Patent Regulation on the Supreme Court docket February 2022

by Dennis Crouch

The Supreme Court docket has not but granted writ of certiorari in any patent instances this time period.  And, absent an uncommon shadow-docket patent case, it’s now too late for any case to be granted and heard this time period. Relatively, any new grant this time period will very doubtless be pushed again to the October 2022 Time period for listening to and resolution.

Nonetheless, there are a variety of essential patent instances pending earlier than the court docket. Lets speak them via.

Though no petitions have been granted, the Supreme Court docket has requested amicus briefs from the Federal Authorities in 4 specific instances.  The request, often known as a CVSG, sometimes requires 4 of the 9 Justices — the identical quantity wanted to grant certiorari.  Due to that heavy threshold, a CVSG is often seen as an essential sign that the court docket is prone to grant certiorari.  However, the true increase solely occurs if the federal government transient helps certiorari.

Listed here are the 4 CVSG instances, I describe them in additional element beneath.

  • Eligibility underneath Part 101: American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, et al., No. 20-891 (CVSG requested Might 3, 2021);
  • Res Judicata and the Patent-Particular Kessler Doctrine: PersonalWeb Applied sciences, LLC v. Patreon, Inc., et al., No. 20-1394 (CVSG requested October 4, 2021);
  • Undermining Jury Selections: Olaf Sööt Design, LLC v. Daktronics, Inc., et al., No. 21-438 (CVSG requested October 4, 2021); and
  • Appellate Standing for IPR Challenger: Apple Inc. v. Qualcomm Included, No. 21-746 (CVSG requested February 22, 2022).

Standing: The newest CVSG is in Apple v. Qualcomm, a case specializing in appellate standing following an IPR remaining written resolution favoring the patentee.  The statute signifies that any get together to an IPR final-written-decision has a proper to attraction. 35 U.S.C. § 319. Nevertheless, a statutory proper is inadequate for Constitutional standing.  Relatively, an appellant should present concrete harm brought on by the PTAB resolution and redressability of that harm.  Qualcomm had beforehand sued Apple for patent infringement, and Apple responded with a set of inter partes assessment petitions.  The events settled the litigation earlier than the IPRs had been full, however agreed that the IPRs might proceed.  The settlement additionally included a license to hundreds of Qualcomm patents.  Right here’s the issue — in its attraction, Apple was not in a position to present Apple’s rights or duties underneath the license would change if the patents had been cancelled. And, though the license is ready to run out earlier than the patents, the court docket discovered that potential future infringement to be too speculative. The petition asks the next query: Whether or not a licensee has Article III standing to problem the validity of a patent coated by a license settlement that covers a number of patents.  This query ties the case on to MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118 (2007) the place the Supreme Court docket discovered standing for a licensee to problem a patent — and rejecting the Federal Circuit’s reasonable-apprehension-of-suit requirement.  Apple’s petition attracted 4 amicus briefs, together with a bipartisan transient from Senator Patrick Leahy  (D) and Congressman Darrell Issa (R).

Intel v. VLSI Tech, additionally focuses on IPR standing, albeit in considerably completely different posture.  Intel’s IPR petition was denied underneath the NHK-Fintiv Rule that allows the PTAB to disclaim establishment of in any other case adequate IPRs primarily based upon the existence of ongoing parallel litigation involving the identical patent and events.  The statute features a assertion that the USPTO’s discretionary denial of establishment is “remaining and nonappealable,” however Intel argues that attraction continues to be correct right here as a result of the denial was “arbitrary and capricious”, “violates the AIA and undermines the function of IPR in Congress’s effort to enhance the integrity of the patent system.”

Eligibility: American Axle v. Neapco has been awaiting views of the SG since Might of 2021.  The asserted patent covers a brand new technique of producing an vehicle drive-shaft with lowered vibration.  The essential concept: insert a “tuned” liner right into a hole shaft.  The liner  is particular–it’s made from a “reactive absorber” and its mass and stiffness have been “tuned” all for the aim of attenuating each “shell mode vibrations” and “bending mode vibrations” of the shaft.  The petition asks two questions: (1) What does it imply to be “directed to” an ineligible idea? (Alice Step 1). and (2) Is eligibility a pure questions of regulation (primarily based upon the claims); or does it additionally contain a “query of reality for the jury primarily based upon the cutting-edge on the time of the patent?”  Numerous people filed amicus briefs within the case.  Probably the most attention-grabbing was submitted by Profs. Menell and Lefstin.  Nonetheless, we’re awaiting the views of the Solicitor Normal in American Axle.

Three different eligibility instances are pending:

  • PersonalWeb Applied sciences LLC,  v. Google LLC;
  • Common Safe Registry LLC v. Apple Inc.; and
  • Gabara v. Fb, Inc.

These instances have all tied their mounts to the lead horse of American Axle and so might rise or extra doubtless fall collectively.  The court docket not too long ago denied certiorari in Yu v. Apple.  The invention in Yu was a multi-lens digital camera deemed summary by the Federal Circuit.

The Kessler Doctrine: If you wish to actually dig into this case, please learn my article on the subject that I wrote for an Akron Regulation assessment IP symposium challenge.  Dennis Crouch & Homayoon Rafatijo, Resorbing Patent Regulation’s Kessler Cat into the Normal Regulation of Preclusion, 54 Akron Regulation Ref. ___ (2022)(forthcoming).

The fundamentals you recognize about res judicata (declare preclusion) and collateral estoppel (challenge preclusion), however in patent regulation now we have a 3rd and obvious co-equal type of judge-made preclusion often known as the Kessler Doctrine.  Though the doctrine derives its title from a 1907 Supreme Court docket resolution, the doctrine within the type comprehend it at present was created by the Federal Circuit in its 2014 Mind Life resolution after which expanded later in SpeedTrack (Fed. Cir. 2015) and once more in PersonalWeb Techs. (Fed. Cir. 2020).   In its petition, PersonalWeb argues that Kessler shouldn’t be seen as a freestanding doctrine and shouldn’t apply in conditions involving voluntary dismissal.

I count on that the SG’s workplace will agree with our argument that the Kessler must be seen as falling absolutely throughout the bounds of challenge and declare preclusion and that the Federal Circuit improperly expanded its attain.

The fourth and remaining case with a pending CVSG is Olaf Sööt Design, LLC v.  Daktronics, Inc. The petition presents a traditional argument that the Federal Circuit’s sua sponte declare development on attraction undermined the jury verdict in a approach that conflicts with Soot’s Seventh Modification rights.  Though patent infringement is a query of proven fact that goes to the jury, in lots of instances the courts successfully determine the infringement questions as a part of the declare development.  Right here, the Federal Circuit did that, however in an additional offensive approach — sua sponte; after the jury had already determined the case; and in a way that “basically recasts” the factual infringement  query as a declare development challenge.

For litigators accustomed to the case regulation, the main focus right here is the Federal Circuit’s 2008 resolution in O2 Micro and its subsequent enlargement.  The petition explains: “This line of authority … extends properly past this Court docket’s Markman ruling and now basically disrupts the orderly decision of patent disputes on the trial stage.”

A considerably related pending petition is Daikin Industries v. Chemours Co. Relatively a jury trial, Daikin concerned an IPR resolution by the PTAB.  The query within the petition is whether or not the Federal Circuit is permitted to “reverse an administrative company’s resolution on a factual floor not addressed by the company.”  And, relatively than basing its argument on the seventh Modification, Daikin’s petition is grounded within the Administrative Process Act and “the ideas of separation of powers embedded inside that Act.”

Full Scope Enablement: Amgen v. Sanofi has the potential of being an enormous case by way of the way it impacts the way forward for biotech innovation. The patent right here claims a genus of monoclonal antibodies that the Federal Circuit lacked adequate enabling disclosure.  The petition asks two specific questions: 1. Is enablement a query of reality for the jury or a query of regulation because the FedCir held; 2. Does the statutory “make and use” requirement require enablement to the “full scope of the claimed embodiments”?

Prior Artwork for IPRs: An attention-grabbing statutory interpretation petition is pending in Baxter v. BD.  Congress was cautious to restrict the scope of IPR proceedings.  The IPR petition might request claims “solely on the idea of prior artwork consisting of patents or printed publications.”  35 U.S.C. 314(b).  Within the case, skilled testimony was used to fill a spot within the prior artwork, and the query is whether or not the usage of skilled testimony on this method violates the statutory provision.

PTAB Observe: The Supreme Court docket not too long ago denied a variety of NHK-Fintiv discretionary dismissal instances.  Yet another continues to be pending – Intel Company v. VLSI Expertise LLC.  The Solicitor’s workplace filed a robust responsive transient which makes me assume that we’ll see a denial right here.

Numerous litigation energy is being spent on whether or not or not the plaintiff’s alternative of decide (Choose Albright) will stick.  The statute for correct venue in patent narrowly proscribes acceptable venues and the Federal Circuit has additional restricted venue with its aggressive granting of mandamus actions on comfort grounds.

Ikorongo Texas LLC, v. Samsung Electronics Co., Ltd., the patentee (Ikorongo) tried to change the phrases of the talk by geographically dividing its patent — with a specific firm (Ikorongo Texas) rights to the patent solely with respect to the counties encompassed by Choose Albright’s court docket within the Western District of Texas.  When the defendants tried to switch venue to N.D.Cal., the patentee defined that district wouldn’t be correct underneath the venue statute 1400(b).  On mandamus, nonetheless, the Federal Circuit reduce via the company type — discovering that this division of rights “latest, ephemeral, and synthetic” and thus couldn’t be used to maintain the case in Texas.  The petition straight challenges this facet of the Federal Circuit resolution and in addition asks the Supreme Court docket to rethink its public-and-private components used for handy discussion board — they’re extraordinarily outdated.

Final case nonetheless pending: Warmth On-The-Fly, LLC. v. Power Heating, LLC.  Within the case, the patentee misplaced as a consequence of inequitable conduct. Principally, the patentee didn’t disclose pre-filing gross sales of the invention.  The court docket additionally discovered the case distinctive and awarded lawyer charges to the defendant.  Along with the actual fact of inequitable conduct, the court docket additionally famous that the patentee pursued aggressive litigation regardless of understanding that the patent was unenforceable.  The trial court docket award was affirmed on attraction.  Now, the patentee petitioned for certiorari with an argument that any evaluation of lawyer charges “should think about litigation misconduct, or lack thereof, in figuring out whether or not a case is phenomenal underneath 35 U.S.C. § 285?”  I don’t see this going anyplace.

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