Patent Law And The Supreme Court: Certiorari Petitions Denied

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

Aspex Eyewear, Inc., et al. v. Altair Eyewear, Inc., No. 12-1120

Question Presented:

Under 35 U.S.C. § 103(a), a claimed invention is patentable if it would not have been "obvious" at the time it was made to a person having ordinary skill in the art. In KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398 (2007), this Court held that obviousness is determined by looking "to interrelated teachings of multiple patents; the effects of demands known to the design community or present in the marketplace; and the background knowledge possessed by a person having ordinary skill in the art, all to determine whether there was an apparent reason to combine known elements in the fashion claimed by the patent at issue." KSR, 550 U.S. at 418. The question presented here is:

Whether the Federal Circuit effectively eliminated the standard articulated in KSR by substituting the trial court's own determination of "common sense," a standardless and unpredictable standard.

Cert petition filed 3/13/13, waiver of respondent Altair Eyewear filed 3/21/13, conference 4/12/13. Petition denied 4/15/13.

CAFC Opinion, CAFC Argument

Andrews Arts & Sciences Law, LLC, et al. v. Snowizard, Inc., No. 12-974

Question Presented:

Where patent litigation is pending in federal court, the patent-holding defendant sued the plaintiffs' attorney in state court for defamation and unfair practices for publishing an essay about the federal litigation, alleging an attempt to taint the jury pool and gain unfair advantage in the federal litigation, identifying the federal case numbers, and using the word "patent" 16 times:

Do state courts have subject-matter jurisdiction of defamation and unfair-practices collateral lawsuits against the attorney for opponents in federal-court patent litigation, which allege the attorney's actions related to the patent litigation?

Court of Appeal of Louisiana, Fifth Circuit, opinion not available. Court of Appeal of Louisiana, Fifth Circuit, argument transcript not available.

Cert. petition filed 2/4/13, waiver of respondent SnoWizard, Inc. filed 2/11/13, conference 3/15/13. Petition denied 3/18/13.

McKesson Technologies, Inc. v. Epic Systems Corp., No. 12-970

Question Presented:

Under what circumstances is a person who performs some of the steps of a patented method, in combination with another's performance of the remaining steps, liable for direct infringement of the patent?

Conditional cross petition for cert. filed 2/4/13. Petition dismissed-Rule 46 3/11/13.

CAFC Opinion, CAFC Argument

Epic Systems Corp. v. McKesson Technologies, Inc., No. 12-800

Question Presented:

Whether a defendant may be held liable for inducing infringement of a patent that no one is liable for infringing.

Cert. petition filed 12/28/12. Petition dismissed-Rule 46 3/11/13.

CAFC Opinion, CAFC Argument

Ninestar Technology Co., Inc., et al. v. ITC, et al., No. 12-552

Question Presented:

"The longstanding doctrine of patent exhaustion provides that the initial authorized sale of a patented item terminates all patent rights to that item." Quanta Computer, Inc. v. LG Elecs., Inc., 553 U.S. 617, 625 (2008). In Holiday v. Mattheson, 24 F. 185, 185 (C.C.S.D.N.Y. 1885), the court held that foreign sales authorized by U.S. patentees exhaust U.S. patent rights. That decision was followed for more than a century. In Jazz Photo Corp. v. International Trade Commission, 264 F.3d 1094, 1105 (Fed. Cir. 2001), however, the Federal Circuit concluded that foreign sales do not exhaust U.S. patent rights. The question presented is:

Whether the initial authorized sale outside the United States of a patented item terminates all patent rights to that item.

Cert. petition filed 11/2/12, conference 3/15/13, conference 3/22/13. Petition denied 3/25/13.

CAFC Opinion, CAFC Argument

Computer Packages, Inc. v. WhitServe, LLC, et al., No. 12-833

Question Presented:

Whether 35 U.S.C. § 101, which defines the subject matter that is eligible for a patent, is a jurisdictional statute. Whether a federal court must address whether a patent claims abstract ideas or mental steps, outside the scope of patentable subject matter defined by 35 U.S.C. § 101, whenever the issue comes to the court's attention. Whether Respondents' U.S. Patent Nos. 5,895,468, 6,049,801 and 6,182,078, which patent looking up due dates and notifying clients of them, claim unpatentable abstract ideas or mental steps under 35 U.S.C. § 101. Cert. petition filed 1/4/13, waiver of respondent WhitServe, LLC filed 1/10/13, conference 2/15/13. Petition denied 2/19/13.

CAFC Opinion, CAFC Argument

Beineke v. Kappos, No. 12-580

Question Presented:

Does the plant patent statute, 35 U.S.C. §161, require that the plant be created by man?

Cert. petition filed 11/5/12, conference 1/11/13, conference 2/15/13. Petition denied 2/19/13.

CAFC Opinion, CAFC Argument

Jia Jewelry Imports of America, Inc. v. Pandora Jewelry, LLC, No. 12-577

Question Presented:

Does Article III's grant of jurisdiction of "all Cases ... arising under ... the Laws of the United States," implemented in the €Üactual controversy' requirement of the Declaratory Judgment Act, §28 U.S.C. 2201(a), require the patent holder to have direct communication with the potential patent infringer before that infringer may sue to declare the patent invalid or not infringed?

Cert. petition filed 11/6/12, conference 2/15/13. Petition denied 2/19/13.

CAFC Opinion, CAFC Argument

Regents of the University of California, et al. v. Caldera Pharm., Inc., No. 12-570

Questions Presented:

Are a patent licensee's contract and tort claims against its licensor claims that arise under federal patent law such that they are within the exclusive jurisdiction of the federal courts when: those claims depend upon proof of infringement of a claim of a licensed patent or patent application; the patent license measures the allegedly breached obligations by reference to provisions of the federal patent laws and regulations governing practice before the United States Patent and Trademark Office; or, the licensee's claims seek to impose duties upon licensed practitioners conducting patent prosecution before the United States Patent and Trademark Office? In determining whether a patent license dispute arises under federal patent law and is within the exclusive jurisdiction of the federal courts, should the court consider the license and actual elements of proof necessary for the plaintiff to prevail on its claims? Cert. petition filed 11/5/12, conference 2/15/13. Petition denied 2/25/13.

Cal. Supreme Court opinion not available. Cal. Supreme Court oral argument not available.

Wang v. Plasmart Inc., No. 12-616

Question Presented:

Did the Federal Circuit have power to go outside the record to override the contrary factual findings of the United States Patent and Trademark Office and invalidate a patent solely based on its own unarticulated and unexplained view of "common sense"?

Cert. petition filed 11/13/12, waiver of federal respondent filed 12/7/12, conference 1/18/13. Petition denied 1/22/13.

CAFC Opinion, CAFC Argument

Transaction Holdings, Ltd., et al. v. Kappos, No. 12-674

Question Presented:

Whether the Federal Circuit erred in affirming a decision based on a definition of the term "Internet" for purposes of patent protection as consisting solely of a "public network" and not including private networks. Whether the Federal Circuit erred in affirming a decision of the Board of Patent Appeals and Interferences based on grounds which were different from those found by patent examiners and which petitioner has therefore never had an opportunity to address or rebut. Cert. petition filed 11/29/12, waiver by respondent David Kappos filed 12/11/12, conference 1/11/13. Petition denied 1/14/13.

CAFC Opinion, CAFC Argument

Apotex Inc., et al. v. Otsuka Pharma Co., Ltd., No. 12-571

Question Presented:

Under the Patent Act, "a patent may not be obtained" if its subject matter would have been "obvious" when viewed in light of the prior art. 35 U.S.C. § 103. This statutory patentability standard invalidates any patent claim that would have been obvious in view of any prior art, regardless of the technology at issue. In recent years, and continuing even after this Court's decision in KSR Int'l v. Teleflex, Inc., 550 U.S. 398 (2007), the Federal Circuit has applied a restrictive "lead compound" test for determining the obviousness of pharmaceutical compounds, which limits the scope of the prior art against which the obviousness of pharmaceutical compounds are evaluated to one or more "lead compound[s]," on the ground that a "lead compound" is "a natural choice and "most promising" ... "for further development efforts". The question presented is whether the "lead compound" requirement is consistent with the statutory command that all obvious variations of the prior art be denied patent protection, given that there will be cases in which the structural similarity between the patented compound and a prior art compound, even if not a lead, rendered the patented compound obvious.

Cert. petition filed 11/5/12, waiver of respondent Sun Pharma. Industries, Ltd. Filed 11/26/12, waiver of respondent Sandoz, Inc. filed 12/5/12, conference 1/11/13. Petition denied 1/14/13.

CAFC Opinion, CAFC Argument

Mylan Pharm. Inc., et al. v. Eurand, Inc., nka Aptalis Pharmatech, Inc., et al., No. 12-514

Question Presented:

The Patent Act provides that "[a] patent may not be obtained ... if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains."35 U.S.C. § 103(a). In reviewing patent claims...