Petitions / Supreme Court Activity

Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. Highlights include a recap of the oral argument in MaineModa , and Land of Lincoln, a new petition in an MSPB case, a response by the Solicitor General to a petition raising questions related to patent eligibility in the context of computer-implemented technology, and a reply in support of a petition in a case raising questions related to sovereign immunity and inter partes reviews of patents. Here are the details.

Granted Cases

Last week, 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. Late last week we posted our recap of the oral argument, highlighting that “it sounded like several members of the Court lean toward requiring the government to pay the insurance companies for losses incurred in participating in the health insurance market in reliance on a provision in the Affordable Care Act.”

Petitions Cases

New Petitions

One new petition was filed, in Lepore v. Office of Personnel Management, presenting the following question:

“The calculation of annuities for government employees upon their retirement is governed by 5 U.S.C. 8331(4). This section requires a determination of ‘the largest annual rate resulting from averaging an employee’s rates of basic pay in effect over any 3 consecutive years of creditable service….’ This requires an analysis of the employee’s rates of basic pay over his/her entire career, although the figure is usually determined by the last three years of that person’s employ by the government. In our case, the documents show that the last three years of Petitioner’s government service, ending on April 16, 1983 produced the ‘largest annual rate of basic pay’ and the Administrative Judge found that it was uncontested that Petitioner’s retirement date was April 16, 1983.

The question presented is whether the court below had the right to ignore that finding, in plain violation of Rule 52(a)(6) which states that ‘Findings of fact, whether based on oral or other evidence, must not be set aside unless clearly erroneous, and the reviewing court must give due regard to the trial court’s opportunity to judge the witnesses’ credibility.’”


One brief in opposition to a petition was filed, in Trading Technologies International, Inc. v. IBG LLC. The petition presented two questions related to the doctrine of patent eligibility. The Solicitor General responded to the petition, urging the Supreme Court to deny it.

According to the Solicitor General, who notably was not joined by any attorneys from the U.S. Patent and Trademark Office, the Federal Circuit’s ineligibility holding “rests on the uncontroversial proposition that, if a claimed invention is otherwise not patent-eligible, merely implementing that invention on a computer does not transform it into patent-eligible subject matter.” Moreover, the Solicitor General distinguishes this case from Hikma, where he filed an amicus brief recommending review of the patent eligibility doctrine in Athena, a case involving life sciences technology.

“As explained in the government’s brief filed in response to this Court’s invitation in Hikma . . . , although the Court has construed Section 101 and its precursors for well over a century, its recent decisions have introduced substantial uncertainty regarding the proper Section 101 inquiry. . . . This case, however, would be an unsuitable vehicle to address those broader issues. . . . [T]he inventions claimed in petitioner’s patents, as the court of appeals characterized them, would fall outside Section 101’s reach even under the approach the Court historically applied before its decision in Bilski.”

In short, the Solicitor General recommends the Supreme Court revisit the patent eligibility doctrine in the context of life sciences technologies, but not in the context of computer-implemented technologies.

Other than this response brief, the respondents in two other cases filed waivers of their right to respond to the petitions:


A reply in support of a petition was filed in one case, Regents of the University of Minnesota v. LSI Corporation. The Regents of the University of Minnesota argue that “Respondents do not dispute that the question whether States have sovereign immunity to [inter partes reviews] is one of vital importance to the States, the federal government, private patent litigants, and the patent system as a whole.” Furthermore, the Regents argue that the respondents’ defense on the merits “falls short,” that nothing in Arthrex, Inc. v. SMith and Nephew, Inc. “is material to the parties’ arguments or the sovereign immunity analysis” in this case, and that “[b]y suggesting that when a sovereign chooses a judicial forum to litigate a dispute with a private party, the sovereign opens the door to private parties overriding that choice by diverting the litigation into an executive agency, respondents fundamentally misconstrue the underpinnings of sovereign immunity.”

Grants and Denials

The Supreme Court did not grant or deny any petitions.