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 no new activity. Three new petitions, however, were filed, along with a supplemental brief, two response briefs, and an amicus brief.

Activity in Petition Cases

New Petitions

In Medtronic, Inc. v Barry, the petitioner asked the Court to review two questions:

1.”Whether a process invention is reduced to practice, and thus ‘ready for patenting,’ when all of its elements are ‘successfully performed,’ as this Court has held, or whether it must also be determined to work for a further ‘intended purpose’ that need not appear in the patent, as the Federal Circuit holds.”

2.”Whether, after proof that an invention was on sale or in public use more than one year before the patent application, the patentee bears the burden of proving experimental use by evidence that is ‘full, unequivocal, and convincing,’ as this Court and most regional circuits have held, or whether the patentee bears only a burden of production on experimental use and thus can prevail solely on the patentee’s own post hoc testimony, as the Federal Circuit has held.”

In Garmin USA, Inc. v. Cellspin Soft, Inc., the question presented is “whether patent eligibility is a question of law for the court that can be resolved on a motion to dismiss, notwithstanding allegations in a complaint that the asserted claims are inventive.”

In Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, the petitioner asked Court to review “[w]hether a new and specific method of diagnosing a medical condition is patent-eligible subject matter, where the method detects a molecule never previously linked to the condition using novel man-made molecules and a series of specific chemical steps never previously performed.”

New Supplemental Brief

In IBG LLC v. Trading Technologies International, Inc., IBG and Interactive Brokers filed a supplemental brief “to call the Court’s attention to Sipco, LLC v. Emerson Electric Co., 2019 WL 4656205 (Fed. Cir. Sept. 25, 2019), which was not available at time the Petition was filed.” According to the petitioners, “[t]he Sipco decision supports a grant of certiorari because it deepens the intra-circuit split regarding the question presented in the Petition: whether a patent that does not . . . recite a novel and non-obvious technological feature . . . claims a ‘technological invention’ under AIA § 18(d).”

New Responses

In Princeton Digital Image Corp. v. Adobe Systems, Inc., Adobe filed a response arguing that the petition, which raised questions related to procedure and appellate jurisdiction, should be denied because “Petitioner asks this Court to grant review based on mischaracterizations of the record, the Federal Circuit decision, and the case law.”

In Time Warner Cable, Inc. v. Sprint Communications Co., Sprint Communications filed a response stating that “the Federal Circuit correctly affirmed . . . that the jury’s reasonable royalty award was apportioned to the value of Sprint’s inventions,” and that “the Federal Circuit did not create the new written description rule that petitioners say it did.”

Finally, in Katzin v. United States, the United States waived its right to respond to the petition, which raised two questions related to takings law.

New Replies

No new replies in support of cert petitions were filed this week.

New Amicus Briefs

In Google LLC v. Trading Technologies International, Inc., an important case asking “[w]hether copyright protection extends to a software interface” and even if so whether use of such a software interface constitutes fair use, the United States filed an amicus brief. The United States argues that the Federal Circuit “correctly held that neither Section 102(b) [of Title 17] nor the merger doctrine forecloses copyright protection” to software interfaces, and “correctly held that no reasonable jury could find fair use on this record.”


The Supreme Court did not grant any cert petitions.


The Court also did not deny any cert petitions.