Certiorari in Patent Cases

In the decade from 2010 to 2019, the Supreme Court has decided more patent law cases than in the prior three decades combined. A higher percentage of its docket has been patent cases--5.45%--than in any decade in the last century. A number of scholars have advanced theories of why this rate of review of patent cases has increased and provided quantitative analyses. Yet no scholarship to date has used qualitative data to investigate why the Supreme Court’s patent docket is increasing and what factors the Supreme Court considers in its review of patent cases. This paper shares statistics of the Supreme Court\u27s review of patent cases and for the first time reports on qualitative interviews with former Supreme Court clerks about certiorari in patent cases.In many ways, the results confirm prior hypotheses of the key factors in Supreme Court grants of certiorari in patent cases. For example, the interviews confirm the teachings of prior scholarship that the views of the Solicitor General and the number, type, and focus of amicus support play an outsized role in patent cases. However, the interviews contradicted other views from prior scholarship, such as familiar names of top Supreme Court advocates spurring certiorari in patents cases. As to why cases filed by these advocates have a higher rate of success, it appears that such advocates are simply more skilled at preparing petitions that address the considerations most important to the Court. The research presented in this Article also suggests that the narrative of the Federal Circuit as applying rigid rules rather than flexible standards urged by the Supreme Court is pervasive at the Court. The interviewees also suggest that patent cases are viewed as ideologically safe choices, which the author hypothesizes might be partially responsible for the increase in the Supreme Court’s percentage of patent cases in recent years of ideological division. This article concludes by advocating that the Supreme Court should consider one other factor in its decision on certiorari in patent cases: whether a decision in the case will support or undermine the stability and certainty of patent law

Continuing the Conversation of The Economic Irrationality of the Patent Misuse Doctrine

This Article uses economic tools to find the best way for courts to construe or for Congress to modify the patent misuse doctrine. It attempts to continue the conversation begun by Professor Mark Lemley in his often-cited Comment, The Economic Irrationality of the Patent Misuse Doctrine. It argues that a partial economic equilibrium in patent misuse doctrine can be achieved by attempting to match Congress’s intended patent scope with the actual patent scope. It then holds that the ideal patent misuse doctrine should (1) adequately discourage patentees from seeking to exceed their patent scope while (2) continuing to encourage innovation by permitting patentees to fully benefit up to Congress’s intended scope. It discusses a variety of solutions proposed by prior scholarship, determines which solutions satisfy this balancing point, and recommends several novel modifications to the patent misuse doctrine. Specifically, the misuse doctrine, if it is not abolished, should apply only where antitrust law applies. Then, an antitrust injury requirement should be added to the misuse doctrine, much like the doctrine of unclean hands requires the party asserting it to have been harmed. Further, the remedy for patent misuse should be balanced in a way that is fair to all parties and does not under- or over-deter misuse or infringement, which necessarily requires the abolishment of the unenforceability remedy. The Article ends briefly discussing how recent Federal Circuit decisions like Princo v. ITC might reignite the conversation on the value of the doctrine of patent misuse

The Scope of IPR Estoppel: A Statutory, Historical, and Normative Analysis

When Congress implemented inter partes review (IPR) and other patent post-grant proceedings through the passage of the America Invents Act (AIA) in 2011, it provided that petitioners would be estopped in later proceedings from raising grounds for invalidity that they raised or reasonably could have raised during that inter partes review. 35 U.S.C. § 315( e )(2). However, substantial uncertainty in courts\u27 interpretation of this provision causes an enormous impact on an accused patent infringer\u27s decision of whether and on what grounds to petition for review. One reading of the statutory estoppel provision suggests that during that inter partes review refers to the time period after institution of the IPR and before a final decision from the Patent Trial and Appeal Board (PTAB). However, although the Federal Circuit has generally favored a textualist reading of this statute, it has yet to address how the estoppel standard would apply to grounds that the petitioner chose not to include in the petition for IPR. Lower courts have taken widely divergent approaches in this and various other factual scenarios where estoppel might apply, with some courts assessing legislative history to determine that Congress intended estoppel to apply broadly to any grounds that could have been raised in the petition. These courts often engage in complex assessments of what prior art the petitioner should have known about and added to the petition, which adds unnecessary complexity and cost to their determinations. This Article explains that a narrow, textualist reading of the IPR estoppel provision is consistent with Supreme Court precedent on statutory interpretation and is justified in light of the strict limits on IPR petitions adopted by the PT AB-limits that Congress did not foresee and which effectively restrict the grounds for invalidity that a petitioner may raise during the IPR. When the Federal Circuit or the Supreme Court next has occasion to consider this issue, it should hold that IPR estoppel applies narrowly only to grounds actually raised and instituted

Continuing the Conversation of The Economic Irrationality of the Patent Misuse Doctrine

This Article seeks to use economic tools and insights to find the best way for courts to construe or for Congress to modify the patent misuse doctrine. As the title suggests, it attempts to continue the conversation begun by Professor Mark Lemley in his often-cited Comment, The Economic irrationality of the Patent Misuse Doctrine. Part I provides a brief history of the doctrine of patent misuse. Part II begins with a premise that a partial economic equilibrium can be achieved by attempting to match Congress\u27s intended patent scope with the actual patent scope, even assuming that economic tools can never perfectly determine the ideal scope of patent law. Part II also holds that the ideal patent misuse doctrine should ( 1) adequately discourage patentees from seeking to exceed their patent scope while (2) continuing to encourage innovation by permitting patentees to fully benefit up to Congress\u27s intended scope. Part II then discusses a variety of solutions proposed by prior scholarship, determines which solutions satisfy this balancing point, and recommends several novel modifications to the patent misuse doctrine. Specifically, subpart A suggests that the misuse doctrine, if it is not abolished, should apply only where antitrust law applies. Subpart B recommends that an antitrust injury requirement should be added to the misuse doctrine, much like the doctrine of unclean hands requires the party asserting it to have been harmed. Subpart C recommends that the remedy for patent misuse should be balanced in a way that is fair to all parties and does not under-or over-deter misuse or infringement, which necessarily requires the abolishment of the unenforceability remedy. Last, Part lll briefly discusses how recent Federal Circuit decisions like Princo v. International Trade Commission might reignite the conversation on the value of the doctrine of patent misuse

Brief of Patent Law Professors as Amici Curiae in Support of Petitioners

This Court should reverse the Federal Circuit and hold that IPR estoppel extends only to grounds that were raised or could have been raised during the IPR proceeding. Estoppel would therefore extend to instituted grounds, whether raised during the proceeding or not. Estoppel would not extend to uninstituted grounds, such as grounds which might have been challenged in the petition for review but were not

Continuing the Conversation of The Economic Irrationality of the Patent Misuse Doctrine

This Article uses economic tools to find the best way for courts to construe or for Congress to modify the patent misuse doctrine. It attempts to continue the conversation begun by Professor Mark Lemley in his often-cited Comment, The Economic Irrationality of the Patent Misuse Doctrine. It argues that a partial economic equilibrium in patent misuse doctrine can be achieved by attempting to match Congress’s intended patent scope with the actual patent scope. It then holds that the ideal patent misuse doctrine should (1) adequately discourage patentees from seeking to exceed their patent scope while (2) continuing to encourage innovation by permitting patentees to fully benefit up to Congress’s intended scope. It discusses a variety of solutions proposed by prior scholarship, determines which solutions satisfy this balancing point, and recommends several novel modifications to the patent misuse doctrine. Specifically, the misuse doctrine, if it is not abolished, should apply only where antitrust law applies. Then, an antitrust injury requirement should be added to the misuse doctrine, much like the doctrine of unclean hands requires the party asserting it to have been harmed. Further, the remedy for patent misuse should be balanced in a way that is fair to all parties and does not under- or over-deter misuse or infringement, which necessarily requires the abolishment of the unenforceability remedy. The Article ends briefly discussing how recent Federal Circuit decisions like Princo v. ITC might reignite the conversation on the value of the doctrine of patent misuse

Equitable Defenses in Patent Law

In patent law, “unenforceability” can have immense consequences. At least five equitable doctrines make up the defense of “unenforceability” as it was codified into the Patent Act in 1952: laches; estoppel; unclean hands; patent misuse; and according to some, inequitable conduct. Yet in the seventy years since incorporation of equitable defenses into the patent statute, the Supreme Court has not clarified their reach. Indeed, twice in the last four years, the Supreme Court avoided giving complete guidance on the crucial questions of whether, and when, such equitable defenses are available to bar damages in cases brought at law. Several interpretive methods have been proposed for determining the reach of generally worded statutes like the Patent Act. Under a dynamic statutory interpretation, courts would be permitted to develop such statutes in accordance with what the law ought to be. Under a traditional faithful agent approach, in contrast, courts would try to determine the scope as set forth by the legislature, piecing together context and history to frame limited words. The scope of equitable defenses in patent law is an ideal proving ground between these methods, having both historical background for use in traditional approaches and high-stakes social questions that factor into a dynamic approach—what conduct do we allow patentees to engage in before we cut off remedies for infringement on innovations that support our health and modern lifestyle? Setting the stage of the statutory interpretive battle, this Article examines the historical and statutory bases of equitable limits on patent law, with a particular focus on the substantive equitable defenses of unclean hands and patent misuse. It contrasts the history of equitable defenses such as estoppel, which crossed fully into courts of law well before the merger of law and equity and the Patent Act, with equitable defenses such as laches, unclean hands, and misuse. This Article walks through these defenses’ pre-codification roots and potential statutory interpretations and presents normative and constitutional considerations under the competing interpretive approaches. It also presents a surprising approach to inequitable conduct, arguing that it is not an equitable defense and should no longer result in infectious invalidity. This Article is the first to provide a comprehensive framework for the analysis of equitable defenses in patent law

A Definite Claim on Claim Indefiniteness: An Empirical Study of Definiteness Cases of the Past Decade with a Focus on the Federal Circuit and the Insolubly Ambiguous Standard

This empirical study of patent claim definiteness cases of the past decade makes several novel findings including: (1) slightly more than half of final Federal Circuit definiteness cases hold the asserted claims not indefinite; (2) the percentage of non-Federal Circuit definiteness cases holding claims not indefinite increased approximately 60 percentage points over the ten-year period focused on in this analysis;(3) the Federal Circuit more often held chemical claims not indefinite, but electrical claims indefinite; and (4) the Federal Circuit more often held claims with term clarity issues not indefinite, but claims with means-plus-function issues indefinite. These differences partially result from the Federal Circuit incorporating an evidentiary burden into the insolubly ambiguous standard and inconsistently applying the insolubly ambiguous standard. After describing other effects of this standard, this Article recommends that the Federal Circuit modify, clarify, or abolish the insolubly ambiguous standard