Patent Law and the Supreme Court: Patent Certiorari Petitions Pending

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

Recently pending, granted and denied certiorari petitions

Tde Petroleum Data Solutions, Inc. v. AKM Enterprise, Inc., No. 16-890 Question Presented:

Whether an issued patent for a software implemented industrial process that regulates and controls the operation of an oil rig, which is patentable subject matter under this Court's interpretation of 35 U.S.C. § 101 in Diamond v. Diehr, 450 U.S. 175 (1981), is rendered unpatentable subject matter after this Court's decision in Alice v. CLS Bank, 134 S.Ct. 2347 (2014)?

Cert. petition filed 1/13/17.

CAFC Opinion, CAFC Argument

Nanovapor Fuels Group, Inc. v. Vapor Point, LLC, No. 16-892 Question Presented:

The US Constitution's Seventh Amendment guarantees the right to trial by jury if timely requested.

There is division and uncertainty among the circuit courts of appeals regarding the evidentiary-weight standard applicable to prove waiver of the right to a jury trial.

The proper evidentiary-weight standard should require explicit, clear, and unequivocal evidence of a waiver of this fundamental, constitutional right.

The Federal Circuit Court of Appeals erred by not applying the evidentiary-weight standard requiring waiver of a constitutional right to be explicit, clear, and unequivocal.

Thus, the question presented is:

Can a party forfeit a properly demanded trial by jury without an explicit, clear, and unequivocal waiver?

Cert. petition filed 1/11/17.

CAFC Opinion, CAFC Argument

DataTreasury Corp. v. Fidelity Nat. Information Services, No. 16-883 Question Presented:

Congress broadly provided in the Patent Act that "[w]hoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor . . . ." 35 U.S.C. § 101. This Court's 2014 decision in Alice v. CLS Bank requires courts, in their Section 101 analysis, to consider the effect of the patent in practice and if the patent merely claims well-understood, routine conventional activities previously known to the industry.

In that analysis, the Federal Circuit does not consider evidence of copying, unmet need, commercial success, and failure of others—often referred to as secondary considerations evidence in patent law. Ignoring that evidence has caused the Federal Circuit to hold ineligible groundbreaking, valuable inventions, such as the patents in this case. Should this Court grant certiorari and hold that a court must consider secondary considerations evidence in its Section 101 analysis?

Cert. petition filed 1/11/17.

CAFC Opinion, CAFC Argument

Enplas Corp. v. Seoul Semiconductor Co., Ltd., No. 16-867 Questions Presented:

In 2011, Congress enacted the Leahy-Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011) ("AIA") which established new post-grant adjudicatory processes for challenges to the validity of patents. One of those processes created by the Act is an inter partes review. The Act also created a body within the Patent and Trademark Office, called the Patent Trial and Appeal Board ("Board"), to hear those challenges as a quick and cost-effective alternative to litigation. The decisions of the Board are subject to review by the Court of Appeals for the Federal Circuit and, as such, are subject to its precedents. 28 U.S.C. § 1295(a)(4)(A).

The Respondents Seoul Semiconductor Co. Ltd., et al. initiated an inter partes review (IPR2014-00605) of United States Patent No. 7,348,723 ("the ′'723 Patent"). At the conclusion of the IPR, the Board entered a Final Written Decision, finding the subject claims of the ′'723 Patent invalid as anticipated under 35 U.S.C. § 102 by U.S. Patent No. 5,577,493 ("Parkyn").

The law of anticipation clearly requires that each and every element be found, expressly or inherently, in the prior art. 35...