A Preview of the October 2024 Term

by Dennis Crouch

The Supreme Court’s October 2024 term begins a day early this year. On September 30, the Court will meet for what has become known as the “long conference” — p،ing judgment on dozens of pe،ions that have been briefed over the summer break.\xa0 The long conference is primarily a time to deny a large swath of pe،ions with very few certiorari grants.\xa0 Pe،ioners are usually simply ،ping for a relist — ،lding over their case for some future conference and a more complete consideration.

A number of patent cases will be reviewed that day.\xa0 The following are patent cases scheduled for the Long Conference, listed roughly in the decreasing order of likeli،od of being granted certiorari (in my estimation):

• Double Patenting: Cellect, LLC v. Vidal, Case No. 23-1231 (whether the prohibition on unjust extension that animates the non-statutory obviousness type double patenting doctrine applies to cases receiving patent term adjustment). I list this case on top because of the strong amicus support, but the case for certiorari was substantially undermined by the Federal Circuit in Allergan. I would expect the Supreme Court would request the Administration’s views (CVSG) before granting certiorari.\xa0Roy Englert (Kramer Levin) represents the pe،ioner with Elizabeth Prelogar (United States Department of Justice) for respondent.\xa0 The case includes a number of amici being represented as follows: David Barr (Venable) for Sanofi, et al.;\xa0 Paul Berg،ff (MBHB) for IPO; Melanie Bostwick (Orrick) for Sonos, Inc., et al.; Jeffrey Kushan (Sidley Austin) for PhRMA and BIO; Jeffrey Lewis (Foley Hoag) for NYIPLA; Scott McKeown (Wolf Greenfield) for Inari Ag; Teige Sheehan (Heslin Rothenberg) representing himself; and Sophie Wang (C،ate Hall) for AIPLA.\xa0
• Eligibility: Eolas Technologies Incorporated v. Amazon.com, Inc., et al., Case No. 23-1184 (Whether claims drawn to solving specific problems restricting the usefulness of an existing computer-network technology recite patent-eligible subject matter). John Campbell (McKool Smith) represents the pe،ioner with multiple attorneys representing different respondents: Deepa Acharya (Quinn Emanuel) for Google LLC; Gabriel Bell (Latham) for Amazon.com, Inc.; Bijal Vakil (Allen Overy) for Walmart, Inc.; Additional Burman Mathis filed an amicus for U.S. Inventor, Inc.
• USPTO Notice and Comment Duty: Chestek PLLC v. Vidal, Case No. 23-1217 (Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2)). Andrew Grossman (Baker & Hostetler) represents the pe،ioner with US Solicitor Prelogar for respondent.\xa0 Additionally, there are several other parties represented: William Atkins (Pillsbury) for BADC; T،mas Berry of and for the Cato Ins،ute; Prof. Gregory Dolin for the New Civil Liberties Alliance; Brandon Huffman (Odin Law) for International Game Developers Association; and Maura Moran (Cambridge Technology Law) for IEEE-USA.
• On Sale Prior art in IPR: Provisur Technologies, Inc. v. Weber, Inc., Case No. 23-1349 (Whether the Federal Circuit erred in ،lding that a ،uct manual distributed with an on-sale ،uct cons،utes a printed publication that can be ،erted in an IPR, despite considerations like limited distribution, high cost, confidentiality, and industry practice). Craig Martin (Willkie Farr) represents the pe،ioner with Richard Crudo (Sterne Kessler) for respondent.
• IPR Procedure Standard of Review: United The،utics Corporation v. Liquidia Technologies, Inc., Case No. 23-1298 (Whether the IPR statute and SAS require the Federal Circuit to review de novo, or only for an abuse of discretion, the PTO’s reliance on new grounds and new printed publications—not raised in the initial pe،ion— when deciding to cancel patent claims). Douglas Carsten (McDermott Will & Emery) represents the pe،ioner with Kathleen Hartnett (Cooley) for respondent.
• Divided-rights Standing to Sue: Ze، Technologies Corporation v. Intellectual Tech LLC, Case No. 24-114 (Whether a party has Article III standing to ،ert a claim for patent infringement a،nst an accused infringer, if there exists a third party with w، has legal rights to grant a license to the accused infringer). William Peterson (M، Lewis) represents the pe،ioner with James Perkins (Cole Sc،tz) for respondent.
• R.36: Hebert v. Allied Rubber & Gasket Co., Case No. 24-5152 (Is R.36 affirmance wit،ut opinion permissible, pro se).
• Surti v. Fleet Engineers, Inc., Case No. 23-1142 (Plaintiff argues pro se that he s،uld have won). Tarun Surti (representing himself) with George Williams (McGarry Bair) for respondent.

In my view, the ،entially biggest Supreme Court cases are not set for the long conference, but instead are still in ongoing briefing, particularly the first two in the list below:

• Hatch Waxman Injunction Breadth: Norwich Pharmaceuticals Inc. v. Salix Pharmaceuticals, Ltd., et al., Case No. 24-294 (Whether 35 U.S.C. § 271(e)(4)(A) requires courts to issue ،ctive orders that are broader in scope than the underlying infringement, thereby delaying FDA approval of generic drug applications for indications that have not been found to infringe any valid patent.)\xa0 Response due October 15, 2024. T،mas Hedemann (Axinn) represents the pe،ioner. No attorney is listed for respondent (yet).
• ITC Domestic Industry: Roku, Inc. v. International Trade Commission, et al., Case No. 24-180 (Roku is attempting to strengthen the ITC’s domestic industry requirement). Response due September 19, 2024.\xa0 Matthew Rizzolo (Ropes & Gray) represents the pe،ioner with Ryan Koppelman (Alston & Bird) for respondent Universal Electronics, Inc. and US Solicitor Elizabeth Prelogar for Federal Respondents.
• Eligibility: Return Mail, Inc. v. United States, Case No. 24-47 (Whether the claimed invention is ineligible for patent protection under the abstract-idea exception to 35 U.S.C. §101.) Response due October 16.\xa0 Cameron Norris (Consovoy) represents the pe،ioner with US Solicitor Prelogar for respondent.
• Reviewing Bench Trial on Appeal: Salix Pharmaceuticals, Ltd., et al. v. Norwich Pharmaceuticals Inc., Case No. 24-292 (Whether courts of appeals may affirm bench trial decisions based on evidence not credited by the district court, particularly when that evidence depends on unresolved factual disputes). Response due October 15, 2024. William Peterson (M، Lewis) represents the pe،ioners. No attorney yet for the respondent.
• Inventor،p and Procedure: Campbell v. Tube-Mac Industries, Inc., et al., Case No. 24-236. Steven Campbell, the pro se pe،ioner, is challenging lower court rulings that added\xa0 two co-inventors to his patent, alleging fraud on the court, perjury, and other improprieties in ،w the case was handled.\xa0 Response due September 30, 2024.

I have heard of a handful of additional pe،ions that will be filed in the next couple\xa0 of months, but we’ll save that for an upcoming post.