Petitions / Supreme Court Activity

Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. Highlights include one new petition regarding Covered Business Method review of patents, a reply brief and two amicus briefs in support of a petition related to patent damages and the impact of USPTO invalidations of patents on pending infringement litigation, and another reply brief in favor of a petition related to patent eligibility. Here are the details.

Activity in Granted Cases

No new activity.

Activity in Petition Cases

New Petitions

In Emerson Electric Co. v. SIPCO, LLC, the petitioner asked the court to review “[w]hether 35 U.S.C. 324(e) permits review on appeal of the Director’s threshold determination, as part of the decision to institute [Covered Business Method] review, that the challenged patent qualifies as a CBM patent.”

New Responses

No new responses were filed.

New Reply Briefs

In Apple Inc v. VirnetX Inc., Apple’s reply brief argues that “[n]ow is the time for the Court to put a halt to the Federal Circuit’s blatant disregard for this Court’s patent damages precedent.” Apple also contends that certiorari should be granted to address the “impact of intervening PTO invalidations on pending infringement actions,” maintaining that “VirnetX makes arguments that turn on irrelevant minutia.”

In Cisco Systems, Inc. v. SRI International, Inc., Cisco argued in its reply brief that the Federal Circuit incorrectly held that “patent claims describing nothing more than the abstract idea of collecting and analyzing information in the context of a computer network can survive a §101 review,” and thus “[t]his Court’s review is . . . necessary to ensure uniformity within the Federal Circuit and conformity with this Court’s own precedent.” Cisco goes on to say that, “[a]t bottom, this case is about a divided panel’s attempt to push the bounds of patentable subject matter beyond the limits already set by both this Court and the Federal Circuit.”

New Amicus Briefs

Two new amicus briefs were filed in favor of granting certiorari in Apple Inc. v. VirnetX Inc., a case which, as highlighted above, relates to patent damages and the impact of USPTO invalidation of patents on pending patent litigation.

An amicus brief  submitted by R Street Institute, the Electronic Frontier Foundation, and Engine Advocacy argues that the Supreme Court should hear the case to address both of the questions presented. On the first question, they argue “[c]ertiorari should be granted to settle the Federal Circuit’s decades-long failure to articulate how to apportion damages when the patent owner seeks to prove a reasonable royalty based on prior license.” They go on to explain that the Federal Circuit “has never given guidance to enforce that principle, leaving it to juries to fashion legal rules for apportionment.” They also argue that “[c]ertiorari should be granted on the second question of whether an intervening unpatentability determination requires reconsideration of a copending infringement determination, among other reasons because the question is likely to recur in view of an alternate pathway for patent adjudication.” 

Similarly, an amicus brief submit by The App Association “agrees with Petitioner that certiorari should be granted so that this Court can address the Federal Circuit’s approach to patent damage apportionment in light of statute and this Court’s precedent.” The App Association goes on to say that, “[o]therwise, the Federal Circuit’s departure will enjoy the endorsement of this Court, putting the small business community that relies on a consistent and fair patent system in jeopardy.” It further argues that, “the invalidation of the patents at issue through the United States Patent and Trademark Office’s (USPTO’s) inter partes review (IPR) process, and the Federal Circuit’s decision to subsequently uphold a judgement on which those same patents are the subject, offers a unique scenario requiring this Court’s attention.”

New Grants and Denials

The Supreme Court did not grant or deny any petitions.