Slide1Newly Added IP Cases on 2016 U.S. Supreme Court Docket

Newly Added IP Cases on 2016 U.S. Supreme Court Docket

Petitions Granted:

Halo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513

  • Question(s) presented: Whether the Federal Circuit erred by applying a rigid, two-part test for enhancing patent infringement damages under 35 U.S.C. § 284, that is the same as the rigid, two-part test this Court rejected last term in Octane Fitness, LLC v. ICON Health & Fitness, Inc. for imposing attorney fees under the similarly-worded 35 U.S.C. § 285.
  • Argued: 23 Feb. 2016.

Stryker Corporation, et al. v. Zimmer, Inc., No. 14-1520

  • Question(s) presented: Whether the Federal Circuit improperly abrogated the plain meaning of 35 U.S.C. § 284 by forbidding any award of enhanced damages unless there is a finding of willfulness under a rigid, two-part test, when this Court recently rejected an analogous framework imposed on 35 U.S.C. § 285, the statute providing for attorneys’ fee awards in exceptional cases.
  • Argued: 23 Feb. 2016.

Samsung Electronics Co. v. Apple Inc., No 15-777

  • Question(s) presented: Whether, where a design patent is applied to only a component of a product, an award of infringer’s profits should be limited to those profits attributable to the component.
  • Petition Granted: 21 Mar 2016 (limited to Question 2 presented by the petition.

Cuozzo Speed Technologies, LLC v. Michelle K. Lee, No. 15-446

  • Question(s) presented: (1) Whether the court of appeals erred in holding that, in inter partes review (IPR) proceedings, the Patent Trial and Appeal Board may construe claims in an issued patent according to their broadest reasonable interpretation rather than their plain and ordinary meaning; and (2) whether the court of appeals erred in holding that, even if the Board exceeds its statutory authority in instituting an IPR proceeding, the Board’s decision whether to institute an IPR proceeding is judicially unreviewable.
  • Argued: 25 Apr. 2016

SCA Hygiene Products Aktiebolag, et al. v. First Quality Baby Products, LLC, et al., No. 15-927

  • Question(s) presented: Whether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act’s six-year statutory limitations period, 35 U.S.C. § 286.
  • Petition Granted: 02 May 2016

Petitions Pending

Medinol Ltd. v. Cordis Corporation, et al., No. 15-998

  • Question(s) presented: Whether judges may use the equitable defense of laches to bar legal claims for damages that are timely under the express terms of the Patent Act.

The Dow Chemical Company v. Nova Chemicals Corporation (Canada), et al., No. 15-1160

  • Question(s) presented: Whether factual findings underlying a district court’s determination on the definiteness of a patent claim under the Patent Act, 35 U.S.C. 112, like a district court’s factual findings underlying construction of a patent claim, are subject to appellate review only for clear error or substantial evidence rather than de novo review.

Impression Products, Inc. v. Lexmark International, Inc., No. 15-1189

  • Question(s) presented: (1) Whether a “conditional sale” that transfers title to the patented item while specifying post-sale restrictions on the article’s use or resale avoids application of the patent exhaustion doctrine and therefore permits the enforcement of such post-sale restrictions through the patent law’s infringement remedy; and (2) whether, in light of this Court’s holding in Kirtsaeng v. John Wiley & Sons, Inc. that the common law doctrine barring restraints on alienation that is the basis of exhaustion doctrine “makes no geographical distinctions,” a sale of a patented article – authorized by the U.S. patentee – that takes place outside of the United States exhausts the U.S. patent rights in that article.

Cooper v. Lee, No. 15-955

  • Question(s) presented: Whether 35 U.S.C. § 318(b) violates Article III of the United States Constitution, to the extent that it empowers an executive agency tribunal to assert judicial power canceling private property rights amongst private parties embroiled in a private federal dispute of a type known in the common law courts of 1789, rather than merely issue an advisory opinion as an adjunct to a trial court.

Interval Licensing LLC v. Michelle K. Lee, No. 15-716

  • Question(s) presented: Whether the Patent and Trademark Office can appropriately apply the “broadest reasonable interpretation” standard in construing patent claims in post-grant validity challenges.

Sequenom, Inc. v. Ariosa Diagnostics, Inc., et al., No. 15-1182

  • Question(s) presented: Whether a novel method is patent-eligible where: (1) a researcher is the first to discover a natural phenomenon; (2) that unique knowledge motivates him to apply a new combination of known techniques to that discovery; and (3) he thereby achieves a previously impossible result without preempting other uses of the discovery.

WesternGeco LLC v. ION Geophysical Corporation, No. 15-1085

  • Question(s) presented: (1) Whether the court of appeals erred in holding that damages based on a patentee’s so-called “foreign lost profits” are categorically unavailable in cases of patent infringement under 35 U.S.C. § 271(f); and (2) whether the Court should hold this petition for Halo and Stryker.

The following YouTube video clip reviews the 2015 Supreme Court IP cases and their decisions:

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