Petitions / Supreme Court Activity

Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. Highlights include the reply brief on the merits in Romag Fasteners, Inc. v. Fossil, Inc., four new petitions (two in patent cases and two in veterans cases), two responses to petitions (both related to patent eligibility), three reply briefs in support of petitions (in one patent case and two veterans cases), and supplemental briefs and a letter to the court in five cases as a result of the government’s amicus briefs related to patent eligibility in Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc. and HP Inc. v. Berkheimer. Here are the details.

Activity in Granted Cases

Romag Fasteners filed its reply brief in Romag Fasteners, Inc. v. Fossil, Inc., arguing that “[t]he Lanham Act repeatedly limits the availability of certain remedies for trademark infringement to willful violations, while authorizing relief for other violations irrespective of the infringer’s mental state,” and that as a result “[i]mplying a willfulness requirement for section 1125(a) violations . . . would upend Congress’ calibrated decisions throughout the Act specifying when to require heightened culpability as a prerequisite to relief.”

Activity in Petitions Cases

New Petitions

Four new petitions have been filed: two in patent cases and two in veterans cases.

As for the patent cases, in Apple Inc. v. VirnetX Inc., Apple presented the Supreme Court with two questions:

  1. “whether the Federal Circuit’s reliance on prior licenses to ascertain infringement damages, without satisfying apportionment rules, conflicts with this Court’s precedent requiring apportionment ‘in every case.’ Garretson v. Clark, 111 U.S. 120, 121 (1884)”; and
  2. “whether intervening PTO invalidations apply in all pending cases, including appeals that remain pending at the rehearing or certiorari stage.”

And in Chrimar Systems, Inc. v. Juniper Networks, Inc., Chrimar Systems presented the Court with one question:

  • “When a party files a petition for Inter Partes Review, the petition ‘must identify “each claim challenged,” the grounds for the challenge, and the evidence supporting the challenge. § 312(a)(3).’ SAS Institute Inc. v. Iancu, 138 S.Ct. 1348, 1353 (2018) (emphasis added). A patent owner has the right to respond to the petitioner’s arguments and evidence. 35 U.S.C. § 316(a)(8). Yet the Respondents filed Inter Partes Review petitions that presented no evidence (for Ground 1) and conclusory evidence (for Ground 2) on essential elements of their prima facie case, and then submitted extensive new evidence to support these grounds with their ‘replies.’”
  • “The Question Presented is:”
  • “Did the Patent and Trademark Trial and Appeal Board violate 35 U.S.C. § 312(a)(3) when it allowed, and refused to strike, Respondents’ extensive new reply evidence, and 35 U.S.C. § 316(a)(8) when it refused Petitioner’s request to submit responsive evidence?”

As for the veterans cases, the petitioner in Procopio v. Wilkie presented two questions:

  1. “Whether This Court Should Grant Certiorari to Resolve an Important Point of Law Concerning the Applicability of the ‘Substantially Justified’ Standard In Adjudicating Petitions for Attorneys Fees Under the Equal Access to Justice Act In Veterans Benefits Cases.”
  2. “Whether This Court Should Grant Certiorari to Resolve an Important Point of Law and Judicial Conflict Narrowing the Definition of ‘Substantially Justified,’ to Exclude Cases Where the Government Was Clearly Wrong.”

And the petitioner in Cruz v. Wilkie presented the following question:

  • “Over the last decade since Congress passed remedial legislation creating Filipino Veterans Equity Compensation (‘FVEC’), an astronomical fifty-six percent (56%) of all claimants have been denied that one-time benefit by the Department of Veterans Affairs (‘VA’). This notorious failure to effectuate Section 1002, American Recovery and Reinvestment Act of 2009 (‘ARRA’), has been the subject of an inter-agency task force convened by the White House, two hearings before the House of Representatives, and now a Federal Circuit opinion.”
  • “Below, the parties disputed the plain language in Section 1002 establishing ‘eligible persons’ to receive the FVEC benefit. The Federal Circuit held that the VA could by-pass express eligibility criteria in the statute in favor of a ‘service’ determination by the United States Army that would be ‘conclusive and binding on the VA’ irrespective of the benefit’s remedial nature and ‘regardless of whatever other evidence documenting service the claimant provides to the VA.’ According to the court of appeals, the VA need not make any independent assessment of FVEC eligibility.”
  • “The question presented is:”
  • “Whether the Federal Circuit has erred in its narrow construction of ARRA Section 1002—a remedial veteran’s statute providing a benefit for Filipinos who were ‘call[ed] and order[ed] into the service of the armed forces of the United States’ during WWII—by not following the pro-veteran canon requiring that the Act be ‘liberally construed for the benefit of those who left private life to serve their country in its hour of great need.’”

New Responses

Responses to petitions were filed in two cases, both of which address the doctrine of patent eligibility.

In Trading Technologies International, Inc. v. IBG LLC, a case raising questions related to patent eligibility in the context of computer-implemented technology, the Solicitor General (again filing a brief not joined by any attorney from the U.S. Patent and Trademark Office) urged the Court to deny review. The Solicitor General, while recognizing “substantial uncertainty in the lower courts concerning the scope of the exceptions [to patent eligibility] that Bilski articulated and the proper methodology for determining whether a particular patent implicates them,” argued that “[t]his case . . . is not a suitable vehicle to address those broader issues,” and noted that “[t]he fact that this case arises in the context of software systems may make it a particularly unsuitable vehicle to provide broader clarity regarding the scope and nature of the Section 101 inquiry.”

In ChargePoint, Inc. v. SemaConnect, Inc., SemaConnect argued that, “[i]n effect, ChargePoint is asking this Court to overturn more than 150 years of stare decisis by eliminating the judicial exceptions to Section 101.” According to SemaConnect, “[t]here is no reason for this Court to revisit its longstanding statutory interpretation”; “[a]ny such statutory revision, especially one as drastic as ChargePoint seeks, should be left for Congress to decide”; and, “even if this Court might reconsider its relevant precedent in an appropriate case, this is not such a case.”

Waivers to the right to respond to petitions were filed in the following cases:

New Reply Briefs

Reply briefs were filed in three cases.

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.” In its reply brief, the petitioner argued that “[t]he Court should not allow the government’s response to distract from the important legal question in this case” and that “[c]ertiorari is necessary to resolve the two splits identified in the petition . . . and to reinforce fundamental principles of administrative law.”

In Arris International Limited v. ChanBond, LLC, the petitioner’s reply brief argued that the “[p]etition presents an important issue for consideration,” in particular “whether a threshold finding by the Patent Trial and Appeal Board (‘PTAB’) . . . that a petitioner is in privity with ‘[o]ne or more of the defendants’ in a related district court litigation is judicially reviewable even without the PTAB exercising its discretionary authority to institute a challenge to the patentability of claims in an inter partes review.” According to Arris, “[r]eview is warranted given the importance of the issue, the demonstrable confusion engendered by the federal respondent’s position, and the need for clarity regarding the reviewability of the PTAB’s initial findings that are unrelated to patentability.”

In Winston-Salem Industries for the Blind v. PDS Consultants, the petitioner highlights that “the government agrees that the Federal Circuit misinterpreted the Veterans Benefits, Health Care, and Information Technology Act of 2006 . . . as displacing the mandatory-purchasing program created by the Javits-Wagner-O’Day Act” and that “[t]he government further recognizes that the decision below, if left intact, will inflict a severe injury— including lost jobs and lost services—on thousands of blind and severely disabled Americans.” The petitioner goes on to argue that the government’s arguments against review “do not justify leaving a patently incorrect and socially harmful decision in place.”

New Supplemental Briefs and Letters

Supplemental briefs and a letter to the court were filed in five cases, all in response to the government’s recent filing of amicus briefs in Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc. and HP Inc. v. Berkheimer. (We previously summarized those briefs.)

In Hikma Pharmaceuticals USA Inc. v. Vanda Pharmaceuticals Inc., Hikma and Vanda filed supplemental briefs.

  • Hikma argued that its case “is the better vehicle” to review patent eligibility law compared to Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC (the case preferred by the government), and alternatively that “the Court should review both cases, which would enable it to consider both a method-of-treatment case (this one) and a method-of-diagnosis case (Athena) in resolving the alleged tension between Mayo’s holding and dictum.”
  • Vanda argued that “while Federal Circuit judges disagreed in Athena about the patent eligibility of diagnostic-method claims (at issue in both Athena and Mayo), not one of them suggested that method-of-treatment claims such as the ones at issue here were ineligible for patenting.” Thus, according to Vanda, “[t]here is no realistic possibility that holding the petition in this case would lead to a different outcome” and, as a result, “[r]egardless of whether the Court grants the petition in Athena, . . . the petition in this case should be denied.”
  • Hikma’s counsel subsequently filed a letter with the Court to distinguish a case cited in Vanda’s supplemental brief.

In HP Inc. v. Berkheimer, HP filed a supplemental brief arguing that the Court should grant review regardless of whether it grants review in Athena. It contends that “[l]ife-sciences cases like Athena account for only about 10% of [Section 101] litigation, whereas the vast majority involve computer-implemented inventions, as this one does.” Moreover, it argues that “all of them involve the question of whether patent-eligibility is a question of law or fact,” the question presented in this case.

In Reese v. Sprint Nextel Corp., Reese filed a supplemental brief arguing that his petition should be “held pending potential review and decision in Athena Diagnostics” and that, “[s]hould the Court significantly clarify or modify the proper standards and procedures for Section 101 patent-eligibility questions, it should grant this petition, vacate the panel judgment below, and remand for further consideration in light of its decision in Athena Diagnostics.”

In Power Analytics Corp. v. Operation Technology, Inc., Power Analytics requests that, “[c]onsistent with the United States’ suggestion, . . . if the Court grants certiorari in Athena, its petition should similarly be held pending the Court’s decision in Athena and then held or disposed of as appropriate in light of this Court’s eventual action in Berkheimer.”

In Garmin USA, Inc. v. Cellspin Soft, Inc., Garmin argues that “the government’s arguments against certiorari in Berkheimer are unpersuasive” and “whether or not the Court hears Hikma or Athena, it should grant this case.”

New Amicus Briefs

No new amicus briefs were filed.

New Grants and Denials

The Supreme Court did not grant or deny any petitions.