Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit.
- Two response and reply briefs were filed with the Court by the United States and by Smith & Nephew in a case that has been granted certiorari, United States v. Arthrex, Inc.
- Two amicus briefs were filed with the Court: the first by the New York Intellectual Property Law Association (NYIPLA) in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, and the second by a non-profit advocacy organization, US Inventor, Inc., in Akeva L.L.C. v. Nike, Inc.
- One new waiver of right to respond was filed by Iancu in Samaranayake v. Iancu.
- The Supreme Court denied the petition for writ of certiorari in the case of InfoBionic, Inc. v. Cardionet, LLC.
Here are the details.
Response and Reply Briefs
The United States and Smith & Nephew each submitted a response and reply brief, as ordered by the Court, in the case United States v. Arthrex, Inc.
The United States argues in its brief that
Administrative patent judges [APJs] on the United States Patent and Trademark Office’s (USPTO’s) Patent Trial and Appeal Board (Board) are inferior officers, because from start to finish their work is ‘directed and supervised at some level’ by the Secretary of Commerce and the USPTO Director, both of whom are presidentially appointed, Senate-confirmed Executive Branch officials. . . . Arthrex proposes a new categorical rule, under which an administrative judge cannot be an inferior officer unless a Senate confirmed officer can exercise plenary review over her decisions. Under this Court’s precedents, however, there is no exclusive criterion for inferior-officer status, including for administrative judges. Although review authority can provide one significant means for control, it is not the only way—and not always the best way—to ensure effective supervision. . . . If the Court concludes that administrative patent judges are principal officers under the current statutory scheme, the Court should affirm the court of appeals’ remedial holding, severing the judges’ modest tenure protections to render them inferior officers.
Smith & Nephew likewise takes the position that APJs are inferior officers and further contends in its brief that
No one—not the three parties, nor any of the 31 amici curiae—defends the Appointments Clause analysis applied by the Federal Circuit. Instead, Arthrex now insists that there is a single ‘exclusive criterion’ for determining whether administrative adjudicators are principal or inferior Officers. This Court, however, has squarely held to the contrary. Edmond v. United States, 520 U.S. 651, 661 (1997). APJs are inferior Officers under Edmond. . . . Under the Court’s established Appointments Clause framework, Congress permissibly made APJs inferior Officers appointed by the Secretary of Commerce. Throughout the federal government, administrative adjudicators have always been deemed inferior Officers, and APJs are no different: They do not make policy (the Director does). Their actions are not final (unless permitted by the Director). And their work is ‘directed and supervised’ by the Director and other Officers before, during, and after they make patentability decisions. . . . Because APJs are inferior Officers, there is nothing for this Court to remedy or fix. If the Court were to deem APJs principal Officers, however, it should deny the case specific and systemic relief that Arthrex requests.
Two new amicus briefs were filed with the Court.
First, in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, the New York Intellectual Property Law Association (NYIPLA) filed an amicus brief in support of granting the petition, contending that “this Court’s intervention and supervision is necessary to clarify the law of patent eligibility.” The NYIPLA further explains that the “current state of patent-eligible subject matter under 35 U.S.C. § 101 is unclear” and that “[c]larification of patent eligible subject matter is crucial” because “[c]ourts need consistency in precedent to provide reliable judgments, as unpredictability in the patent system is harmful to the economy, the patent system as a whole, and to inventors, business entities, investors, innovators attempting design around solutions, and other interested parties who need to understand what is, and is not, patentable.”
Second, in Akeva L.L.C. v. Nike, Inc., a non-profit advocacy organization, US Inventor, Inc., filed an amicus brief arguing that, “[j]ust as textualism is now accepted as the way to interpret statutes, this Court should grant certiorari to resolve a split within the Federal Circuit whether textualism should also guide how courts interpret the claims in an issued patent.”
Waivers of Right to Respond
One new waiver of right to respond was filed by Iancu in Samaranayake v. Iancu, which raised two questions relating to procedure at the Federal Circuit.
The Supreme Court denied the petition for writ of certiorari in the case of InfoBionic, Inc. v. Cardionet, LLC, which raised the question: “Whether the Federal Circuit has properly narrowed the scope of the abstract idea exception under 35 U.S.C. § 101.”