High Court Seeks Gov't Views on Overseas Patent Infringement; Denies Cert in 12 Cases

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Oct. 7 --After granting three petitions for writ of certiorari in intellectual property cases on Oct. 1 , the U.S. Supreme Court six days later denied review in 12 other IP cases and solicited the views of the Solicitor General in a patent case, Maersk Drilling USA, Inc. v. Transocean Offshore Deepwater Drilling, Inc. ( U.S., No. 13-43, gov't views requested 10/7/13).

The July 10 Maerskpetition appeals a ruling by the U.S. Court of Appeals for the Federal Circuit that negotiations and execution of a sales contract in Norway were infringing acts under U.S. patent law because the parties were U.S. companies and the contract contemplated performance in the United States. 617 F.3d 1296, 2010 BL 191894, 96 U.S.P.Q.2d 1104 (Fed. Cir. 2010) , and 699 F.3d 1340, 2012 BL 299446, 104 U.S.P.Q.2d 1785 (Fed. Cir. 2012) .

The petitioner asks:

Whether offering, negotiating, and entering into a contract in Scandinavia to provide services using a potentially patented device constitutes an “offer to sell” or “sale” of an actually patented device “within the United States,” under 35 U.S.C. §271(a).  


Paul D. Clement of Bancroft PLLC, Washington, D.C., represents Maersk. Jonathan S. Franklin of Fulbright & Jaworski LLP, Washington, D.C., represents Transocean.



The court denied cert petitions in seven patent cases:

• Broadcom Corp. v. U.S. District Court for the Eastern District of Texas ( U.S., No. 12-1475, review denied 10/7/13). The June 19 petition challenged the U.S. District Court for the Eastern District of Texas's refusal of a venue transfer request. In an April 23 unpublished mandamus denial, the Federal Circuit said it was “bound by Fifth Circuit law as it presently exists” in this case, which involves a forum selection clause in a standards group's license agreement. In re Broadcom, 2013 BL 109069, 106 U.S.P.Q.2d 1769 (Fed. Cir. 2013)

• CoreValve, Inc. v. Edwards Lifesciences AG ( U.S., No. 12-1325, review denied 10/7/13). The May 6 petition appealed the Federal Circuit's ruling that a district court should reconsider its denial of an injunction against a heart valve made by a division of Medtronic Inc. Edwards Lifesciences A.G. v. CoreValve Inc., 699 F.3d 1305, 2012 BL 296477, 105 U.S.P.Q.2d 1039 (Fed. Cir. 2012). The petition argued that the patent in question was not enabled and questioned whether the Federal Circuit's ruling on injunctions was in line with eBay Inc. v. MercExchange L.L.C., 547 U.S. 388, 78 U.S.P.Q.2d 1577 (2006).

• Finjan, Inc. v. USPTO ( U.S., No. 12-1245, review denied 10/7/13). The April 11 petition appealed the Federal Circuit's affirmance without opinion, under Federal Circuit Rule 36, of a Board of Patent Appeals and Interferences determination on prior art and enablement. Specifically, the petition asked: “Should all prior art be presumed enabled in the U.S. Patent and Trademark Office?”

• Intema Ltd. v. PerkinElmer, Inc. ( U.S., No. 12-1372, review denied 10/7/13). The May 16 petition appealed the Federal Circuit's ruling that the concept that two screening methods are better than one is based on mental activity and natural law and thus is not patentable subject matter. PerkinElmer Inc. v. Intema Ltd., 496 F. App'x 65, 2012 BL 305806, 105 U.S.P.Q.2d 1960 (Fed. Cir. 2012)

• Public Patent Found. Inc. v. McNeil-PPC Inc. ( U.S., No. 13-161, review denied 10/7/13). The August 5 petition asked the Supreme Court to rule on whether the America Invents Act's retroactive elimination of qui tam false patent marking lawsuits was constitutional. It appealed the Federal Circuit's determination, issued in an unpublished opinion, that retroactivity for complaints by noncompetitors applies “without exception.” Public Patent Foundation Inc. v. McNeil-PPC Inc., No. 2012-1274, 2013 BL 119589 (Fed. Cir. May 3, 2013)

• Raylon, LLC v. Complus Data Innovations, Inc. ( U.S., No. 12-1354, review denied 10/7/13). The May 10 petition appealed the Federal Circuit's ruling that a patentee bringing infringement claims against 11 companies had no reasonable basis for believing that its claim construction arguments were reasonable and thus was subject to sanctions. Raylon L.L.C. v. Complus Data Innovations Inc., 700 F.3d 1361, 2012 BL 320685, 105 U.S.P.Q.2d 1355 (Fed. Cir. 2012).

• Tech. Patents LLC v. T-Mobile (UK) Ltd. ( U.S., No. 12-1292, review denied 10/7/13). The April 26 petition appealed the Federal Circuit's ruling that, in a patent infringement claim against both foreign and domestic defendants, when a court clearly has jurisdiction over the domestic defendants, it can go to the merits of the claims without first addressing the issue of jurisdiction over the foreign defendants. Tech. Patents LLC v. T-Mobile (UK), Ltd., 700 F.3d 482, 2012 BL 271563, 105 U.S.P.Q.2d 1257 (Fed. Cir. 2012).



Four petitions for writ of certiorari in trademark cases were denied:

• Abraham v. Alpha Chi Omega ( U.S., No. 12-1341, review denied 10/7/13). The May 8 petition appealed the Fifth Circuit's ruling that a federal district court had not abused its discretion in fashioning an injunction barring a maker of souvenir wooden paddles from further unauthorized use of the trademarks held by university fraternities and sororities. Abraham v. Alpha Chi Omega, 708 F.3d 614, 2013 BL 32740, 105 U.S.P.Q.2d 1692 (5th Cir. 2013)

• Eastland Music Grp., LLC v. Lionsgate Entm't, Inc. ( U.S., No. 12-1501, review denied 10/7/13). The June 17 petition appealed the Seventh Circuit's dismissal of a trademark infringement case for failure to state a claim. The petition asked whether the appeals court properly balanced the plaintiff's trademark infringement claim against the defendant's First Amendment rights, and also faulted the Seventh Circuit for requiring proof of “actual confusion” at the pleading stage in a trademark infringement action.Eastland Music Grp. L.L.C. v. Lionsgate Entm't Inc., 707 F.3d 869, 2013 BL 45819, 106 U.S.P.Q.2d 1078 (7th Cir. 2013).

• Stephen Slesinger, Inc. v. Disney Enters., Inc. ( U.S., No. 12-1404, review denied 10/7/13). The May 28 petition appealed the Federal Circuit's affirmance of the Trademark Trial and Appeal Board's dismissal of the petitioner's challenge to the trademark rights related to Winnie-the-Pooh and other characters. The appeals court and the TTAB held that collateral estoppel--based on an earlier federal court action--barred a challenge to the scope of the license that Disney was granted in the characters. Stephen Slesinger, Inc. v. Disney Enters., Inc., 702 F.3d 640, 2012 BL 336118, 105 U.S.P.Q.2d 1472 (Fed. Cir. 2012)

• Von Drehle Corp. v. Georgia Pacific Consumer Prods., LP ( U.S., No. 13-41, review denied 10/7/13). The July 8 petition appealed the Fourth Circuit's determination that a district court erred when it vacated a jury's infringement verdict and allowed one of the defendants to file an untimely amended answer to assert preclusion defenses. By overriding the district court's preclusion ruling, the Fourth Circuit interfered with a trial court's “inherent authority to consider preclusion,” the petition said. Thus, the petition argued that the Fourth Circuit should have given preclusive effect to holdings of the Eighth and Sixth Circuits that involved the same asserted trademarked paper towel dispensers. Georgia Pacific Consumer Products L.P. v. von Drehle Corp., 710 F.3d 527, 2013 BL 67746, 106 U.S.P.Q.2d 1151 (4th Cir. 2013)


Right of Publicity

Finally, the court denied cert in a case on the right of publicity:

• Stayart v. Google, Inc. ( U.S., No. 12-1417, review denied 10/7/13). The June 3 petition appealed the Seventh Circuit's dismissal of a right of publicity action against Google Inc. based on allegations that the search engine suggested additional search terms--including the names of branded erectile dysfunction drugs--when an individual searched for her name.


To contact the reporter on this story: Tamlin H. Bason in Washington at tbason@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

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