Posts Tagged: "petition for certiorari"

On February 20, the U.S. Supreme Court issued an order list that denied petitions for writ of certiorari filed in at least five intellectual property cases. While none of these cases induced large numbers of amici to ask the Court to grant cert, they do represent several current issues in IP law that remain unaddressed. From the use of joinder to evade time-bar limits in patent validity proceedings to the service of process required for a grant of preliminary injunction, the Court’s cert denials leave several open questions with which the patent and trademark community will likely grapple.

Just a few weeks after Google waived its right to respond, the Supreme Court denied a petition challenging a U.S. Court of Appeals for the Federal Circuit (CAFC) decision that held a Texas district court erred in ruling against the search engine and tech behemoth. The U.S. District Court for the Eastern District of Texas found the inventors of a method for protecting computers from malware—Alfonso Cioffi and Allen Rozman (the patent is now assigned to Melanie, Megan and Morgan Rozman)—had proven that Google’s Chrome web browser infringed their reissue patents RE43,500, RE43,528, and RE43,529 and that the claims were not invalid. After a first time at the Federal Circuit in which the case was remanded to the district court, a jury awarded Cioffi, et. al. $20 million in past damages and the district court in post-trial review rejected Google’s “original patent defense.”

The U.S. Supreme Court on Monday denied certiorari to HIP, Inc. in a case that asked the Court to review the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) standard for determining joint inventorship. The petition, filed in August, asked the Court to resolve what it called “an indisputable conflict between the express language of Section 116(a) of Title 35, informed by the legislative history of its 1984 amendments, and requirements the Federal Circuit has imposed on the joint inventions statute since the 1984 amendments.”

A manufacturer of Radio Frequency Identification Device transponders (RFIDs), Avery Dennison Corporation, yesterday petitioned the U.S. Supreme Court to grant certiorari in its appeal of a decision upholding ADASA, Inc.’s patent for RFID technology as patent eligible. Avery Dennison is urging the Court to take up the case, which it says “illustrates the depths of the Federal Circuit’s division” and represents “the other side of the coin” in the eligibility debate, in order to balance competing perspectives. While past and present petitions to the Court on eligibility have traditionally focused on uncertainty due to the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) too-narrow view of the law and tendency to invalidate patents under Section 101, Avery Dennison’s petition takes the view that the Federal Circuit’s reading of 101 is too broad.

Last week, Novartis Pharmaceuticals followed through on its  September 2022 promise that it would appeal the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) June 2022 decision invalidating its patent for a dosing regimen for its multiple sclerosis drug Gilenya to the U.S. Supreme Court, after the CAFC denied its request to rehear the case.

The U.S. Supreme Court today denied certiorari in Centripetal Networks v. Cisco Systems, Inc., a case that asked the Court to consider the question “[w]hether placing stock in a blind trust satisfies [28 U.S.C.] §455(f) and, if not, whether…[it] constitutes harmless error under Liljeberg v. Health Services Acquisition Corp., 486 U.S. 847 (1988).” James Edwards, a consultant to Centripetal and to amici Eagle Forum ELDF and Committee for Justice, as well as head of amicus, Conservatives for Property Rights, wrote on IPWatchdog last week that Centripetal and other amici hoped the High Court would take the case to clarify the judicial recusal statute. The Federal Circuit’s June 2022 ruling “cast doubt upon the judiciary’s impartiality and [risks] public confidence in the judicial system,” Edwards wrote, summarizing the petitioner’s argument.

Earlier this year, we discussed Amgen’s petition for Supreme Court review of the Federal Circuit’s affirmance invalidating several antibody patent claims based on a lack of enablement for genus claims. At that time, we believed Amgen had a slim chance of its petition being granted—mainly because the Supreme Court denied a similar petition from Idenix in 2021 (No. 20-380, January 19, 2021).
However, on April 18, the Supreme Court invited the Solicitor General to file a brief expressing the views of the U.S. government on the questions presented. The Supreme Court’s likelihood of granting cert. in any particular case increases by about 10-fold when a Solicitor General’s brief is requested, but more importantly, the Supreme Court follows the Solicitor General’s recommendation about 75% of the time.

On August 2, New York City-based marketing company Bobcar Media filed a petition for writ of certiorari with the U.S. Supreme Court asking the Court to consider various legal issues related to the use of Rule 36 summary affirmances by the U.S. Court of Appeals for the Federal Circuit (CAFC). Bobcar contends that the Federal Circuit’s Rule 36 practice, which allows the court to issue one-word affirmances of lower court decisions despite being fully briefed on the issues and holding oral arguments, “has gotten out of hand, contravening the principles set forth by the Founders of the Constitution, and basic tenets of justice.”

On July 29, several IP organizations and one global snack conglomerate filed amicus briefs at the U.S. Supreme Court asking the nation’s highest court to grant a petition for writ of certiorari to take up Ezaki Glico Kabushiki Kaisha v. Lotte International America Corp. At issue in the appeal is a ruling from the U.S. Court of Appeals for the Third Circuit regarding the definition of “functionality” in trademark law. In finding the stick-shaped, chocolate-covered Pocky cookies sold by Ezaki Glico to be “functional” because of the usefulness of their design, amici argue that the Third Circuit erred in its application of functionality doctrine in a way that threatens trade dress protections for any product when any part of the product’s design provides some usefulness.

On April 5, NetSoc LLC filed a petition for a Writ of Certiorari to the Supreme Court of the United States (SCOTUS) after losing its appeal in the U.S. Court of Appeals for the Federal Circuit (CAFC), which found NetSoc’s patent was directed to patent-ineligible subject matter. NetSoc claims that U.S. Patent No. 9,978,107 (‘107 Patent), titled “Method and System for Establishing and Using a Social Network to Facilitate People in Life Issues,” was legally issued in 2003 contrary to the claim of respondents, Match Group LLC, Plenty of Fish Media and Humor Rainbow. NetSoc says that review is warranted to resolve four legal issues of importance,

Greenberg Traurig and The Rader Group – which is headed by retired Chief Judge of the U.S. Court of Appeals for the Federal Circuit, Randall Rader – have submitted a petition for certiorari to the U.S. Supreme Court on behalf of Acer America Corp. asking the Court to review the CAFC’s precedential opinion in Intellisoft v. Acer. On April 3, the CAFC held that the United States District Court for the Northern District of California (the district court) erred in refusing to remand a case to California state court where removal to a district court was improper under 28 U.S.C. § 1441 and §1454. Despite Acer’s contentions, the CAFC found that Intellisoft’s trade secret misappropriation claim did not “necessarily” raise patent law issues that would result in district court original jurisdiction.

The Supreme Court is currently considering several pleas to review the holding in Arthrex v. Smith & Nephew I and Arthrex v. Smith & Nephew II in the form of four petitions for writs of certiorari: U.S. v Arthrex, No. 19-1434, Smith & Nephew v. Arthrex, No. 19-1452, Arthrex v. Smith & Nephew, No. 19-1458, and Arthrex v. Smith & Nephew, No. 19-1204.  Recently, there has been an uptick in activity in the various cases, with Arthrex most recently filing response briefs in two cases and amicus brief filed by Askeladden LLC and the New York Intellectual Property Law Association (NYIPLA) in U.S. v Arthrex.

Law professors recently filed an amicus brief in support of the Celgene’s petition for writ of certiorari to take up Celgene Corp v. Peter on appeal from the U.S. Court of Appeals for the Federal Circuit (CAFC). In Celgene the CAFC addressed the applicability of the Takings Clause of the Fifth Amendment to inter partes reviews (IPRs), holding “that the retroactive application of inter partes review (IPR) proceedings to pre-America Invents Act (AIA) patents is not an unconstitutional taking under the Fifth Amendment.”

The Supreme Court has agreed to hear Google’s petition for a writ of certiorari in its long-running case with Oracle. The High Court will decide: 1. Whether copyright protection extends to a software interface; and 2) Whether Google’s use of a software interface in the context of creating a new computer program constitutes fair use. In March 2018, the Federal Circuit issued its opinion in favor of Oracle in the case. See Oracle America, Inc. v. Google LLC. The Court found Google’s use of Java application programming interface (‘API packages’) not fair as a matter of law, reversing the district court’s decision on the matter. The ruling resurrected a multi-billion dollar copyright case brought by Oracle Corp against Google and was appealed to the Supreme Court in January 2019, after the Federal Circuit denied rehearing in August 2018. In a press release issued the same day Google filed its petition, Oracle dismissed Google’s move as “a rehash of arguments that have already been thoughtfully and thoroughly discredited” and said that Google’s “fabricated concern about innovation hides Google’s true concern: that it be allowed the unfettered ability to copy the original and valuable work of others as a matter of its own convenience and for substantial financial gain.”