Petitions / Supreme Court Activity

This Tuesday the Supreme Court returns from its summer hiatus, holding its first conference of the 2019 Term. Here is a list of the petitions that have been distributed for Tuesday’s conference in cases decided by the Federal Circuit, organized by subject matter, along with some comments.


Several of these cases present interesting questions in the field of patent law. In terms of the amicus brief scorecard, however, the only cases garnering support are Acorda Therapeutics (5 amicus briefs in support), Eli Lilly (3), and Hyatt (2).

Acorda Therapeutics presents a complicated question related to the patentability doctrine of non-obviousness, while Eli Lily presents a fairly straightforward question related to functional claiming (complete with alleged contradiction with Supreme Court precedent). Hyatt presents a narrow question related to the Manual of Patent Examining Procedure and alleged inconsistency with the patent statute.


The Princeton case important questions of appellate jurisdiction as well as a potential circuit split, and the Supreme Court requested a response to the petition—all potential harbingers of Supreme Court intervention.

Pro Se


Xitronix involved jurisdictional ping pong between the Federal Circuit and the Fifth Circuit, with the Federal Circuit deciding the case despite its own precedent indicating it lacked jurisdiction to do so. As it has several times over the history of the Federal Circuit, the Supreme Court may feel inclined to take the case to provide certainty on a question of the Federal Circuit’s unique jurisdiction.



Rule 36

While in Straight Path IP Group the petition identifies an interesting question of constitutional law regarding the Federal Circuit’s use of Federal Circuit Rule 36 to summarily affirm cases, the Supreme Court has requested responses to the petition, and they are not due until October 18. It will be interesting to see if the Court requests the views of the Solicitor General to get the government’s take on the case.




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We will keep track of any Supreme Court action in these cases and provide an update when the Court issues its related orders.