Petitions / Supreme Court Activity

Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. It was an exceptionally busy week. In granted cases, the Supreme Court decided Peter v. NantKwest, Inc. and heard oral arguments in four of its other cases. As for petitions cases, two petitions were denied and four new responses, two new replies, and three new amicus briefs were filed. Here are the details.

Granted Cases

On Monday, the Supreme Court heard oral argument in Thryv, Inc. v. Click-to-Call Technologies, LP, which addresses whether patent owners may appeal decisions by the Patent Trial and Appeal Board that challengers of patents have not violated the time-bar governing petitions for inter partes review. We reported on the oral argument.

On Tuesday, the Supreme Court heard a consolidated oral argument in Maine Community Health Options v. United StatesModa Health Plan Inc. v. United States, and Land of Lincoln Mutual Health Insurance Company v. United States. Look for our forthcoming report on the oral argument in these cases.

Yesterday the Supreme Court issued its opinion in Peter v. NantKwest, Inc., affirming the Federal Circuit’s judgment that the Patent and Trademark Office does not get to recover the salaries of its attorneys and paralegal employees when a patent applicant files a civil action in the United States District of Virginia to challenge a rejection of its application. We reported on the opinion on this blog.

Petitions Cases

Grants and Denials

While the Supreme Court did not grant any petitions, it did deny the petitions in the following cases:

New Petitions

No new petitions were filed.

New Responses

Responses in opposition to petitions were filed in four cases.

In Veterans Contracting Group, Inc. v. United States, the petitioner alleges that the decision of Veterans Affairs to cancel a solicitation in reliance on the absence of the petitioner from the relevant VA database was unlawful because the removal of the petitioner from the database was a violation of the law. In response, the United States argued that “[f]urther review is not warranted” because “[t]he Federal Circuit’s decision is correct and does not conflict with any decision of this Court or another court of appeals,” and moreover because “the availability of [injunctive] relief in this case is seriously complicated by the passage of time.”

In Arris International Ltd. V. ChanBond, LLC, the petitioner raises effectively the inverse of the question under consideration by the Supreme Court in Thryv, Inc. v. Click-to-Call Technologies, LP. In Arris, the petitioner asks “[w]hether the Federal Circuit has appellate jurisdiction to review a decision by the Patent Trial and Appeal Board . . . denying institution of an inter partes review based on the time-bar of 35 U.S.C. § 315(b).” The government has now responded to the petition, arguing that “[t]he Federal Circuit . . . correctly dismissed petitioner’s appeals of the Board’s determinations not to institute inter partes review in this case.” As for why, the government explains that, “[u]nder the [America Invents Act], . . . it is ‘the final written decision of the [Board] under section 318(a)’ that is subject to judicial review,” but “under Section 318(a), the Board issues a ‘final written decision’ only ‘[i]f an inter partes review is instituted and not dismissed.’”

In Regents of the University of Minnesota v. LSI Corp., three briefs in opposition to the petition were filed.

  • Gilead Sciences contends that the case “is a poor vehicle to resolve the question presented by the University—namely, whether sovereign immunity can insulate certain patents from inter partes review”; the case presents an important predicate question “whether the Board can lawfully enter a default judgment”; and “even if this Court were to overlook these predicate issues and reach the question presented, the University’s petition does not warrant this Court’s review.”
  • LSI and Avago Technologies argue that “[t]he Federal Circuit’s decision faithfully applies this Court’s precedents regarding both sovereign immunity and IPR, and presents nothing worthy of this Court’s review.”
  • Ericsson argues that “precedent dictates that states are not immune from inter partes review”; “even if the question presented were a closer one, this is not the time for the Court to address it” because of the Federal Circuit’s recent Arthrex decision; and “setting aside the uncertainty that Arthrex has created, this case would still be a poor vehicle for review.”

In Winston-Salem Industries for the Blind v. PDS Consultants, which presents two questions related to the Tucker Act, the government maintains that the petition should be denied. On the first question, the government says “the court of appeals’ jurisdictional holding is correct and does not conflict with any decision of this Court or another court of appeals.” On the second question, however, the government’s position is more nuanced. It argues that “petitioner offers the better reading” of the two relevant congressional Acts, but that “the legal question is close” and the Federal Circuit’s decision “reasonably reconciles two statutory mandates.” Moreover, while it concedes “the case is undoubtedly important to the individuals affected, in the government’s view, the issue does not carry the broad significance that would warrant th[e] Court’s intervention.” For its part, PDS Consultants filed a waiver of its right to respond to the petition.

New Replies

Two new replies were filed.

In Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, a case about patent eligibility in the context of the life sciences, the reply brief argues that there is considerable confusion about how to apply the law of patent eligibility, highlighting the government’s amicus brief filed in Hikma v. Vanda earlier this week where, “while advising against a grant in Hikma, the government highlights this case as one in which ‘further guidance from this Court is amply warranted.’” Athena also contends that the “[e]leven amicus briefs further amplify the need for this Court’s review,” and that “Mayo’s response only reinforces the need for th[e] Court’s guidance.”

In Medtronic, Inc. v. Barry, Medtronic argues that “[n]either the statute nor this Court’s case law supports the Federal Circuit’s nonstatutory ruling that an invention is not ready for patenting unless the invention meets some litigation-inspired ‘intended purpose’ advanced long after the patent issues.” Relatedly, Medtronic contends that “[t]he Court should correct the Federal Circuit’s erroneous ruling that a patented method that is ‘successfully performed’ is nonetheless not ready for patenting.” As for the second question presented in the case, “[t]he Court should confirm that the patentee bears the burden of proving the experimental use exception” to the on-sale bar.

New Amicus Briefs

Three new amicus briefs were filed.

In Frankway v. Wilkie, Military-Veterans Advocacy Inc. argued that “[t]he presumption of competence [of medical examiners] is an anti-claimant concept in an otherwise uniquely pro-claimant system of veterans’ benefits adjudication.”

In Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc. and HP Inc. v. Berkheimer, the government filed amicus briefs arguing that the petitions should be denied, or, “[i]n the alternative, if the Court grants the petition for a writ of certiorari in Athena Diagnostics, Inc. v. Mayo Collaborative Servs., LLC, No. 19-430 (filed Oct. 1, 2019),” then the petitions “should be held pending the Court’s decision in Athena and then disposed of as appropriate.” We reported on these amicus briefs earlier this week.