Patent Law And The Supreme Court: Certiorari Petitions Denied - July 2013

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.

ClearPlay, Inc. v. Nissim Corp., No. 12-1365

Questions Presented:

After Respondents granted Petitioner ClearPlay, Inc. a license of their patent rights, Respondent Nissim Corp. told ClearPlay's business partners that the licensee's products (1) violated certain covenants of the parties' license agreement unrelated to the patents' field of use, (2) were accordingly "unlicensed," and (3) therefore infringed on the licensors' patents.

Is a patent license an affirmative covenant not to sue, as held by the Federal Circuit and adopted by several other circuits, or does a license allow the licensor to threaten infringement suits, as held by the Eleventh Circuit?

Do federal patent laws preempt state-law business-interference claims when the veracity of a licensor's assertions that its products were "unlicensed" can be determined by looking to the terms of the license agreement without regard to any issues of patent law?

Cert. petition filed 5/15/13, waiver of respondent Nissim Corp. filed 5/22/13, conference 6/20/13. Petition denied 6/24/13.

CA11 Opinion

Mirror Worlds, LLC v. Apple Inc., No. 12-1158

Question Presented:

Whether the offer for sale and/or sale of a product that embodies a patented invention can directly infringe a method claim under 35 U.S.C. § 271(a)? Whether the Federal Circuit has created an improper de facto rule precluding the use of circumstantial evidence to establish that one or more steps in a patented method have been performed for the purpose of demonstrating infringement? Cert petition filed 3/21/13, waiver by respondents Apple Inc. filed 3/27/13, response requested 4/17/13, conference 6/20/13. Petition denied 6/24/13.

CAFC Opinion, CAFC Argument

Momenta Pharmaceuticals Inc., et al. v. Amphastar Pharmaceuticals, Inc., et al., No. 12-1033

Questions Presented:

The Drug Price Competition and Patent Term Restoration Act, also known as the Hatch-Waxman Act, created a safe harbor from liability for patent infringement. The statutory safe harbor provides that it shall not be an act of patent infringement to make or use a patented invention "solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs." 35 U.S.C. § 271(e)(1). The safe harbor "allows competitors, prior to the expiration of a patent, to engage in otherwise infringing activities necessary to obtain regulatory approval" from the Food and Drug Administration ("FDA"). Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661, 671 (1990). In this case, the Federal Circuit held that the safe harbor immunizes respondents' use of petitioners' patented method in the course of post-approval manufacturing of respondents' drug for commercial sale, in direct competition with petitioners, during and throughout the life of petitioners' patent.

The question presented is:

Whether the use of a patented invention in the course...