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 granted application to stay the Federal Circuit’s mandate to allow the prospective petitioner to challenge the Federal Circuit’s conclusion that it had waived the argument that succeeded in Arthrex, two new petitions including one related to the exhaustion doctrine and design patents, and several responses to petitions. Here are the details.

Activity in Granted Cases

No new activity.

Activity in Petition Cases

New (Granted) Application to Stay Mandate

In a new case, Sanofi-Aventis Deutschland GmbH v. Mylan Pharmaceuticals Inc., Sanofi-Aventis filed a motion to stay the Federal Circuit’s mandate pending the filing and disposition of a writ of certiorari. Sanofi-Aventis argued in its motion that it intends to challenge the Federal Circuit’s conclusion that its “failure to raise the Arthrex Appointments Clause issue [with respect to the Administrative Patent Judges of the Patent Trial and Appeal Board] in [its] opening brief forfeits the challenge.” Sanofi-Aventis added that it also plans to challenge “the Federal Circuit’s affirmance of the PTAB’s obviousness determination.”

The Supreme Court granted Sanofi-Aventis a short reprieve. In a docket entry, the Court “ORDERED that the mandate of the United States Court of Appeals for the Federal Circuit . . . is hereby stayed pending receipt of a response, due on or before Thursday, February 13, 2020, by 4:30 p.m. ET, and further order of the undersigned or of the Court.” We will keep track of this case and provide updates on its status on its case page and through blog posts as appropriate.

New Petitions

Two new petitions were filed.

In Automotive Body Parts Ass’n v. Ford Global Technologies, Inc., the petitioner asks the Court to review the following question: “How should the article of manufacture be determined when applying the patent exhaustion and repair doctrines in design patent cases?”

In addition, a pro se petitioner asked the Court to review the Federal Circuit’s decision in Bible v. United States.

New Responses

In Maxell, Ltd. v. Fandango Media, LLC, respondent Fandango Media filed a response in opposition to the petition. It pointed out that “Petitioner had requested that if this Court granted certiorari in one or more of three pending [patent eligibility] cases identified in the Petition, then this Court should also grant this Petition to vacate the Federal Circuit’s decision and remand this case to the Federal Circuit for further proceedings consistent with whatever new ruling(s) this Court issues in one or more of those three cases.” Fandango Media explained, however, that the Supreme “Court has now denied review as to each of the cases identified in the Petition.” Moreover, it argued, “nothing in the Petition casts doubt on the District Court’s straightforward application of this Court’s [patent eligibility] framework, or the Federal Circuit’s affirmance thereof.”

In Francway v. Wilkie, the government filed a response in opposition to the petition, which raised questions related to the legal standard governing challenges to the competency of medical examiners in veterans-benefits cases. The government contended that Francway’s “argument is inconsistent with the statutory and regulatory provisions that govern the [Veterans Affair]’s administrative adjudication of . . . claims, and with well-established legal principles governing agency adjudicative procedures.” Moreover, it argued, “[m]any of petitioner’s current attacks on the decision below are premised on a broad understanding of the ‘presumption of competence’ that the en banc Federal Circuit has now rejected.”

In Collabo Innovations, Inc. v. Sony Corp., Sony and the government filed separate responses in opposition to the petition, which presented takings and due process challenges to retroactive application of inter partes review to patents issued prior to the America Invents Act.

Sony’s brief stated that the petition should be denied because it “presents numerous waived arguments and vehicle flaws that make it particularly unsuitable for this Court’s review.” Sony went on to explain that “there is no division of authority that warrants this Court’s intervention—much less a reason to upset the settled expectations arising from the lower courts’ consistent approach to the law.” Further, it argued that Callabo’s “argument is false as to Collabo in this case because Collabo knowingly purchased the ‘714 patent two years after Congress created the inter partes review procedure in [America Invents Act].” And even if the review were retroactive, said Sony, “Collabo has not established a Fifth Amendment violation under either the Takings or Due Process Clause.”

The government’s brief argued that “the court of appeals correctly held that application of inter partes review to patents issued before the AIA was enacted does not violate the Due Process Clause.” Furthermore, it maintained that the Federal Circuit was “correct that the use of inter partes review to determine the validity of pre-AIA patents does not violate the Just Compensation Clause.”

In Reese v. Sprint Nextel Corp., AT&T Mobility II filed a brief in opposition to the petition, which raised questions related to patent eligibility. AT&T argued that “[t]he Federal Circuit correctly applied this Court’s two-step framework on eligibility,” that “Reese mischaracterizes the panel’s decision,” and that “[t]here is no need to visit Reese’s newly-proposed obviousness analysis [for determining conventionality] and doing so would only confuse the two-step analysis used for” determining patent eligibility.

In Harris v. United States, the United States submitted a waiver of its right to respond to the pro se petition.

New Replies

No new replies in support of petitions were filed.

New Grants and Denials

The Court did not grant or deny any petitions.