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`
`No. _______
`
`In The
`Supreme Court of the United States
`
`-------------------------- (cid:661) ---------------------------
`
`NEOLOGY, INC.,
`Petitioner,
`
`
`
`
`v.
`
`
`
`INTERNATIONAL TRADE
`COMMISSION, et al.,
`Respondents.
`
`-------------------------- (cid:661) --------------------------
`ON PETITION FOR WRIT OF CERTIORARI TO
`THE UNITED STATES COURT OF APPEALS
`FOR THE FEDERAL CIRCUIT
`
`-------------------------- (cid:661) --------------------------
`
`PETITION FOR WRIT OF CERTIORARI
`
`-------------------------- (cid:661) --------------------------
`
`Vinay V. Joshi
` Christopher D. Banys
`Andrew T. Oliver
`Counsel of Record
`AMIN, TUROCY & WATSON, LLP
`BANYS, PC
`160 W. Santa Clara St.
`1030 Duane Avenue
`Santa Clara, California 95054 Suite 975
`(650) 308-8505
`San Jose, California 95113
`cdb@banyspc.com
`(650) 618-6481
`
`vjoshi@atwiplaw.com
`
`aoliver@atwiplaw.com
`
`Counsel for Petitioner
`Dated: October 1, 2019
`
`THE LEX GROUPDC (cid:105)(cid:105) 1050 Connecticut Avenue, N.W. (cid:105) Suite 500, #5190 (cid:105) Washington, D.C. 20036
`(202) 955-0001 (cid:105) (800) 856-4419 (cid:105) www.thelexgroup.com
`
`

`

`i
`
`QUESTION PRESENTED FOR REVIEW
`
` A
`
` patent claim is presumed to be valid.
`However,
`the patent claim’s validity can be
`challenged on the grounds that it lacks adequate
`written description in the patent application from
`which the claim
`issued
`(“the relevant patent
`application”). Separately, the same patent claim’s
`effective filing date can be challenged (without
`challenging the claim’s validity) for lack of adequate
`written description in an earlier filed “parent” patent
`application. The parent and the relevant patent
`applications have different written descriptions
`because their respective initially filed claims, which
`conclude the specification, are different. In the
`proceedings below, only the effective filing date was
`challenged, not validity. Yet, the Federal Circuit held
`that because both the filing date and the validity
`challenges relate to written description, Petitioner
`was put on notice and waived the argument that the
`initially filed claims of the relevant patent application
`provide verbatim written description support for the
`asserted claims.
`
`In view of this, the Question Presented is:
`
`Whether, as a matter of law and procedural due
`process, a patent can be invalidated without notifying
`the patent owner about the specific invalidity
`challenge posed by the validity challenger and giving
`the patent owner an opportunity to be heard.
`
`
`
`
`
`
`

`

`PARTIES TO THE PROCEEDINGS
`AND RULE 29.6 STATEMENT
`
`Petitioner in this Court (appellant below) is
`Neology, Inc.
`
`Respondents in this Court (appellee and
`intervenors
`below)
`are
`the United States
`International Trade Commission, Kapsch TrafficCom
`USA, Inc., Kapsch TrafficCom Holding Corp., Kapsch
`TrafficCom Canada Inc., Star Systems International
`Ltd., and Star RFID Co., Ltd.
`
`Pursuant to Rule 29.6, One Equity Partners VI
`L.P. owns 10% or more of the stock of Neology, Inc.
`There is no parent corporation of Neology, Inc.
`
`
`
`
`ii
`
`
`
`

`

`iii
`
`STATEMENT OF RELATED PROCEEDINGS
`
`This case is directly related to:
`
` -
`
`
`
`Neology, Inc. v. Kapsch TrafficCom
`IVHS Inc., et al, case no. 1:13-cv-2052
`(LPS), pending in the United States
`District Court
`for the District of
`Delaware; no judgment has issued; the
`case is currently stayed pending the
`outcome
`of
`International
`Trade
`Commission proceedings.
`
`
`This case is not directly related to the following
`case under the definition in Rule 14(b)(iii), but the
`same patents were at issue, in:
`
`Neology, Inc. v. Kapsch TrafficCom
`IVHS Inc., et al, case no. 2017-1228,
`United States Court of Appeals for the
`Federal Circuit, judgment entered June
`6, 2018; and
`
`Neology, Inc. v. Kapsch TrafficCom
`IVHS Inc., et al, case no. 2017-1229,
`United States Court of Appeals for the
`Federal Circuit; judgment entered June
`6, 2018.
`
`
`
` -
`
`
`
` -
`
`
`
`
`
`

`

`iv
`
`TABLE OF CONTENTS
`
`Page
`QUESTION PRESENTED .......................................... i
`
`PARTIES TO THE PROCEEDINGS
`AND RULE 29.6 STATEMENT ................................. ii
`
`STATEMENT OF RELATED PROCEEDINGS ....... iii
`
`TABLE OF AUTHORITIES ..................................... vii
`
`PETITION FOR A WRIT OF CERTIORARI ............. 1
`
`CITATIONS OF OPINIONS BELOW ....................... 1
`
`BASIS FOR JURISDICTION ..................................... 1
`
`CONSTITUTIONAL AND
`STATUTORY PROVISIONS INVOLVED ................. 2
`
`STATEMENT OF THE CASE ................................... 7
`
`REASONS FOR GRANTING THE PETITION ....... 14
`
`I.
`
`The Federal Circuit’s Waiver
`Ruling Directly Conflicts With
`This Court’s Precedent Regarding
`Procedural Due Process And The
`Requirement That Parties Be
`Provided Notice
`And
`An
`Opportunity To Be Heard Before
`Being Deprived Of A Property
`Interest. ............................................... 15
`
`
`
`

`

`v
`
`II.
`
`This Case Presents An Important
`Vehicle To Clarify To The Federal
`Circuit The Precedent Requiring
`That Patent Invalidity Be Proven
`By The Party Challenging
`Validity And Be Proven By Clear
`And Convincing Evidence ................... 21
`
`
`III. This Petition Presents A Vehicle
`To Correct The Federal Circuit’s
`Ruling That Is In Square Conflict
`With The Clean, Established
`Requirement That Invalidity Be
`Proven By Clear And Convincing
`Evidence And Not By Conflating
`Statutory Provisions To Create A
`New Defense ........................................ 22
`
`
`IV. The Federal Circuit’s Genus-
`Species
`Analysis
`Further
`Illustrates That The Federal
`Circuit Eliminated The Patent
`Owner’s Due
`Process
`By
`Introducing An Issue That Was
`Neither Identified Nor Heard At
`Either The ITC Or The Federal
`Circuit .................................................. 27
`
`
`V.
`
`
`
`The Federal Circuit’s Opinion Is
`In Direct Conflict With Prior
`Federal Circuit Panel Opinions;
`The Court Should Grant This
`Petition To Harmonize These
`Decisions .............................................. 31
`
`

`

`CONCLUSION ......................................................... 33
`
`APPENDIX:
`
`Opinion of
`The United States Court of Appeals
`For the Federal Circuit
`
`entered April 19, 2019 ................................... 1a
`Judgment of
`The United States Court of Appeals
`For the Federal Circuit
`
`entered April 19, 2019 ................................. 17a
`Commission Opinion of
`The United States International
`Trade Commission
`
`entered October 30, 2017 ............................. 19a
`Initial Determination of
`The United States International
`Trade Commission
`
`entered June 22, 2017 .................................. 88a
`
`Order of
`The United States Court of Appeals
`For the Federal Circuit
`Re: Denying Petition for Panel Rehearing and
`Rehearing En Banc
`
`entered July 3, 2019 ................................... 519a
`Excerpt of Transcript of Hearing before
`The United States International
`Trade Commission
`
`on September 13, 2016 ............................... 521a
`
`
`
`vi
`
`
`
`

`

`vii
`
`TABLE OF AUTHORITIES
`
`
`Page(s)
`
`
`CASES
`
`American Hoist & Derrick Co. v.
`Sowa & Sons, Inc.,
`
`725 F.2d 1350 (Fed. Cir. 1984) ...................... 21
`
`Ariad Pharm., Inc. v. Eli Lilly & Co.,
`
`598 F.3d 1336 (Fed. Cir. 2010) ...................... 12
`
`Brown v. Duchesne,
`
`60 U.S. 183 (1857) .......................................... 15
`
`Dusenbury v. United States,
`
`534 U.S. 161 (2002) ........................................ 15
`
`Florida Prepaid Postsecondary Educ.
`Expense Bd. v. College Sav. Bank,
`
`527 U.S. 627 (1999) ........................................ 15
`
`Goldberg v. Kelly,
`
`397 U.S. 254 (1970) ........................................ 27
`
`In re Alton,
`
`76 F.3d 1168 (Fed. Cir. 1996) .................. 31, 32
`
`In re Oetiker,
`
`977 F.2d 1443 (Fed. Cir. 1992) ...................... 31
`
`In re Wertheim,
`
`541 F.2d 257 (C.C.P.A. 1976)......................... 31
`
`
`

`

`viii
`
`Kingdomware Techs., Inc. v. United States,
`
`136 S. Ct. 1969 (2016) .................................... 22
`
`Lachance v. Erickson,
`
`522 U.S. 262 (1998) ........................................ 15
`
`Life Techs. Corp. v. Promega Corp.,
`
`137 S. Ct. 734 (2017) ...................................... 22
`
`Lockwood v. Am. Airlines, Inc.,
`
`107 F.3d 1565 (Fed. Cir. 1997) ...................... 17
`
`Martek Biosciences Corp. v. Nutrinova, Inc.,
`
`579 F.3d 1363, 1378 (Fed. Cir. 2009) ............ 31
`
`Microsoft Corp. v. i4i Ltd. Partnership,
`
`131 S. Ct. 2238 (2011) .............................. 21, 23
`
`Radio Corp. of America v.
`Radio Engineering Labs., Inc.,
`
`293 U.S. 1 (1934) ............................................ 21
`
`Samsung Elecs. Co. v. Apple Inc.,
`
`137 S. Ct. 429 (2016) ...................................... 22
`
`SAS Inst. Inc. v. Iancu,
`
`138 S. Ct. 1348 (2018) .................................... 22
`
`Sebelius v. Cloer,
`
`569 U.S. 369 (2013) ........................................ 22
`
`WesternGeco LLC v. ION Geophysical Corp.,
`
`138 S. Ct. 2129 (2018) .................................... 22
`
`
`
`

`

`ix
`
`CONSTITUTIONAL PROVISION
`
`U.S. CONST. amend V.................................................. 2
`
`STATUTES
`
`19 U.S.C. § 1337 .......................................................... 8
`
`28 U.S.C. § 1254(1) ..................................................... 1
`
`28 U.S.C. § 1295(a)(6) ............................................... 10
`
`35 U.S.C. § 111(a) ....................................................... 2
`
`35 U.S.C. § 112.................................................. passim
`
`35 U.S.C. § 120.................................................. passim
`
`35 U.S.C. § 282.................................................. passim
`
`35 U.S.C. § 282(a) ................................................. 5, 29
`
`35 U.S.C. § 282(b) ................................................. 6, 10
`
`
`

`

`1
`
`PETITION FOR A WRIT OF CERTIORARI
`
`
`
`Petitioner, Neology, Inc., respectfully petitions
`this Court for a writ of certiorari to review the
`judgment of the United States Court of Appeals for
`the Federal Circuit in this case.
`
`
`CITATIONS OF OPINIONS BELOW
`
`The opinion of the court of appeals, reproduced
`at App. 1a – 16a, is reported at 767 Fed. Appx. 937,
`2019 U.S. App. LEXIS 11410, and 2019 WL 1760744.
`
`The decision of the International Trade
`Commission, reproduced at App. 19a – 87a, is
`believed by petitioner to be unreported.
`
`
`BASIS FOR JURISDICTION
`
`
`
`
`
`The Federal Circuit rendered its judgment on
`April 19, 2019. Neology, Inc. timely petitioned for
`panel rehearing and rehearing en banc. The Federal
`Circuit entered an order denying rehearing on July 3,
`2019.
`
`
`Jurisdiction is conferred by at least 28 U.S.C.
`§ 1254(1).
`
`
`
`
`
`

`

`2
`
`CONSTITUTIONAL AND
`STATUTORY PROVISIONS INVOLVED
`
`
`U.S. CONST. Amend. 5 provides:
`
`No person shall be held to answer for a
`capital, or otherwise infamous crime,
`unless on a presentment or indictment of
`a Grand Jury, except in cases arising in
`the land or naval forces, or in the Militia,
`when in actual service in time of War or
`public danger; nor shall any person be
`subject for the same offence to be twice
`put in jeopardy of life or limb; nor shall
`be compelled in any criminal case to be a
`witness against himself, nor be deprived
`of life, liberty, or property, without due
`process of law; nor shall private property
`be taken for public use, without just
`compensation.
`
`35 U.S.C. § 111(a) provides:
`
`
`(a) In general.
`
`
`An
`application.
`(1) Written
`application for patent shall be made,
`or authorized to be made, by the
`inventor,
`except
`as
`otherwise
`provided in this title, in writing to the
`Director.
`
`(2) Contents. Such application shall
`include—
`
`
`

`

`3
`
`(A) a specification as prescribed
`by section 112;
`
`(B) a drawing as prescribed by
`section 113; and
`
`(C) an oath or declaration as
`prescribed by section 115.
`
`(3) Fee, oath or declaration, and
`claims. The application shall be
`accompanied by the fee required by
`law. The fee, oath or declaration, and
`1 or more claims may be submitted
`after
`the
`filing date
`of
`the
`application, within such period and
`under such conditions, including the
`payment of a surcharge, as may be
`prescribed by the Director. Upon
`failure to submit the fee, oath or
`declaration, and 1 or more claims
`within such prescribed period, the
`application shall be regarded as
`abandoned.
`
`(4) Filing date. The filing date of an
`application shall be the date on
`which a specification, with or without
`claims, is received in the United
`States Patent and Trademark Office.
`
`
`35 U.S.C. §112(a) and (b) provide:
`
`
`(a) In general. The specification shall
`contain a written description of the
`
`

`

`4
`
`invention, and of the manner and
`process of making and using it, in such
`full, clear, concise, and exact terms as to
`enable any person skilled in the art to
`which it pertains, or with which it is
`most nearly connected, to make and use
`the same, and shall set forth the best
`mode contemplated by the inventor or
`joint
`inventor of carrying out the
`invention.
`
`(b) Conclusion. The specification shall
`conclude with one or more claims
`particularly pointing out and distinctly
`claiming the subject matter which the
`inventor or a joint inventor regards as
`the invention.
`
`
`35 U.S.C. § 120 provides:
`
`
`for an
`for patent
`An application
`invention disclosed
`in the manner
`provided by section 112(a) (other than
`the requirement to disclose the best
`mode) in an application previously filed
`in the United States, or as provided by
`section 363 or 385, which names an
`inventor or
`joint
`inventor
`in
`the
`previously filed application shall have
`the same effect, as to such invention, as
`though filed on the date of the prior
`application, if filed before the patenting
`or abandonment of or termination of
`proceedings on the first application or on
`an application similarly entitled to the
`
`

`

`5
`
`benefit of the filing date of the first
`application and if it contains or is
`amended to contain a specific reference
`to the earlier filed application. No
`application shall be entitled to the
`benefit of an earlier filed application
`under this section unless an amendment
`containing the specific reference to the
`earlier filed application is submitted at
`such time during the pendency of the
`application as required by the Director.
`The Director may consider the failure to
`submit such an amendment within that
`time period as a waiver of any benefit
`under this section. The Director may
`establish procedures,
`including
`the
`requirement for payment of the fee
`specified in section 41(a)(7), to accept an
`unintentionally delayed submission of
`an amendment under this section.
`
`
`35 U.S.C. § 282 (a) and (b) provide:
`
`
`(a) In general. A patent shall be
`presumed valid. Each claim of a patent
`(whether in independent, dependent, or
`multiple dependent
`form) shall be
`presumed valid independently of the
`validity of other claims; dependent or
`multiple dependent claims shall be
`presumed valid even though dependent
`upon an invalid claim. The burden of
`establishing invalidity of a patent or any
`claim thereof shall rest on the party
`asserting such invalidity.
`
`

`

`6
`
`(b) Defenses. The following shall be
`defenses in any action involving the
`validity or infringement of a patent and
`shall be pleaded:
`
`(1) Noninfringement, absence of
`liability
`for
`infringement
`or
`unenforceability,
`
`(2) Invalidity of the patent or any
`claim in suit on any ground specified
`in part II as a condition
`for
`patentability.
`
`(3) Invalidity of the patent or any
`claim in suit for failure to comply
`with—
`
`(A) any requirement of section
`112, except that the failure to
`disclose the best mode shall not be
`a basis on which any claim of a
`patent may be canceled or held
`invalid
`or
`otherwise
`unenforceable; or
`
`(B) any requirement of section
`251.
`
`(4) Any other fact or act made a
`defense by this title.
`
`
`
`
`

`

`7
`
`STATEMENT OF THE CASE
`
`
`
`Petitioner is the owner of U.S. Pats. Nos.
`8,325,044 (“the ’044 Patent”) and 8,587,436 (“the ’436
`Patent”). Appx.2a. Both patents are titled “System
`and Method for Providing Secure Identification
`Solutions.” Appx.3a. Both patents share the same
`specification except for their respective first filed
`claims. Id. (“The claims that appeared in the 2012
`applications as filed (the 2012 claims) issued with
`very few changes as the claims in the ’044 and ’436
`patents.”).
` Both patents
`issued
`from patent
`applications filed in 2012 (“the 2012 Applications”).
`Id. Both patents are related because they are
`continuation applications of U.S. Patent Application
`Serial No. 10/615,026
`(“the
`’026 Application”).
`Appx.7a, 3a. The ’026 Application was filed in 2003
`and is referred to herein as the 2003 Parent
`Application. Id.
`
`The originally-filed claims of the ’044 and ’436
`patents (“the 2012 Claims” or the “Original Claims”)
`are different from the claims filed in the 2003 Parent
`Application. However, they are almost verbatim to
`the issued claims of the ’044 and ’436 patents (“the
`Asserted Claims”). Any differences between the 2012
`Claims and the Asserted Claims are purely cosmetic;
`whereas, differences between the 2012 Claims and
`the claims filed in the 2003 Parent Application are
`substantive. The cosmetic differences resulted from
`(i) a dependent claim being fused with an independent
`claim during prosecution at the United States Patent
`and Trademark Office
`(“USPTO”) and
`(ii)
`renumbering of the claims by the USPTO. Except for
`
`

`

`8
`
`these cosmetic differences, the asserted claims are
`verbatim copies of the 2012 Claims.
`
`At the United States International Trade
`Commission (“the Commission”)1, the challengers to
`the validity of the patents-in-suit, namely the
`Respondent and the Intervenors (together “the
`Validity Challengers”), focused on the 2003 Parent
`Application and alleged that the 2003 Parent
`Application did not provide adequate written
`description support for the asserted claims. Appx.7a
`(“The administrative law judge concluded on June 22,
`2017, that the ’044 and ’436 patents are not entitled
`to the priority date of U.S. Patent Application No.
`10/615,026, filed in 2003, because that application
`“does not provide written description support” for
`some of the key limitations of the at-issue claims of
`the ’044 and ’436 patents.”). In other words, the
`Validity Challengers’ argument was based on the
`claims filed in 2003 and ignored the substantively
`different claims filed in 2012.
`
`The Validity Challengers were singularly
`focused on denying the petitioner the benefit of the
`2003 filing date that was afforded by 35 U.S.C. § 120.
`The filing date benefit under § 120 is often referred to
`in patent law jargon as the “priority date.” The
`Validity Challengers neither alleged nor proved a
`prima facie case that the Asserted Claims failed to
`satisfy the written description requirement of 35
`U.S.C. § 112 as “self-describing” claims. In fact,
`counsel for the Validity Challengers admitted to the
`
`1 The Commission had jurisdiction under 19 U.S.C. 1337(a).
`Appx.144a-148a.
`
`

`

`9
`
`opposite, i.e., that the 2012 Claims provide verbatim
`written description support for the Asserted Claims:
`
` I
`
` believe everyone knows the short story
`is Neology needs to get back to an earlier
`filing date in order to avoid the prior art.
`If they can’t, the prior art will flood in
`and invalidate the patents. I don’t think
`there’s any dispute about that.
`
`Then [the second security key] was part
`of the original claims of the ’044 and
`’436. So on our written description
`analysis, if your original claims actually
`can support your written description
`support for that application. So the
`original claims would get credit. They
`wanted to argue those original claims
`provide written description support for
`the ’044 claims, that’s fine. But that just
`gives you the filing date.
`
`
`Appx. 521a, 522a. (Commission Hearing Tr. 95:8-24)
`(emphasis added) (Opening Statement of Counsel for
`the Commission).
`
`
`Nonetheless, the Commission sided with the
`Validity Challengers and held that the Asserted
`Claims lack written description support in both the
`2003 Application and the 2012 Application. Appx.2a.
`The Commission further held that when the Validity
`Challengers presented a prima
`facie case of
`invalidity2 under 35 U.S.C. § 120 based on the 2003
`
`2 “Invalidity” is the Commission’s language. See, e.g., Appx.57a
`(“Respondents maintained their position that the Asserted
`
`

`

`10
`
`Parent Application, the burden shifted to the
`Petitioner to prove that there was adequate written
`description support, under 35 U.S.C. § 112, in the
`2012 Applications. See Appx.61a; see also Appx.9a
`(“[O]n review of the ALJ decision, Neology argued
`that the specification and the 2012 claims themselves
`each provided adequate written description, but the
`Commission concluded that Neology had waived
`reliance on the 2012 claims by not relying on those
`claims before the ALJ as a basis for written-
`description support.”)
`
`In other words,
`the
`Commission held that the Petitioner waived the
`argument that the Asserted Claims are self-
`describing due to having verbatim written description
`support in the originally filed 2012 Claims. Id.
`
`
`The Federal Circuit upheld the Commission.
`Appx.9a.3 The Federal Circuit held that the Validity
`Challengers did not waive the 35 U.S.C. § 112
`argument. Appx.9a. However, that is irrelevant here.
`The relevant concern is that the Validity Challengers
`
`
`Claims are invalid on both grounds [(i.e., sections 112 and
`120)]”). Petitioner notes that § 120 is not a provision of the
`statute directed to invalidity, but rather to whether a patent
`application is entitled to the benefit of the filing date of an earlier
`patent application. A patent cannot be declared invalid under
`section 120. Rather, the most that section 120 provides with
`respect to invalidity is a test regarding whether a patent owner’s
`later patent applications are entitled to the benefit of the filing
`date of one or more earlier patent applications. The statutory
`invalidity provisions are identified in 35 U.S.C. § 282(b), titled
`“Defenses” and include section 112 among other provisions, but
`not section 120.
`3 The Federal Circuit had jurisdiction under 28 U.S.C.
`1295(a)(6). Appx.8a.
`
`

`

`11
`
`did not allege nor present a prima facie case that the
`2012 Application lacked adequate written description
`support for the Asserted Claims. The Federal Circuit
`further held that it was the Petitioner who waived
`reliance on the 2012 Parent Application. Appx.9a (“
`Neology’s briefing, even after the hearing, relied on
`the argument that the specification of the ’026
`application (the 2003 application), which did not
`include the 2012 claims, provided the written-
`description support of the claims in the ’044 and ’436
`patents, and it did not make an argument that the
`2012 claims
`furnished
`the required written-
`description support.”)
` The Federal Circuit’s
`determination misses the mark because the petitioner
`was only required to respond to the evidence-backed
`allegations that were actually proved by the Validity
`Challengers. If the Federal Circuit’s determination is
`allowed to stand, many patentees would be required
`to guess and respond to every possible invalidity
`challenge when an invalidity defense is generally
`alleged. Such is not (and should not be) the state of
`the law.
`
`The Federal Circuit correctly recognized that
`(a) claims can be self-describing and (b) determining
`whether a particular claim is self-describing is not
`simple. Appx.11a (“Determining whether a particular
`claim is self-describing is not a cut-and-dried, simple
`matter, but would require more development—
`factual and legal—than the passing reference on
`which Neology now relies.”). But that only serves to
`demonstrate that the Validity Challengers should
`have presented a prima facie case as to each claim
`limitation that was allegedly not self-describing. In
`this case, there are six Asserted Claims reciting
`
`

`

`12
`
`complex structure and function; some of them are
`lengthy. Appx.2a-6a. In such circumstances, it is
`improper for the Federal Circuit to require a patent
`owner to guess which claim limitations that a party
`challenging validity believed were not self-describing,
`and then respond based on such guesses. The
`Constitution, the patent statute, and this Court’s
`jurisprudence all require the opposite.
`
`Federal Circuit’s next error amplifies why it is
`essential that a validity challenger must first present
`a prima facie case of invalidity. The Federal Circuit
`erred in speculating that the Asserted Claims might
`be genus claims and genus claims are unlikely to be
`self-describing. Appx.11a. The genus/species concern
`arises where a generic (genus) claim for achieving a
`stated useful result (e.g., a chemical reaction) may
`encompass a vast number of materials (species), even
`though the specification does not disclose a variety of
`species (e.g., chemical compounds) that accomplish
`the result. Ariad, 598 F.3d at 1350; see also id. at
`1349 (“The problem is especially acute with genus
`claims that use functional language to define the
`boundaries of a claimed genus.”). The inquiry in the
`genus/species analysis is whether the specification
`discloses a sufficient number of species to provide
`written description support for the generic claim. Id.
`at 1351.
`
`The Validity Challengers did not make a
`genus/species allegation or argue such a position at
`any time during the proceedings below. And the
`Federal Circuit’s flawed reasoning (i.e., that the
`Asserted Claims might be genus claims that lack
`written description support because the specification
`
`

`

`13
`
`does not disclose a sufficient number of species) is
`speculation by the Court, not based on the argument
`or evidence presented at any point in the proceedings.
`The Federal Circuit’s flawed reasoning also falls far
`from “clear and convincing evidence” of invalidity;
`and it directly contradicts the Validity Challengers’
`position that there is no written description support
`at all.4
`
`No participant in the ITC proceeding or the
`Federal Circuit appeal identified any genus/species
`concerns with respect to the Asserted Claims. Rather,
`the Validity Challengers argued that there is no
`specification support at all
`for certain claim
`limitations. See, e.g., 7a (“The administrative law
`judge concluded…that [the 2003] application “does
`not provide written description support” for some of
`the key limitations.”) Thus, the Federal Circuit
`raised the genus/species strawman in its opinion
`without giving Petitioner notice or an opportunity to
`be heard on yet another purported ground for
`invalidity. Nowhere in the Commission’s Opinion is
`there any mention of whether or not the asserted
`claims are genus claims. See generally 19a-519a.
`That issue did not arise below. If such an invalidity
`argument had been presented below, the Petitioner-
`patentee would have easily proven than that the
`Asserted Claims are not genus claims because they
`recite specific structural features. However, the
`Validity Challengers never alleged nor set forth clear
`and convincing evidence that the claims should be
`
`
`considered genus claims.
`
`
`4 If there is no support, how can the patent support a genus but
`not species? Both cannot simultaneously be true.
`
`

`

`14
`
`REASONS FOR GRANTING THE PETITION
`
`
`
`This case presents a recurring issue regarding
`the requirement that the party challenging invalidity
`of a patent prove invalidity by clear and convincing
`evidence by, at minimum, presenting a prima facie
`case of invalidity. It also presents the recurring issue
`of whether a patent owner must affirmatively prove
`validity without the party challenging validity having
`made a prima facie case of invalidity. The case also
`raises the issue of whether the patent owner will be
`deemed to have waived its ability to assert that a
`patent is valid (a) in the face of the patent statute
`stating that a patent is presumed valid and (b) where
`the patent owner was not confronted with a defense
`or given notice and an opportunity to be heard on a
`defense that was not supported with evidence or
`argument.
` These
`issues are of exceptional
`importance to patent owners, because in almost every
`patent
`infringement
`lawsuit, defenses and/or
`counterclaims of patent invalidity are asserted, and
`the requisite proof burdens associated with such
`defenses and counterclaims are at issue.
`
`Without this Court’s guidance, patent owners
`will be looking to the Federal Circuit’s decision in this
`case for guidance, a decision that conflicts with this
`Court’s precedent regarding both burdens of proof and
`procedural due process and that conflates two
`different sections of the patent statute, i.e., 35 U.S.C.
`§ 112 and 35 U.S.C. § 120. This Court should grant
`certiorari to the Federal Circuit and reverse that
`court’s judgment.
`
`
`

`

`I.
`
`
`
`15
`
`The Federal Circuit’s Waiver Ruling
`Directly Conflicts With This Court’s
`Precedent Regarding Procedural Due
`Process And The Requirement That
`Parties Be Provided Notice And An
`Opportunity To Be Heard Before Being
`Deprived Of A Property Interest.
`
`It is well established that, under the Fifth
`Amendment’s Due Process Clause, a party must be
`provided with notice and an opportunity to be heard
`before being deprived of a property interest. U.S.
`Const. Amend. 5 (“No person shall be … deprived of
`… property, without due process of law …”);
`Dusenbury v. United States, 534 U.S. 161, 167 (2002)
`(“From these ‘cryptic and abstract words,’ we have
`determined that individuals whose property interests
`are at stake are entitled to ‘notice and an opportunity
`to be heard.’”) (internal citations omitted); Lachance
`v. Erickson, 522 U.S. 262, 266 (1998) (“The core of due
`process is the right to notice and a meaningful
`opportunity to be heard.”). This due process right
`applies to property interests in patents. See Brown v.
`Duchesne, 60 U.S. 183, 197 (1857) (“[B]y the laws of
`the United States, the rights of a party under a patent
`are his private property; and by the Constitution of
`the United States, private property cannot be taken
`for public use without just compensation.”); accord
`Florida Prepaid Postsecondary Educ. Expense Bd. v.
`College Sav. Bank, 527 U.S. 627, 643 (1999) (“Patents
`… have long been considered a species of property…
`As such, they are surely included within the ‘property’
`of which no person may be deprived by a State
`without due process of law.”). The notice and
`opportunity afforded by the due process clause were
`
`

`

`16
`
`denied to the petitioner; the ruling should be reversed
`to prevent similar departures from due process in
`future cases.
`
`In the context of this case, the Validity
`Challengers alleged that the patents lacked a proper
`written description and, as such, were invalid for
`failure to comply with 35 U.S.C. § 112; section 112
`requires that a patent include a written description of
`the invention. The Validity Challengers, however, did
`not present evidence that the patent applications filed
`in 2012 lacked such evidence when considered in their
`complete form. Rather, the Validity Challengers
`presented evidence that the 2003 patent application
`lacked a written description of the patent claims that
`issued from the 2012 patent applications. This is an
`attack on whether the patents were entitled to the
`benefit of the filing date of the 2003 application, it is
`not an attack on whether the patents had sufficient
`written description as filed in 2012.
`
`Based on this attack on the patents, the
`Federal Circuit reviewed the underlying decision and
`recounted the administrative law judge’s two relevant
`findings. First, “The administrative law judge
`concluded … that the [two] patents are not entitled to
`the priority date of [the patent application that was]
`filed in 2003, because that [2003] application ‘does not
`provide written description support’ for some of the
`key limitations of the at-issue claims of the [two]
`patents.” Appx.7a. Second, “The ALJ also found
`invalidity of the claims … for lack of written
`

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