Patent Law And The Supreme Court: Certiorari Petitions Pending (February 2014)

Sandoz Inc., et al. v. Allergan, Inc., No. 13-889

Questions Presented:

The Patent Act provides that a patent may not be obtained for a claimed invention that is "obvious." 35 U.S.C. § 103. The Federal Circuit held it was obvious to combine in a single bottle two eye-drop medications commonly used together and thus invalidated one patent. But it then went on to hold it not obvious to use that same combination as it was intended to be used because a result of such use was purportedly "unexpected." That sole "unexpected result" was the unremarkable fact that the combination outperformed one of its component medications taken alone, allowing for less frequent dosing. That was the only basis for nonobviousness.

Having upheld that method-of-use claim, the Federal Circuit then refused to decide the invalidity counterclaims of two additional patents that are virtually indistinguishable from the patent it already had invalidated. Even though these separate counterclaims had been appealed as of right and would rid the marketplace of two invalid patents, the Federal Circuit deemed it "unnecessary to address" them because their resolution would not affect the termination date of the injunction.

The questions presented are:

Whether and to what extent identification of an "unexpected result" of using an obvious composition, by itself, can render that use patentable. Whether a court of appeals may sua sponte decline to decide appealed independent judgments as to counterclaims of patent invalidity. Cert. petition filed 1/22/14.

CAFC Opinion, CAFC Argument

Commil USA, LLC v. Cisco Systems, Inc., No. 13-896

Questions Presented:

Commil holds a patent teaching a method to implement short-range wireless networks. At trial, the jury returned a verdict that Commil's patent was valid, that Cisco directly infringed but did not induce infringement, and awarded damages. Because Cisco's counsel invoked stereotypes about Commil's Jewish owner and inventors during trial, the district court found the verdict "inconsistent with substantial justice" and ordered a new trial on inducement and damages only. At the second trial, the jury returned a verdict that Cisco induced infringement and awarded damages. The Federal Circuit reversed and remanded for a third trial on two grounds. First, although Commil's patent is valid, the Federal Circuit held that Cisco's "good faith belief" that the patent was invalid is a defense to induced infringement. Second, although Cisco had actual knowledge of Commil's patent, the Federal Circuit held that this Court's opinion in Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), rendered erroneous and prejudicial the jury instruction based on DSU Medical Corp. v. JMS Co., 471 F.3d 1293 (Fed. Cir. 2006). The questions presented are:

Whether the Federal Circuit erred in holding that a defendant's belief that a patent is invalid is a defense to induced infringement under 35 U.S.C. § 271(b). Whether the Federal Circuit erred in holding that Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060 (2011), required retrial on the issue of intent under 35 U.S.C. § 271(b) where the jury (1) found the defendant had actual knowledge of the patent and (2) was instructed that "[i]nducing third-party infringement cannot occur unintentionally." Cert. petition filed 1/23/14.

CAFC Opinion, CAFC Argument

Novozymes A/S, et al. v. DuPont Nutrition Biosciences APS, et al., No. 13-865

Question Presented:

This case is an opportunity for the Court to address the Federal Circuit's persistent failure to apply in patent cases the highly deferential standard of review of jury verdicts that is routinely and consistently applied by all of the regional circuits. A challenge to the validity of a patent on the ground that its claims are not supported by an adequate written description of the invention presents a pure question of fact that must be decided from the perspective of a person of ordinary skill in the art, an inquiry that frequently depends heavily on expert testimony. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351, 1355 (Fed. Cir. 2010) (en banc). The accused infringer must prove invalidity by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238 (2011). After a properly instructed jury found the claims of the asserted patent in this case adequately described and not invalid, a divided panel of the Federal Circuit held, contrary to the verdict, that the accused infringer had proved invalidity as a matter of law. The dissent objected to the majority's failure to defer to the jury's findings of fact, observing that the jury's verdict was supported by expert testimony and other substantial evidence and "deserve[d] significant deference." App. 37, 40.

The question presented is:

Whether the Federal Circuit effectively engaged in de novo review of the jury's verdict in violation of Rule 50 and the Seventh Amendment when it refused to accept a verdict supported by substantial evidence, including properly admitted expert testimony that was essential to the issue, on a question of fact on which the accused infringer bore a heightened burden of proof.

Cert. petition filed 1/20/14.

CAFC Opinion, CAFC Argument

Teva Pharmaceuticals USA, Inc., et al. v. Sandoz, Inc., et al., No. 13-854

Question Presented:

Rule 52(a) of the Federal Rules of Civil Procedure provides that in matters tried to a district court, the...

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