Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit.
- The Court received one new petition for writ of certiorari in Oracle America, Inc. v. United States.
- Two new amicus briefs were filed with the Court in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, the first by a group of patent practitioners in Chicago and the second by the New York Bar Association.
- One new waiver of right to respond was filed by Illumina in Ariosa Diagnostics, Inc. v. Illumina, Inc.
Here are the details.
There is no new activity to report.
The Supreme Court received one new petition for writ of certiorari in Oracle America, Inc. v. United States. In its petition, Oracle asked the Court to review the following two questions relating to government contracts:
- “Whether a bid protest that establishes a violation of federal law may be denied for ‘harmless error’ based on a rationale not present in the administrative record.”
- “Whether, in resolving a bid protest that establishes a violation of the criminal conflict-of-interest statute, 18 U.S.C. § 208, the Federal Circuit can enforce the contract based on deference to an agency’s assessment that the criminal violation did not taint the procurement.”
Two new amicus briefs were filed with the Court in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC.
The first amicus brief was filed with the Court by a group of patent practitioners under the name The Chicago Patent Attorneys. In support of granting the petition, the group argued that
This Court has recognized that ‘all inventions … embody, use, reflect, rest upon, or apply laws of nature,’ and that inventions are not rendered ineligible for that reason alone. Alice, 573 U.S. at 217. But here the Federal Circuit has improperly asserted its own flawed reasoning that effectively reverses the letter and spirit of the law set forth in Alice and its predecessors. And half of the judges on that court disagree with this reasoning though they are now bound to follow it. The pending petition for writ of certiorari identifies these and other issues that fundamentally affect the eligibility of patents under § 101 and impact the proper application of this Court’s jurisprudence. . . . These issues are not limited to the American Axle decision; the Federal Circuit has repeatedly failed to apply this Court’s patent eligibility test in a logical, reasonable, or consistent fashion. Such chaotic jurisprudence threatens to fundamentally damage U.S. patent law.
The second amicus brief was filed with the Court by the New York Bar Association. The association urged the Court to grant certiorari, contending that
The Federal Circuit’s ruling in this case improperly expands the umbrella of patent ineligible subject matter under Section 101 of the Patent Act of 1952 well beyond this Court’s precedents, in several ways. . . . Were it allowed to stand, the ruling would diminish the value of patents by interjecting more uncertainty into the reach of ineligible subject matter, risking throwing off balance the incentives to innovation that the patent system is designed to promote. The Association urges that the Court grant certiorari in order to clarify the scope of patent eligibility under Section 101, and correct the Federal Circuit’s improper expansion of ineligible subject matter, in an area of patent law that desperately needs this Court’s attention and clarification.
Waivers of Right to Respond
One new waiver of right to respond was filed by Illumina in Ariosa Diagnostics, Inc. v. Illumina, Inc., which raised 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.”