Petitions / Supreme Court Activity

Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. On Monday, the Supreme Court heard oral argument in one of the six pending merits cases and also denied or dismissed 21 petitions. In addition, in the past week four new petitions were filed, three in patent cases and one in a government contract case. As well one response in opposition to a petition and two reply briefs in favor of certiorari were filed.

Activity in Granted Cases

On Monday, the Supreme Court heard oral argument in Peter v. NantKwest, Inc., which raises the question of whether the U.S. Patent and Trademark Office is entitled to recover its personnel expenses (including attorneys’ fees) when patent applicants challenge rejections in federal district court. In our argument recap, we summarized the argument and concluded that “the Justices overall seemed unconvinced that the American Rule ought to be set to the side in these circumstances, or that the USPTO’s current position deserves any respect given both the American Rule and the USPTO’s longstanding contrary position.”

Activity in Petition Cases

New Petitions

In Brigham and Women’s Hospital Inc. v. Perrigo Company, the petitioner asked the Court to review:

1. “Whether the punitive enhancement under 35 U.S.C. § 284 is collateral to, and therefore not a merits ruling necessary for final judgment under this Court’s reasoning in Budinich v. Becton Dickinson & Co., 486 U.S. 196 (1988) (attorney fee award is ‘collateral’).”

2. “Whether this Court should exercise its supervisory powers to stop the alarming trend of the Federal Circuit’s setting aside patent infringement jury verdicts by not applying deferential appellate review that requires consideration of both sides’ evidence, and precludes independent ‘weighing of the evidence’ and making ‘[c]redibility determinations,’ contrary to Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150-51 (2000).”

In Neology, Inc. v. International Trade Commission, the question presented is “[w]hether, 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.”

In Arris International Limited v. ChanBond, LLC, the petitioner asked the Court to review the following two questions:

1. “Whether the Federal Circuit has appellate jurisdiction to review a decision by the Patent Trial and Appeal Board (‘PTAB’) denying institution of an inter partes review based on the time-bar of 35 U.S.C. § 315(b).”

2. “Whether the inability of the Petitioner to appeal the PTAB’s finding that the Petitioner is a ‘privy’ of a third party, thereby affecting a substantive right of the Petitioner, is a denial of due process because of the substantive estoppels arising from that finding in the context of the AIA/ IPR statutory scheme.”

Finally, in Veterans Contracting Group, Inc. v. United States, the question presented is “[w]hether agency action based on an earlier, unlawful act by the agency is shielded from judicial correction based on an individual employee’s alleged lack of knowledge that the agency’s earlier action was illegal.”

New Responses

In Zafer Construction Co. v. Army Corps of Engineers, the United States Army Corps of Engineers filed its response brief arguing that “Petitioner’s claims lack merit and do not implicate any conflict with any decision of this Court or another court of appeals. Further review is not warranted.”

New Replies

In Eli Lilly and Co. v. Erfindergemeinschaft UroPep GbR, Eli Lilly filed a reply arguing that “[r]espondent identifies no valid impediment to this Court’s review . . . . The Court should grant the petition for writ certiorari.”

Similarly, in Enplas Display Device Corp. v. Seoul Semiconductor Co., Enplas Display Device Corp. submitted a reply arguing three points: 1. “The Federal Circuit’s expansion of liability under § 271(b) to ensnare foreign defendants who did not knowingly induce infringement in the United States conflicts with this Court’s precedents and the presumption against extraterritoriality”; 2. “The question presented is important because of the Federal Circuit’s approach presents a serious danger of international friction”; and 3. “This case is an excellent vehicle through which to address the extraterritorial reach of § 271(b).”


The Supreme Court did not grant any cert petitions.


As we previously reported, on Monday the Court denied review in 21 cases.