A big day at the Supreme Court for patent case watchers

SCOTUSblog reports that five of the petitions for conference on January 10 are related to patent cases:

Docket	Case Page	Issue(s)
13-477	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.
13-369	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 claiming.
13-269	Power Integrations v. Fairchild Semiconductor Int'l	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.
12-960	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.
12-786	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).
Source: www.SCOTUSblog.com

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 done.”

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.” Quinn also 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 case that 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] infringement”.

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 businesses.

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 EST:

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.