The Supreme Court: Cases to Watch and Missed Opportunities
October 3 2018
By Jo Dale Carothers
In recent years, the U.S. Supreme Court has considered a number of intellectual property and related cases, but many issues remain unresolved. Therefore, it is important to look both at the cases currently before the U.S. Supreme Court as well as those the Court chooses to let stand without further review. First, consider a few cases the Court has already agreed to hear or is still considering.
- Apple v. Robert Pepper et al.—In this consumer class action, Apple is accused of violating antitrust law by illegally monopolizing the app market for its phones by forcing developers to sell the apps exclusively through Apple’s app store and collecting a commission from the developers. The Supreme Court will hear this case.
- Helsinn Healthcare v. Teva Pharmacetuicals et al.—Prior to the America Invents Act (“AIA”), the on-sale bar deemed sales more than a year before a patent filing to be prior art for purposes of invalidating a patent. Helsinn argues the AIA changed this rule such that a sale is not enough to trigger the bar unless the details of the invention are also made public. Here, the sale took place and was made public more than a year before the patent filing, but the details of the invention were kept confidential. The Supreme Court will hear this case.
- RPX Corp. v. ChanBond LLC—The Federal Circuit dismissed an appeal by RPX of a Patent Trial and Appeal Board (“PTAB”) decision upholding a ChanBond patent arguing that an inter partes review petitioner must have suffered a patent-related injury to have standing to appeal an adverse PTAB decision. The Supreme Court has not yet decided whether to hear this case but, to further inform its decision, has asked the federal government for briefing.
- Amgen Inc. v. Sanofi—The Patent Act requires an inventor to provide a written description in the patent application that enables a skilled artisan to carry out the claimed invention (e.g., make or use the invention). The Federal Circuit treats this as a two-part requirement that imposes a rule that the patent owner 1) must be in possession of the invention at the time the patent application is filed (written description requirement) and 2) show a skilled artisan how to make and use the invention (enablement requirement). This petition asks the Supreme Court to find that the Patent Act merely requires a sufficient description to show a skilled artisan how to carry out the claimed invention without the additional requirement that the patent owner be in possession of the invention at the time the patent application is filed. The Supreme Court has not yet decided whether to hear this appeal.
Looking at cases the Supreme Court chooses not to review also gives insight into issues that may still need clarifying when a better fact pattern is presented. These cases should also be considered when formulating arguments in lower courts. For example, consider several patent cases the Supreme Court chose not to hear this week.
- Arctic Cat v. Bombardier Recreational Products—Bombardier argued the Federal Circuit misapplied the Halo Electronics v. Pulse Electronics standard for willful infringement by allowing a finding of willful infringement based on negligence. This raises the question as to whether negligence rises to the level of knowing and intentional conduct. The Supreme Court passed on this opportunity to clarify the Halo
- B/E Aerospace v. C&D Zodiac—B/E Aerospace argued the PTAB and Federal Circuit use an improper, two-step approach for determining whether a patent claim is obvious. The approach includes an initial determination of obviousness followed by balancing that determination with the weight of the objective evidence of non-obviousness, such as commercial success. Instead, B/E Aerospace argued for equally weighting objective evidence and other obviousness factors in the same step.
- Droplets Inc. v. Iancu—Droplets asked the Supreme Court to prohibit the Federal Circuit from affirming PTAB decisions on grounds other than those cited by the PTAB.
- David Jang v. Boston Scientific—Jang challenged the ensnarement defense that bars patent owners from asserting infringement under a theory of the doctrine of equivalents that “ensnares” the prior art.
- Nichia Corp. v. Everlight Electronics Co.—The Supreme Court has found the question of patent obviousness to be a question of law for a court not a jury. Nichia argued the Federal Circuit would have reached a different result on obviousness in this case had it independently evaluated the patents rather than improperly deferring to a jury verdict.
- Presidio Components v. American Technical Ceramics—The Federal Circuit found the patent-at-issue was not indefinite. In its petition, American Technical argued the claimed invention was not clearly described, and was thus indefinite, but the court had improperly allowed Presidio to “backfill” the description with evidence from years of litigation.
- Regeneron Pharmaceutical v. Merus NV—The Federal Circuit found Regeneron’s patent on a genetically modified mouse was unenforceable because of inequitable conduct. The Federal Circuit found that withholding materials during prosecution was intended to deceive the United States Patent and Trademark Office in part because of Regeneron’s behavior during the infringement litigation. In the litigation, Regeneron had violated discovery orders and held back documents during discovery. In its petition, Regeneron argued the doctrine of inequitable conduct is limited to evaluating conduct during prosecution and does not implicate conduct during litigation.
- Smartflash LLC v. Samsung Electronics America—Smartflash brought two constitutional challenges against AIA review. First, Smartflash argued that PTAB judges must be appointed by the president and confirmed by the Senate rather than appointed by the U.S. secretary of commerce, which is the current process. Second, Smartflash asked the Supreme Court to bar the PTAB from reviewing patents issued before the AIA was enacted in 2012 arguing that such retroactive application of AIA reviews violates the Constitution’s due process clause.
Keep your eyes on the Supreme Court to monitor these cases and others that are likely to reach the Court this session, such as whether tribal sovereign immunity shields patents from PTAB review (St. Regis Mohawk Tribe v. Mylan Pharmaceuticals).