The Supreme Court will hear six patent cases during the current 2013-14 term that began on October 7th of last year.  This is an extraordinary number of patent cases, considering that the Court is scheduled to hear just 70 cases during this term, and that these 70 cases were selected from over 10,000 petitions for hearings (called writs of certiorari).  In contrast, just three patent cases were heard during each of the 2010-11 and 2011-12 terms, and only two patent cases during the 2012-13 term.

What has likely contributed to this increased scrutiny are the very divergent views on significant patent matters between the Supreme Court and the Court of Appeals for the Federal Circuit.  Over the past several years the Supreme Court has reversed the Federal Circuit in a number of high profile patent cases.  Some of these reversals were made after the Federal Circuit had already decided the case for a second time upon “remand” from the Supreme Court.  A “remand” is where the Supreme Court does not directly take on and rule in an appeal of a case, but rather sends it back to the Federal Circuit to decide it in view of further instruction.  Some legal experts have speculated why there are so many Supreme Court reversals of patent cases.  One theory is that these reversals are the product of an overly-legalistic Federal Circuit sandwiched between activist District Courts and a patent-unfriendly Supreme Court.

Also, I will not opine on what this uptick in high stakes patent litigation means for the affected industries, except to say that a number of important intellectual property issues warranted the attention of the Supreme Court this term.

The following is a summary of the six patent cases on the Court’s docket:

Medtronic, Inc. v. Mirowski Family Ventures, LLC, 695 F.3d 1266, was heard in November and decided on January 22nd.  In a unanimous decision, the Court reversed the Federal Circuit holding that when a patent licensee seeks a declaratory judgment against a patent holder, the burden of proving infringement remains with the patent holder.

Two cases, Highmark Inc. v. Allcare Health Management Systems, Inc. and Octane Fitness, LLC v. Icon Health & Fitness, Inc., were just argued on February 26th.  In these cases the Court will address the issue of what is meant by “exceptional” for the fee-shifting provisions of the patent statute.  These cases are being closely followed because of patent litigation reform legislation that is currently before Congress (S. 1720 is pending and H.R. 3309 was passed by the House on December 5th).  Various versions of the pending legislation contain a proposed fee-shifting provision as an attempt to deter abusive patent enforcement activities by nonpracticing patent entities (“NPEs” or “patent trolls”).  The Court’s decision could affect the final shape of the reform legislation.

Alice Corp. Pty. Ltd. v. CLS Bank International will be heard at the end of March.  This case raises the question of what is patent eligible subject matter involving claims directed to computer-implemented inventions.

Nautilus, Inc. v. Biosig Instruments, Inc. will be heard in April.  This case will address the standard for determining when a patent claim is invalid for being too ambiguous.

Rounding out the patent docket is Limelight Networks Inc. v. Akamai Technologies, which will be the very last case to be heard by the Supreme Court this term.  This case raises the interesting question whether a defendant can be held liable for inducing patent infringement of a method claim when no party has committed a direct act of infringement, because the method steps are divided up amongst and performed by different parties.

I expect that you will be hearing more from me as these cases are decided over this term.


–  Anthony D. Sabatelli, PhD, JD
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This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. The opinions expressed in this article are those of the author only and are not necessarily shared by Dilworth IP, its other attorneys, agents, or staff, or its clients.