Supreme Court Patent Cases

Although some have called the Federal Circuit the "Supreme Court of Patents," the real Supreme Court has heard quite a number of patent cases, especially in recent years. Here is a list in reverse chronological order (back to 1952). Deciding which cases are "patent cases" involves some judgment calls: I am including things like Hatch-Waxman cases and cases involving Federal Circuit jurisdiction but not cases where patents are only involved in the factual background (e.g., I am omitting Unitherm v. Swift-Eckrich (2006) and Nelson v. Adams (2000)). Click the case link for details; my brief notes next to each case are obviously not comprehensive summaries. Authorship is included for the most recent opinions (interestingly, note that every current Justice has authored at least one patent-related majority opinion). Please contact me (ouellette@law.stanford.edu) with corrections.
  1. Kimble v. Marvel (2015): The Court declined to overrule Brulotte, which held post-patent-expiration royalties unlawful per se (6-3, Kagan, Alito dissents).
  2. Commil v. Cisco (2015): A defendant’s belief regarding patent validity is not a defense to an induced infringement claim under §271(b) (6-2, Kennedy, Scalia dissents).
  3. Teva v. Sandoz (2015): Review of factual matters in claim construction is for clear error; ultimate inquiry is de novo (7-2, Breyer, Thomas dissents). Argument preview and recap; opinion summary.
  4. Alice v. CLS Bank (2014): Adding a generic computer to the abstract idea of intermediated settlement does not make it patentable subject matter (9-0, Thomas, Sotomayor concurs).
  5. Nautilus v. Biosig (2014): Claims are invalid for indefiniteness if, in light of the specification and prosecution history, they fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention (9-0, Ginsburg).
  6. Limelight v. Akamai (2014): No §271(b) inducement liability when no one has directly infringed under §271(a) or other statute (9-0, Alito).
  7. Highmark v. Allcare (2014): All aspects of district court's exceptional-case determination for fee-shifting should be reviewed for abuse of discretion (9-0, Sotomayor).
  8. Octane Fitness v. Icon Health & Fitness (2014): In determining which cases are "exceptional" and deserve fee shifting under § 285, district courts should consider totality of the circumstances rather than rigid subjective bad faith / objectively baseless framework (9-0, Sotomayor).
  9. Medtronic v. Boston Scientific (2014): When a licensee-in-good-standing sues for declaratory judgment of non-infringement, the patentee (as usual) bears the burden of persuasion on infringement (9-0, Breyer).
  10. FTC v. Actavis (2013): "Pay-for-delay" pharmaceutical patent litigation settlements are subject to antitrust scrutiny under the rule of reason (5-3, Breyer, Roberts dissents). See my argument recap and preview.
  11. AMP v. Myriad (2013): Naturally occurring isolated DNA is not patentable subject matter; cDNA is (9-0, Thomas, Scalia concurs).
  12. Bowman v. Monsanto (2013): Patent exhaustion does not allow farmer to reproduce subsequent generations of patented seeds (9-0, Kagan). Pre-argument commentary.
  13. Gunn v. Minton (2013): Applying Grable, "state legal malpractice claims based on underlying patent matters will rarely, if ever, arise under federal patent law for purposes of §1338(a)" (9-0, Roberts). Argument preview.
  14. Kappos v. Hyatt (2012): No limits on new evidence in § 145 proceedings (9-0, Thomas, Sotomayor concurs).
  15. Caraco v. Novo (2012): Generics may bring counterclaim to correct use code (9-0, Kagan, Sotomayor concurs).
  16. Mayo v. Prometheus (2012): Diagnostic method patent is not patentable subject matter because it claims a law of nature (9-0, Breyer).
  17. Microsoft v. i4i (2011): Invalidity must be proved by clear and convincing evidence (8-0, Sotomayor, Breyer concurs, Thomas concurs in judgment). Does it matter?
  18. Stanford v. Roche (2011): Bayh-Dole does not automatically confer title in federally funded inventions in the contractor (7-2, Roberts, Sotomayor concurs, Breyer dissents).
  19. Global-Tech v. SEB (2011): Induced infringement under § 271(b) requires knowledge that induced acts constitute patent infringement (8-1, Alito, Kennedy dissents).
  20. Bilski v. Kappos (2010): Method of hedging risk in commodities trading is an abstract idea and thus not patentable subject matter under § 101. Machine-or-transformation test is not the sole test for determining whether a process is patent-eligible (9-0 for result, but complicated voting: Kennedy majority/plurality, Stevens concurs in judgment, Breyer concurs in judgment).
  21. Quanta v. LG (2008): Patent exhaustion applies to method patents, which are exhausted by the sale of the item embodying the method (9-0, Thomas).
  22. Microsoft v. AT&T (2007): Supplying software that is copied abroad is not supplying a component under § 271(f) (7-1, Ginsburg, Alito concurs, Stevens dissents).
  23. KSR v. Teleflex (2007): Pedal assembly patent is obvious based on "common sense" (9-0, Kennedy).
  24. MedImmune v. Genentech (2007): All-the-circumstances test for a declaratory judgment action of patent invalidity does not require a licensee to breach the license (8-1, Scalia, Thomas dissents).
  25. LabCorp v. Metabolite (2006): Breyer, Stevens, and Souter dissent from DIG in § 101 medical methods case.
  26. eBay v. MercExchange (2006): Four-factor test for a permanent injunction applies in patent cases (9-0, Thomas, Roberts concurs, Kennedy concurs).
  27. Ill. Tool Works v. Indep. Ink (2006): Mere fact that a tying product is patented does not support a presumption of market power in antitrust law (8-0, Stevens).
  28. Merck v. Integra (2005): Use of patented compounds in preclinical studies is protected under § 271(e)(1) (9-0, Scalia).
  29. Holmes Group v. Vornado (2002): Federal Circuit does not have jurisdiction over a case in which patent law is only raised in a counterclaim (9-0 for judgment, Scalia, Stevens concurs in part, Ginsburg concurs in judgment).
  30. Festo v. Shoketsu (2002): Prosecution history estoppel creates a rebuttable presumption against infringement under the doctrine of equivalents, not an absolute bar (9-0, Kennedy).
  31. J.E.M. v. Pioneer Hi-Bred (2001): Newly developed plant breeds are patentable subject matter under § 101.
  32. Fla. Prepaid v. College Savings Bank (1999): Congress does not have authority to abrogate state sovereign immunity from patent infringement claims.
  33. Dickinson v. Zurko (1999): Federal Circuit must use APA's "substantial evidence" standard when reviewing PTO factfinding.
  34. Pfaff v. Wells Elecs. (1998): Marketing triggers on-sale period even if invention is not yet reduced to practice.
  35. Warner-Jenkinson v. Hilton Davis (1997): Affirms (and explains) continuation of doctrine of equivalents.
  36. Markman v. Westview Instruments (1996): Claim construction is a matter for the court.
  37. Asgrow v. Winterboer (1995): Discusses the patent-like protection under the PVPA.
  38. Cardinal Chem. v. Morton (1993): Affirmance of a finding that a patent is not infringed is not a sufficient reason for vacating a declaratory judgment that it is invalid.
  39. Eli Lilly v. Medtronic (1990): § 271(e)(1) exempts from infringement the use of patented inventions needed to obtain marketing approval of medical devices.
  40. Bonito Boats v. Thunder Craft Boats (1989): State statute protecting public domain boat hulls is preempted by federal patent law.
  41. Christianson v. Colt (1988): Federal Circuit lacks jurisdiction where patent law is not necessary to the overall success of a well-pleaded claim, even if it is necessary to one theory under that claim.
  42. Dennison Mfg. v. Panduit (1986): Subsidiary determinations of nonobviousness are questions of fact to which Federal Circuit must apply clearly erroneous standard of FRCP 52(a).
  43. Gen. Motors v. Devex (1983): Prejudgment interest should ordinarily be awarded in patent suits under § 284.
  44. Diamond v. Diehr (1981): Patent on process of curing rubber using a well-known mathematical equation and a computer is patentable subject matter under § 101.
  45. Dawson Chem. v. Rohm & Haas (1980): Selling unpatented chemical with instructions to apply by patented method and refusing to license to competitors is not patent misuse. (Long discussion of contributory infringement.)
  46. Diamond v. Chakrabarty (1980): Genetically engineered bacterium is patentable subject matter under § 101.
  47. Aronson v. Quick Point Pencil (1979): Federal patent law does not preempt state contract law where enforcement is not inconsistent with purposes of patent laws.
  48. Parker v. Flook (1978): Method for updating alarm limits during catalytic conversion in which only novel feature is mathematical formula is not patentable under § 101.
  49. Sakraida v. Ag Pro (1976): Patent on removing manure from barn floor is obvious.
  50. Dann v. Johnston (1976): Application for patent on automatic bank record system is obvious.
  51. Kewanee Oil v. Bicron (1974): State trade secret law is not preempted by patent law.
  52. United States v. Glaxo (1973): US may challenge patent validity when patents are raised as antitrust defense.
  53. Gottschalk v. Benson (1972): Method of decimal-to-binary conversion is not patentable under § 101.
  54. Brunette v. Kockum (1972): 28 U.S.C. § 1400(b) does not change the venue rules for suits against aliens in patent cases.
  55. Deepsouth v. Laitram (1972): § 271(a) does not proscribe making the parts of a patented machine in the US for combination abroad.
  56. Blonder-Tongue v. Univ. of Ill. (1971): Collateral estoppel prevents a patentee from suing on a patent that has been found invalid in a final merits determination.
  57. Anderson's-Black Rock v. Pavement Salvage (1969): Paving machine patent is obvious.
  58. Lear v. Adkins (1969): Licensee is not estopped from challenging patent validity.
  59. Zenith Radio v. Hazeltine (Zenith I) (1969): Injunction was warranted against patentee (part of patent pool) for excluding prospective licensee from Canadian market. See also Zenith Radio v. Hazeltine (Zenith II) (1971).
  60. Brenner v. Manson (1966): Patent application on compound with possible tumor-inhibiting effects lacks utility.
  61. United States v. Adams (1966): Battery patent not invalid for lack of novelty or obviousness.
  62. Graham v. John Deere (1966): First patent validity opinion since Patent Act of 1952, discussing obviousness (highly cited).
  63. Hazeltine v. Brenner (1965): Unpublished pending patent application is prior art.
  64. Walker Process v. Food Mach. & Chem. (1965): Enforcement of a patent procured by fraud on the PTO may violate Sherman Act § 2.
  65. Brulotte v. Thys (1964): License unenforceable to extent that it demands royalty payments after patent expiration.
  66. Aro v. Convertible Top (Aro II) (1964); Aro v. Convertible Top (Aro I) (1961): Discusses extent to which repair/reconstruction of patented convertible top is contributory infringement. See also Wilbur-Ellis v. Kuther (1964).
  67. Compco v. Day-Brite (1964) Sears, Roebuck v. Stiffel (1964): State unfair competition law cannot prevent copying of an unpatented article due to preemption by federal patent law.
  68. United States v. Singer (1963): Patent holders cannot escape the prohibitions of the Sherman Act.
  69. Sperry v. Florida (1963): Florida cannot enjoin nonlawyer from preparing and prosecuting patent applications.
  70. White Motor v. United States (1963): Tying a patented product to an unpatented one is a per se antitrust violation.
  71. Glidden v. Zdanok (1962): CCPA is an Article III court.
  72. Schnell v. Eckrich & Sons (1961); Fourco v. Transmirra (1957): Patent infringement venue statute.
  73. U.S. Gypsum v. Nat'l Gypsum (1957): Discusses claims against codefendants by patentee whose licensee agreements were antitrust violations for patent misuse.
  74. Sanford v. Kepner (1952): In an interference proceeding, where inventorship is decided against the plaintiff, the court need not reach the question of validity raised by the plaintiff.
  75. Besser Mfg. v. United States (1952): Compulsory licensing is a recognized remedy for patent-related antitrust violations; district court has discretion setting royalty rates.

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