This post summarizes recent activity at the Supreme Court in cases decided by the Federal Circuit.
- One new petition for writ of certiorari was filed with the Supreme Court in Rutila v. Department of Transportation.
- Two reply briefs were filed with the Court, the first by HZNP in HZNP Finance Ltd. v. Actavis Laboratories UT, Inc. and the second by Whitserve in Whitserve LLC v. Donuts Inc.
- One amicus brief was filed with the Court in Cochlear Corp. v. Alfred E. Mann Foundation for Scientific Research by a group of Intellectual Property Professors.
- Finally, one waiver of right to respond was filed with the Court by RPX in IYM Technologies LLC v. RPX Corp.
Here are the details.
There is no new activity to report.
The Supreme Court received one new petition for writ of certiorari in Rutila v. Department of Transportation. In its petition, Rutila asked the Court to review the following question:
Whether the Merit Systems Protection Board violated Petitioner’s due process rights when an administrative judge failed to provide him a hearing, in violation of 5 U.S.C. § 7701(a), having not produced evidence of a hearing right waiver or that the required elements for a waiver, as held by this Court in Johnson v. Zerhst, 304 U.S. 458 (1938), had been met.
Two new reply briefs were submitted to the Supreme Court.
In HZNP Finance Ltd. v. Actavis Laboratories UT, Inc., HZNP filed its reply arguing that
Actavis does not legitimately contest that the issue on appeal is novel or important, or that, if allowed to stand, the Federal Circuit’s decision has the potential to undermine the validity of the many thousands of pending and granted patents employing the ‘consisting essentially of’ phrase. Instead, Actavis attempts to recast the issue on appeal as a ‘fact-bound decision,’ which it is not, and incorrectly asserts that “unchallenged findings” compel a finding of indefiniteness under the current law, despite the fact that there is no prior decision that compels such a conclusion. Actavis also suggest that there is no split of opinions, when clearly there is, as evidenced by the fact that four judges on the Federal Circuit dissented and former Chief Judge Michel of the Federal Circuit has written separately to urge this Court to review the panel majority’s new rule. Clarity in the patent law is critical to protecting current and future innovation in this country. We respectfully urge this Court to restore clarity to the application of Section 112 of the Patent Act to claims containing the transitional phrase ‘consisting essentially of.’
The Petition for a writ of certiorari should be granted. The Court need look no further than Donuts’ opposition to recognize the error below and the necessity of resolving the Petition’s question. A determination of patent ineligibility requires resolution of factual questions including questions that involve the knowledge of a person of ordinary skill in the art (‘POSITA’). However, Donuts admits that courts below, including the courts in this case, weigh and resolve factual questions concerning patent eligibility at the pleading stage based on ‘judicial experience’ and ‘common sense.’ This improper judicial activism is untethered to any factual evidence. Moreover, the lower courts’ decisions are made in relation to an infringer’s defense, to which a plaintiff has no obligation to factually overcome at the pleading stage, especially in view of a patent’s presumptive validity. If the Federal Rules and Congresses’ presumption of validity are to have any effect, this Court must address the error below to prevent further derogation of the patent right and retain any prospect of continued and robust technological innovation in America. Donuts’ and the lower courts’ faulty reasoning cannot warrant the vitiation of inventors’ property rights at the pleading stage.
One new amicus brief was filed in Cochlear Corp. v. Alfred E. Mann Foundation for Scientific Research by a group of Intellectual Property Professors. In their amicus brief in support of Cochlear, the IP Professors urge the Court to grant certiorari on the second question presented “to resolve the circuit split on how to treat general jury damages verdicts when the underlying verdict is overturned in part.” The IP Professors argue that
the Federal Circuit has issued contradictory opinions on the question of whether a damages award can be sustained when some but not all the findings of patent infringement are reversed on appeal. . . . In resolving that conflict, this Court should reaffirm its traditional approach to general jury verdicts, which requires a retrial when an essential part of the underlying verdict is reversed and the court cannot know how much of the verdict is attributable to that error. . . . The lower courts have understandably striven to avoid retrials when possible. The best practice to reduce the inefficiency of having to hold a new trial is for courts to require or encourage special verdict forms breaking down damage awards in cases that include multiple claims. . . . But it does not follow, as the Federal Circuit held here, that a party who does not insist on a special verdict form has somehow waived its rights to the proper application of the law of general verdicts. To the contrary, any party that accepts a general verdict also accepts the risk of a new trial on damages if the verdict is reversed in part. It is Mann, not Cochlear, that must bear that burden here. This Court should accordingly resolve a second split in the circuits by holding that a party does not waive its rights to correct an erroneous jury verdict merely because it accepted a general verdict form. Accepting a general verdict form means accepting the consequences of declining to ask the jury for detailed findings. One of those consequences is that if the underlying verdict is reversed in part, a retrial on damages is required.
Waivers of Right to Respond
In IYM Technologies LLC v. RPX Corp., RPX filed a waiver of its right to respond to the petition, which raised the question, “[w]hether a court of appeals can invoke forfeiture to refuse to address a constitutional claim in a pending appeal despite an intervening change in law.”