Patent Law And The Supreme Court: Certiorari Petitions Pending

This page contains a consolidated list of all recently pending petitions, organized in reverse chronological order by date of certiorari petition.

Power Integration, Inc. v. Fairchild Semiconductor Int'l, Inc., No. 13-269 Question Presented:

In this case, a jury found that respondent Fairchild Semiconductor committed patent infringement and induced infringement by others—in the United States—after it reverse-engineered and mass produced petitioner Power Integrations' patented technology for controller chips that are used in power supplies (or chargers) for consumer electronic devices such as smart phones. The jury also found that this U.S.-based infringement directly and foreseeably caused Power Integrations to lose sales of its chips worldwide, and the jury awarded $34 million in damages based on these lost profits and other injuries. The Federal Circuit set aside the jury's damages award, concluding that under the "presumption against extraterritoriality" patent damages can never be based on lost foreign sales of an infringing product, even when such lost sales are the direct and foreseeable result of patent infringement inside the United States. The question presented is whether the Federal Circuit erroneously rejected the jury's damages verdict after holding—in direct conflict with the decisions of this Court—that a patent owner is barred from obtaining damages under 35 U.S.C. § 284 for lost sales outside the United States, even where those lost sales are the direct and foreseeable result of patent infringement inside the United States.

Cert. petition filed 8/23/13.

CAFC Opinion, CAFC Argument

WildTangent, Inc. v. Ultramercial, LLC, et al., No. 13-255 Question Presented:

When is a patent's reference to a computer, or computer-implemented service like the Internet, sufficient to make an unpatentable abstract concept patent eligible under 35 U.S.C. § 101?

Cert. petition filed 8/23/13.

CAFC Opinion, CAFC Argument

Public Patent Foundation, Inc. v. McNeil-PPC, Inc., et al., No. 13-161 Question Presented:

The Patent Act has long forbidden falsely marking and advertising unpatented articles as patented. The false marking statute, 35 U.S.C. § 292, also long provided a qui tam cause of action for any member of the public to pursue violators on the government's behalf. In June 2009, Petitioner filed such an action against Respondent. In September 2011, more than two years after Petitioner filed this case, Congress passed the Leahy-Smith America Invents Act (AIA) that contained amendments to the false marking statute. One such amendment eliminated qui tam standing for members of the public to bring false marking claims. The AIA applied its changes to the false marking statute retroactively and, as a result, the district court dismissed Petitioner's case because Petitioner no longer had standing under the retroactively amended version of the statute. The Court of Appeals summarily affirmed. Does the retroactive application of the AIA's changes to the false marking statute to this case violate Petitioner's Due Process under the Fifth Amendment?

Cert. petition filed 8/1/13, waiver of respondent United States filed 8/22/13.

CAFC Opinion, CAFC Argument

Maersk Drilling USA, Inc. v. Transocean Offshore Deepwater Drilling, Inc., No. 13-43 Question Presented:

Direct infringement of a U.S. patent occurs when a person "makes, uses, offers to sell, or sells any patented invention, within the United States," or "imports into the United States any patented invention." 35 U.S.C. § 271(a). Petitioner offered, negotiated, and agreed in Scandinavia to provide a Norwegian oil company with drilling services using Petitioner's oil rig. Consistent with the contract's express terms, before bringing the rig into or using it in U.S. waters, Petitioner modified it so that it did not infringe any U.S. patent.

The Federal Circuit nonetheless held that Petitioner offered to sell and sold an infringing rig "within the United States." Although all of the relevant negotiations occurred overseas and Petitioner modified the rig to avoid any infringement in U.S. waters, the Federal Circuit held that entry into a service contract in Scandinavia violated U.S. patent law because the parties were U.S. companies and the contract contemplated performance in the United States. The Federal Circuit also extended U.S. patent law by deeming an offer to provide services using a rig to be an "offer to sell" or "sale" of the rig itself.

The question presented is:

Whether offering, negotiating, and entering into a contract in Scandinavia to provide services using a potentially patented device constitutes an "offer to sell" or "sale" of an actually patented device "within the United States," under 35 U.S.C. § 271(a).

Cert. petition filed 7/8/13.

CAFC Opinion, CAFC Argument

The Fox Group, Inc. v. Cree, Inc., No. 12-1378 Question Presented:

The Federal Circuit's opinion below, for the first time in American jurisprudence, invalidated a patent based on a prior "invention" that provided no benefit to the public, because the prior inventor concealed how to make the invention, did not commercialize it, and did not apply for a patent. The Federal Circuit based its holding on a distinction between "process" and "product"...