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

Celgard, LLC v. Matal, No. 16-1526

Questions Presented:

  1. Whether inter partes review—an adversarial process used by the Patent and Trademark Office (“Patent Office”) 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 Federal Circuit's issuance of Rule 36 judgments without opinions for the disposition of appeals from the Patent Office violates 35 U.S.C. § 144's requirement that the Federal Circuit “shall issue” its “mandate and opinion” for such appeals?
  3. Whether the Federal Circuit's pervasive practice of issuing Rule 36 judgments without opinions to affirm more than 50% of appeals from the Patent Office has exceeded the bounds of reasonableness and is inconsistent with “principles of right and justice”?
  4. Whether the Patent Office's consistent practice of failing to consider the claimed invention “as a whole” and failing to consider whether the combination of elements would lead to “anticipated success” in an obviousness determination conflicts with 35 U.S.C. § 103 and this Court's precedent in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 421 (2007)?

Cert. petition filed 6/19/17.

CAFC Opinion, CAFC Argument

Voter Verified, Inc. v. Election Systems & Software LLC, No. 16-1505

Questions Presented:

The following important question of federal law is presented:

Whether direct infringement under 35 U.S.C. § 271(a) occurs as a necessary result when multiple independent entities each perform one or more steps of a patented method in the practice thereof without authority? 

The Petitioner answers this question in the affirmative.  This Court on certiorari in Limelight Networks, Inc. v. Akamai Technologies, Inc., 134 S. Ct. 2111 (2014) reversed and remanded the Federal Circuit decision in Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1319 (Fed. Cir. 2012) (“Akamai II”) noting that “the Federal Circuit will have the opportunity to revisit the § 271(a) question if it so chooses”. On remand the Federal Circuit en banc in Akamai Technologies, Inc. v. Limelight Networks, Inc., 797 F.3d 102 (Fed. Cir. 2015) (“Akamai IV”), ultimately overruled the single-entity precedents: Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008); and BMC Resources, Inc. V. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007).  However, it appears as a necessary conclusion that the Federal Circuit has adhered to those overruled single-entity precedents in affirming without opinion the district court's denial of relief from a judgment declaration of non-infringement.

Cert. petition filed 6/13/17.

CAFC Opinion, CAFC Argument

Lakshmi-Arunachalam v. SAP America, Inc., No. 16-1442

Questions Presented:

  1. Whether the Legislative ultra vires America Invents Act (AIA)'s Repugnant Authorization to Quash Patent Grants once Given in USPTO's “Material Breach of Contract” with Inventors usurps the “Separation of Powers” clause in the U.S. Constitution [Where no social or economic circumstances exist.] by de facto overruling U.S. Supreme Court “First Impression” Constitutional res judicata decision by Chief Justice Marshall's finding in Fletcher v. Peck in 1810, prohibiting the Government from quashing or rescinding grants once given.
  2. Whether the stated intent of the America Invents Act (ALA) was a Legislative ruse coloring the PTAB's preexisting quashing of Government grants with wanton ignorance and indifference to Chief Justice Marshall's “First Impression” Contract finding on Government Grants in Fletcher v. Peck in 1810; with, supplemental Legislative authority to continue quashing issued grants patently in willful compromise of individual Professional Oaths of Office and USPTO Mission in contempt of individual duty to protect and uphold the Constitution and Laws of the Land established by the U.S. Supreme Court; constitute, treason on the Constitution itself.
  3. Whether USPTO and District and Appellate Courts standing in Breach of Contract with Inventors in support of the America Invents Act (ALA), denying a fair hearing to Inventors every step of the way to the Supreme Court demonstrates professional contempt for Chief Justice Marshall's “First Impression” Constitutional precedent in Fletcher v. Peck in 1810, prohibiting the Government from quashing or rescinding *ii grants once given, for which they should be held professionally accountable.
  4. Whether USPTO and District and Appellate Courts standing in support of the America Invents Act (AIA) in USPTO's “Material Breach of Contract” with Inventors violates an Inventor's rights to Constitutional Res Judicata of the Law of the Land.

Cert. petition filed 5/25/17, waiver of respondent SAP America, Inc. filed 6/15/17, conference 9/25/17.

No CAFC Opinion (appeal dismissed), No CAFC Argument

Oleksy v. General Electric Co., No. 16-1427

Questions Presented:

Should this Court exercise its supervisory power to reverse Federal Circuit's affirmance without an opinion of a non-infringement decisin which was based on district court's patent claim construction that departed from several well-established fundamental principles of patent law, namely that:

  • claims are construed from the perspective of one of ordinary skill in the pertinent art;
  • limitations may not be imported into the claims from the specification;
  • limitations not disclosed in the patent may not be imported into the claims; and,
  • claim construction should not exclude the preferred embodiment;
  • where the faulty construction led to an absurd result of excluding from the claims the process disclosed in the patent specification; and,
  • where the Federal Circuit was established, inter alia, to increase uniformity in the application of patent law

Cert. petition filed 5/30/17, waiver of respondent General Electric Company filed 6/9/17, conference 9/25/17.

No 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, conference 9/25/17.

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, CVSG 6/26/17.

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