SCOTUSblog reports that five of
petitions for conference on January 10 are related to
Soverain Software LLC v. Newegg Inc.
Whether the Federal
Circuit’s effective redefinition of
obviousness as a pure question of law, allowing it to
resolve disputed factual questions in the first
instance on appeal, violates the Seventh Amendment and
this Court’s precedent.
Nautilus v. Biosig Instruments
(1) Whether the Federal
Circuit’s acceptance of ambiguous patent
claims with multiple reasonable interpretations
– so long as the ambiguity is not "insoluble"
by a court – defeats the statutory requirement
of particular and distinct patent claiming; and (2)
whether the presumption of validity dilutes the
requirement of particular and distinct patent
Power Integrations v. Fairchild Semiconductor
Whether the Federal
Circuit erroneously rejected the jury’s
damages verdict after holding – in direct
conflict with the decisions of this Court –
that a patent owner is barred from obtaining damages
under 35 U.S.C. § 284 for lost sales outside the
United States, even where those lost sales are the
direct and foreseeable result of patent infringement
inside the United States.
Akamai Technologies v. Limelight Networks
Whether a party may be
liable for infringement under either section of the
patent infringement statute, 35 U.S.C. §271(a) or
§ 271(b), where two or more entities join together
to perform all of the steps of a process claim.
Limelight Networks v. Akamai Technologies
Whether the Federal
Circuit erred in holding that a defendant may be held
liable for inducing patent infringement under 35 U.S.C.
§ 271(b) even though no one has committed direct
infringement under Section 271(a).
According to Foley & Lardner
partner Hal Wegner, another two cases are also expected to be
up for vote today.
In Organic Seed
Growers and Trade Association v Monsanto, the Supreme
Court is being asked to consider whether the Federal Circuit
erred in ruling that a group of farmers may not bring a lawsuit
seeking to invalidate Monsanto’s patents on GM
crops because Monsanto has promised not to sue farmers whose
crops inadvertently contain the patented genes.
Metso Minerals Industries v Powerscreen International
Distribution raises the issue of whether prior art
concerning obviousness needs to be "fully functional" in order
to qualify as prior art. After hearing this case, the Federal
Circuit ruled that it does not.
Of these cases, Soverain v
Newegg and Limelight v Akamai in particular have
attracted a lot of attention.
Soverain believes the Seventh
Amendment is at stake in its case, no less.
Katharine Wolanyk, president of
the Chicago-based software company, said: "Newegg has lost
sight of the American principles of property rights, validity
of patents, burden of proof, and the Constitution, and is
instead mischaracterising legitimate businesses as a
diversionary tactic. Soverain’s case matters
because it is about the Seventh Amendment right to a jury trial
for patents which invented the way online business is
The case has drawn support from
some prominent IP voices. Gene Quinn, patent attorney and owner
of the IPWatchdog blog, said: "This is not your ordinary
obviousness dispute. The Supreme Court should take this case."
noted in a blog post that the case shows that the question
of which firms can be considered patent trolls and which
can’t is not as clear-cut as some believe.
The Soverain v Newegg
case is on Wegner’s Top Ten Patent Cases list and
he called it a "well-crafted petition". University of Missouri
School of Law professor and Patently-O blogger Dennis Crouch
said that the Federal Circuit’s stance of
reversing the non-obviousness decision in the case
was "almost unprecedented".
Limelight v Akamai is a
may clarify the law on so-called divided infringement. This
is when two separate parties each perform different steps of a
method claim. Akamai believes that Limelight infringed its
patent covering a method for handling web traffic more
efficiently by performing some steps and inducing its customers
to perform others.
Akamai filed its
petition requesting certiorari last February.
Limelight’s response was: bring it on! In
response, it asked the Supreme Court to accept the case and
reaffirm the conclusion of a 1961 case Aro Manufacturing v
Convertible Top Replacement of: "If there is no direct
infringement of a patent there can be no [indirect]
Gary Shapiro (right), CEO of the
Consumer Electronic Association, believes the stakes are very
high for the technology industry. The case will decide whether
patent holders can take companies to court over potentially
patent-infringing activities performed by third-party
Writing in the Washington Examiner, he said: "The court
should weigh in, and rule in favor of Limelight and innovation.
Ruling against Limelight will create a dangerous new legal
doctrine that threatens the whole industry."
If certiorari is granted in any
of these seven petitions, it should be announced later today.
Watch this space.
UPDATE January 10, 4:41
The Supreme Court has granted cert in two of the cases -
Limelight v Akamai and Nautilus v Biosig. It
has also granted cert in a copyright case ABC v Aereo and a trade mark
case POM Wonderful v Coca-Cola.