Petitions / Supreme Court Activity

Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit.

Here are the details.

Granted Cases

Amicus Briefs

One new amicus brief was filed by the New Civil Liberties Alliance (NCLA) in United States v. Arthrex, Inc. The NCLA agrees with the Federal Circuit that APJs are “principal officers” and thus, must be appointed by the President with the Senate’s advice and consent. However, the NCLA takes the position that the Federal Circuit “exceeded its proper role when it sought to craft a new legislative scheme that it thought would comply with Appointments Clause requirements. The Constitution reserves such legislating to Congress alone.”

Petition Cases

Petitions Granted

As we previously reported, the Supreme Court granted the petition for certiorari in Minerva Surgical, Inc. v. Hologic, Inc. and will review the following question presented:

[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.

New Petitions

The Supreme Court received eight new petitions for writ of certiorari.

In Iancu v. Fall Line Patents, LLC, the government asked the Court to review the following question:

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.

In Samaranayake v. Iancu, Samaranayake asked the Court to review the following two questions:

  1. “Whether, in creating the required evidentiary record de novo rather than merely reviewing the agency Record below, the Court of Appeals for the Federal Circuit exceeded its statutory jurisdiction under 35 U.S.C. § 144.”
  2. “Whether 5th Amendment due process requires a litigant be afforded the opportunity to proffer rebuttal evidence in response to evidence newly-entered by a Federal Court.”

In Swartzlander v. United States, Swartzlander asked the Court to review the following question:

When does a taking claim accrue against the government based on erosion caused by government action, where the erosion for many years was present only on a small fraction of the land, and then expands exponentially after a major flooding event?

In Langan v. United States, Langan asked the Court to review the following question:

Does the State of Arizona possess the transcendental sovereignty to take away petitioner’s vested rights in private property by a mere legislative act that usurps the power of the judicial branch and alters the nature of our republican and free government as guaranteed under Article IV § 4 of the Constitution for the United States of America?

In American Axle & Manufacturing, Inc. v. Neapco Holdings, LLC, American Axle asked the Court to review the following two questions:

  1. “What is the appropriate standard for determining whether a patent claim is ‘directed to’ a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?”
  2. “Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?”

In Ariosa Diagnostics, Inc. v. Illumina, Inc., Ariosa asked the Court to review the following question:

Whether a patent that claims nothing more than a method for separating smaller DNA fragments from larger ones, and analyzing the separated DNA for diagnostic purposes, using well-known laboratory techniques is unpatentable under Section 101 and Myriad.

In GS Cleantech Corp. v. Adkins Energy LLC, GS Cleantech asked the Court to review the following question:

Whether the Federal Circuit, in cases arising under the Patent Act, may depart from the uniform rule of the other Circuit Courts that an issue resolved on partial summary judgment, and not reopened at trial, must be reviewed de novo on appeal.

In Akeva L.L.C. v. Nike, Inc., Akeva asked the Court to review the following question:

Whether the Federal Circuit’s ‘heavy presumption’ line of cases or its ‘holistic’ line should govern claim construction.

New Replies

Three new reply briefs were filed with the Court.

In adidas AG v. Nike, Inc., adidas filed its reply brief arguing against the application of forfeiture by stating that

Respondent urges this Court to reject the petition on grounds of forfeiture. But, neither this Court’s precedent nor the actual record below support such an outcome. . . . [T]his Court has long had a practice of excusing forfeiture for these sorts of core constitutional challenges, and the relevant factors suggest the same outcome should apply here. [Additionally,] clairvoyance is no prerequisite for invoking a constitutional protection, and the Federal Circuit rejected the same Appointments Clause challenge at least twice before deciding Arthrex. The fact that the law changed while adidas’s appeal remained pending demonstrates forfeiture should not apply.

In Micron Technology, Inc. v. North Star Innovations, Inc., Micron filed its reply brief contending that

Despite asking for the petition to be denied, Respondent North Star acknowledges that these cases will be governed by Arthrex and provides no basis for the Federal Circuit’s underlying holdings to stand if the constitutional ruling is reversed. For that reason alone, the Court should hold the petition. Furthermore, this petition presents an important forfeiture question that the Court should address even if it upholds the constitutional ruling in Arthrex, and North Star fails to justify its forfeiture.

Lastly, in InfoBionic, Inc. v. Cardionet, LLC, InfoBionic filed its reply brief arguing that

CardioNet’s lead argument is . . . that the Federal Circuit’s decision does not turn on the lack of a longstanding practice. It plainly does—expressly and repeatedly—and thereby artificially restricts the abstract idea exception to § 101. . . . CardioNet also does not, and cannot, deny that the Federal Circuit’s § 101 doctrine is in shambles. . . . It is true that granting review in this case may not solve every wrong turn in the Federal Circuit’s convoluted § 101 jurisprudence. But this Court needs to start somewhere. And reminding the Federal Circuit that the Court meant what it said in prior cases like Benson, Flook, and Mayo is an excellent way to start. This Court’s review is needed.

Amicus Briefs

One new amicus brief was filed in Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corporation by the Chief Intellectual Property Counsel of Unified Patents, LLC, Jonathan Stroud. In his brief, Stroud contends that

The Federal Circuit’s current appellate standing standard is unduly narrow, is of recent vintage, and continues to be inconsistently applied. This conflicts with other circuits and this Court’s precedent. It has provoked fractured and inconsistent opinions. It has been the subject of previous petitions for certiorari. And it has recently produced irreconcilable results for disputes between those same competitors on appeal from the same general dispute. This Court’s intervention is needed.

Waivers of Right to Respond

Three new waivers of right to respond were filed with the Court in the following cases:

Denied Petitions

The Supreme Court denied ten petitions for writ of certiorari in the following cases: