Petitions / Supreme Court Activity

Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to granted cases, there is no new activity to report. With respect to petition cases, three new petitions were filed raising issues related to patent and trade law; four patent cases saw amicus briefs filed; and the Court denied a petition in a patent case. Read on for the details.

Granted Cases

There is no new activity to report in granted cases.

Petition Cases

New Petitions

Three new petitions were filed.

In Motupalli v. Iancu, Motupalli, a pro se petitioner, asked the court to review three questions:

  1. “Does the Leahy-Smith America Invents Act (‘AIA’) permit the United States to retroactively apply a scintilla of inadequacy in Pre-AIA to overturn precedent by insisting that it be a single person working alone having a single skill who must be enabled to make and use the full scope of the specification?”
  2. “Whether 35 U.S.C. §112 Statute is satisfied when the specification of a patent application is enabling to an interdisciplinary team of two or three persons, working in cooperation?”
  3. “Whether pro se filings can be rejected merely based on an alleged ‘waiver’ by Petitioner in addressing Examiner’s Rejections.”

In Comcast Corp. v. International Trade Commission, Comcast presented the following questions:

  1. “Whether the Federal Circuit’s judgment should be vacated as moot and remanded with instructions to vacate the Commission’s orders, pursuant to United States v. Munsingwear, Inc., 340 U.S. 36 (1950).”
  2. “If the case is not moot, whether the Commission exceeded its authority under 19 U.S.C. 1337(a)(1)(B), by holding that the set-top boxes are “articles that * * * infringe.”
  3. “If the case is not moot, whether the Commission exceeded its authority under 19 U.S.C. 1337(a)(1)(B) by finding that Comcast engaged in ‘importation’ of the allegedly infringing articles.”

Finally, in American Institute for International Steel, Inc. v. United States, the Institute asked:

  • “Is Section 232 [of the Trade Expansion Act of 1962, as amended, 19 U.S.C. § 1862,] facially unconstitutional on the ground that it lacks any boundaries that confine the President’s discretion to impose tariffs on imported goods and, therefore, constitutes an improper delegation of legislative authority and a violation of the principle of separation of powers established by the Constitution?”

Wavier of Right to Respond

In Board of Regents of the University of Texas System v. Boston Scientific Corporation, Boston Scientific Corporation waived its right to respond to the petition, which presented a question related to the intersection of patent venue and sovereign immunity.

Amicus Briefs

In Celgene Corp. v. Peter, Gregory Dolin, Kristen Osenga and Irina D. Manata submitted a brief in support of granting a writ of certiorari because “this case deals with a key issue that was left unresolved by this Court in Oil States Energy Services, LLC v. Greene’s Energy Group, LLC” and “[t]he Federal Circuit below incorrectly held that such retrospective application of IPR is not an unconstitutional taking.” The brief further argues that certiorari should be granted “[b]ecause this question affects thousands of patents and its resolution calls into question the constitutionality of a federal statute.”

In CJ ChellJedang Corp. v. International Trade Commission, R. Street Institute filed an amicus brief in support of granting the petition, which raised a question related to patent law’s doctrine of prosecution history estoppel. According to the Institute, “[t]he question presented, relating to whether the Court of Appeals . . . erred in inferring a rebuttal of a presumption of prosecution history estoppel despite the written record of a patent’s prosecution history lacking any explicit statement supporting the rebuttal, is of broad importance to the overall patent system and the entire public.” The brief goes on to state that “[t]he Federal Circuit’s prevailing erroneous answer to [the question] continues to cause significant injury to the public interest.”

In Dr. Reddy’s Laboratories, Ltd. v. Eli Lilly and Company, another case addressing the doctrine of prosecution history estoppel, three amicus briefs in favor of review were filed by:

In Hospira, Inc. v. Eli Lilly and Company, a third case addressing prosecution history estoppel, two new amicus briefs were filed by:


The Court denied the petition in Enzo Life Sciences Inc. v. Roche Molecular Systems Inc., which raised questions related to patent law’s enablement requirement.