Petitions / Supreme Court Activity

Happy Thanksgiving! Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. In granted cases, the only case with any activity was Thryv, Inc. v. Click-To-Call Technologies, LP, in which the petitioner filed its reply brief. As for petitions, the Court denied review in three cases, parties filed three responses in opposition and one reply, and a third party filed an amicus brief in one case. We have the details.

Activity in Granted Cases

In Thryv, Inc. v. Click-To-Call Technologies, LP, Thryv filed its reply brief. In it, Thryv argues that Congress “made a deliberate policy decision to preclude judicial review of the decision to institute an [inter partes review],” and characterizes the respondent’s position asking the Court “to overturn Congress’s considered policy judgment.” But, in Thryv’s view, “[n]othing in respondent’s brief justifies judicial review of [35 U.S.C.] § 315(b) time-bar determination.”

Activity in Petitions Cases

Grants and Denials

The Supreme Court did not grant any petitions for certiorari in the last week, but it did deny the petitions in the following three cases:

New Responses

New responses in opposition to petitions were filed in three cases.

In one of the most important patent cases in recent memory, Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, Mayo Collaborative Services filed its response in opposition to the petition. In it, Mayo argues that “[t]he crux of Athena’s petition is that because its patent claims cover medical diagnostics they deserve special treatment,” but “[t]hey do not.” Mayo goes on to argue that this case is no different than the other patent eligibility decisions the Supreme Court has declined to hear in the last several years. Moreover, while “Athena, amici, and various Federal Circuit judges allege that allowing the Federal Circuit’s decision below to stand, and its applications of Mayo to continue, will effectively ruin the diagnostics industry,” Mayo argues “this hyperbolic claim is entirely speculative.” Anyway, Mayo maintains that “[t]he concerns of Athena, amici, and various judges about any potential effect of this Court’s interpretation of § 101 on the field of medical diagnostics should be taken up with Congress.” (Note that I testified in Congress this past summer at one of the Senate Judiciary Committee’s Intellectual Property Subcommittee hearings on patent eligibility.)

In Lake v. Wilkie, the government, on behalf of the Secretary of Veterans Affairs, characterizes the question presented by the pro se petitioner as “[w]hether the Federal Circuit correctly held that it lacked jurisdiction under 38 U.S.C. 7292(d)(2) to review petitioner’s factual challenge to the determination that she was not entitled to receive survivor pension benefits.” According to the government, the Federal Circuit’s holding was correct, it “does not conflict with any decision of this Court or of another court of appeals,” and the “Court has previously denied petitions . . . challenging various Federal Circuit determinations that it lacked jurisdiction to review particular factual challenges related to veterans’ disability benefits.”

In Medtronic, Inc. v. Barry, Barry argues that the “Petitioner waived the questions presented,” which relate to patent law’s on-sale and public use bars, which prohibit an inventor from obtaining a patent when he or she waited too long to file a patent application after a sale or public use of his or her invention. Regarding these questions, Barry contends that they “are unworthy of review” because “the Federal Circuit did not misread the Court’s precedent regarding the ‘ready for patenting’ standard” governing these doctrines, and “the Federal Circuit’s decision correctly applies the statutory requirement that the burden of establishing [patent] invalidity always rests on the party asserting it.”

In addition to these briefs in opposition, three other respondents waived the right to file responses:

New Replies

One new reply in support of a petition was filed. In Park Properties Associates, L.P. v. United States, Park Properties argues that the “issue in this case is whether the government can insulate itself from liability for breaching a contract with a private party by including a third-party ‘contract administrator’ in the agreement.” According to Park Properties, “[t]his is a matter of enormous practical importance, affecting billions of dollars in contract obligations,” and “the government itself has previously petitioned for en banc review and certiorari in earlier cases that turned on this question.”

New Amicus Briefs

One new amicus brief was filed recently. The Computer and Communications Industry Association filed an amicus brief in Intel Corp. v. Continental Circuits, LLC arguing that the Federal Circuit’s approach to patent claim interpretation in this case “violates the requirement to read the [patent] specification and claims together by ignoring the specification unless it contradicts the claim language.” In particular, the Association argues that “[w]hen a patentee [in its specification] denigrates a prior art approach as incompatible or inferior, the public must be able to trust that this means that the patentee’s invention does not encompass the prior art approach.”

New Petitions

No new petitions were recently filed.