Patent Law and the Supreme Court: Patent Certiorari Petitions Denied in 2016

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.

Taş v. Beachy, No. 15-1089 Questions Presented:

Concerning a patent application claiming a new drug treatment of tumor-bearing human that produces a specific effect in the tumor cells and shrinkage or disappearance of the tumor, the Patent Trial and Appeal Board (PTAB) decided that the statement of a paragraph copied from patent disclosures of others about uses of different compounds provides written description despite no evidence in the specification of the application for the claimed treatment and despite express teaching against the claimed effect on the basis of the described findings that teach also against the claimed therapeutic results. PTAB held that stating a disease as being treatable by administering a drug compound without evidence for the treatment and without specifying the conditions under which the claimed therapeutic results can be produced can satisfy 35 U.S.C. § 112, paragraph 1. On appeal Federal Circuit held that PTAB correctly decided.

The question presented is:

Is not a patent claiming a new drug treatment required to provide evidence for that treatment, and is not a drug treatment patent without evidence of it at discord with the requirement of factual evidence for a proposed new drug treatment under 21 U.S.C. § 355 for its approval and with the required supplying of patent information about it by 21 U.S.C. § 355 and also impediment to the development of the new drug treatments prescribed by the statute?

Cert. petition filed 2/25/16, waiver of respondent Philip A. Beachy, et al. filed 3/11/16, conference 4/15/16. Petition denied 4/18/16.

CAFC Opinion, No CAFC Argument

Hemopet v. Hill's Pet Nutrition, Inc., No. 15-1062 Questions Presented:

Section 101 of Title 35 defines patentable subject matter to include "any new and useful process . . . or any new and useful improvement thereof." Other provisions of Title 35 set forth specific conditions and requirements for the issuance of the patent itself, including that the description in the patent be sufficient "to enable any person skilled in the art to which it pertains" to make and use the invention. 35 U.S.C. § 112(a). The invention at issue in this case is a novel method for identifying, formulating, and producing pet food tailored to the genomic characteristics and gene expression of individual dogs and cats.

The questions presented are:

Is an invented method of producing a new class of products patent-eligible under § 101 where it applies a groundbreaking insight of the inventor by using techniques in a novel and previously unknown combination to produce a previously unknown result? Whether the courts below erroneously conflated the patent-eligibility requirements of § 101 with the "enablement" requirements of § 112(a), thereby avoiding the more detailed analysis required under § 112 and denying overall patent eligibility on grounds not consistent with § 101 or this Court's precedents? Cert. petition filed 2/18/16, waiver of respondent Hill's Pet Nutrition, Inc. filed 2/25/16, conference 4/15/16. Petition denied 4/18/16.

CAFC Opinion, CAFC Argument

Limelight Networks, Inc. v. Akamai Technologies, Inc. , No. 15-993 Question Presented:

In Limelight Networks, Inc. v. Akamai Technologies, Inc., 134 S. Ct. 2111 (2014), this Court noted that, under existing Federal Circuit law, "a method's steps have not all been performed as claimed by the patent unless they are all attributable to the same defendant, either because the defendant actually performed those steps or because he directed or controlled others who performed them." Id. at 2117. This Court then held that, on the assumption that rule was correct, "there has simply been no infringement of the method [at issue in this case], because the performance of all the patent's steps is not attributable to any one person." Id.

After remand, the en banc Federal Circuit reiterated that "[d]irect infringement under § 271(a) occurs where all steps of a claimed method are performed by or attributable to a single entity." App. 25a. But it nevertheless unanimously held that Limelight could be held liable for direct infringement of Akamai's method patent—despite this Court's prior holding and even though nine out of the ten en banc court judges had previously held that Limelight could not be held liable under that rule. In so ruling, the Federal Circuit adopted a patent-specific conduct-attribution rule divorced from traditional vicarious-liability standards.

The question presented is:

Whether the Federal Circuit erred in holding that a defendant may be held liable for directly infringing a method patent based on the collective performance of method steps by multiple independent parties, even though the performance of all the steps of the method patent is "not attributable to any one person" under traditional vicarious-liability standards. Limelight, 134 S. Ct. at 2117.

Cert. petition filed 1/26/16, conference 4/15/16. Petition denied 4/18/16.

CAFC Opinion, CAFC Argument

WilmerHale represents respondents Akamai Technologies, Inc. et al.

MPHJ Technology Investments, LLC v. State of Vermont , No. 15-988 Question Presented:

Whether, pursuant to this Court's precedent in Ruhrgas Ag v. Marathon Oil Co., 526 U.S. 574 (1999) this case should be dismissed for lack of personal jurisdiction.

Conditional cross-petition filed 1/29/16, conference 4/15/16. Petition denied 4/18/16.

CAFC Opinion, CAFC Argument

State of Vermont v. MPHJ Technology Investments, LLC, No. 15-838 Question Presented:

In the America Invents Act, Congress amended the jurisdictional statutes relating to patent cases in response to this Court's decision in Holmes Group, Inc. v. Vornado Air Circulation Systems, Inc., 535 U.S. 826 (2002). In Holmes Group, the Court held that a defendant's compulsory counterclaim for patent infringement did not establish "arising under" jurisdiction for purposes of the Federal Circuit's appellate jurisdiction under 28 U.S.C. § 1295. The America Invents Act amended § 1295(a) to provide Federal Circuit jurisdiction over an appeal from a final decision of a district court "in any civil action arising under, or in any civil action in which a party has asserted a compulsory counterclaim arising under, any Act of Congress relating to patents." Here, the Federal Circuit considered whether § 1295(a) afforded jurisdiction over an appeal from a district court order remanding this consumer-protection case to state court for the second...