Featured / Petitions / Supreme Court Activity

It was a busy week at the Supreme Court in cases decided by the Federal Circuit. Three amicus briefs in favor of the respondent were filed in one of the four granted cases, Thryv, Inc. v. Click-to-Call Technologies, LP. With respect to petitions, multiple petitions were denied, two new petitions were filed, several party briefs were filed, and nine amicus briefs were filed in one case, Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC. We have the details.

Activity in Granted Cases

In Thryv, Inc. v. Click-to-Call Technologies, LP, three amicus briefs were filed in favor of the respondent. All support the position that parties should be able to appeal the Patent Trial and Appeal Board’s decisions to institute inter partes review proceedings when the Board rejects an argument that a petition for review was filed outside of the limited time period permitted by the governing statute. Here are the briefs:

Activity in Petition Cases

Grants and Denials

The Supreme Court did not grant any petitions in cases decided by the Federal Circuit. The following petitions, however, were denied:

New Petitions

Two new petitions were filed.

In Nuvo Pharmaceuticals v. Dr. Reddy’s Laboratories, Inc., the petitioner asks the Court to review “[w]hether the Federal Circuit erred by holding that, whenever the prior art teaches away from a pharmaceutical composition, the written description of a patent claiming that composition can satisfy 35 U.S.C. § 112 only if it discloses either experimental data proving efficacy or a detailed theory of why the composition works sufficient to show that it would be effective.”

In Intel Corp. v. Continental Circuits, LLC, the petitioner asks the Court to determine “[w]hether courts should construe a patent’s claims in light of the written description of the invention disclosed in the patent’s specification, or whether, as the Federal Circuit held, courts should first determine the ordinary meaning of claim terms in isolation, and consider the specification only to the extent that it contains a clear and unmistakable disclaimer of claim scope.”

New Responses

In Amarin Pharma, Inc. v. International Trade Commission, two responses were filed in opposition to the petition, which raised the following question: “When a manufacturer files a Lanham Act claim under the Tariff Act for competitive injuries caused by unfair trade practices, is the claim barred as a matter of law when the International Trade Commission would need to consider the meaning of terms used in the Food, Drug and Cosmetic Act in order to determine whether the claim has merit.”

First, the International Trade Commission through the Solicitor General filed a response arguing that the petition should be denied because “[t]he decision of the court of appeals is correct, does not conflict with [Supreme Court or Second Circuit precedent], and does not independently warrant review absent a relevant conflict of authority.” “Furthermore,” the Solicitor General continues, “this case would be a poor vehicle for review, because the court of appeals lacked jurisdiction . . . to review the Commission’s refusal to institute an investigation.” And, “[a]lthough the court of appeals did possess mandamus jurisdiction, petitioners do not present their arguments through the limited lens of mandamus, which requires a ‘clear and indisputable’ right to relief.”

Second, the private respondents filed a response in opposition arguing that the Federal Circuit lacked jurisdiction; the lower courts are not divided; the decision below is correct and consistent with the Court’s precedents; and the question presented is not of broad importance.

New Replies

In Power Analytics Corp. v. Operation Technology, Inc., Power Analytics Corporation filed a reply in support of the petition arguing that “[t]he frequent use of Rule 36 affirmances in appeals regarding [patent eligibility under] § 101 has only led to a dramatic increase in amount of litigation concerning this issue and more appeals to the Federal Circuit and this Court seeking clarification.” Power Analytics goes on to argue that “[t]he petition should be granted at least to use the power of this Court’s supervisory administrative authority to suggest to the Federal Circuit that excessive use of Rule 36 in this area of the law is unacceptable.”

New Amicus Briefs

In Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, nine amicus briefs were filed in support of granting the petition, which asked “[w]hether a new and specific method of diagnosing a medical condition is patent-eligible subject matter”: