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 three new petitions for writ of certiorari.

In Mantissa Corp. v. Ondot Systems, Inc., Mantissa asked the Court to review the following three questions:

  • “Has this Court’s Alice exception to patent-eligibility under 35 U.S.C. § 101 been improperly expanded to cover computer-implemented inventions that, while not necessarily improving the functioning of a computer, do ‘effect an improvement in [another] technology or technical field’?”
  • “Should courts acts [sic] as fact finders in determining material factual issues underlying patent-eligibility under § 101?”
  • “Should the abstract-idea exception to § 101 require considering pre-emption?”

In Rovi Guides, Inc. v. Comcast Cable Communications, LLC, Rovi asked the Court to review the following two questions:

  • “Whether the severance and invalidation of administrative patent judges’ tenure protections is consistent with congressional intent.”
  • “Whether invalidation of administrative patent judges’ tenure protections is sufficient to render them inferior officers.”

In IYM Technologies LLC v. RPX Corp., IYM asked the Court to review the following question:

Whether a court of appeals can invoke forfeiture to refuse to address a constitutional claim in a pending appeal despite an intervening change in law.

New Responses

Three new briefs in response to petitions were filed with the Supreme Court.

In HZNP Finance Ltd. v. Actavis Laboratories UT, Inc., Actavis filed its brief in opposition to the petition, arguing that

The court of appeals correctly held Petitioner Horizon’s patent claims indefinite by applying well established legal principles to a particular—and particularly idiosyncratic—set of facts. Horizon offers no reason why that fact-bound decision warrants this Court’s review. On the contrary, the court of appeals’ decision followed directly from the language of the Patent Act and this Court’s precedent. There is no split of authority. And, despite Horizon’s contention [], the decision below creates no ‘confusion’ regarding the validity of patents employing the phrase ‘consisting essentially of.’ Instead, it is Horizon’s approach that, if accepted, would ‘overturn[] decades of jurisprudence’ and introduce conflict and confusion into the law. . . . In essence, Horizon asks whether the definiteness requirement of § 112 applies to patent claims that use the transitional phrase ‘consisting essentially of’—just as it applies to every other kind of claim—or whether such claims need not comply with the statute. This Court does not need to answer that question; it answers itself. The petition for certiorari should be denied.

In Personal Audio, LLC v. CBS Corp., CBS filed its brief in opposition to the petition, contending that Personal Audio did not argue in its petition that there is any conflict between the decision below and this Court’s precedents or the Federal Circuit’s precedents. CBS further argues that Personal Audio “waived the arguments made in the Petition in two ways” and that “[t]his case would be a particularly inappropriate vehicle to address the issues of the interrelationship of PTAB decisions and co-pending infringement litigations.” Lastly, according to CBS, “[t]he decision below rests on a straightforward application of collateral estoppel and waiver law to the facts of this case” and “[Personal Audio] fails to explain precisely what fundamental error it contends was made below.”

In Duke University v. Biomarin Pharmaceutical Inc., Biomarin filed its brief in opposition to the petition, arguing that “[a]ccording to precedent, Duke forfeited or waived its right to raise an Appointments Clause challenge” and “Duke incorrectly argues that application of this forfeiture ruling would prevent parties from benefitting from ‘intervening change[s] of law’ [] an exception carved out to the rule of waiver by this Court . . . and that this Court has held that failure to bring a constitutional defense before a decision is issued that might support the defense ‘cannot prevent a litigant from later invoking such a ground.'” Biomarin continues on to contend that “[t]he Board correctly analyzed all evidence when making the obviousness determination and this Court does not need to reestablish the role of objective evidence of non-obviousness.” Lastly, according to Biomarin, “maintaining this patent would give Duke an undeserved extension of its monopoly on important drugs.”

Denied Petitions

The Supreme Court denied the following 19 petitions this week: