Patent Law and the Supreme Court: Certiorari Petitions Granted

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

Medtronic, Inc. v. Boston Scientific Corp., et al., No. 12-1128 Question Presented:

In MedImmune, Inc. v. Genentech, Inc., 549 U.S. 118, 137 (2007), this Court ruled that a patent licensee that believes that its products do not infringe the patent and accordingly are not subject to royalty payments is "not required ... to break or terminate its ... license agreement before seeking a declaratory judgment in federal court that the underlying patent is ... not infringed." The question presented is: Whether, in such a declaratory judgment action brought by a licensee under MedImmune, the licensee has the burden to prove that its products do not infringe the patent, or whether (as is the case in all other patent litigation, including other declaratory judgment actions), the patentee must prove infringement. Vided 12-1116, cert petition filed 3/14/13, conference 5/16/13, cert. petition granted 5/20/13. CAFC Opinion, CAFC Argument

Merit Briefs

Brief for Petitioner, Medtronic, Inc.

Amicus Briefs

Brief for Legal Scholars in Support of Petitioner Brief for the United States in Support of Petitioner Brief for Tessera Technologies, Inc. in Support of Neither Party Suggesting Vacatur and Remand on Subject-Matter Jurisdictional Grounds WilmerHale represents petitioner Medtronic, Inc.

Upsher-Smith Laboratories, Inc. v. Louisiana Wholesale Drug Co., Inc. et al., No. 12-265 Question Presented:

Whether the Third Circuit erred by holding, contrary to the Second, Eleventh, and Federal Circuits, that an agreement settling patent litigation that does not restrict competition outside the scope of the exclusionary right granted by the patent itself may presumptively violate the antitrust laws. Vided 12-245, cert petition filed 8/29/12, conference 12/7/12, GVR in light of FTC v. Actavis 6/24/13. CA3 Opinion, CA3 Argument: Part 1, CA3 Argument: Part 2

Merck & Co., Inc. v. Louisiana Wholesale Drug Co., Inc., et al., No. 12-245 Question Presented: Whether the federal antitrust laws permit a brand name manufacturer that holds the patent for a drug to enter into a settlement of patent litigation with a prospective generic manufacturer, where the settlement includes a payment from the brand manufacturer to the generic manufacturer but does not exclude competition beyond the scope of the patent. Cert. petition filed 8/24/12, conference 12/7/12.

CA3 Opinion, CA3 Argument: Part 1, CA3 Argument: Part 2

Bowman v. Monsanto Co., No. 11-796 Question Presented:

Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies?

Cert. petition filed 12/20/11, response requested 1/26/12, conference 3/30/12, CVSG 4/2/12, conference 9/24/12, conference 10/5/12, cert. petition granted 10/5/12, argued 2/19/13 (transcript here), affirmed 5/13/13 (opinion here), rehearing petition filed 6/7/13.

CAFC Opinion, CAFC Argument

Merit Briefs

Brief for Petitioner Vernon Hugh Bowman Brief for Respondents Monsanto Company, et al. Reply Brief for Petitioner, Vernon Hugh Bowman

Amicus Briefs

Brief for the American Antitrust Institute, National Farmers Union, Food & Water Watch, Organization for Competitive Markets, and National Family Farm Coalition in Support of Petitioner Brief for Automotive Aftermarket Industry Association, Automotive Parts Remanufacturers Association, and International Imaging Technology Council in Support of Petitioner Brief for the Center for Food Safety and Save Our Seeds in Support of Petitioner Brief for Knowledge Ecology International in Support of Petitioner Brief for the Public Patent Foundation in Support of Petitioner Brief for Agilent Technologies, Inc., Illumina, Inc., Life Technologies Corp., Promega Corp., Qiagen N.V., and Roche Molecular Systems, Inc. in Support of Respondents Brief for American Soybean Association, Illinois Soybean Association, Indiana Soybean Alliance, Iowa Soybean Association, Kansas Soybean Association, Kentucky Soybean Association, Michigan Soybean Association, Minnesota Soybean Growers Association, Mississippi Soybean Association, Missouri Soybean Association, Nebraska Soybean Association, North Dakota Soybean Growers Association, Ohio Soybean Association, Tennessee Soybean Association, Virginia Soybean Association, And Wisconsin Soybean Association, National Corn Growers Association, National Association of Wheat Growers, American Sugarbeet Growers Association, and Growers For Biotechnology in Support of Respondents Brief for the American Seed Trade Association in Support of Respondents Brief for the Biotechnology Industry Organization in Support of Respondents Brief for BSA | The Software Alliance in Support of Respondents Brief for CHS Inc. in Support of Respondents Brief for CropLife International in Support of Respondents Brief for Economists in Support of Respondents Brief for Intellectual Property Owners Association in Support of Respondents Brief for Law Professor Christopher M. Holman in Support of Respondents Brief for the New York Intellectual Property Law Association in Support of Respondents Brief for Pioneer Hi-Bred International, Inc. in Support of Respondents Monsanto Company, Et Al. Brief for Washington Legal Foundation in Support of Respondents Brief for CropLife America in Support of Affirmance Brief for the American Intellectual Property law Association in Support of Affirmance Brief for the United States in Support of Affirmance Brief for ABayhdole25, Inc. in Support of Affirmance Brief for Wisconsin Alumni Research Foundation et al. in Support of Affirming the Federal Circuit

WilmerHale represents respondent Monsanto.

Gunn v. Minton, No. 11-1118 Questions Presented:

Did the Federal Circuit depart from the standard this Court articulated in Grable & Sons Metal Products, Inc. v. Darue Eng'g & Mfg., 545 U.S. 308 (2005 ), for "arising under" jurisdiction of the federal courts under 28 U.S.C. § 1338, when it held that state law legal malpractice claims against trial lawyers for their handling of underlying patent matters come within the exclusive jurisdiction of the federal courts? Because the Federal Circuit has exclusive jurisdiction over appeals involving patents, are state courts and federal courts strictly following the Federal Circuit's mistaken standard, thereby magnifying its jurisdictional error and sweeping broad swaths of state law claims - which involve no actual patents and have no impact on actual patent rights - into the federal courts?

Cert. petition filed 3/9/12, waiver of respondent Vernon Minton filed 3/23/12, response requested 4/12/12, conference 10/5/12, cert. petition granted 10/5/12, argued 1/16/13 (transcript here)...