U.S. Supreme Court and the CAFC – Are they in Conflict?

28.08.2016

by Lawrence A Hoffman

It is often said that the U.S. Supreme Court does not have much respect for decisions of the Court of Appeals for the Federal Circuit (CAFC) in patent cases. Does the CAFC record before the Supreme Court really bear this out?

In 2010, the American Bar Association published a study of the reversal rates of U.S. Circuit Courts of Appeals by the Supreme Court[1]. For the ten Supreme Court terms 1999-2008, the Supreme Court reversed over 83% of the CAFC decisions it reviewed. That was the worst record for the 13 Circuit Courts. The median rate was about 68%.[2]

That seems like a pretty dismal record for a court that is supposed to have special expertise in patent law. Are the CAFC judges that incompetent, or is the Supreme Court singularly unqualified to decide patent cases? Neither is likely. So what’s really going on? To try to answer this question, I looked at the 31 CAFC cases reviewed by the Supreme Court over the last 15 years. Of these, 20 decisions were reversed and only eleven were affirmed. I will discuss some of these cases and also present some ideas as to how to increase the chance of being on the winning side, whether before the CAFC or the Supreme Court.

Issues Involved in the 31 CAFC Cases: To facilitate my analysis, I grouped the 30 CAFC cases in eight categories:[3]

  1. Five cases involving patent eligibility under 35 U.S.C. 101[4] – three affirmed and two reversed or reversed in part;
  2. Ten cases involving CAFC decisions in regard to some of the subjective provisions of the patent law[5] including six cases[6] involving tests for infringement under 35 U.S.C. 271 – eight reversed or vacated and remanded, one affirmed on other grounds, and one affirmed;
  3. Five cases concerning burden or standard of proof/persuasion or related issues[7] – one reversed, four affirmed;
  4. Two cases involving standards for review by CAFC[8]– one reversed and remanded, one vacated and remanded;
  5. Three cases involving patent ownership or patent exhaustion[9] – two reversed, one affirmed;
  6. Four cases involving subject-matter jurisdiction[10] – one affirmed, two reversed and remanded, one vacated and remanded;
  7. One case involving patent anti-trust issues[11] – reversed (overturning its own precedent).

Clearly, the CAFC did badly in Categories B and F so let’s start with a closer look at in Category B. There are two subcategories here, cases involving infringement liability, and cases concerning obviousness and other statutory provisions. In the infringement cases, the court found that the CAFC applied the wrong test. In the other cases, the court found the CAFC’s tests too restrictive and inflexible.

Infringement Cases:

Global-Tech:

In Global-Tech, the issue was the degree of knowledge required by a party for it to have commented inducement infringement under 35 U.S.C. 271(b)[12]. SEB, invented a deep fryer for home use, obtained a U.S. patent for its construction and sold the product in the U.S. Sunbeam, a competitor of SEB, engaged Pentalpha, a Hong Kong company to provide it with an equivalent product. Pentalpha then obtained a sample of the SEB product and copied all but its external features. Sunbeam then began selling the Pentalpha copy in the U.S. Pentalpha did not know of SEB’s patent up to that time.

SEB sued Sunbeam which then informed Pentalpha that SEB was asserting patent infringement. Despite this, Pentalpha began selling its copy to other manufactures for sale in the U.S. SEB settled with Sunbeam and then sued Pentalpha and its parent Global.

At trial, SEB obtained a judgment for direct infringement based on its sales and inducement to infringe based on sales to its customers in the U.S. On appeal, the CAFC affirmed. It held that Section 271(b) requires a showing that the alleged infringer either knew or should have known that his actions would induce actual infringement. While Pentalpha did not have actual knowledge of the patent until after it designed the infringing product, the court found that there was adequate proof that Pentalpha deliberately disregarded a known risk and that such disregard was equivalent to actual knowledge.

The Supreme Court, considering only the degree of knowledge required by Pentalpha to have committed inducement, rejected the CAFC’s interpretation, holding that there must be inducement requires actual knowledge of the patent and intent to cause the direct infringement. Section 271(b) does not mention intent, but the Court inferred that some intent is required. The Court observed that “[W]hen a person actively induces another to take some action, the inducer obviously knows the action that he or she wishes to bring about”. It gave as an example a used car salesman “inducing” a customer to buy a car. In such a situation, the salesman knows that the desired result is the purchase of the car.

The Court then considered the possibility that the car was damaged. It recognized two equally plausible inferences that might be drawn from the fact that the car was damaged, namely that the salesman was or was not aware of the damage at the time of the sale.

Considering the alternatives in relation to the facts of the case, the Court that “active inducement” required only that the intended conduct happened to infringe a patent. Alternatively, it could be read to mean that the inducer must persuade another to engage in conduct that the inducer knows is infringement. Relying on its earlier decision in  Aro Mfg. Co. v. Convertible Top Replacement Co.[13], the Court held that actual knowledge is required and that deliberate indifference to a known risk is not enough. Nevertheless, it affirmed the judgment of the CAFC. It did this by importing the doctrine of “willful blindness” from criminal law. It equated this to actual knowledge in much the same way as the CAFC equated deliberate indifference to actual knowledge.

It’s hard to sympathize with Pentalpha here, but it is also hard to see how willful blindness differs from deliberate indifference.  The Court distinguished the two by saying that willful blindness is a stricter standard. It noted that the Courts of Appeals all appear to agree on two basic requirements: (1) the defendant must subjectively believe that there is a high probability that a fact exists and (2) the defendant must take deliberate actions to avoid learning of that fact. With all due respect, this seems like explaining something by giving it a name. It’s just hard to see how deliberately being indifferent to learning a fact is different from taking deliberate action to avoid learning the fact. Perhaps two are different only because the Supreme Court says they are.

Commil:

In Commil, the district court found that Cisco committed both direct infringement and inducement to infringe, and held that Cisco’s purported good faith belief that the patent in suit was invalid is not a defense to a charge of inducement. The CAFC revered, but the Supreme Court, relying largely on the shaky reasoning in Global-Tech, held that the trial court had ruled correctly. Essentially, the Court took the view that infringement and invalidity are separate components of patent law, that the two concepts should not be intermixed. The decision seems correct on the facts, despite its reliance on Global-Tech. Non-infringement and invalidity are factually and logically distinct concepts.

Limelight:

This is a case with a long and interesting history. Akamai is the exclusive licensee under a patent owned by the Massachusetts Institute of Technology. Akamai sued Limelight for infringement. The patent in suit claimed a series of steps, all but one of which were performed by Limelight. The other step was performed by Limelight’s customers and was essential to completion of the method. Limelight instructed the customers how to perform the step and essentially conditioned use of its method on the customers’ performing the step, but did not control its performance.

At trial, a jury found that Limelight had induced infringement by its customers. The trial judge initially upheld the jury verdict. However, after the trial court’s decision, the CAFC decided Muniauction v. Inc. v. Thomson Corp.[14], in which it held that inducement liability in the case of a method claim cannot exist if all steps are not attributable to the same party, either because the party actually performed those steps or because it directed or controlled others who performed them. Based on Muniauction, the district court granted Limelight’s motion for judgment as a matter of law. The CAFC reversed, holding that all the steps required for an underlying actual infringement were required for induced infringement but not necessarily be a single actor. Inducement could also exist when a defendant carries out some steps of a method patent and directs or controls others who carry out the remaining steps.

The Supreme Court, expressly declining to consider the validity of the Muniauction decision, and focusing only on the decision in Limelight, reversed, holding that for induced infringement, there must be an actual direct infringement.

On remand, the CAFC, sitting en banc, unanimously found direct infringement from the fact that Limelight had conditioned sale of its service on its customer’s performance of a step of the patented method, and established the manner of that performance. Under those circumstances, the actions of the customer were attributable to Limelight, which thereby directly infringed under §271(a).[15] How that differs from the CAFC’s formulation is not at all clear.[16]

Microsoft v. AT&T:

This case involved § 271(f)(1)[17] AT&T brought suit for infringement of a patent for a computer voice recognition system. The accused conduct was shipment abroad of master copies of Windows software which was copied abroad and installed in computers for sale outside the U.S. The computer system with the software installed met the terms of the patent claims. The district court found in AT&T’s favor and the CAFC affirmed.

The Supreme Court reversed. Section 271(f) is an exception to the general rule that U.S. patent law does not apply to conduct outside the U.S., the Court declined to interpret § 271(f) expansively. Accordingly, it held that a master software file that is copied abroad for installation in computers is not supplying a component under § 271(f). The Court left to Congress  to address this apparent loophole in the statute.

Merck:

Merck involved whether the “safe-harbor” provision of the Hatch-Waxman act (35 U.S.C. 271(e)(1))[18] protects supplying or using patented compounds for preclinical studies. The patent owner obtained a jury verdict, which the district court sustained, The CAFC affirmed.

The Supreme Court reversed, holding that use of patented compounds in preclinical studies is protected as long as there is a reasonable basis to believe that the compound tested could be the subject of an FDA submission and the experiments will produce the types of information relevant to such a submission. The Court made it clear that it viewed the intent of §271(e)(1) is to facilitate the process of approval of new drugs.

The Other Statutory Interpretation Cases:

The CAFC has repeatedly attempted to provide objective tests for interpreting some of the more subjective provisions of U.S. patent law. Commendable – and even necessary – as that may be, it is not being done to the liking of the Supreme Court.

KSR v.Teleflex

The problem is well-illustrated in KSR. v. Teleflex, a major decision relating the obviousness. The patent in suit, under which Teleflex is the exclusive licensee, is directed to a gas pedal for a computer-controlled automobile engine. The issue was whether it would have been obvious to modify a structurally similar pedal shown in a patent to Asano by adding a position sensor shown in other art where the Asano pedal was designed to solve a problem different from that facing the Teleflex inventor. The district court granted KSR’s motion for summary judgment of invalidity. In a non-precedential decision,[19] the CAFC affirmed based on the well-established rule that a finding of obviousness requires a showing that the prior art or the knowledge of a person of ordinary skill in the art contains a teaching, suggestion, or motivation to modify or combine prior art to meet the terms of a patent claim (the TSM test). The court found that KSR had not met the test and that the Teleflex patent claims were non-obvious. In a unanimous decision, the Supreme Court reversed, holding that application of the TSM test as the sole basis for finding obviousness was improper.

The TSM Test dates back to the days of the CCPA[20], but had never been directly addressed by the Supreme Court. In its opinion, the Court identified six other exemplary (but subjective) indicia of obviousness, namely:[21] (A) Combining prior art elements according to known methods to yield predictable results; (B) Simple substitution of one known element for another to obtain predictable results; (C) Use of known technique to improve similar devices (methods, or products) in the same way; (D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results; (E) “Obvious to try” – choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success; (F) Known work in one field of endeavor that prompts variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art.

The Court acknowledged that the TSM test captures the helpful insight that a patent composed of several elements is not proved obvious merely by demonstrating that each element was, independently, known in the prior art, but it cautioned that “[H]helpful insights, however, need not become rigid and mandatory formulas” [22]. If it is so applied, the Court said, TSM is incompatible with its cases that set forth an expansive and flexible approach to the determination of obviousness.

The Court followed with a point-by-point analysis of four errors it called “flaws in the Federal Circuit’s analysis”[23]. Summarizing these briefly, the first error was that TSM required courts and examiners to look only to known solutions to the same problem the patentee was trying to solve and foreclosed considering if obvious solutions to problems similar to, but not identical to the patentee’s problem existed in the prior art. The second error lay in the CAFC’s assumption that persons of ordinary skill attempting to solve a problem will be led only to those elements of prior art designed to solve the same problem because “familiar items may have obvious uses beyond their primary purposes, and in many cases a person of ordinary skill will be able to…[combine the teachings of multiple patents together] by use of ordinary creativity.[24]

The third error was that the CAFC categorically rejected consideration of a known solution that would be “obvious to try” in determining obviousness. The Court modified this well-established rule, holding that in situations in which “there is a design need or market pressure to solve a problem and there are a finite number of identified, predictable solutions”[25], the fact that a combination was obvious to try might show that it was obvious under § 103.

The fourth error was that the CAFC placed too much emphasis on the risk of courts and patent examiners falling prey to hindsight bias, and that rigid preventative rules deny factfinders recourse to common sense[26].

The first and second “errors” seem to be two sides of the same coin. TSM does not foreclose consideration of these factors. As to the third “error” it seems that the Court was correct in allowing obvious to try to be considered in the specific limited circumstances stated, but the Court’s holding that the TSM test places too much emphasis on preventing hindsight bias seems questionable. In fact, it has been suggested that some of the post-KSR decisions of the CAFC are themselves coming close to the forbidden territory.

What stands out most from the Court’s discussion of the CAFC’s errors seems to be that it unassailably demonstrates that the additional indications of obviousness are really just examples of one or more of the TSM criteria. It is suggested that the discussion above of the CAFC’s errors and the listing from the Patent Office Guidelines above be reread if this does not seem to be correct.

The third questionable part of the decision may be seen in the following observation:

We note the Court of Appeals has since elaborated a broader conception of the TSM test than was applied in the instant matter. See, e. g., DyStar Textilfarben GmbH & Co. Deutschland KG v. C. H. Patrick Co., 464 F. 3d 1356, 1367 (CA Fed. 2006) (“Our suggestion test is in actuality quite flexible and not only permits, but requires, consideration of common knowledge and common sense”); Alza Corp. v. Mylan Labs., Inc., 464 F. 3d 1286, 1291 (2006) (“There is flexibility in our obviousness jurisprudence because a motivation may be found implicitly in the prior art. We do not have a rigid test that requires an actual teaching to combine…”)[27].

These decisions seem to conform nicely to the Court’s holding here but the Court said otherwise. It expressly left for the CAFC to consider if DyStar and Alza describe an analysis more consistent with the Court’s earlier precedents and its decision in KSR.

It seems the Court could have addressed the CAFC’s relaxation of rigidity since doing so would have permitted a less drastic (if any) change in the law, especially since the Court’s examples of obviousness seem to fit nicely within the relaxed standard of DyStar and Alza.

Octane, Halo, and Nautilus:

The Court also reversed the CAFC’s bright-line tests for fee-shifting under 35 U.S.C. 284 in Octane Fitness[28], and for awarding enhanced damages under 35 U.S.C. 285 in Halo[29]. In Octane, the issue was how to determine if a case was “exceptional” for the purpose awarding attorneys fees. The CAFC relied on its earlier decision that a case may be deemed exceptional only when there has been some “material inappropriate conduct,” or when the litigation is both “brought in subjective bad faith” and “objectively baseless.”

In Halo, the issue was how a trial court should determine if to award enhanced damages. Under a 1964 Supreme Court decision in Aro Mfg. Co. v. Convertible Top Replacement Co.[30], increased damages could be awarded in a case of willful or bad-faith infringement. The test employed by the CAFC required a patent owner to show by clear and convincing evidence that the infringer acted despite an objectively high likelihood that its actions constituted infringement of a valid patent and that the risk of infringement “was either known or so obvious that it should have been known to the accused infringer.”

In both cases, the Court struck down the CAFC’s tests as “unduly rigid, and as impermissibly encumbering the statutory grant of discretion to district courts.”

Nautilus[31] involved, the CAFC’s bright line test for determining indefiniteness. The Court replaced the CAFC test (a claim is indefinite if it is “insolubly ambiguous” and “not amenable to construction”) with a new standard—claims must inform those skilled in the art about the scope of the invention with reasonable certainty.  This is undeniably a stricter test, but on remand, the CAFC still found that the claim was not indefinite[32].

Cuozzo:

Cuozzo is the one case in Category B in which the Court affirmed the CAFC decision. This case involved the inter partes review (IPR) provisions of 35 U.S.C. 311-319. There were two issues. The first was the validity of 35 U.S.C. 314(d) providing that “[T]he determination by the Director whether to institute an inter partes review under this section shall be final and nonappealable”. The second involved 35 U.S.C. 316(4) giving the Director the authority to “…prescribe rules establishing and governing inter partes review under this chapter…”. Pursuant to Section 316(4) the PTO issued 37 C.F.R. 42.100(b)

The opinion is interesting and worth reading, but for our purposes, a brief summary will be sufficient. On the first issue, the CAFC sided with the PTO and the Supreme Court agreed. The Court emphasized that the “strong presumption in favor of judicial review may be overcome by clear and convincing indications, drawn from specific language, specific legislative history, and inferences of intent drawn from the statutory scheme as a whole,” that Congress intended to bar review[33].The language of Section 314(d) indicated the necessary clear and convincing indication.

The court emphasized that its decision applied only “…where the grounds for attacking the decision to institute inter partes review consist of questions that are closely tied to the Patent Office’s decision to initiate inter partes review” and did not apply to “…the precise effect of §314(d) on appeals that implicate constitutional questions…”.[34]

The Court also expressed the view that “a contrary holding would undercut the congressional objective to give giving the Patent Office significant power to revisit and revise earlier patent grants, thereby to improve patent quality and restore confidence in the presumption of validity that comes with issued patents.

The second issue concerned the PTO’s rule that in an IPR, a patent claim was to be given its broadest reasonable construction in light of the specification of the patent in which it appears. The patentee argued that the PTO should, like the courts, give claims their “ordinary meaning as understood by a person of skill in the art. The Court rejected this, essentially on the ground that allows the Patent Office to issue rules “governing inter partes review,” §316(a)(4), and the broadest reasonable construction regulation is a rule that governs inter partes review.

In addition, the Court stated the following, which I have reproduced in full because it so clearly reflects the Court’s attitude toward patents:

… Construing a patent claim according to its broadest reasonable construction helps to protect the public. A reasonable, yet unlawfully broad claim might discourage the use of the invention by a member of the public. Because an examiner’s (or reexaminer’s) use of the broadest reasonable construction standard increases the possibility that the examiner will find the claim too broad (and deny it), use of that standard encourages the applicant to draft narrowly. This helps ensure precision while avoiding overly broad claims, and thereby helps prevent a patent from tying up too much knowledge, while helping members of the public draw useful information from the disclosed invention and better understand the lawful limits of the claim[35].

The Category F Cases:

Caraco involved an attempt by Novo Nordisk A/S, the owner of a patent covering one use of a drug, to block the sale by Caraco Pharmaceutical Laboratories, Ltd. of a generic version of the drug for uses not covered by the patent. To facilitate the approval of generic drugs as soon as patents allow, the Hatch-Waxman Act[36] requires a brand manufacturer to submit its patent numbers and expiration dates of patents covering the new drug[37], and FDA regulations require submission of a “use code”[38] that a describes any method-of-use patent covering the new drug. Pursuant to this, Novo submitted a use code covering the patented use. When Caraco submitted its ANDA, Novo submitted an amended version of its use code misstated the scope of the patent in a way that covered Caraco’s proposed uses. Novo filed suit for patent infringement as provided for in 35 U.S.C. 271(e)(2) and Caraco counterclaimed to have the original use code corrected as provided for in 21U.S.C. 355(j)(5)(C)(ii)(I).

The district court issued an injunction directing Novo to restore the original use code, but the CAFC reversed, holding that the counterclaim provision covered only correction of a patent number or an expiration date, but not an incorrect use code. The Supreme Court reversed, holding that one of the purposes of the Hatch-Waxman Act was to speed the introduction of low-cost generic versions of drugs, and permitting correction of a use code by a counterclaim in the patent-holder’s infringement suit facilitated this.

In Medimmune, the Supreme Court reversed the CAFC and held that a licensee does not have to repudiate or breach the license agreement to bring a declaratory judgment action for patent invalidity.

What We Can Learn from the Category B Cases:

The cases discussed above clearly demonstrate the attitude of the Supreme Court toward the judicial philosophy of the CAFC and toward the CAFC’s efforts to provide objective standards for interpreting some of the subjective provisions of 35 U.S.C.

The judicial philosophy of the CAFC has always been seen to be pro-patent. The Supreme Court, on the other hand, is clearly more concerned with the constitutional objective of Art. I Sec. 8 – “to promote the progress of science and useful arts”, than it is with how the Constitution says to do it – “by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries”.

This priority was first expressed at least as early as 1917 in Motion Picture Patents Co. v. Universal Film Mfg. Co.[39]. Here, the Court observed that “the primary purpose of our patent laws is not the creation of private fortunes for the owners of patents but is to promote the progress of science and useful arts[40]. Why the objective and the incentive are not equally important might be debatable, but the Court’s decisions do appear to be directed to making it easier to challenge patents. Whether this approach does really does “promote the progress of science and the useful arts” also seems debatable.

Further, the Court’s condemnation of the CAFC’s objective tests as rigid and inflexible is hard to quarrel with; encouraging a flexible approach to subjective issues has much to commend it. Still, there is disagreement with how the Court went about doing so in KSR[41]. For example, the Court could have – and may believe should have – followed the lead of the CAFC’s decisions between its decision in KSR and the Supreme Court’s decision.

Whether CAFC’s increasingly flexible interpretation of TSM is solely the result of the Court’s KSR decision, or a natural progression of its jurisprudence, or both, it reportedly has become easier to obtain summary judgment of invalidity and more obviousness rejections are being sustained by the Patent Office Patent Trial and Appeal Board and by the CAFC. Moreover, the CAFC is affirming obviousness decisions below both by looking at the other KSR factors, particularly reasonable expectation of success. The CAFC also appears to be giving greater deference the fact-finding by the district courts and the PTO.

 

Finally, philosophical differences and the Court’s attitude toward objective tests aside, it’s hard not to have a nagging feeling that the Court is going out of its way to show disrespect for the CAFC.  The KSR opinion can easily be read as damning the CAFC with faint praise, or even as a thinly veiled benchslap.[42] In Limelight, the Court said “[T]he Federal Circuit’s analysis fundamentally misunderstands what it means to infringe a method patent[43]. That’s downright nasty.

What To Do Now:

If, as some believe, the Court has given us lemons, are there any ways to make lemonade? As in “location” vis a vis real estate, the three most important factors for success in litigation are “preparation, preparation, and preparation. Since advocating for rigid tests before the district courts and the CAFC will be a bad idea, a basis should be included in the patent to support the likely trial and appellate position.

The inventor can play a significant part in this by informing his or her attorney of the known prior art, of the problems in the art to which the invention is addressed, and of advantages and benefits that result from the invention so this information can be included in the application.

A comprehensive discussion of the prior art in the application was often frowned upon it the past, but this should be rethought in light of the flexible approach to obviousness dictated by The Supreme Court in  KSR. Discussion of the prior art in “problem-solution-benefit“ terms may be important since the same problems, solutions, and advantages will often apply to new art found during examination and to art put forth by those seeking to invalidate a patent. Putting the strongest arguments where they can be considered during examination in the first instance may force an advocate of invalidity to seek other less credible arguments. Also, the “problem-solution-benefit“ approach is required elsewhere, for example,  in European and China, and should be included in a PCT application where the initial (priority) application is a U.S. provisional or non-provisional application.

Where obviousness is not the issue, trial tactics should to be designed to support the court’s discretion. That may provide a basis on appeal for arguing that the court did, or did not, abuse its discretion and avoids the need to defend rigid tests.

Conclusion:

Inflexible objective tests are a thing of the past unless Congress  steps in. Until then it must be recognized that questions of obviousness or judicial discretion do not usually have simple answers. However, especially where obviousness is the issue, describing the state of the art, and its problems and deficiencies will go a long way toward achieving the desired result for the patent owner both in the PTO and in court.

 

[1] Hofer, Supreme Court Reversal Rates: Evaluating the Federal Courts of Appeals, Landslide, Vol.  2, No. 3, January/February 2010.

[2] These numbers reflect the ratios of the number of cases from a Circuit Court that were reversed to the number of cases reviewed from that Circuit Court.

[3] Note that some of the cases involve issues in more than one category. I have arbitrarily placed such cases in a category according to the issue that seemed most prominent in the Court’s decision.

[4] Alice v. CLS Bank, 573 U.S. __, 134 S. Ct. 2347 (2014); AMP v. Myriad, 569 U.S. ___, 133 S.Ct. 2107; Mayo v. Prometheus, 566 U.S. ___, 132 S.Ct. 1289 (2012); Bilski v. Kappos, 561 U.S. 593, 130 S.Ct. 3218 (2010);  J.E.M. v. Pioneer Hi-Bred, 534 U.S. 124 (2001).

[5] Cuozzo v. Lee, 579 U. S. ____ (2016); Halo v. Pulse and Stryker v. Zimmer (consolidated), Nautilus v. Biosig, 134 U.S. 2120 (2014); Octane Fitness v. Icon, Health & Fitness, 134 S.Ct. 49 (2013); KSR v. Teleflex, 550 U.S. 398, 127 S.Ct. 1727 (2007)

[6] Commil v. Cisco, 563 U.S. ___, 135 S.Ct. 1920 (2015) Limelight v. Akamai, 134 S.Ct. 2111 (2014);; Global-Tech v. SEB, 563 U.S. ___; 131 S. Ct. 2060 (2011); Microsoft v. AT&T, 550 U.S. 537 (2007); Merck v. Integra, 545 U.S. 193 (2005).

[7] Medtronic v. Mirowski, 571 US __ ,134 S. Ct. 843 (2014); Kappos v. Hyatt, 566 U.S. ___, 132 S.Ct. 1690 (2012); Microsoft v. i4i, 564 U.S. ___, 131 S.Ct. 2238 (2011);  Festo v. Shoketsu, 535 US 722 (2002); eBay v. MercExchange, 547 US 388, 126 S. Ct. 1837 (2006).

[8] Teva v. Sandoz, 574 US __, 135 S. Ct. 831 (2015); Highmark v. Allcare, 134 S.Ct. 1744 (2014)

[9] Bowman v. Monsanto, 134 S.Ct. 24 (2013); Stanford v. Roche, 563 U.S. 776, 31 S.Ct. 2188 (2011); Quanta v. LG, 553 U.S. 617 128 S.Ct. 2109 (2008)

[10]  Caraco v. Novo, 566 U. S. ____ , Carlsbad v. HIF, 129 S.Ct. 1862 (2009); Medimmune v. Gentech, 549 U.S. 118, 127 S. Ct. 764 (2006) Holmes Group v. Vornado, 535 U.S. 826 (2002).

[11] Ill. Tool Works v. Indep. Ink, 547 U.S. 28, 126 S. Ct. 1281 (2006)

[12] “Whoever actively induces infringement of a patent shall be liable as an infringer.”

[13] 377 U. S. 476 (1964) (Aro II)

[14] Muniauction, Inc. v. Thomson Corp., 532 F. 3d 1318 (2008)

[15] 2015 U.S. App. LEXIS 14175 (Aug. 13, 2015).

[16] On July 1, 2016, it was reported that the case was terminated with a payment by Limelight of $51,000,000.

[17] Whoever…supplies all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.

[18] It is not “an act of [patent] infringement to … use … or import into the United States a patented invention … solely for uses reasonably related to the development and submission of information under a Federal law which regulates the … use … of drugs.”

[19] The unpublished 2005 CAFC opinion may be found at 119 Fed. Appx. 282

[20] See, for example, Application of Bergel et al., 292 F.2d 955. 956 (1961).

[21] This restatement is taken from Manual of Patent Examining Procedures, Section 2141, Examination Guidelines for Determining Obviousness Under 35 U.S.C. 103 [Rev. 7,2015], 75 Fed. Reg. 53,643 (Sept. 1, 2010)

[22] 550 U. S. at 419

[23] Id.

[24] Id.

[25] Id.

[26] Ibid, 420-421

[27] 150 U.S. at 421-422. See, also, In re Kahn, 441 F.3d 977 (Fed. Cir. 2006), which appears to extend the flexibility of the TSM Test even more than DyStar and Alza.

[28] supra

[29] supra

[30] 377 U. S. 476

[31] supra

[32]

[33] Slip opinion, page 10 (internal quotes omitted)

[34] Slip opinion, page 11.

[35] Slip Opinion, page 17.

[36] 21 U.S.C.  § 301 et seq.

[37] §355(b)(1)

[38] 21 CFR §§314.53(c)(2)(ii)(P)(3)(e)

[39] 243 U. S. 502, 518 (1917)

[40] 243 U. S. at 5111

[41] See, for example, KSR the 5th Anniversary: One Supremely Obvious Mess, By Gene Quinn, April 29, 2012, IP Watchdog, http://www.ipwatchdog.com/2012/04/29/ksr-the-5th-anniversary-one-supremely-obvious-mess/id=24456/

[42] For those unfamiliar with the term, it has come into the legal vernacular to mean when a judge humiliates an attorney, insults another judge, or reverses a lower court in a particularly demeaning manner.

[43] Slip Opinion, page 5.

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