Petitions / Supreme Court Activity

This post summarizes recent activity at the Supreme Court in cases decided by the Federal Circuit.

Here are the details.

Granted Cases

There is no new activity to report.

Petition Cases

New Petitions

The Supreme Court received three new petitions for writs of certiorari.

In Cochlear Corporation v. Alfred E. Mann Foundation for Scientific Research, Cochlear asked the Court to review the following three questions:

  • “Whether the Federal Circuit has misapplied the ‘book of wisdom’ set forth in Sinclair Refining Co. v. Jenkins Petroleum Process Co., 289 U.S. 689 (1933), by allowing a reasonable royalty for patent infringement under the Patent Act, 35 U.S.C. § 284, to be determined by evidence arising long after the hypothetical negotiation on which that royalty is based?”
  • “Whether Maryland v. Baldwin, 112 U.S. 490 (1884), forecloses an award of damages under a general damages verdict where some claims underlying that award are overturned after trial, and if so, whether a party may challenge such a result notwithstanding agreement to a general damages verdict?”
  • “Whether Garretson v. Clark, 111 U.S. 120, 121 (1884), requires apportionment of patent damages to the inventive contribution of the claimed technology?”

In Arctic Cat Inc. v. Bombardier Recreational Products Inc., Arctic Cat asked the Court to review the following question:

Whether the court of appeals erred in holding that ‘notified of the infringement’ and ‘such notice’ under §287(a) refer only to communications from the patent owner.

In Acer America Corporation v. Intellisoft, Ltd., Acer asked the Court the review the following two questions:

  • “Where Plaintiffs’ theories of trade secret ownership, misappropriation, and damages depend on deciding the patent law issues of inventorship, claim construction, and infringement, does Plaintiffs’ claim ‘necessarily arise,’ under Gunn v. Minton, 568 U.S. 251, 258 (2013), from patent law, thereby justifying removal under 28 U.S.C. §1451, of the claim to district court?”
  • “May a state court control jurisdiction over a federal patent law claim and removal under 28 U.S.C. §1454 by declining to make the notice of removal ‘operative‘ under state court procedures in contravention to Congress’ intent as implemented in the American Invents Act and risking uniformity in application of patent law principles?”

New Responses

Two new briefs in response to petitions were filed with the Supreme Court.

In Comcast Cable Communications, LLC v. Rovi Guides, Inc., Rovi filed its brief in response to the petition agreeing with Comcast that the Court should grant certiorari on the constitutional question in Arthrex but disagreeing with Comcast that the Court should review the forfeiture question. Rovi contends that the issue concerning forfeiture does not warrant review by the Court because “[t]he Federal Circuit was plainly correct in concluding that Arthrex and Rovi did not forfeit their constitutional challenge by raising it first in the court of appeals, because ‘the Board was not capable of providing any meaningful relief to this type of [c]onstitutional challenge and it would therefore have been futile for [a litigant] to have made the challenge there.’ . . . Futility is a well-recognized exception to the exhaustion requirement.” Rovi further argues that “to obtain reversal of the court of appeals’ forfeiture holding, the Government and Comcast would have to do more than simply show Arthrex’s and Rovi’s challenges were untimely: it would have to show that the court of appeals abused its discretion in considering the argument notwithstanding its (purported) untimeliness. That is an insurmountable hurdle.”

In B.E. Technology, L.L.C. v. Facebook, Inc., Facebook filed its brief in opposition to the petition arguing that

[t]he court of appeals correctly determined that Facebook was the prevailing party. That determination hinged on the fact that B.E.’s infringement suit against Facebook was dismissed as moot following Facebook’s success in invalidating B.E.’s patent claims in inter partes review proceedings, preventing B.E. from asserting those claims against Facebook then or in the future. B.E.’s argument that the court of appeals’ decision conflicts with this Court’s precedent and the decisions of other courts rests on a misreading of the court of appeals’ decision, which broke no new ground but merely applied settled principles to particular circumstances. No circuit split exists, and no further review is warranted.

New Replies

One new reply brief was submitted to the Supreme Court in Phazzer Electronics, Inc. v. Taser International, Inc. In its reply brief, Phazzer contends that

[t]he patent at issue is void ab initio and the voidness is not disputed by Respondent. Petitioner could not file the pending petition for writ of certiorari in this pending matter while the bankruptcy stays were still in effect. Once the bankruptcy stays were no longer in effect, Petitioner proceeded to file its Writ of Certiorari timely in this Court. Respondents only challenge the procedural timeliness of the petition, and do not advance any argument as to why Respondents should be entitled to a continued damages judgment under a void patent.

Waivers of Right to Respond

Finally, two different parties submitted waivers of right to respond to the Supreme Court in two separate petitions, this week.