Petitions / Supreme Court Activity

Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. Of the six pending merits cases, there was not much activity, with the exception of one case where multiple amicus briefs were filed. Two new petitions were also filed—one in a patent case, and one in a government contract case—as well as two responses in opposition to petitions and two amicus briefs in favor of petitions.

Activity in Merits Cases

In Romag Fasteners, Inc. v. Fossil, Inc., a case addressing a question of damages in trademark infringement cases, multiple amicus briefs were filed.

Several amicus briefs came down on the side that willful infringement is not a prerequisite to an award of infringers’ profits:

One came down on the opposite side, that willful infringement is a prerequisite to an award of infringers’ profits:

Activity in Petitions Cases

New Petitions

Two new petitions were filed this past week.

In Trading Technologies International, Inc. v. IBG LLC, the petitioner asked the Court to decide:

1. “Whether computer-implemented inventions that provide useful user functionality but do not improve the basic functions of the computer itself are categorically ineligible for patent protection”; and

2. “Whether the Court should overrule its precedents recognizing the ‘abstract idea’ exception to patent eligibility under the Patent Act of 1952.”

In Dobyns v. United States petitioner asked the Court to review:

1. “Whether the duty of good faith and fair dealing implied in all contracts, including contracts between private parties and the United States, permits a finding of breach of the duty when bad faith conduct by the United States violates the purpose of a contract regardless of whether the bad faith conduct is also ‘tethered’ to a specific contract provision, a question about which panels within the Federal Circuit have disagreed frequently”; and

2. “Whether agreements for the safety of federal undercover agents are protected by a duty of good faith and fair dealing that is not restricted to the express terms of the contract, a question which has divided courts within the Federal Circuit.”

New Responses

In Eli Lilly and Co. v. Erfindergemeinschaft UroPep Gbr a response brief in opposition to the petition was filed. The respondent argued that “[t]his case is not the vehicle to resolve Lilly’s alleged problem with the Federal Circuit’s recent caselaw on patents that invoke functional claiming.”

Similarly, in Enplas Display Device Corp. v. Seoul Semiconductor Co. a response brief was filed. Seoul Semiconductor argued that while Enplas “asks the Court to reexamine the Federal Circuit’s affirmance of the jury’s verdict that Enplas had knowledge and intent to induce direct infringement in the United States . . . . Enplas fails to show that its Petition is anything other than an invitation for this Court to engage in fact-bound error correction.”

In Rogero v. Secretary of Health and Human Services, a pro se case, the government waived its right to respond.

New Replies

No new replies to cert petitions were filed this week.

New Amicus Briefs

In Time Warner Cable, Inc. v. Sprint Communications Co., Intel Corporation filed an amicus brief in support of the petition. According to Intel, this case presents “an important and recurring question concerning the Federal Circuit’s retreat from [the Supreme] Court’s precedent governing patent infringement damages,” namely the requirement of apportionment of damages.

Likewise, in Rogero v. Secretary of Health and Human Services, the National Autism Society of Pittsburgh, Inc. filed an amicus brief in favor of the petitioners. The Society highlighted several alleged errors by the Federal Circuit and concluded that [j]ustice has been denied Petitioner for his encephalopathy injury.”


The Supreme Court did not grant any cert petitions.


The Court likewise did not deny any cert petitions.