The US Supreme Court has had an appetite for IP cases in
recent times. Just in the past two weeks we have had three IP
opinions released (subscribers and triallists can read our
Halo v Pulse,
Wiley v Kirtsaeng, and
Cuozzo v Lee, the latter of which was long-awaited by PTAB
The Supreme Court in
today’s order list agreed to take on another
case – granting cert in Life Techs v Promega. This
joins the Samsung v Apple design patents case, Star Athletica v
Varsity Brands copyright case and SCA Hygiene Products v First
Quality Baby Products patent case, which have previously been
granted cert and are awaiting oral argument.
But it seems there are limits to the Supreme
Court’s eagerness to hear IP cases: also today it
denied cert to Sequenom v Ariosa.
The high court granted Life
Technologies’ petition limited to question 2,
which is: "Whether the Federal Circuit erred in holding that
supplying a single, commodity component of a multi-component
invention from the United States is an infringing act under 35
USC § 271(f)(1), exposing the manufacturer to liability
for all worldwide sales."
Reuters reports, the issue is whether a company that
supplies only one part of a patented invention being made
outside the US is liable for patent infringement. Section
271(f) of the Patent Act provides a cause of action for
infringement based upon export of components of a patented
invention to be combined abroad. The Federal Circuit ruled in
December 2014 that Life Technologies’
genetic-testing kits infringed four Promega patents and a fifth
licensed from Max Planck Society.
The Supreme Court declined to review question one of the
petition, however, which
Dennis Crouch on the PatentlyO blog described as "the Billy
Idol question of whether one can induce ones self".
IP consultant Hal Wegner had the Life Sciences case at
number five in his
top 10 US patent cases list.
The decision to deny cert in the Sequenom case –
which Wegner had at number two in his list (behind only
Impression Products v Lexmark) – has dismayed some.
The Federal Circuit
was greatly criticised for its decision in June last year
declaring invalid a Sequenom patent disclosing methods to
identify fetal genetic defects by analysing maternal plasma or
on the PatentlyO blog said the hope had been the case would
serve as a vehicle for the Supreme Court to step back from the
strong language of Alice and Mayo that has led to rejection and
invalidation for many under Section 101. "The Supreme Court has
now denied certiorari in Sequenom – effectively ending
issued a statement saying: "We believe that the Supreme
Court missed an ideal opportunity to clarify patent eligibility
criteria not only to protect the significant investments made
by Sequenom but also by other innovative organisations to
advance the standard of patient care and treatment. We fear
this decision will discourage such investments in the
Others feel its pain, as was evident on Twitter.
But not all were down.
The Supreme Court also denied cert to the Versata v SAP and
Interval Licensing v Lee petitions. It also vacated the
Click-to-Call Technologies v Oracle decision and remanded it to
the Federal Circuit for further consideration in light of
In the meantime, it seems the takeaway is that the Supreme
Court remains hungry for IP cases – unless it involves