SCOTUS petitioned to consider patent review standard
The US Supreme Court has been asked to review a US Court of Appeals for the Federal Circuit ruling which, unless reversed, will “cause untold harm” to patent litigants and the patent system as a whole, according to the petitioner.
In a petition for a writ of certiorari filed November 27 and docketed December 4, GS Cleantech requested that the US’ highest court consider whether the Federal Circuit used the right standard to review an issue of patent invalidity that was decided on partial summary judgment but not reopened at trial.
The petition asked the Supreme Court to answer the question: “Whether the Federal Circuit, in cases arising under the Patent Act, may depart from the uniform rule of the other circuit courts that an issue resolved on partial summary judgment, and not reopened at trial, must be reviewed de novo on appeal.”
In March this year, the Federal Circuit ruled that GS Cleantech’s four patents were unenforceable due to inequitable conduct.
As part of its decision, the Federal Circuit refused to review the issue of on-sale that was resolved on summary judgment by a lower court.
“Despite CleanTech’s arguments to the contrary ... we will address the issue of inequitable conduct without first conducting a de novo review of the district court’s summary judgment on-sale bar determination. A finding of a reference’s or prior sale’s materiality is required for an inequitable conduct determination,” said the Federal Circuit in a footnote.
GS Cleantech is arguing that the court should have reviewed the summary judgment of patent invalidity de novo.
“Instead, it held—for the first time by any federal appellate court—that it could review the issue under the ‘abuse of discretion’ standard governing review of the district court’s separate, later bench trial finding of inequitable conduct. This deprived petitioners of the review to which they were entitled, effectively ending the case.”
According to GS Cleantech, unless the Federal Circuit’s “erroneous precedential decision is reversed, every patent litigant in the nation ... will be bound by it”.
“This would severely burden all such litigants, by subjecting them to an appellate regime in which the Federal Circuit—when it suits its interests— can effectively deny meaningful review, by reviewing issues that should be reviewed de novo under a far stricter standard (such as the virtually insurmountable ‘abuse of discretion’ standard,” warned the petition.
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