Supreme Court Petitions

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

Intermec, Inc. v. Alien Technology, LLC, No. 16-1404

Questions Presented:

Is the Federal Circuit's review of decisions of the Patent Office subject to the traditional principles of administrative agency review?

What is the proper standard for applying the harmless error doctrine in appeals from administrative agencies in light of SEC v. Chenery Corp., 332 U.S. 194, 196 (1947)?

May the recognized procedural protections of the Administrative Procedures Act and this Court's precedent be disregarded by reviewing courts under the guise of the harmless error doctrine to adopt new theories on appeal when doing so deprives a party from an opportunity to introduce relevant evidence to the administrative agency or the court?

Cert. petition filed 5/22/17.

CAFC Opinion, CAFC Argument

Appistry, LLC v. Amazon.Com, Inc., No. 16-1368

Questions Presented:

  1. Are patents claims directed to new and useful computing systems, as here, abstract ideas and ineligible for patenting under 35 U.S.C. § 101?
  2. May a district court properly find a patent claim ineligible under 35 U.S.C. § 101, as here, without requiring the challenger to prove by clear and convincing evidence that the claim is ineligible?
  3. May a district court properly dismiss a complaint for patent infringement under Fed. R. Civ. P. 12(b)(6) for lack of patent eligibility under 35 U.S.C. § 101 when the complaint contains well-pled facts supporting eligibility?

Cert. petition filed 5/11/17, waiver of respondent, Inc. filed 5/25/17.

CAFC Opinion, CAFC Argument

Synopsys, Inc. v. Mentor Graphics Corp., No. 16-1288

Questions Presented:

In Alice Corp. Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014), the Court reaffirmed the two-part test for determining whether an invention is patent-eligible under 35 U.S.C. § 101: (1) whether the patent claims are directed to a patent ineligible concept, such as laws of nature, natural phenomena, or abstract ideas, and (2), if so, whether the elements of the claim contain an “inventive concept” that transforms the ineligible concept into an invention that is patent-eligible. Here, a panel of the Federal Circuit held that in determining whether a patent is directed to an abstract idea, a court must ignore the specification and evaluate only the express limitations in the claims. The panel further held that the accused patents failed the second step of Alice because the claims do not explicitly call for involvement of a computer and therefore could not be characterized as an improvement to computers.

The questions presented are:

  1. Whether the § 101 inquiry requires courts to ignore the specification, as the Federal Circuit held, or whether courts should ascertain the true scope of the claims in light of the specification and intrinsic record in determining whether they are drawn to a patent-ineligible concept.
  2. Whether an otherwise revolutionary technological breakthrough is not an “inventive concept” under the second step of Alice merely because the court believed the breakthrough could theoretically be implemented without a computer.

Cert. petition filed 4/27/17.

CAFC Opinion, CAFC Argument

Blue Spike, LLC v. Google Inc., No. 16-1223

Questions Presented:

This Court has fashioned a two-part test for determining whether the subject matter of a patent is ineligible, under 35 U.S.C. § 101, because it claims a law of nature, natural phenomenon, or abstract idea. “First, we determine whether the claims at issue are directed to one of those patent-ineligible concepts.” Alice Corp. Pty Ltd. v. CLS Bank Int'l, 134 S.Ct. 2347, 2355 (2014). If so, a court must nonetheless ask whether the patent involves an “'inventive concept'—i.e., an element or combination of elements that is 'sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the [ineligible concept] itself.'” Id. (quoting Mayo Collaborative Servs. v. Prometheus Laboratories, Inc., 132 S.Ct. 1289, 1294 (2012)). This case raises three questions under that framework:

  1. May patentable subject matter under § 101 properly be assessed by over-generalizing patent claims to a “gist”?
  2. May a district court properly assess patent-ability under § 101 prior to authoritatively construing the patent's claims?
  3. May a district court adjudicating a motion for judgment on the pleadings on § 101 patentability grounds properly consider questions of patent enablement under 35 U.S.C. § 112? 

Cert. petition filed 4/6/17, waiver of respondent Google Inc. filed 5/12/17, conference 5/23/17.

CAFC Opinion, CAFC Argument

Arunachalam v. United States District Court for the District of Delaware, No. 16-1184

Questions Presented:

  1. Whether the lower courts' and USPTO's denial of fundamental rights by collusively blocking access to justice and refusing to enforce this Court's Chief Justice Marshall's Ruling on First Impression Constitutional Res Judicata on Grants violates the free speech and property rights of the First and Fifth Amendments.
  2. Whether the America Invents Act is void in view of this Court's ruling on First Impression Constitutional Res Judicata on Grants.
  3. Whether the act of transferring patent property to the public without compensation is in the nature of the legislative power of the AIA or judicial power of a court, in violation of this Court's Justice Marshall's 1810 ruling on Grants.
  4. Whether the lower courts' and PTAB's rulings are estopped by this Court's ruling on First Impression Constitutional Res Judicata on Patent Grants and/or Patent Prosecution History Estoppel.
  5. Whether judges' and the USPTO's failure to enforce this Court's ruling on First Impression Constitutional Res Judicata on Grants as applied to patents and Patent Prosecution History Estoppel, defaulting in contractual fiduciary duty by fraudulent scheme of reexamination of issued patents, honest public services fraud, perjury and contempt for equal protections of law, to aid and abet anti-trust violation, in breach of the takings clause of the Fifth Amendment without valuable consideration voids the judgments of the courts. 

Cert. petition filed 3/28/17, conference 6/1/17.

CA3 Opinion, No CA3 Argument

WilmerHale represents petitioner Medtronic, Inc.

Poly-America, L.P. v. API Industries, Inc., No. 16-1123

Question Presented:

The exclusive rights granted to a patent holder are defined by the patent's claims. 35 U.S.C. 112; Burns v. Meyer, 100 U.S. (10 Otto) 671, 672 (1879).  May a court impose a limitation on a patent claim that is contrary to the claim's plain meaning, based on the court's inferences from the patent's specification and prosecution history? 

Cert. petition filed 3/16/17, conference 6/15/17.

CAFC Opinion, CAFC Argument

Cox Communications, Inc. v. Sprint Communications Co. LP, No. 16-1106

Questions Presented:

  1. Under this Court's precedents, “[e]ach element contained in a patent claim is deemed material to defining the scope of the patented invention.”  Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29 (1997).  This Court and the Federal Circuit apply this rule to claim construction and to numerous Patent Act provisions, including 35 U.S.C. §§ 101 (patent-eligible subject matter), 102 (anticipation), 103 (obviousness), and 112, ¶ (best mode, etc.).
    The first question is: Does the general rule that each element in a patent claim is material to the invention''s scope apply to analysis of a claim's definiteness under 35 U.S.C. § 112, ¶2 (now § 112(b))?
  2. Halliburton Oil Well Cementing Co. v. Walker, 329 U.S. 1 (1946), held that patents that claim a generic structure for performing recited functions— - e.g., a “means for” performing the functions— - are indefinite under 35 U.S.C. § 112, ¶2 and earlier decisions of this Court that bar pure functional claiming of inventions generally.  Congress responded by enacting a law stating: “An element in a claim for a combination may be expressed as a means or step for performing a specified function,” but “such [a] claim shall be construed to cover the corresponding structure . . .… described in the specification.”  35 U.S.C. § 112, ¶ 6 (now § 112(f)).  The patent claims here recite only a generic structure (a “processing system”) to perform software-implemented functions. All agree that the claims do not invoke § 112, ¶ 6, which “targeted” the “specific problem” in Halliburton. Warner-Jenkinson, 520 U.S. at 28.
    The second question is: Do Halliburton and other decisions of this Court that bar pure functional claiming still control where § 112, ¶ 6 does not apply?

Cert. petition filed 3/13/17, conference 6/15/17.

CAFC Opinion, CAFC Argument

Samsung Electronics Co., Ltd. v. Apple Inc., No. 16-1102

Questions Presented:

This petition presents three questions of great importance to patent law that arise from the decisions of a deeply divided Federal Circuit:

  1. Do this Court''s decisions in Graham v. John Deere Co., 383 U.S. 1 (1966), and KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007), require a court to hold patents obvious as a matter of law under 35 U.S.C. § 103 where the patents make at most trivial advances over technologies well-known to a person of skill in the art?
  2. Does this Court''s decision in eBay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006), require application of the four-factor test for injunctions in accordance with traditional equitable principles, and therefore require more than merely “some connection” between an infringing feature and asserted irreparable harm to support issuance of an injunction for patent infringement?
  3. Does this Court''s decision in Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997), require evidence that an accused product meets all elements of the relevant claim to support entry of a judgment of patent infringement?

Cert. petition filed 3/10/17.

WilmerHale represents respondent Apple Inc.

CAFC Opinion, CAFC Argument

WesternGeco LLC v. ION Geophysical Corp., No. 16-1011

Questions Presented:

Under 35 U.S.C. § 271(f), it is an act of patent infringement to supply “components of a patented invention,” “from the United States,” knowing or intending that the components be combined “outside of the United States,” in a manner that “would infringe the patent if such combination occurred within the United States.”

Under 35 U.S.C. § 284, patent owners who prevail in litigation are entitled to “damages adequate to compensate for the infringement.”

In this case, despite affirming that Respondent was liable for infringement under § 271(f), the majority of a divided panel of the court of appeals held that Petitioner was not entitled to lost profits caused by the proscribed combination. The court of appeals reasoned that even when Congress has overridden the presumption against extraterritorial application of the law in creating liability, the presumption must be applied a second time to restrict damages.

The question presented is:

Whether the court of appeals erred in holding that lost profits arising from prohibited combinations occurring outside of the United States are categorically unavailable in cases where patent infringement is proven under 35 U.S.C. § 271(f).

Cert. petition filed 2/17/17, conference 5/25/17, CVSG 5/30/17.

CAFC Opinion, CAFC Argument

Oil States Energy Services, LLC v. Greene's Energy Group, LLC, No. 16-712

Questions Presented:

  1. Whether inter partes review—an adversarial process used by the Patent and Trademark Office (PTO) to analyze the validity of existing patents—violates the Constitution by extinguishing private property rights through a non-Article III forum without a jury.
  2. Whether the amendment process implemented by the PTO in inter partes review conflicts with this Court's decision in Cuozzo Speed Technologies, LLC v. Lee, 136 S. Ct. 2131 (2016), and congressional direction.
  3. Whether the “broadest reasonable interpretation” of patent claims—upheld in Cuozzo for use in inter partes review—requires the application of traditional claim construction principles, including disclaimer by disparagement of prior art and reading claims in light of the patent's specification.

Cert. petition filed 11/23/16, waiver of respondent Michelle Lee, Director, Patent and Trademark Office filed 12/12/16, conference 3/3/17, response required 2/27/17, conference 6/1/17.

CAFC Opinion, CAFC Argument