Todd Dickinson: Congress Must Act Because SCOTUS Has Denied 42 Section 101 Petitions Since Alice

Q. Todd Dickinson

The first of three hearings on patent eligibility reform is now underway; Q. Todd Dickinson, former USPTO Director and Senior Partner at Polsinelli, was one of the first to testify, and in part emphasized to the Senate IP Subcommittee that the courts have shirked their duty to address this issue, so Congress must. Dickinson provided the Subcommittee a list of the 42 cases that have been denied cert by the Supreme Court since Alice and said that the current situation”encourages picking winners and losers” and actually pushes companies and inventors towards trade secrets.

More on the hearing later; here are the 42 petitions denied cert on 101 grounds since Alice.

Section 101 Patent Cases Denied Certiorari Since Alice

Since the Alice decision came out on June 19, 2014, the following 101-based petitions have been denied certiorari by the U.S. Supreme Court.

2019

42) Mitchell R. Swartz v. United States Patent and Trademark Office, et al., No. 18-961

Petition denied 2/25/19

41) Voter Verified, Inc. v. Election Systems & Software LLC, No. 18-549

Petition denied 1/7/19

2018

40) Burnett v. Panasonic Corp., No. 14-414

Petition denied 12/3/18

39) Real Estate Alliance Ltd. v. Move, Inc., No. 18-252

Petition denied 11/5/18

38) Bhagat v. Iancu, No. 18-277

Petition denied 10/29/18

37) Two-Way Media Ltd. v. Comcast Cable Communications, LLC, No. 18-124

Petition denied 10/1/18

36) In re Voter Verified, Inc., No. 17-1614

Petition denied 10/1/18

35) Integrated Technological Systems, Inc. v. First Internet Bank of Indiana, No. 17-1590

Petition denied 10/1/18

34) Cleveland Clinic Foundation v. True Health Diagnostics LLC, No. 17-997

Petition denied 6/11/18

33) Secured Mail Solutions LLC v. Universal Wilde, Inc., No. 17-1319

Petition denied 5/14/18

32) Frontrow Technologies, LLC v. MLB Advanced Media, LP, No. 17-1226

Petition denied 4/23/18

31) Smartflash LLC v. Apple Inc., No. 17-697

Petition denied 1/8/18

30) RecogniCorp, LLC v. Nintendo Co., Ltd., No. 17-645

Petition denied 1/8/18

29) Chan v. Yang, No. 17-311

Petition denied 1/8/18

2017

28) RPost Communications Ltd. v. GoDaddy.com, LLC, No. 17-695

Petition denied 12/11/17

27) Evolutionary Intelligence LLC v. Sprint Nextel Corp., No. 17-609

Petition denied 12/4/17

26) Synopsys, Inc. v. Mentor Graphics Corp., No. 16-1288

Petition denied 10/2/17

25) Appistry, LLC v. Amazon.Com, Inc., No. 16-1368

Petition denied 6/26/17

24) Cox Communications, Inc. v. Sprint Communications Co. LP, No. 16-1106

Petition denied 6/19/17

23) Blue Spike, LLC v. Google Inc., No. 16-1223

Petition denied 6/12/17

22) Affinity Labs of Texas, LLC v. Amazon.com Inc., No. 16-1047

Petition denied 4/17/17

21) Affinity Labs of Texas, LLC v. DirecTV, LLC, No. 16-1046

Petition denied 4/17/17

20) DataTreasury Corp. v. Fidelity Nat. Information Services, No. 16-883

Petition denied 3/20/17

19) Tde Petroleum Data Solutions, Inc. v. AKM Enterprise, Inc., No. 16-890

Petition denied 3/6/17

18) IPLearn-Focus, LLC v. Microsoft Corp., No. 16-859

Petition denied 2/21/17

2016

17) Encyclopaedia Britannica, Inc. v. Dickstein Shapiro, LLP, No. 16-305

Petition denied 10/11/16

16) Essociate, Inc. v. Clickbooth.com, LLC, No. 16-195

Petition denied 10/3/16

15) Genetic Technologies Ltd. v. Merial L.L.C., No. 15-1518

Petition denied 10/3/16

14) Jericho Sys. Corp. v. Axiomatics, Inc., No. 15-1502

Petition denied 10/3/16

13) Vehicle Intelligence and Safety LLC v. Mercedes-Benz USA, LLC, No. 15-1201

Petition denied 5/31/16

12) Cloud Satchel, LLC v. Barnes & Noble, Inc., No. 15-1161

Petition denied 4/25/16

11) Hemopet v. Hill’s Pet Nutrition, Inc., No. 15-1062

Petition denied 4/18/16

10) Retirement Capital Access Management Co. LLC v. U.S. Bancorp, No. 15-591

Petition denied 4/5/16

9) Morales v. Square, Inc., No. 15-896

Petition denied 3/21/16

8) Joao Bock Transaction Systems, LLC v. Jack Henry & Associates, Inc. , No. 15-974

Petition denied 3/21/16

2015

7) OIP Technologies, Inc. v Amazon, Inc., No. 15-642

Petition denied 12/14/15

6) Allvoice Developments US, LLC v. Microsoft Corp., No. 15-538

Petition denied 12/14/15

5) Ultramercial, LLC v. WildTangent, Inc., No. 14-1392

Petition denied 6/29/15

2014

4) Sigram Schindler Beteiligungsgesellschaft mbH v. Lee, No. 14-424

Petition denied 12/8/14

3) Schindler v. Cisco Systems, Inc., No. 14-221

Petition denied 10/14/14

2) Accenture Global Services, GmbH v. Guidewire Software, Inc., No. 13-918

Petition denied 6/30/14

1) Bancorp Services, LLC v. Sun Life Assurance Co. of Canada (U.S.), et al., No. 13-584

Petition denied 6/30/14

Source: Nancy Braman, University of New Hampshire Franklin Pierce School of Law

Eileen McDermott Eileen McDermott is the Editor-in-Chief of IPWatchdog.com. Eileen is a veteran IP and legal journalist, and no stranger to the intellectual property world, having held editorial and managerial positions at [...see more]

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Join the Discussion

7 comments so far.

B
June 5, 2019 06:58 pm
“The 112 legislation needs more than a little tweaking.

The initial draft took into consideration more than you might think. For example, there is no requirement to disclose that which is really old. That presumption was built in to the original draft. Presumptions, however, shouldn’t be in the hands of the pitiful excuse we have for judges and justices. Understand that the 112 issue was put on the plate relatively recently – probably in response to Judge Taranto’s ineptly-penned opinions.

At the end of the day the apparent consensus was that any “tweaking” should involve clarity to prevent more subjective mischief from the courts

As to 112(f), Paul Morinville (6/5/2019) had some great input on the issue about the unintended consequences to the proposed legislative language.
Pro Say
June 5, 2019 12:09 pm
Well said B:

” … both sides of the aisle think there is a real problem with the Alice/Mayo test.”

When our country has a common enemy — in this case a massive assault on American innovation — the aisle disappears and Congress works together.
Anon
June 5, 2019 12:04 pm
Night Writer,

Your post @ 4 sounds in my past recommendations (as accompanying the use by Congress of their Constitutional power of jurisdiction stripping). On this, we see eye to eye.
Night Writer
June 5, 2019 10:12 am
This is a really good point. The Scotus is refusing to take cert and the CAFC was stacked by SV to burn the patent system down. I think the legislation should include dissolving the CAFC and reforming it fresh and then let Trump pick new judges. The 112 legislation needs more than a little tweaking.
B
June 4, 2019 08:41 pm
I was at the hearing and heard Mr. Dickinson speak. There were a lot of good speakers/witnesses, and I was pleased to see that both sides of the aisle think there is a real problem with the Alice/Mayo test.

The new 112(f) may need some tuning to address some of the worries people have expressed, but 12 of 14 witnesses were onboard (or mostly so) with the proposed 101 legislation.

Sherry Knowles gave some damned impressive testimony about a cancer curing drug that: (1) saved her life, (2) was put on the market ONLY b/c of the strong U.S. patent system at the time, but (3) the relevant patent would not likely stand up to Alice/Mayo today.

The EFF shill’s only position was that bad patents kill small business. Yeah, true, but that doesn’t mean you burn the barn down to address the mosquito problem.
Pro Say
June 4, 2019 07:04 pm
Thanks. Wow — 42 denials. I had no idea the number had gotten so high.

Combined with so many 101 decisions at the CAFC being decided by the makeup of the panel, what we really currently have is a patent realm of men (and women) … and not one of law.

That’s not what America is supposed to be about.

Plus; if Congress gets this right, one of the little noted benefits will be the lifting of a huge burden off the shoulders of the overworked CAFC and the Patent Office.

Which would be great for all the judges (and their staff) … great for the Patent Office (including the Examiners) … and great for all of us stakeholders.

Go, Congress, go.

And hopefully before the August adjournment.
Curious
June 4, 2019 03:50 pm
“we tread carefully in construing this exclusionary principle lest it swallow all of patent law”
LOL

“we need not labor to delimit the precise contours of the ‘abstract ideas’ category in this case.”
ROFL

A bunch of funny people that Supreme Court … very funny people.

I wonder if they feel a special kinship with Nero … the fiddler.