, CAFC Argument

Prism Technologies LLC v. T-Mobile USA, Inc., No. 17-716

Question Presented:

Whether a district court's factual findings in support of its holding that claims are directed to patent eligible subject matter may be reviewed de novo, as the Federal Circuit requires (and as the panel did in this case), or only for clear error, as Rule 52(a) and corollary Supreme Court precedent require.  

Cert. petition filed 11/9/17.

CAFC Opinion, CAFC Argument

KIP CR P1 LP v. Oracle Corporation, et al., No. 17-708

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 11/3/17.

CAFC Opinion, CAFC Argument

KIP CR P1 LP v. Cisco Systems, Inc., et al., No. 17-707

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 11/3/17.

CAFC Opinion, CAFC Argument

Smartflash LLC v. Apple Inc., No. 17-697

Question Presented:

Whether patents that claim a specific arrangement of technological elements, claiming apparatuses and specific methods providing a technological solution to the problem of Internet data piracy, are patent eligible under 35 U.S.C. § 101 when they do not preempt alternative technological solutions. 

Cert. petition filed 11/9/17, conference 1/5/18.

CAFC Opinion, CAFC Argument

Audatex North America, Inc. v. Mitchell Intern., Inc., No. 17-656

Question Presented:

This Court recently granted certiorari in Oil States Energy Services LLC v. Greene's Energy Group, LLC, 137 S. Ct. 2239 (2017) to consider the constitutionality of certain administrative proceedings created by the Leahy-Smith America Invents Act (“AIA”) to evaluate the validity of issued patents. Pub. L. No. 112-29, 125 Stat. 284 (2011). This case involves one such type of proceeding (“covered business method” review), which presents the same constitutional infirmities as the inter partes review proceeding at issue in Oil States. Thus, this case presents essentially the same question presented in Oil States, namely:

Whether adversarial processes used by the Patent and Trademark Office (PTO) to analyze the validity of issued patents violate the Constitution by extinguishing private property rights through a non-Article III forum without a jury. 

Cert. petition filed 10/23/17, waiver of respondent Mitchell International, Inc. filed 11/27/17, response requested 12/11/17.

CAFC Opinion, CAFC Argument

Ali v. Carnegie Inst. of Washington, No. 17-655

Questions Presented:

  1. In Florida Prepaid Postsecondary Educ. Expense Bd. v. Coll. Sav. Bank, 527 U.S. 627, 640 (1999), this Court struck down the Patent Remedy Act which held States liable for patent infringement and did so noting that “Congress identified no pattern of . . .constitutional violations” to show such legislation is warranted to force waiver of a state's Eleventh Amendment sovereign immunity. In the Federal Circuit case of Xechem Int'l, Inc. v. Univ. of Tex. M.D. Anderson Cancer Ctr., 382 F.3d 1324,1335 (Fed. Cir. 2004), cert. denied 543 U.S. 1149, 125 S. Ct. 1314 (2005), that court held that states have sovereign immunity to inventorship corrective suit under 35 U.S.C. § 256, but Judge Newman noted in additional views that the States' increasing use of sovereign immunity was creating “an increasing urgency, as the states enter the private competitive arena governed by the laws of intellectual property, to establish fair relationships and just recourse.” In this action, the Federal Circuit affirmed the dismissal of a suit under 35 U.S.C. § 256 by an omitted inventor to correct inventorship on patents jointly owned by the state-entity University of Massachusetts and the private Carnegie Institution of Washington, with sovereign immunity for UMass barring joinder for the inventor to maintain the action against Carnegie. Both the lower District of Columbia District Court and Federal Circuit noted that the current law does not provide the omitted inventor with the possibility of “complete relief” due to UMass' sovereign immunity, providing the Petitioner no recourse. At what point do patent-owning States waive their sovereign immunity when they voluntarily participate in the patent system?
  2. The limited monopoly an inventor gains with the issuance of a patent is a right in equity without a monetary equivalent. By holding that States and their private patent co‑owners are immune to inventor-corrective suit under § 256, an omitted inventor has no way to obtain the equitable right to which he is entitled, and no state can provide the federal rights of a patent to the wronged inventor as compensatory damages for an unlawful taking. If Eleventh Amendment sovereign immunity is extended to allow patent-owning states to escape suits under § 256, how is this not a taking from wrongfully omitted inventors and a violation of due process of law under the Fourteenth Amendment?
  3. Carnegie is a private entity and does not have Eleventh Amendment sovereign immunity. If a State is allowed to essentially extend its sovereign immunity privilege to a private entity who co-owns a patent, how is this not a State granting a privileged status to select citizens and violative of the equal protection clause of the Fourteenth Amendment?
  4. The Constitution states at Art. 1, Sec. 8, that, “The Congress shall have Power . . . To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries.” 35 U.S.C. § 256 embodies this power of Congress and was specifically enacted to provide a judicial mechanism to correct inventorship in patents. Can Eleventh Amendment sovereign immunity subjugate Congress' express power under Art. 1, Sec. 8? 

Cert. petition filed 10/18/17, conference 1/5/18.

CAFC Opinion, No CAFC Argument

RecogniCorp, LLC v. Nintendo Co., Ltd., No. 17-645

Questions Presented:

In Alice Corp. Pty. Ltd. v. CLS Bank Int'l, 134 S. Ct. 2347 (2014), the Court set forth a two-step test for determining whether computer-implemented inventions claim patentable subject matter under 35 U.S.C. § 101. First, a court must determine whether the claims at issue are “directed to” an abstract idea. Second, if the claims are “directed to” an abstract idea, the court must then determine whether the claims recite inventive concepts—elements which ensure that the patent amounts to significantly more than a patent upon the abstract idea itself. 

The questions presented are:

  1. Whether computer-implemented inventions that provide specific improvements to existing technological processes for encoding or decoding data are patent-eligible under the first step of the Alice test, even if those inventions involve or make use of abstract ideas.
  2. Whether the use of new mathematical algorithms to improve existing technological processes by reducing bandwidth and memory usage can constitute “inventive concepts” under the second step of the Alice test.

Cert. petition filed 11/1/17, waiver of respondent Nintendo Co., Ltd. Filed 12/4/17, conference 1/5/18.

CAFC Opinion, CAFC Argument

Mirowski Family Ventures, LLC v. Medtronic, Inc., No. 17-625

Question Presented:

Contracts—particularly corporate agreements—frequently provide for the prevailing party to receive its attorney's fees in the event of litigation. Federal Rule of Civil Procedure 54(d)(2)(A) provides: “A claim for attorney's fees . . . must be made by motion,” unless “require[d]” by the substantive law “to be proved at trial as an element of damages.” Such a “motion must[] be filed no later than 14 days after the entry of judgment,” unless a statute or order provides otherwise. Fed. R. Civ. P. 54(d)(2)(B)(i).

The Question Presented, about which the courts of appeals are deeply divided, is:

May a party seek contractual prevailing-party attorney's fees without filing a timely post-judgment motion under Rule 54(d)(2)? 

Cert. petition filed 10/27/17, waiver of respondent Medtronic et al. filed 11/1/17, response requested 11/16/17, waiver of respondents Boston Scientific Corp. and Guidant Corp. filed 11/27/17, conference 1/12/18.

CAFC Opinion, CAFC Argument

C-Cation Technologies, LLC v. Arris Group, Inc., No. 17-617

Questions Presented:

  1. Whether inter partes review - an adversarial process used by the Patent and Trademark Office (USPTO) 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 USPTO violates 35 U.S.C. § 144's requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals.

The first question is identical to that presented in Oil States Energy Servs., LLC v. Greene's Energy Grp., LLC, No. 16-712, 2017 U.S. LEXIS 3727, at *1 (June 12, 2017). The second question is identical to that presented in In re: Celgard, LLC, No. 16-1526 (question #2, petition pending).

Petitioner requests that this Petition be held for each of these respective dispositions, and if favorable to either of those petitioners, requests that this Petition be granted, with the case vacated and remanded.

Cert. petition filed 10/24/17, conference 1/5/18.

CAFC Opinion, CAFC Argument

Linkgine, Inc. v. VigLink, Inc., No. 17-558

Question Presented:

On June 12, 2017, the Court granted review in Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712, to consider the following 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.

Id.  This case presents the same issue in a covered business method (CBM) review proceeding, to wit:

Whether covered business method 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.

The only difference between this case and Oil States is the type of review that was conducted by the PTO through the Patent Trial and Appeal Board (PTAB).  Oil States was an interpartes review proceeding whereas this case was a CBM review proceeding. 

Cert. petition filed 10/10/17, motion to defer consideration of the petition filed by petitioner 10/10/17, waiver of respondent VigiLink, Inc., Skimlinks, Inc., and Skimbit, Ltd. Filed 12/12/17, conference 1/5/18.

CAFC Opinion, CAFC Argument

TransPerfect Global, Inc. v. Matal, No. 17-535

Question Presented:

Whether covered business method review—an adversarial process used by the Patent Trial and Appeal Board 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 10/10/17, conference 1/12/18.

CAFC Opinion, CAFC Argument

Outdry Technologies Corp. v. Geox S.p.A., No. 17-408

Question Presented:

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

Cert. petition filed 9/14/17, conference 1/5/18.

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, conference 1/5/18.

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, waiver of respondent Secure Axcess LLC filed 9/29/17, response requested 10/12/17, conference 1/5/18.

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, conference 1/5/18.

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, waiver of respondent Baizhen Yang, et al. filed 9/27/17, response requested 10/18/17, conference 1/5/18.

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, response requested 9/26/17, conference 12/8/17.

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, conference 12/1/17.

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, conference 12/1/17.

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, conference 1/5/18.

No 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, conference 11/3/17.

CAFC Opinion, CAFC Argument

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, conference 12/8/17.

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, conference 12/8/17.

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, conference 12/8/17.

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, conference 12/8/17.

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, conference 10/27/17.

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, waiver of respondent Samsung Electronics Co., et al. filed 8/14/17, response requested 8/17/17, conference 11/21/17.

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, conference 10/27/17.

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, conference 10/6/17.

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

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, SG brief filed 12/6/17, conference 1/5/18.

CAFC Opinion, CAFC Argument