Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to granted cases, there is no new activity to report. With respect to petitions, one new petition was filed in a pro se case, and two new replies were filed in patent cases raising questions related to notice-and-comment rulemaking and patent eligibility. Here are the details.
Granted Cases
There is no new activity to report.
Petition Cases
New Petition
In Campbell v. Tube-Mac Industries, Inc., a pro se case, the Court was asked to review the following questions:
- “As Congress has signed the United States of America to the rules and stipulations of the WIPO Patent Cooperation Treaty and the Federal Circuit through Voda v. Cordis, 476 F.3d 887 (2007), ruled that Federal Courts do not have jurisdiction over foreign patents, was the ruling by the District Court that the Patentee and Assignee take the necessary steps to add new co-inventors to foreign patents where said co-inventors had not assigned its claimed rights to the Assignee of record in violation of these rules, the Federal Circuit ruling, and the international Patent Cooperation Treaty?”
- “Regarding foreign and domestic patents, where a Patentee has assigned all patent rights to an Assignee, is it moot for a district court to order that Patentee to add co-inventors?”
- “Where claimed co-inventors from another country have directed themselves through a company from another country with a fictitious ‘obligation to assign’ their claimed inventive rights to a subsidiary US company, registered as domestic, is this not a fraud on the court?”
- “Are frauds on the court such as changing the core of the argument after discovery, perjury, subornation of perjury, and directly lying to the court by attorneys when questioned by the court, reasons to dismiss a case under the doctrine of unclean hands?”
- “Though the law in the United States stipulates that the clock on Laches is to start once a patent has been granted and published by the USPTO, is it not within the principles of Laches and potentially Equitable Estoppel to start the clock when complainants and their attorneys are confirmed to have had and read the patent application in question?”
- “Can there be co-inventors added when the claimed contribution is not in any claim of a patent?”
New Replies
In Chestek PLLC v. Vidal, a patent case, Chestek filed its reply brief in support of its petition. The petition presented the following question:
- “Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).”
In her response brief, Vidal argued that “the Federal Circuit’s decision does not conflict with any decision of this Court or another court of appeals,” and that “Petitioner’s claim is beside the point in any event, because the USPTO did provide for notice and comment here.”
Now, in its reply brief, Chestek asserts that “Congress’s plain intention [in amending the PTO’s primary rulemaking authority] was not anywhere near so pointless” as “merely requiring the agency to follow existing law.” Chestek argues that, “[a]s it has throughout the U.S. Code, Congress added the cross-reference to [5 U.S.C. §] 553 to mandate compliance with that section’s notice-and-comment requirements.”
In Eolas Technologies Inc. v. Amazon.com, Inc., a patent case, Eolas Technologies also filed its reply brief in support of its petition. The petition presented the following questions:
- “Whether claims drawn to solving specific problems restricting the usefulness of an existing computer-network technology recite patent-eligible subject matter under 35 U.S.C. § 101 and Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014).”
- “Whether Alice’s two-step eligibility analysis under § 101 can properly subsume considerations of conventionality, functional claiming, and specificity of description—which traditionally fall under 35 U.S.C. §§ 102, 103, and 112.”
- “Whether the claims of the ’507 patent are eligible for patenting under § 101 and Alice.”
Amazon.com argued in its response to the petition that the Federal Circuit’s “decision was an unremarkable application of Alice that broke no new legal ground.” It said that, while “Eolas contends that the Federal Circuit’s decision somehow conflicts with Alice,” that is “[n]ot so.” Likewise, according to Amazon.com, “Eolas also contends that this Court should grant certiorari to reduce alleged ‘confusion’ regarding Alice’s proper application.” “But,” said Amazon.com, “this Court has repeatedly rejected similar requests, and the premise of those requests is unfounded in any event.”
Now, in its reply, Eolas Technologies asserts that, “[u]nder any proper application of Alice and § 101, claims drawn to ‘improv[ing] computer technology’ or ‘improv[ing] an existing technological process’ . . . are eligible for patent[ing].” Eolas Technologies argues that the claims of the patent at issue “are unmistakably drawn to improving an existing computer-network technology—the then nascent World Wide Web.” According to Eolas Technologies, “[t]he Federal Circuit’s conclusion that these computer-improvement claims are patent ineligible contravenes Alice.”