Petitions / Supreme Court Activity

This post summarizes recent activity at the Supreme Court in cases decided by the Federal Circuit.

Here are the details.

Granted Cases

There is no new activity to report.

Petition Cases

New Petitions

The Supreme Court received two new petitions for writs of certiorari.

In Fredman Bros. Furniture Co. v. Bedgear, LLC, Fredman asked the Court to review the following question:

Whether administrative patent judges are ‘principal’ or ‘inferior’ Officers of the United States within the meaning of the Appointments Clause.

In Idenix Pharmaceuticals LLC v. Gilead Sciences, Inc., Idenix asked the Court to review the following two questions:

  • “Whether, as the Federal Circuit has held, a genus claim is not enabled ‘as a matter of law’ if it encompasses a large number of compounds—or whether, as this Court has recognized, enablement is a context-specific jury question.”
  • “Whether, as the Federal Circuit has held, § 112(a) contains a separate ‘possession’ requirement—or whether, as the statute provides, § 112(a) sets forth a single substantive requirement of ‘a written description of the invention’ sufficient ‘to enable any person skilled in the art … to make and use the same.'”

New Replies

One new reply brief was submitted to the Supreme Court in B.E. Technology, L.L.C. v. Facebook, Inc. In its reply brief, B.E. Technology contends

Respondent Facebook, Inc.’s (‘Facebook’) Brief in Opposition makes clear that the Federal Circuit did exactly what B.E. Technology, L.L.C. (‘B.E.’) asserted in its petition: The Federal Circuit adopted a new ‘rebuffing’ test inconsistent with this Court’s longstanding precedent and based on a surprising misreading of CRST. Certiorari should be granted to prevent the Federal Circuit’s new ‘prevailing party’ standard from disrupting the assessment of ‘prevailing party’ status in a wide array of cases.

Amicus Briefs

One new amicus brief was filed in Arctic Cat Inc. v. Bombardier Recreational Products Inc. by Lambeth Magnetic Structures, LLC. In its amicus brief in support of Arctic Cat, LMS urges the Court to grant certiorari to review notice of infringement under 35 U.S.C. § 287(a). LMS argues that:

The Federal Circuit has adopted an extremely rigid and narrow view of the ‘actual notice’ provision of Section 287(a). As noted by the petitioner [], the statutory language ‘was notified of the infringement’ is written in the passive voice, indicating that notice of infringement by any means is sufficient to satisfy the statutory language. . . . The Federal Circuit’s restrictive interpretation of the broad language ‘was notified of the infringement’ undermines the public policy of deterring patent infringement. Section 287(a) limits damages for infringement to those cases where constructive notice to the public has been provided by marking the patent number on a patentee’s products (in cases where that is feasible). Where such constructive notice has not been given, damages are limited according to the date an infringer has been ‘notified of the infringement.’ The Federal Circuit’s pronouncements undermine the statutory policy by allowing infringers who have been notified of their infringement by someone other than the patent owner, such as when a manufacturer has been notified of the infringement indirectly through its customer, to continue infringing with impunity.

Waivers of Right to Respond

Finally, waivers of right to respond were submitted to the Supreme Court in three cases: