Sunday, September 27, 2015

Supreme Court To Consider 12 Patent Petitions Monday

So far, there are zero patent cases (or other IP cases) on the Supreme Court's docket this Term. But tomorrow is the first conference since the Court's summer break, also known as the "Long Conference," at which they will consider twelve petitions in Federal Circuit patent cases. Only one of the twelve involves patentable subject matter, and I don't think the chances of the Court taking it are high. What other issues have been teed up?

The only one of the twelve to make SCOTUSblog's Petitions We're Watching page is W.L. Gore v. Bard, but I'm not sure why they're watching. The longstanding dispute over the Gore-Tex patent has now turned to an effort to overturn the longstanding rule that patent licenses may be either express or implied, but the arguments don't seem particularly compelling.

Perhaps somewhat more worth watching is Life Technologies v. Promega, which involves extraterritorial application of U.S. patent laws in a case where LifeTech was found to have actively induced its own foreign subsidiary. The case has strong advocates (Carter Phillips for Life Technologies and Seth Waxman for Promega), and the petition is supported by amici Agilent Technologies and Professor Tim Holbrook, and by a dissent below from Chief Judge Prost.

There are two petitions related to whether the recent Supreme Court § 285 decisions (Octane Fitness and Highmark) also changed the standard for willful infringement under § 284: Halo v. Pulse and Stryker v. Zimmer. As Jason Rantanen noted at Patently-O, Judge Taranto's concurrence from the denial of rehearing en banc in Halo explained that this is not the right case, but that some § 284 issues could warrant en banc review in a future case. I think the Supreme Court might give the Federal Circuit time to work this out.

I/P Engine v. AOL questions whether the Federal Circuit's de facto standard of review in obviousness cases (including implementation of KSR's "common sense" approach) is insufficiently deferential to factual findings. The Federal Circuit's obviousness holding knocked out a $30 million jury verdict (over a dissent by Judge Chen), and the petition is supported by the Boston Patent Law Association and i4i. But this doesn't look like a winner to me: obviousness is a mixed question of fact and law; the Federal Circuit has always articulated what seems like the right standard of review; and it's hard to say the Federal Circuit has vigorously embraced KSR (see, e.g., the end of this post).

None of these seem like must-takes, but we'll see! Grant decisions will likely be released later in the week.

No comments:

Post a Comment