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Patent Cases Need Broad Scope for High Court Invite, Lawyers Say

Oct. 11, 2019, 8:45 AM

The U.S. Supreme Court’s recent rejection of several patent petitions underscores that the justices tend to accept cases that have a broader impact than the issues that regularly arise in patent litigation.

The justices Oct. 7 denied eight petitions covering matters such as a patent office rule on reopening examinations, a $506 million infringement lawsuit against Apple Inc. by the University of Wisconsin-Madison’s licensing unit, and whether claims in cybersecurity-related patents should have been invalidated for being abstract.

There’s no secret formula for convincing the justices to grant any petition when the vast majority are denied. But attorneys say that when it comes to patent cases, the justices lean toward questions involving procedure and splits among judges on the U.S. Court of Appeals for the Federal Circuit, and away from case-specific issues.

“It’s always a challenge in patent cases, a puzzler to show that the issue has a broader impact. I think successful cases do that,” Kevin King, partner at Covington & Burling LLP, said. “They show this isn’t just about the parties. These issues have lasting consequences.”

King was co-counsel for Return Mail, an automated mail service provider, in Return Mail Inc. v. United States Postal Service, in which the Supreme Court ruled in August that the government can’t bring administrative patent challenges.

Patent and Procedure

The court is taking up fewer cases involving patent issues such as obviousness, anticipation, and patent eligibility, according to Kannon Shanmugam, chair of Paul, Weiss, Rifkind, Wharton & Garrison LLP’s Supreme Court and appellate practice group. Those issues fall under Section 101 of the patent law, for which the court in 2014 laid out a two-part eligibility test Alice Corp. v. CLS Bank International ruling.

Now, he said, the court seems to be taking up cases like whether the Patent and Trademark Office can recover attorneys fees, as is the focus in Peter v. NantKwest, Inc, a case that was argued Oct. 7.

Paul Gugliuzza, a professor at Boston University School of Law, said that most recent patent cases the high court has heard involve jurisdiction, procedure, remedy, and statute, rather than issues in the weeds of patent law. For example, in 2017’s TC Heartland LLC v. Kraft Foods Grp Brands LLC, the high court made it more difficult for patent owners to sue in preferred venues.

If a petition poses a question that’s not “cleanly tied to the statute, I think it’s harder for the justices to understand why it’s something they want to get involved in,” Gugliuzza said.

“The statutory interpretation issues are easy, I think, for the clerks and justices to understand why the court might be wrong,” he said.

“It’s not immediately apparent” to the justices why thornier patent law cases are worth the court’s time, Gugliuzza said. Patent appeals typically go to one court, the Federal Circuit, meaning there’s rarely a split over an issue among circuit courts —a key signal for the Supreme Court to pick up a case.

But there are patent cases in which “the Federal Circuit is badly fractured,” and cases with such splits have been among those taken up by justices, Greg Reilly, law professor at Chicago-Kent College of Law at Illinois Institute of Technology, said. He pointed to cases that challenge interpretations of statutes, such as the 2011 America Invents Act patent law revamp, and cases in which the Federal Circuit’s ruling may be inconsistent with prior Supreme Court decisions, as important to the Justices.

A full bench of the Federal Circuit split in issuing its decision in the NantKwest case. Morgan Chu, counsel for NantKwest, said that seven of the Federal Circuit justices “were in favor of our side, and four dissenters, including the chief judge.”

“That alone might attract interest,” Chu said.

Power of Petition

The ability to translate complicated patent issues and intricate technical descriptions into plain English and show the large-scale impact of the case is also a crucial factor in persuading the high court to hear arguments, attorneys say.

Petitioners that bring patent cases to the justices must understand that it’s “essential here to speak the court’s language rather than speaking patent-speak,” King said. “Successful ones do that, and unsuccessful ones don’t.”

Petitioners should have an attorney familiar with Supreme Court matters work alongside patent practitoners in crafting a request, King said. Doing so helps explain to the justices “not only why these issues are important to the patent system, but why they have broader significance,” he said.

“Patent cases can also be technical, so you need someone to translate that for the court,” King said.

Having a Supreme Court specialist could be a “significant benefit for a petition,” Greg Reilly, law professor at Chicago-Kent College of Law at Illinois Institute of Technology, said. It’s important for petitioners to recognize the high court’s “role of functioning as big picture questions in terms of legal development,” Reilly said.

Overall, the best argument a patent petitioner can make is to show that the dispute has far-reaching appeal nationwide, Shanmugam said.

“What you’re really trying to do is convince the court the issue matters beyond just the parties in the case,” he said.

To contact the reporter on this story: Ian Lopez in Washington at ilopez@bloomberglaw.com

To contact the editors responsible for this story: Rebecca Baker at rbaker@bloomberglaw.com; Keith Perine at kperine@bloomberglaw.com