Patent Law and the Supreme Court: Patent Certiorari Petitions Denied in 2017 (Originally published February 21, 2017)

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.

Recently pending, granted and denied certiorari petitions

E.I. Du Pont De Nemours and Co. v. MacDermid Printing Solutions, L.L.C., No. 16-905 Question Presented:

Where an invention is comprised of a combination of elements previously existing in the prior art, this Court's precedent requires that the proper test for assessing obviousness under 35 U.S.C. § 103 examines whether one skilled in the art would have been motivated to make the combination and could have predicted or expected that the combination would be successful. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007). Further, pursuant to the Seventh Amendment to the U.S. Constitution, disputed issues of fact cannot be resolved on summary judgment but must be resolved by a jury. The question presented is:

Where there are disputed factual issues as to (1) whether a skilled artisan would have been motivated to make the claimed combination, and (2) whether the skilled artisan could have expected or predicted success in so doing, does the Seventh Amendment to the Constitution and this Court's decision in KSR allow a court to find the claimed invention obvious on summary judgment because elements of the claimed invention may have existed in the prior art?

Cert. petition filed 1/18/17, waiver of respondent MacDermaid Printing Solutions, LLC filed 1/23/17, conference 2/17/17. Petition denied 2/21/17.

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, waiver of respondent Vapor Point, LLC filed 1/30/17, conference 2/17/17. Petition denied 2/21/17.

CAFC Opinion, CAFC Argument

IPLearn-Focus, LLC v. Microsoft Corp., No. 16-859 Questions Presented:

Can patent claims be invalidated under 35 U.S.C. § 101 by finding under Alice step two that they involve the conventional implementation of an abstract concept, where the only evidence of record is that the ordered combinations of hardware in the claims are unconventional apparatuses with novel applications? Can claims be invalidated under 35 U.S.C. § 101 by declaring them to be directed to an abstract idea based on statements of purpose in the patent specification without considering whether the claims are directed to improvements to computer functionality rather than to economic or other tasks for which a computer is used in its ordinary capacity? Cert. petition filed 1/5/17, waiver of respondent Microsoft Corp. filed 1/9/17, conference 2/17/17. Petition denied 2/21/17.

CAFC Opinion, CAFC Argument

Big Baboon, Inc. v. Lee, No. 16-496 Question Presented:

In Christianson v. Colt Industries, 486 U.S. 800 (1988), this Court held that the Court of Appeals for the Federal Circuit does not have appellate jurisdiction under 28 U.S.C. § 1295(a)(1) when the claims of a well-pleaded complaint do not "arise under federal patent law." The Petitioner filed an action in district court under the Administrative Procedure Act (APA) seeking to have specific evidentiary admission decisions by the Director of the United States Patent and Trademark Office (USPTO) during patent reexaminations overturned as violating due process, and the complaint was dismissed. The Court of Appeals for the Ninth Circuit transferred the appeal of the dismissal to the Federal Circuit over the objection of the Petitioner, even though all parties agreed that Ninth Circuit law governed the only claim of the complaint. Can the Federal Circuit impute a patent law claim into a complaint that does not explicitly contain a claim arising under patent law in...