Top Ten Patent Cases *

May 1, 2013

Federal Circuit appeals are shown in black with green highlighting Supreme Court Cases prior to certiorari are without highlighting Supreme Court Merits appeals are in blue, turquoise highlighted

Rank 1 2 3 4 5 6 7 8 9 10

Case Name Myriad . Bowman v. Monsanto . FTC v. Actavis Merck (K-Dur) Limelight v. Akamai Akamai v. Limelight CLS Bank Momenta Allcare v. Highmark Lighting Ballast Nokia [InterDigital]

Issue 101 Patent Eligibility Seed Patent Exhaustion ANDA Reverse Payments . ANDA Reverse Payments Joint Induced Infringement Joint Direct Infringement

Status Argued April 15 Argued February 19 Argument Mar. 25 Awaiting Cert. decision Awaiting Conference Response due May 6 Awaiting decision . Response due May 2 Response due Apr. 24 Awaiting argument . Petition due May 10 `

. Software Patent-Eligibility . . 271(e)(1) Safe Harbor . . Cybor dj vu . Cybor dj vu . ITC Domestic Manufacture .

Supreme Court Decisions this Term (All decisions 2013) Case Issue Date January 9 Already v. Nike Justiciable Controversy Gunn v. Minton Federal Court Jurisdiction February 20 Byrne v. Wood, Heron Federal Court Jurisdiction February 25 Kirtsaeng v. John Wiley International Exhaustion March 19

*About

the List, see page 2.

Wegners Top Ten Patent Cases [May 1, 2013]

Supreme Court October 2012 Term

Remaining Court Sessions for the October 2012 Term: May 13, 20 and 28 and June 3, 10, 17 and 24; additional days to be announced. Remaining Conferences for Certiorari Votes: May 9, 16, 23 and 30 and June 6, 13 and 20. (Decisions are expected at 9:30 AM on the date of the next regularly scheduled session.) Conference dates are announced for each case on the Supreme Court website, which can be searched at http://www.supremecourt.gov/docket/docket.aspx. A case not scheduled for Conference will be taken up not earlier than September 30, 2013. Oral Arguments: The next oral arguments will take place during the October 2013 Term beginning October 7, 2013, that runs through June 2014.

About the List: Harold C. Wegner is solely responsible for this list. The author is a former Professor of Law at the George Washington University Law School and is currently a partner in the international law firm of Foley & Lardner LLP. Any opinions or characterizations expressed in this paper represent the personal viewpoint of the author and do not necessarily reflect the viewpoint of any colleague, organization or client thereof. The writer acknowledges participation for an amicus party in Top Ten No. (1) Myriad.

Wegners Top Ten Patent Cases [May 1, 2013]

(1) Myriad 101 Patent-Eligibility The Myriad case, Association for Molecular Pathology v. Myriad Genetics, Inc., Supreme Court No. 12-398, challenges the split 2-1 Federal Circuit confirmation of patent-eligibility under 35 USC 101 of claims to isolated DNA. Status: Awaiting decision (argument April 15, 2013). The Petition raised three Questions Presented. Certiorari was granted only as to the first Question Presented: Question Presented (with Cert. Granted): Many patients seek genetic testing to see if they have mutations in their genes that are associated with a significantly increased risk of breast or ovarian cancer. Respondent Myriad [ ] obtained patents on two human genes that correlate to this risk, known as BRCA1 and BRCA2. These patents claim every naturally-occurring version of those genes, including mutations, on the theory that Myriad invented something patent-eligible simply by removing (isolating) the genes from the body. Petitioners are primaril y medical professionals who regularly use routine, conventional genetic testing methods to examine genes, but are prohibited from examining the human genes that Myriad claims to own. This case therefore presents the following questions: 1. Are human genes patentable? *** (2) Bowman v. Monsanto Patent Seed Exhaustion In Bowman v. Monsanto Co., Supreme Court No. 11-796, proceedings below, Monsanto Co. v. Bowman, 657 F.3d 1341 (Fed. Cir. 2011)(Linn, J.), Petitioner challenges the denial of patent exhaustion as to harvested seeds produced from patented plant technology, an issue discussed in Wegner, Post-Quanta, Post-Sale Patentee Controls, IV-B-1, Restrictions on Reproduced Bio-Products: The Quanta Loophole, 7 J. Marshall Rev. Intell. Prop. L. 682, 695-98 (2008), available at http://www.jmripl.com.php5-10.dfw1-2.websitetestlink.com/issues/article/173. Status: Awaiting decision at some point before the end of June 2013; argued February 19, 2013.
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Question Presented: Patent exhaustion delimits rights of patent holders by eliminating the right to control or prohibit use of the invention after an authorized sale. In this case, the Federal Circuit refused to find exhaustion where a farmer used seeds purchased in an authorized sale for their natural and foreseeable purpose - namely, for planting. The question presented is: Whether the Federal Circuit erred by (1) refusing to find patent exhaustion in patented seeds even after an authorized sale and by (2) creating an exception to the doctrine of patent exhaustion for self-replicating technologies? Discussion: Respondents counsel Seth Waxman gave one of his better performances both in briefing and argument. Given the transcript of the argument, it is difficult to see the exhaustion issue applied to a farmers making of progeny seed from purchased/patented Roundup Ready seed. (3) FTC v. Actavis (AndroGel) ANDA Reverse Payments In FTC v. Actavis, Inc., Supreme Court No. 12-416, opinion below, 677 F.3d 1298 (11th Cir. 2012), the Court is reviewing the AndroGel ANDA reverse payment settlement case. Justice Alito is recused. Status: Awaiting decision (argument March 25, 2013). Question Presented: Federal competition law generally prohibits an incumbent firm from agreeing to pay a potential competitor to stay out of the market. See Palmer v. BRG of Ga., Inc., 498 U.S. 46, 49-50 (1990). This case concerns agreements between (1) the manufacturer of a brand-name drug on which the manufacturer assertedly holds a patent, and (2) potential generic competitors who, in response to patent-infringement litigation brought against them by the manufacturer, defended on the grounds that their products would not infringe the patent and that the patent was invalid. The patent litigation culminated in a settlement through which the seller of the brand-name drug agreed to pay its would-be generic competitors tens of millions of dollars annually, and those competitors agreed not to sell competing generic drugs for a number of years. Settlements containing that combination of terms are commonly known as reverse payment agreements. The question presented is as follows:

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Whether reverse-payment agreements are per se lawful unless the underlying patent litigation was a sham or the patent was obtained by fraud (as the court below held), or instead are presumptively anticompetitive and unlawful (as the Third Circuit has held). Possibility of a 4-4 Nonprecedential Affirmance: The recusal of one of the members of the Court (Alito, J.) leaves open the possibility of a nonprecedential tie vote. If that were to occur, Top Ten No. (4) Merck, currently being held for a certiorari vote after Actavis is decided, could well be a vehicle to break the 4-4 tie. (4) Merck (K-Dur)-- ANDA Reverse Payments Merck & Co., Inc. v. Louisiana Wholesale Drug Co., Inc., Supreme Court No. 12245, and Upsher-Smith Laboratories Inc. v. Louisiana Wholesale Drug Co., Inc., Supreme Court No. No. 12-265, each involve ANDA reverse payment settlement decisions in conflict with No. (3) FTC. v. Actavis, which will be argued March 25th with a merits decision by the end of June 2013. Status: It is apparent that both Merck is being held for certiorari review following a merits decision in FTC v. Actavis. If there is a precedential opinion in Actavis, the possibility for a GVR outcome for Merck remains open. Possibility this Case could break a 4-4 Tie Vote in Actavis: If the Actavis decision is a 4-4 nonprecedential tie decision, it is conceivable that certiorari might well be granted in the Merck case to break the tie. If certiorari is granted in this case, briefing would take place over the summer with argument in the October 2013 Term that runs through June 2014. Question Presented in Merck: Whether the federal antitrust laws permit a brand name manufacturer that holds the patent for a drug to enter into a settlement of patent litigation with a prospective generic manufacturer, where the settlement includes a payment from the brand manufacturer to the generic manufacturer but does not exclude competition beyond the scope of the patent.

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(5) Limelight v. Akamai Joint Indirect Infringement

The Federal Circuit split 6-5: Or was it 7-4?

see A 6-5 (or 7-4) Fractured Federal Circuit, pp. 10-11 . In Limelight Networks, Inc. v. Akamai Techs., Inc., Supreme Court No. 12-786, opinion below, Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012)(en banc)(per curiam), active inducement infringement of a combination claim was found under 35 USC 271(b) despite the fact that no single party performed each and every element of the combination so that there was no direct infringer under 35 USC 271(a). The six vote per curiam majority was offset by five dissents that challenged a ruling of induced infringement in the absence of an act of direct infringement. (One critic recasts a dissenting opinion as a concurrence that creates a fractured vote of 7-4 instead of 6-5, as discussed in the box, infra, A 6-5 (or 7-4) Fractured Federal Circuit. Status: A vote whether to grant certiorari is expected before the end of June 2013. (Respondents petition stage filing took place April 3, 2013.) Certiorari Today or Downstream: It is clear that at some point the Supreme Court will grant certiorari to review the manifest judicial legislation exhibited by the majority in Akamai. Whether that occurs in this case is unclear, given that the Court accepts only about one (1) percent of all cases where a petition for review is filed.

Question Presented in Limelight: [The patent claims] a method involving redirecting requests for Internet content and selecting optimal servers. The Federal Circuit acknowledged that neither [the accused infringer] nor customers using [the accused infringer's service directly infringe [the] patent under 35 U.S.C. 271(a) because no one performs all the steps of the patented method. The Federal Circuit nevertheless held that [the accused infringer] could be liable, under 35 U.S.C. 271(b), for inducing infringement if (1) it knew of [the] patent; (2) it performed
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all but one of the steps of the method; (3) it induced its customers to perform the final step of the claimed method; and (4) the customers performed that step. The question presented is: 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 271(a). Question Presented in Limelight (per Akamai): The question on which Limelight seeks certiorari mischaracterizes the Federal Circuit's holding below in Akamai by asserting that the Federal Circuit held that a party can be liable for induced infringement under 35 U.S.C. 271(b) where no one directly infringes the claim. This assertion is not correct. In Akamai, the en banc Federal Circuit explicitly held that a determination of induced infringement requires a showing of direct infringement. Contrary to Limelight's assertion, the en banc court merely overruled a portion of a recent 2007 decision, which incorrectly held that, for a party to be liable for induced infringement, some single entity must be liable for direct infringement under 35 U.S.C. 271(a). Properly read, Akamai merely corrected the bizarre result created by this recent precedent, which allowed a party that induced infringement of a method claim to escape all liability for infringement so long as it itself performed one step of the method. Accordingly, a more accurate representation of the question presented is: Whether the Federal Circuit correctly held that a determination of induced infringement under 271(b) does not require a predicate finding that a single entity was liable for infringement under 271(a), under circumstances where all of the steps of a method claim are performed, but the inducer performs some steps itself and induces another to perform the remaining steps?

The Wisdom of the late Giles Sutherland Rich: Upon enactment of the 1952 Patent Act, the principal architect of 35 USC 271 in his seminal analysis of that section of the patent law made it clear that there must be an act of direct infringement by a third party for liability to attach to an active inducer:

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Active inducement implies that there is not a direct infringement by the one doing the inducing and that the direct infringement was by another. Giles S. Rich, Infringement Under Section 271 of the Patent Act of 1952, 21 Geo. Wash. L. Rev. 521, 541 (1953)(emphasis added). Clearly, the inducer cannot be a direct infringer: Reliance on [35 USC 271(b)] as a basis for liability is in itself a clear indication that the party held liable is not a direct infringer and if he is to be called any kind of an infringer there is no applicable recognized term except contributory infringer. Id. (original emphasis)

Limelights Argument: The Federal Circuit's holding that [the accused infringer] may be liable, under 35 U.S.C. 271(b), for inducing infringement of [the] patent even though no party directly infringed the patent under 271(a) conflicts with this Court's holding, repeatedly reaffirmed, that if there is no direct infringement of a patent there can be no [indirect] infringement. Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 341 (1961) (Aro I) (referring to principle as a fundamental precept of patent law); see Global-Tech Appliances, Inc. v. SEB S.A., 131 S. Ct. 2060, 2065 (2011); Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 526 (1972); Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 483 (1964); see also Dawson Chem. Co. v. Rohm & Haas Co., 448 U.S. 176 (1980); Mercoid Corp. v. Mid-Continent Inv. Co., 320 U.S. 661, 677 (1944) (Frankfurter, J., dissenting). Akamais Argument Presented in the Conditional Appeal: Akamai boldly argues that the all elements rule does not apply in the case where a party performs fewer than all the elements of a combination claim. The earliest Supreme Court case cited is Warner-Jenkinson Co., Inc. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997). The green paper attached as an appendix (Akamai: Origins of the All Elements Rule) focuses upon the origins of the all elements rule in Barrett v. Hall, 2 F.Cas. 914 (No. 1047)(D. Mass. 1818)(Story, J.), 180 years before Warner-Jenkinson.

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A Deeply Fractured Federal Circuit: The senior member of the Court explains: This en banc court has split into two factions, neither of which resolves the issues of divided infringement. A scant majority of the court adopts a new theory of patent infringement, based on criminal law, whereby any entity that advises, encourages, or otherwise induces, or causes, urges, encourages, or aids the infringing conduct, is liable for the infringing conduct. The majority further holds that only the inducer is liable for divided infringement, and that the direct infringers are not liable although the patent rights are plainly being violated by the actors' joint conduct. These are dramatic changes in the law of infringement. On this new inducement-only rule, the inducing entity is liable on greatly enlarged grounds, such as merely advising or encouraging acts that may constitute direct infringement. This new rule is not in accordance with statute, precedent, and sound policy. It raises new issues unrecognized by the majority, and contains vast potential for abuse. Akamai, 692 F.3d at 1319 (Newman, J., dissenting). The second senior-most member of the four dissenting judges (who has himself now taken senior status) explains the former majority viewpoint: [T]his court assumes the mantle of policy maker. It has decided that the plain text of 271(a) and (b) fails to accord patentees certain extended rights that a majority of this court's judges would prefer that the statute covered. To correct this situation, the majority effectively rewrites these sections, telling us that the term infringement was not, as was previously thought, defined by Congress in 271(a), but instead can mean different things in different contexts. The majority's approach is contrary to both the Patent Act and to the Supreme Court's longstanding precedent that if there is no direct infringement of a patent there can be no contributory infringement. Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336, 341 (1961); Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 526 (1972) (quoting Mercoid Corp. v. MidContinent Co. ( Mercoid I ), 320 U.S. 661, 677 (1944) (Frankfurter, J., dissenting on other grounds)); see also Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 774 (Fed.Cir.1993) (Liability for either active inducement of infringement or for contributory infringement is dependent upon the existence of direct infringement.); C.R. Bard v. Advanced Cardiovascular Sys., Inc., 911 F.2d 670, 673 (Fed.Cir.1990) (same). Akamai, 692 F.3d at 1337 (Linn, J., joined by Dyk, Prost, OMalley, JJ.).

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Two Critical Votes by the Two Newest Members of the Federal Circuit: The Federal Circuit is a court in transition. What was once was an apparent solid majority for the viewpoint of what became the dissent in the opinion below was swung to a 6-5 per curiam majority thanks to the votes of the two newest members of the Court, Wallach, Reyna, JJ. With the possible exception of the senior member of the Court, the penultimate member of the Court has the highest ratio of separate opinions concurring, dissenting (or concurring dubitante) versus majority opinions of any member of the Court. Both have taken a positive attitude to become deeply involved with the most important matters of the Court, a sharp departure from a generation ago when newer members of the Court were reluctant to vote for en banc consideration of cases; it was then very difficult to obtain review of clear conflicts within the Circuit. This was perhaps best manifested by the conflict between Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565 (Fed.Cir.1991), and Atlantic Thermoplastics Co. v. Faytex Corp., 970 F.2d 834 (Fed.Cir.1992). The Court repeatedly refused to resolve this conflict through an en banc proceeding, e.g., SmithKline Beecham Corp. v. Apotex Corp., 453 F.3d 1346 (Fed. Cir. 2006)(Order den. rehg en banc). The conflict was only finally resolved seventeen (17) years after Atlantic Thermoplastics in Abbott Laboratories v. Sandoz, Inc., 566 F.3d 1282 (Fed. Cir. 2009)(en banc)(Rader, J.).

A 6-5 (or 7-4) Fractured Federal Circuit: Five of the eleven judges dissented. An esteemed colleague has suggested that there were actually seven members in the majority, which would count one of the votes in the dissenting column as part of the majority. Cf. Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1310 (Fed.Cir.2012)(en banc)(Newman, J., dissenting)(I respectfully dissent.).

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The cited jurists dissent focused upon the majoritys judicial legislation, in common with the other dissent in the case: Issues of induced infringement are not new, but this aspect is ill served by the majority's distortion of the inducement statute, 35 U.S.C. 271(b), and has no support in theory or practice. This new rule simply imposes disruption, uncertainty, and disincentive upon the innovation communities. Id.(emphasis added). To be sure, the dissent could have elected to style the opinion as a concurrence in the result insofar as the result sought by the dissent was achieved by the majority.

(6) Akamai v. Limelight Joint Direct Infringement In Akamai Techs., Inc. v. Limelight Networks, Inc., Supreme Court No. 12-960, opinion below, Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012)(en banc)(per curiam), the winning party in the Akamai case below has filed a conditional petition for certiorari to hedge its bets in case the Supreme Court agrees with Petitioner in Limelight Networks, Inc. v. Akamai Techs., Inc., Supreme Court No. 12-786, supra. Question Presented in Akamai: Whether a party may be liable for infringement under either 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? Status: The Respondents brief is due May 6, 2013. (7) CLS Bank: Software Patent-Eligibility CLS Bank Intern. v. Alice Corp. Pty. Ltd., 484 Fed.Appx. 559 (Fed. Cir. 2012)(en banc)(Order), vacated panel opinion, 685 F.3d 1341 (Fed. Cir. 2011)(Linn, J.) Status: Awaiting decision following en banc argument. The Order identifies two issues for briefing and presumably for a decision by the en banc Court:
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The parties are requested to file new briefs addressing the following questions: a. What test should the court adopt to determine whether a computer-implemented invention is a patent ineligible abstract idea; and when, if ever, does the presence of a computer in a claim lend patent eligibility to an otherwise patent-ineligible idea? b. In assessing patent eligibility under 35 U.S.C. 101 of a computerimplemented invention, should it matter whether the invention is claimed as a method, system, or storage medium; and should such claims at times be considered equivalent for 101 purposes? CLS Bank, 484 Fed.Appx. at 559-560. Based upon recent precedent from the Federal Circuit one may expect a fractured court where it is difficult to determine prospectively who will be in the majority. The division within the Court is signaled by the opinion of the third member of the CLS panel: The majority resists the Supreme Court's unanimous directive to apply the patentable subject matter test with more vigor. Worse yet, it creates an entirely new framework that in effect allows courts to avoid evaluating patent eligibility under 101 whenever they so desire. I too find it difficult to answer the questions presented here with absolute certainty. Nonetheless, I believe that precedent and common sense counsel that the asserted patent claims are abstract ideas repackaged as methods and systems. CLS Bank, 685 F.3d at 1356 (Prost, J., dissenting). The dissenting member of the panel notes that: When it comes to subject matter patentability, we do not write on a blank slate. Just a few months ago, the Supreme Court reversed us in a 101 case for a second time in its last three terms, hinting (not so tacitly) that our subject matter patentability test is not sufficiently exacting. Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012); Bilski v. Kappos, 130 S.Ct. 3218 (2010); see also WildTangent, Inc. v. Ultramercial, LLC, 132 S.Ct. 2431 (2012), granting cert., vacating, and remanding Ultramercial, LLC v. Hulu, LLC, 657 F.3d
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1323 (Fed.Cir.2011). The Court once again iterated that the prohibition against patenting abstract ideas cannot be circumvented by attempting to limit the use of the formula to a particular technological environment. Prometheus, 132 S.Ct. at 1294 (quoting Bilski, 130 S.Ct. at 3230). But this time the Court also made clear what had been written between the lines before: It is not sufficient to put an abstract idea into use with [p]urely conventional or obvious' pre-solution activity. Prometheus, 132 S.Ct. at 1298; cf. Bilski, 130 S.Ct. at 3231 (noting that the claimed invention was directed at a fundamental economic practice long prevalent in our system of commerce); Parker v. Flook, 437 U.S. 584, 594 (1978) (Respondent's process is unpatentable under 101, not because it contains a mathematical algorithm as one component, but because once that algorithm is assumed to be within the prior art, the application, considered as a whole, contains no patentable invention.). The Court accordingly declined the Solicitor General's invitation to leave the screening of low quality patents to 102 and 103, even though the government promised that the claims are likely invalid under those provisions. Brief for the United States as Amicus Curiae in Support of Neither Party at 9, Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S.Ct. 1289 (2012). Now there is no doubt that to be patent eligible under 101, the claims must include an inventive concept. Prometheus, 132 S.Ct. at 1294. CLS Bank, 685 F.3d at 1356-57 (Prost, J., dissenting) (8) Momenta ANDA Safe Harbor Momenta Pharmaceuticals, Inc. v. Amphastar Pharmaceuticals, Inc., Supreme Court No. No. 12-1033, opinion below, 686 F.3d 1348 (Fed. Cir. 2012)(Moore, J.), questions the scope of the ANDA safe harbor under 35 USC 271(e)(1). Question Presented: The Drug Price Competition and Patent Term Restoration Act, also known as the Hatch-Waxman Act, created a safe harbor from liability for patent infringement. The statutory safe harbor provides that it shall not be an act of patent infringement to make or use a patented invention solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs. 35 U.S.C. 271(e)(1). The safe harbor allows competitors, prior to the expiration of a patent, to engage in otherwise infringing activities necessary to obtain regulatory approval from the
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Food and Drug Administration (FDA). Eli Lilly & Co. v. Medtronic, Inc., 496 U.S. 661, 671 (1990). In this case, the Federal Circuit held that the safe harbor immunizes respondents' use of petitioners' patented method in the course of postapproval manufacturing of respondents' drug for commercial sale, in direct competition with petitioners, during and throughout the life of petitioners' patent. The question presented is: Whether the use of a patented invention in the course of post-approval manufacture of a drug for commercial sale, where the FDA requires that a record of that manufacturing activity be maintained, is exempted from liability for patent infringement under Section 271(e)(1) as solely for uses reasonably related to the development and submission of information under a Federal law which regulates the manufacture, use, or sale of drugs. Status: Response to the petition is due May 2, 2013. A certiorari vote is expected during the current Term. If granted, the case would be entertained in the October 2013 Term that runs through June 2014. A Fractured Federal Circuit Panel Below: Adding fuel to the fire for grant of certiorari is the blistering, nearly 8000 word dissent. Momenta, 686 F.3d at 136175 (Rader, C.J., dissenting). The tenor of the dissent is seen from the statement that [accused infringer] Amphastar *** delights in trespassing [on the patent right] and refuses to pay a reasonable royalty to make the trespass lawful. This court would allow this arrogance to continue by expanding the limited reach of 35 U.S.C. 271(e)(1). 686 F.3d at 1362. The author is the one person on the Court with intimate, contemporary knowledge of the legislative enactment of the statutory safe harbor under review, 35 USC 271(e)(1). He parenthetically adds that I hesitate to add that I was present through this legislative process[.] 686 F.3d at 1366. Does Legislative History Trump Statutory Wording? Whether the legislative history as explained by the Chief Judge is correct is not the primary issue. The first question is whether the statutory language compels resort to the legislative history. See Merck KGaA v. Integra Lifesciences I, Ltd., 545 U.S. 193 (2005), as analyzed by this writer. Wegner, Post-Merck Experimental Use and the Safe Harbor, 15 Fed. Cir. B.J. 1 (2005).

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(9) Allcare v. Highmark: Cybor Dj vu In Allcare Health Mgmt. Sys., Inc. v. Highmark Inc., Supreme Court 12-1163, proceedings below, Highmark Inc. v. Allcare Health Mgmt. Sys., Inc., 701 F.3d 1351 (Fed. Cir. 2012)(Order den. pet. for rehg en banc), panel opinion, 687 F.3d 1300 (Fed. Cir. 2012), the en banc petitioner unsuccessfully sought review of the de novo standard of review for a fact-based determination, here, an exceptional case determination under 35 USC 285. Status: Response was due April 24, 2013. A Conference to vote whether to grant certiorari is expected in either May or June. A Deeply Fractured En Banc Panel: Plural dissenting opinions were issued dissenting from denial of rehearing en banc, including a principal opinion by Moore, J., joined by Rader, C.J., OMalley, Reyna, Wallach, JJ., dissenting from the denial of the petition for rehearing en banc. This is only the latest episode in a thirty year struggle by the Court to deal with FRCP 52(a) deferential standard of review of trial court fact findings. Rule 52(a) has troubled the Federal Circuit since its inception. The issue was squarely raised by the Supreme Court in its intervention in Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809 (1986). Here, the controversy first bubbled up into widespread public attention in the context of the factual underpinnings for an obviousness determination under 35 USC 103. The current dispute is capsulized by the main dissent in Highmark by Judge Moore: Our court system has well-defined roles: the trial court makes factual findings and the appellate court reviews those findings with deference to the expertise of the trial court. An exceptional case determination under 35 U.S.C. 285 has traditionally been one of the questions of fact determined by the trial court that is reviewable only for clear error. Contrary to our precedent, the divided Highmark panel decided that a district courts exceptional case findingbased on its determination that the infringement claims asserted at trial were objectively baselessis entitled to no deference and should be reviewed de novo. Highmark,[687 F.3d at 1309-10].
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Because Highmark * * * invades the province of the fact finder, and establishes a review standard for exceptional case findings in patent cases that is squarely at odds with the highly deferential review adopted by every regional circuit and the Supreme Court in other areas of law, I dissent from the denial of rehearing en banc. *** We need to avoid the temptation to label everything legal and usurp the province of the fact finder with our manufactured de novo review. We have done it with claim construction, see Cybor[Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454-55 (Fed. Cir. 1998) (en banc)], with willfulness, see Bard [Peripheral Vascular, Inc. v. W.L. Gore & Assocs., 682 F.3d 1003 (Fed. Cir.2012)], and now with the exceptional case, see Highmark. When we convert factual issues, or mixed questions of law and fact, into legal ones for our de novo review, we undermine the uniformity and predictability goals this court was designed to advance. CCPA Genesis of the Rule 52(a) Controversy: Throughout its thirty year history the Federal Circuit has had great difficulty coming to grips with FRCP 52(a) deferential review of factual determinations in patent matters. The dean of the Federal Circuit early on explained that the predecessor CCPA had a lax standard of review of Patent Office decisions: One of the things that changed in the transition from CCPA to CAFC is much greater emphasis in the new court on standard of review. Giles S. Rich, Thirty Years of this Judging Business, Giles S. Rich 139, 148 (1986). The Supreme Court Speaks in Dennison: The first open confrontation with the Supreme Court occurred four years after creation of the Federal Circuit in Dennison: The Federal Circuit [in its obviousness ruling] did not mention Rule 52(a), did not explicitly apply the clearly-erroneous standard to any of the District Court's findings on obviousness, and did not explain why, if it was of that view, Rule 52(a) had no applicability to this issue. We therefore lack an adequate explanation of the basis for the Court of Appeals' judgment: most importantly, we lack the benefit of the Federal Circuit's informed opinion on the complex issue of the degree to which the obviousness determination is one of fact. In the absence of an opinion clearly setting forth the views of the Court of Appeals on these matters, we are not prepared to give plenary consideration to petitioner's
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claim that the decision below cannot be squared with Rule 52(a). Instead, we grant the petition for certiorari, vacate the judgment, and remand the case to the Court of Appeals for further consideration in light of Rule 52(a). Dennison Mfg. Co. v. Panduit Corp., 475 U.S. 809, 811 (1986). Judge Rich took to the pages of the AIPLA Quarterly Law Journal to respond to the Supreme Court: [The CCPA] did not act like the Circuit Courts of Appeal. We have been breaking that habit. Meanwhile, the criticism I hear of the [Federal Circuit] most often is that we have been doing de novo fact finding and delving into the record on our own when we should not. I am probably one of the offenders. But I have to say that I do not know how one can decide whether a finding of fact is clearly erroneous without delving into the record, and surely we have the right to make such a decision. I also must say that I have great difficulty in determining the distinction between an alleged fact being wrong and being clearly erroneous, and I seem to remember a learned colleague saying It doesn't matter; if you want to upset the fact finding, you just have to use the magic words. Rich, 14 AIPLA Q. J. at 149. (10) Lighting Ballast Cybor de novo Appellate Claim Construction The Federal Circuit has granted en banc review to consider the Cybor issue in Lighting Ballast Control LLC v. Philips Electronics North America Corp., __ Fed. Appx __, 2013 WL 1035092 (Fed. Cir. 2013)(en banc)(Order). Status: Awaiting scheduling of oral argument. Issues: The parties and amici are requested to brief the following three issues: a. Should this court overrule Cybor Corp. v. FAS Technologies, Inc., 138 F.3d 1448 (Fed.Cir.1998)? b. Should this court afford deference to any aspect of a district court's claim construction? c. If so, which aspects should be afforded deference? This case is being covered by litigation expert Justin Gray on GrayOnClaims.com

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Wegners Top Ten Patent Cases [May 1, 2013]

Nokia ITC Domestic Manufacture Nokia v. v. International Trade Com'n, Supreme Court No. 12A933, opinion below, InterDigital Communications, LLC v. International Trade Com'n, __ F.3d __ (Fed. Cir. 2013)(on panel rehg), vacated panel opinion, 690 F.3d 1318 (2012),is the expected certiorari petition will challenge ITC jurisdiction to consider patent infringement without domestic manufacture. Status: The Petition for certiorari is due May 10, 2013. From the Majority Opinion below: [S]ection 337 makes relief available to a party that has a substantial investment in exploitation of a patent through either engineering, research and development, or licensing. It is not necessary that the party manufacture the product that is protected by the patent, and it is not necessary that any other domestic party manufacture the protected article. As long as the patent covers the article that is the subject of the exclusion proceeding, and as long as the party seeking relief can show that it has a sufficiently substantial investment in the exploitation of the intellectual property to satisfy the domestic industry requirement of the statute, that party is entitled to seek relief under section 337. InterDigital, __ F.3d at __. From the Dissenting Opinion: My colleagues depart from the statutory text and purpose, in holding that the statutory requirement of domestic industry does not require domestic manufacture. The statute says, twice, that there must be articles protected by the patent, 1337(a)(2), (a)(3), whether produced by the patentee, or under license from the patentee. The domestic industry requirement is not met by foreign manufactures. InterDigital, __ F.3d at __(Newman, J., dissenting).

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