“[F]ew [petitions for cert] have garnered as much interest as American Axle & Manufacturing v. Neapco Holdings as it represents a major expansion to the Section 101 abstract idea jurisprudence that has been slowly swallowing all of patent law since the Supreme Court handed down Alice Corp. v. CLS Bank International back in 2014.”
With about one month left in the U.S. Supreme Court’s current term, several petitions for writ of certiorari in patent cases being appealed from the U.S. Court of Appeals for the Federal Circuit remain pending in front of the nation’s highest court. Several of these petitions raise important questions on Section 101 patent eligibility jurisprudence in the wake of Alice Corp. v. CLS Bank International, a subject which the Supreme Court has punted on dozens of times after handing out that landmark decision on the patentability of computer-implemented inventions back in 2014. With several petitions on other areas of patent law that have grown more uncertain in recent years, including Section 112 enablement issues and patent-specific preclusion doctrines, the last few weeks of the Supreme Court’s term could presage coming changes to U.S. patent law, while recent cert denials indicate other areas of patent law that are of no concern to the nation’s highest court.
Cisco Systems v. SRI International: SCOTUS Leaves CAFC’s Halo Clarification in Place
On Monday, May 16, the U.S. Supreme Court denied a petition for writ of certiorari filed by Internet networking firm Cisco Systems, which had challenged a September 2021 decision by the U.S. Court of Appeals for the Federal Circuit that had reversed a District of Delaware finding of no willful infringement by Cisco during the period of time after Cisco was put on notice of SRI International’s patents. The Federal Circuit’s Cisco decision clarified that the language from Halo Electronics v. Pulse Electronics (2016) on “wanton, malicious, and bad-faith behavior” only applied to enhanced damages determinations, not findings of willful infringement.
In its petition for writ, Cisco presented two questions to the Supreme Court: whether enhanced damages under 35 U.S.C. § 284 may be awarded absent a finding of egregious infringement behavior; and whether the court of appeals may award enhanced damages without first allowing the district court to exercise its discretion to decide that issue. Although the Delaware district court had previously awarded enhanced damages, that award was vacated in the Federal Circuit’s ruling on the first appeal in this case; the decision clarifying Halo’s willfulness standard came after a second appeal to the Federal Circuit. Both Comcast and the High Tech Inventors Alliance filed amicus briefs supporting Cisco’s petition, arguing that the Supreme Court should clarify the kind of egregious conduct required for enhanced damages. On the same day that the Supreme Court denied Cisco’s petition for cert, the Court also granted Comcast’s petition for leave to file its amicus brief in the case.
PersonalWeb Technologies v. Patreon: Patent-Specific Preclusion Principles Still Apply
On May 16, the Supreme Court also denied a petition for writ of certiorari in PersonalWeb Technologies v. Patreon, which presented two questions to the nation’s highest court: whether the Federal Circuit correctly interpreted Kessler v. Eldred (1907) to create a freestanding preclusion doctrine that may apply even when claim and issue preclusion do not; and whether the Federal Circuit properly extended its Kessler doctrine to cases where the prior judgment was a voluntary dismissal. In Kessler, the Supreme Court found that Eldred’s patent infringement claims against customers of Kessler, who was already sued by Eldred but won a ruling of noninfringement, was a wrongful interference with Kessler’s business. In PersonalWeb, the Federal Circuit applied Kessler despite the fact that the previous case precluding the infringement claims was settled on a stipulated dismissal with prejudice, not a ruling of noninfringement.
While PersonalWeb Technologies filed its petition for cert back in April 2021, this petition received a fresh round of briefing in late April of this year, starting with a brief from the U.S. Solicitor General. That brief, filed on April 21, acknowledged that the Federal Circuit erred in its application of Kessler doctrine, but argued against granting cert because the Federal Circuit’s ruling could be alternatively explained under traditional principles of issue and claim preclusion. While PersonalWeb filed a supplemental brief expounding on the U.S. government’s belief that Kessler was misapplied in this case and that the appeal shouldn’t be denied simply because other preclusion principles existed, the Supreme Court denied cert about three and a half weeks after the U.S. Solicitor General’s brief was filed.
American Axle v. Neapco: Still Awaiting the Solicitor General’s Brief One Year Later
Of the many petitions for writ of certiorari that have been filed at the Supreme Court, few have garnered as much interest as American Axle & Manufacturing v. Neapco Holdings as it represents a major expansion to the Section 101 abstract idea jurisprudence that has been slowly swallowing all of patent law since the Supreme Court handed down Alice Corp. v. CLS Bank International back in 2014. In October 2019, a Federal Circuit panel majority ruled that American Axle’s method for manufacturing propshafts was directed to an abstract idea because it involved an application of Hooke’s Law to dampen vibrations in the propshaft. Chief Judge Kimberley Moore, then Circuit Judge, authored a dissent calling the majority’s ruling “validity goulash” and argued that “Section 101 should not be this sweeping and manipulatable.” In July 2020, the Federal Circuit denied American Axle’s petition for en banc rehearing in a 6-6 split and issued a modified panel decision that Chief Judge Moore criticized as importing Section 112 enablement issues into the Section 101 eligibility analysis.
Since American Axle filed its petition for cert in December 2020, ten amicus briefs have been filed, many of which urged the Supreme Court to grant the petition to clarify Section 101 eligibility, including one brief signed by Senator Thom Tillis (R-NC), former Federal Circuit Chief Judge Paul Michel and former USPTO Director David Kappos arguing that “Section 101 is gravely damaging our country’s ability to succeed in the race for global innovation leadership.” On May 3, 2021, the Supreme Court invited the U.S. Solicitor General to file a brief on the issues raised by American Axle’s cert petition. More than one year later, that brief has yet to materialize.
Olaf Sööt Design v. Daktronics: U.S. Solicitor General Finds No Seventh Amendment Issue
On May 11, the U.S. Solicitor General filed a brief for the U.S. government on the issues raised by a petition for cert filed by engineering consultant firm Olaf Sööt Design last September. In that petition, Olaf Sööt Design asked whether the Seventh Amendment allows the Federal Circuit to reverse a jury verdict of infringement based on a new claim construction offered sua sponte by the appellate court where that construction recasts a factual question on infringement previously decided by the jury. Although Olaf Sööt Design won a jury verdict of infringement against Daktronics, the Federal Circuit ruled in January 2021 that the district court failed to construe a particular claim element during Markman claim construction despite the fact that no claim construction issues were raised on appeal.
The Solicitor General’s brief filed this May argued that the Supreme Court should deny Olaf Sööt Design’s petition for cert, finding that the Federal Circuit’s decision is consistent with the Court’s precedent on allocating power between judges and juries in patent infringement suits. In the Solicitor General’s view, the Court’s 1996 ruling in Markman v. Westview Instruments, which established that claim construction in patent cases should be decided by a judge without submitting construction arguments to a jury, established that courts should decide all issues of claim construction. Further, the Solicitor General noted that the district court jury and the Federal Circuit appeared to adopt the same claim construction for the element at issue, but differed on the application of the doctrine of equivalents which was not an issue raised in Olaf Sööt Design’s petition for cert.
Amgen v. Sanofi: Awaiting the Solicitor General’s Views on Section 112 Enablement Issues
On April 18, the Supreme Court invited the U.S. Solicitor General to file a brief representing the views of the U.S. government on the petition for writ of certiorari filed in Amgen Inc. v. Sanofi. Amgen’s petition for cert presents two questions to the nation’s highest court: whether enablement under 35 U.S.C. § 112 is a question of fact to be determined by the jury, as the Court held in Wood v. Underhill (1846), or a question of law that a court can review without deference, as the Federal Circuit held; and whether enablement requires teaching those skilled in the art how to “make and use” the invention as provided by Section 112, or whether it requires enabling skilled artisans “to reach the full scope of claimed embodiments” without undue experimentation.
Amgen filed its petition for cert last November, about five months after the Federal Circuit issued its decision in the second appeal of Amgen’s patent infringement case against Sanofi over its allegedly infringing treatment for high low-density lipoprotein (LDL) cholesterol, which includes an active ingredient similar to Amgen’s patent-protected Repatha treatment. After a first jury verdict found that Amgen’s patent claims survived Section 112’s written description requirement, the Federal Circuit remanded after finding that the jury’s instructions included an improper “newly characterized antigen” test for satisfying the written description requirement. A second jury verdict again found Amgen’s patent claims not invalid for lack of enablement or failing the written description requirement, although the district court overturned the jury’s finding on enablement on judgment as a matter of law (JMOL). In June 2021, the Federal Circuit affirmed that Section 112 enablement is a question of law to be resolved by courts, despite the fact that Section 112’s written description requirement is a question of fact submitted to juries.
Other Petitions in Patent Cases Currently Before the U.S. Supreme Court
Apple Inc. v. Qualcomm Inc. – Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents. On February 22, the U.S. Solicitor General was invited to file a brief expressing the views of the United States in this case.
Ameranth, Inc. v. Olo, Inc. – 1) What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step 1 of the Alice two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?; 2) Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court, based on the scope of the claims alone or a question of fact, based on the state of art at the time of the invention? On May 5, Olo filed its brief in opposition, and on May 19, Ameranth filed its reply brief.
Spireon, Inc. v. Procon Analytics, LLC – Same questions presented as Ameranth. Spireon filed its petition for cert on April 19 and Procon Analytics’ response is due by May 23.
Interactive Wearables, LLC v. Polar Electro Oy – Same questions presented as Ameranth, including 3) Is it proper to apply 35 U.S.C. § 112 considerations to determine whether a patent claims eligible subject matter under 35 U.S.C. § 101? On May 18, the Supreme Court granted Polar Electro Oy’s motion to extend the time to file a response to and including June 27.
Hyatt v. U.S. Patent and Trademark Office – 1) Whether the ordinary summary judgment standard of Rule 56 applies to review of agency action, as held by the First, Fifth, Ninth, and District of Columbia Circuits. 2) Whether the mandamus standard of Norton v. S. Utah Wilderness Alliance, 542 U.S. 55 (2004), applies to claims seeking to set aside agency action under 5 U.S.C. § 706(2). On May 17, Hyatt’s petition for cert was distributed for conference among the Justices of the Supreme Court.
Image rights acquired by AdobeStock