This post summarizes recent activity at the Supreme Court in cases decided by the Federal Circuit.
- The Supreme Court granted certiorari in three related Arthrex cases.
- The following two new petitions for writ of certiorari were submitted to the Supreme Court: (1) Consumer 2.0, Inc. v. Tenant Turner, Inc. and (2) Minerva Surgical, Inc. v. Hologic, Inc.
- Donuts, Inc. filed its brief in opposition with the Court in Whitserve LLC v. Donuts Inc.
- One waiver of right to respond to the petition in Idenix Pharmaceuticals LLC v. Gilead Sciences, Inc. was filed with the Court by Gilead Sciences.
- Lastly, the Supreme Court denied a total of 18 different petitions this week.
Here are the details.
There is no new activity to report.
As we previously reported, the Supreme Court granted the petitions for certiorari in three related Arthrex cases: (1) United States v. Arthrex, Inc. (19-1434), (2) Smith & Nephew, Inc. v. Arthrex, Inc. (19-1452), and (3) Arthrex, Inc. v. Smith & Nephew, Inc. (19-1458). The Court decided to consolidate the cases for briefing and oral argument and announced that all future filings and activity will be reflected on docket of No. 19-1434.
The Court has limited its review to the first two questions presented by the United States in its Memorandum:
- “Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges of the U.S. Patent and Trademark Office are principal officers who must be appointed by the President with the Senate’s advice and consent, or ‘inferior Officers’ whose appointment Congress has permissibly vested in a department head.”
- “Whether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. 7513(a) to those judges.”
The Supreme Court received two new petitions for writ of certiorari.
In Consumer 2.0, Inc. v. Tenant Turner, Inc., Consumer 2.0 asked the Court to review the following two questions:
- “Whether preemption is a threshold and defining consideration that the lower courts must consider in determining whether a claimed invention is directed to patent eligible subject matter under Section 101.”
- “Whether the courts below have erred in conflating the Step Two conventionality analysis of Alice with the factual prior art patentability analysis of Section 103, without the evidentiary opportunities and protections against hindsight bias afforded by Section 103 and in conflict with this Court’s precedent in Graham v. John Deere Co. of Kansas City, 383 U.S. 1 (1966).”
In Minerva Surgical, Inc. v. Hologic, Inc., Minerva asked the court to review the following question:
[W]hether a defendant in a patent infringement action who assigned the patent, or is in privity with an assignor of the patent, may have a defense of invalidity heard on the merits.
One brief in opposition to the petition in Whitserve LLC v. Donuts Inc. was filed with the Court. In its brief, Donuts argues that
[t]he Petition fails to identify any internal conflict within the Federal Circuit that would warrant a grant of certiorari. The Federal Circuit’s standard for deciding patent-eligibility issues on motions to dismiss is clear. Nor does Petitioner identify any conflict between that standard and this Court’s precedents. . . . This case would be a poor candidate for review of the Federal Circuit’s application of Section 101 at the motion to dismiss stage. . . . Even if the Federal Circuit’s determinations on the application of the Alice test here were incorrect (which they were not), Petitioner has not shown how this case has a broader impact sufficient to warrant certiorari.
Waivers of Right to Respond
In Idenix Pharmaceuticals LLC v. Gilead Sciences, Inc., Gilead filed a waiver of its right to respond to the petition, which raised questions relating to enablement.
The Supreme Court denied the following 18 petitions this week:
- United States v. Image Processing Technologies LLC
- Drevaleva v. United States
- Acer America Corp. v. Intellisoft, Ltd.
- Michelson v. Department of the Army
- ESIP Series 2, LLC v. Puzhen Life USA, LLC
- Halim v. United States
- Customedia Technologies, LLC v. Dish Network Corp.
- Essity Hygiene and Health AB v. Cascades Canada ULC
- Phazzer Electronics, Inc. v. Taser International, Inc.
- Jernigan v. Wilkie
- Ameranth, Inc. v. Domino’s Pizza, LLC
- Knowles v. Department of Veterans Affairs
- The Chamberlain Group, Inc. Techtronic Industries Co.
- Lea v. United States
- LaTurner v. United States
- TCL Communication Technology Holdings Limited v. Ericsson, Inc.
- Campbell v. United States
- Arthrex, Inc. v. Smith & Nephew, Inc.