Posts Tagged: "SCOTUS"

Versata presented four questions to the Supreme Court, some very specific to CBM proceedings. In its amicus brief, Broadband iTV more generally asks the Supreme Court to revisit its patent-eligibility precedents, and clarify how computer-implemented claims can be found patent-eligible under Alice to correct the ongoing misapplication of Alice in the lower courts and by the PTAB. Since Alice, more than 100 patents and thousands of claims have been declared invalid under 35 U.S.C. § 101 by the lower courts or PTAB using an overly broad interpretation of Alice. Thus, it is important for this Court to take up the issue of patent-eligibility once again and right the course.

Unified Patents Inc. explained in its amicus brief in Cuozzo Speed v. Lee that “[t]he phrase ‘broadest reasonable interpretation’ describes the same procedure applied in both the PTO and by the courts.” An inconvenient truth for Cuozzo — but a truth nonetheless. Gene attacked Unified Patent’s position here last Sunday as “false on its face” and “unequivocally incorrect.” Those pejoratives miss the point of Unified’s brief. Unified did not argue that the courts and PTO both apply BRI in name; indeed, Cuozzo would lose his semantic gripe if that were the case. Rather, Unified argued that peeling away the Phillips and BRI labels reveals that both standards employ the same procedure. On this point, Unified’s position is hardly controversial, and Unified is hardly alone.

In the Introduction to the Unified Patents’ brief the following statement is made: “The phrase ‘broadest reasonable interpretation’ describes the same procedure applied in both the PTO and by the courts.” That statement is unequivocally incorrect. Federal district courts do not apply the broadest reasonable interpretation of an issued claim when performing a claim construction in patent litigation. Quite the opposite, district courts narrowly interpret claims in an attempt to find a true and correct construction of the claims. The law is unequivocally clear: district courts do not apply the broadest reasonable interpretation standard. It is so axiomatic that district courts use a different standard than does the USPTO when interpreting claims it is almost difficult to figure out where to begin to unravel this falsehood.

Rather than use the word ‘conflate’ to describe the mongrel mixture of patentability requirements the Supreme Court undertook in Mayo, the Eli Lilly brief characterizes the analysis employed by the Supreme Court as including a separate, implicit ‘threshold test’ for patentability that is applied even before consideration of the statutory patentability requirements. Eli Lilly hypothesizes that this ‘implicit exception was imposed to assure that patents cannot validly protect—or preempt access to—laws of nature, natural phenomena, or abstract ideas.’

On Monday, March 21, 2016, the United States Supreme Court accepted certiorari in Samsung Electronics v. Apple, Inc., which relates to how much Samsung owes for infringing Apple design patents. The question accepted by the Supreme Court is: “Where a design patent is applied to only a component of a product, should an award of infringer’s profits be limited to those profits attributable to the component?”

Given the fact that the IPR processes at PTAB have been worrisome for many patent owners, the possibility that Merrick Garland would continue his longstanding deference towards federal agencies should cause at least some concern. Many believe the procedures creating the post grant challenges implemented by the America Invents Act (AIA) are not only one-sided against the patent owner, but fundamentally unfair to the point where due process has been compromised. Rubber stamping agency decisions, as the Federal Circuit is doing with the USPTO, would be a terrible mistake and further erode already tattered patent property rights.

This is as straightforward a certiorari candidate as any patent case can be. It is manifestly important: A host of judges and amici have stressed that the result below is untenable— invalidating previously irreproachable inventions and precipitating what Judge Lourie called “a crisis of patent law and medial innovation.” And this is the vehicle this Court needs to provide that clarification: Every opinion below agrees that this case tests Mayo’s uncertain limits by invalidating an otherwise plainly meritorious invention. Here, unlike Mayo, every intuition points towards patent-eligibility. And yet the Federal Circuit felt compelled by Mayo to condemn this meritorious patent—and, a fortiori, the patents underlying an entire, vital field of American healthcare innovation.

While it is certainly possible that the President has narrowed his consideration to these three candidates, history teaches us that strange twists and turns can and do occur in the Supreme Court nominating process. With four years of experience on the Federal Circuit, confirmed to that court unanimously with a 86-0 vote and vocal bipartisan support, Judge Reyna would be the first Mexican-American to become a Supreme Court Justice, he would be the first international trade lawyer to become a Supreme Court Justice, and he would bring 30 years of broad legal experience and IP training to the High Court. The American Bar Association has ranked him as unanimously well-qualified, its highest ranking.

The AIA and its legislative history do not provide clear and convincing evidence that Congress intended ultra vires agency action by the PTO in holding claims unpatentable to be exempt from judicial review on appeal from a final written decision in an IPR. The Supreme Court should make clear that if the PTO holds claims unpatentable on grounds not set forth in the petition, then that ultra vires conduct is subject to judicial review, not exempt from it.

We along with several other attorneys represent ParkerVision, the plaintiff, which secured a $173 million infringement verdict that the courts subsequently threw out based on their own assessment of the evidence. In this case, the roles of courts and juries are front and center. The Federal Circuit has been dismissive of jury findings. As Judge Newman has observed, the Federal Circuit frequently “reweigh[s] the evidence to reach [the court’s] preferred result, rather than considering whether substantial evidence as presented at the trial supports the verdict that was reached by the jury.” Other judges and scholars have concurred in this view.

Justice Scalia never hid the fact that patent law was his “blind spot”. He also admitted to often taking his cues on IP issues from his colleague Justice Ginsberg. On a Court that has not been kind to patent owners these past years, Justice Scalia, who never feared a bit of controversy, was generally considered as a “staunch defender of patent rights” (as long as they were valid) and viewed them, rightly so, as property. On the other hand, he is also the first Supreme Court Justice to refer explicitly to “patent trolls” (in the Commil case), and not in a good way… He also famously called out the Federal Circuit jurisprudence on obviousness as “gobbledygook.” Google it; it is not exactly a compliment!

The near constant disintegration of patent rights in modern times (see here, here, here, here and here) may be about to come to an end, or at least a pivotal turning point reached. The United States Supreme Court heard oral arguments on February 23, 2016, in two patent cases consolidated by the Court for consideration: Halo Electronics, Inc. v. Pulse Electronics, Inc. (14-1513) and Stryker Corporation v. Zimmer, Inc. (14-1520). These cases will force the Court to dive head first into one of the most thorny political patent issues of our time – the issue of enhanced damages for willful patent infringement. The outcome could give district court judges broad discretion to enhance damages, which would be a significant win for patent owners.

Chen, an Obama appointee, was confirmed only several years ago by a vote of 97-0. Born in 1968 he is 47 years old, meaning he could easily serve on the Court throughout the next generation, in modern times an important consideration for a Presidential nomination to the High Court. Chen also comes from the Federal Circuit, which is anything but politically controversial, primarily responsible for handling patent appeals. Chen would also become the first Asian American to serve on the Supreme Court, another potentially important consideration for President Obama, who has shown throughout his term in Office that he likes breaking glass ceilings with appointments and nominations. Thus, Chen would have virtually all the same upside as would Srinavasan without any of the baggage that would make confirmation difficult, if not impossible.

While Justice Scalia served on the Supreme Court for nearly three decades, his contributions to the area of intellectual property law were quite limited. Scalia did famously refer to patents as “gobbledegook” during the KSR v. Teleflex oral arguments. Scalia was the only Justice not to sign onto an opinion in Bilski v. Kappos that would have recognized that at least some software is patent eligible. But Justice Scalia did not author any of the major patent decisions considered by the Court during his tenure. The passing of Justice Scalia does not seem likely have much of an impact on intellectual property cases, particularly patent cases. Having said this, I could see legislative history becoming more relevant than anyone would have anticipated just a week ago when the Supreme Court considers Cuozzo Speed Technologies v. Lee.

Recently the United States Supreme Court added an important IPR case to its docket. Normally the Supreme Court does not take a Federal Circuit appeal to compliment the Court on how well they have resolved a particular matter, so it seems safe to bet that the Federal Circuit will be reversed on one or both of the issues take. At the very least the Supreme Court can be expected to make broad statements of law and principle and remand the case for further consideration. In either event the outcome would be welcomed by patent owners. In the meantime as we wait for a decision it will also be interesting to watch and see if the PTAB begins to moderate and whether the Federal Circuit shifts their jurisprudence, as they have been known to do from time to time while awaiting a decision from the Supreme Court.