Patent Law And The Supreme Court: Certiorari Petitions Pending (July 2014)

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.

Lighting Ballast Control LLC v. Universal Lighting Technologies, Inc., No. 13-1536

Questions Presented: In Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed. Cir. 1998) (en banc), the Federal Circuit construed this Court's decision in Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996), to hold that patent claim construction presents a purely legal question subject to de novo review. In this case, the Federal Circuit granted en banc review to reconsider the widely criticized Cybor rule. In a 6-4 decision, it decided to adhere to its precedent on stare decisis grounds, which hold no sway in this Court. Shortly after the decision, this Court granted the petition for certiorari in Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., No. 13-854 (Mar. 31, 2014), to consider the validity of the Cybor rule. This petition presents the same question presented in Teva. It also presents a second question that will be squarely implicated if the Court, in Teva, affirms the Cybor rule. That question arises from Respondent's failure to raise the claim construction arguments on which it ultimately prevailed below (which are purely legal issues per Cybor) in a motion for judgment as a matter of law after they were previously rejected on summary judgment. The courts of appeals are starkly divided as to whether there is an exception for "purely legal" issues to the general rule that issues raised in a failed summary judgment motion and not renewed in a motion for JMOL are forfeited, a question this Court expressly left open in Ortiz v. Jordan, 131 S. Ct. 884 (2011). The questions presented are:

Whether a district court's factual finding in support of its construction of a patent claim term may be reviewed de novo, as the Federal Circuit requires, or only for clear error, as Federal Rule of Civil Procedure 52(a) requires. Whether there is an exception for "purely legal" issues to the general rule that an issue raised only in a failed summary judgment motion and not raised in a motion for judgment as a matter of law under Federal Rule of Civil Procedure 50 is forfeited on appeal. Cert. petition filed 6/20/14. CAFC Opinion, CAFC Argument

Classen Immunotherapies, Inc. v. Somaxon Pharmaceuticals, No. 13-1508

Questions Presented:

If some of the steps of a method claim are protected, however additional subsequently performed steps fall outside of the safe harbor, is the claim excluded by the § 271(e)(1)?

Does the Safe Harbor protection of 35 U.S.C. § 271(e)(1) extend to commercial activity which relies upon information previously submitted to the FDA but carries no additional reporting requirement?

Does the assertion of infringement by a product made by a process under 35 U.S.C. § 271(g) survive even if the process is protected by § 271(e)(1)?

Can steps performed as acts of infringement under 35 U.S.C. § 154 be combined with steps performed as acts of infringement under 35 U.S.C. § 271?

Cert. petition filed 6/11/14, waiver of respondent Somaxon Pharmaceuticals filed 6/20/14.

CAFC Opinion, CAFC Argument

Galderma Laboratories, L.P. v. Tolmar, Inc., No. 13-1350

Question Presented:

35 U.S.C. § 103 and controlling precedent mandate that obviousness be assessed "at the time the invention was made" and that the scope and content of the prior art as a whole be evaluated in determining obviousness. 35 U.S.C. § 282 and controlling precedent further mandate that the patent challenger must prove obviousness by clear and convincing evidence, a burden that remains always on the challenger. Accordingly, the question presented is:

Whether the Federal Circuit, without considering the state of the prior art as of the patent's filing date, may presume that a lawfully issued patent is presumptively obvious under 35 U.S.C. § 103 and then place the burden of proof on the patentee to prove otherwise?

Cert. petition filed 5/7/14, waiver filed by respondent Tolmar, Inc. 5/12/14, conference 6/5/14.

CAFC Opinion, CAFC Argument

Stephen Kimble, et al. v. Marvel Enterprises, Inc., No. 13-720

Questions Presented:

Petitioners are individuals who assigned a patent and conveyed other intellectual property rights to Respondent. The court of appeals "reluctantly" held that Respondent, a large business concern, was absolved of its remaining financial obligations to Petitioners because of "a technical detail that both parties regarded as insignificant at the time of the agreement." App. 2-3; 23. Specifically, because royalty payments under the parties' contract extended undiminished beyond the expiration date of the assigned patent, Respondent's obligation to pay was excused under Brulotte v. Thys Co., 379 U.S. 29, 32 (1964), which had held that "a patentee's use of a royalty agreement that projects beyond the expiration date of the patent is unlawful per se."

A product of a bygone era, Brulotte is the most widely criticized of this Court's intellectual property...