Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit.
- The Court received new reply briefs in two cases that have been granted certiorari: (1) Minerva Surgical, Inc. v. Hologic, Inc. and (2) United States v. Arthrex, Inc.
- The Court received five new petitions for writ of certiorari.
- One new response brief was filed with the Court in Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corporation.
- One new amicus brief was filed by a non-profit advocacy organization, US Inventor, Inc., in the new case Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc.
- Hikma filed a waiver of its right to respond to the petition in Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc.
- Lastly, the Court denied the petitions for writ of certiorari in six cases.
Here are the details.
The Court received new reply briefs in two cases that have been granted certiorari.
There is no textual support in the Patent Act for assignor estoppel. To the contrary, the Patent Act uses broad language commanding that invalidity is available to every accused infringer. The doctrine was created by lower courts, not this Court, and this Court’s decisions long ago gutted it. It has never had anything resembling the kind of settled status in our law that would lead one to believe Congress considered it part of the Patent Act. In fact, assignor estoppel emerged by analogy to a common-law doctrine that, upon inspection, does not support it. And assignor estoppel defeats rather than advances important patent law policies. For decades, most observers thought this Court had killed it. But the Federal Circuit resurrected it in the late 1980s. Now it is time for this Court to do expressly what it left to implication many decades ago: declare that assignor estoppel is not part of patent law. If this Court reads assignor estoppel into the Patent Act, it should make clear that the doctrine is tightly constrained. Its application here is indefensible. An assignee who prosecutes overbroad patent claims to frustrate competition from a novel device must be required to defend the validity of the new patent it prosecutes, even against the original patent application’s assignor. The Federal Circuit’s judgment should be vacated.
Neither the government nor Smith & Nephew cites a single case where this Court has upheld, much less imposed, a regime remotely similar to the one the Federal Circuit imposed below. The standard federal model for agency adjudication has long granted tenure protections to ensure the impartiality of administrative judges, while granting transparent review power to accountable agency heads. The court below created a regime that has neither impartiality nor accountability. . . . Smith & Nephew invokes Congress’s need for “flexibility in defining and filling federal offices.”  The Appointments Clause does grant Congress flexibility—but only within constitutional bounds. And that flexibility is precisely why the court of appeals erred by imposing its own preferred remedy rather than letting Congress decide. The court’s remedy is unrecognizable in the annals of American administrative law. The Appointments Clause does not permit it. Congress never would have enacted it. The court’s severance remedy should be reversed.
Oral argument for this case is scheduled for Monday, March 1, 2021. We will post an argument recap soon after.
The Supreme Court received five new petitions for writ of certiorari.
In Jones v. Secretary of Veterans Affairs, Jones asked the Court to review the following question:
For an agency to cure a prior failure to explain adequately its reasons for an action, must the retrospective elaboration be of a decisionmaker with authority to take the action at issue lawfully?
In Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc., Amarin asked the Court to review the following question:
Whether a court must consider objective indicia of nonobviousness together with the other factors bearing on an obviousness challenge before making any obviousness determination.
In Maine Community Health Options v. United States, Maine Community Health Options asked the Court to review the following question:
Whether the government is required to pay insurers the full amount of the cost-sharing reduction payments required by the unambiguous shall-pay language of §1402 of the ACA.
In Sellers v. Secretary of Veterans Affairs, Sellers asked the Court to review the following question:
When a veteran has submitted an application for disability benefits, does the veteran’s claim encompass all reasonably identifiable conditions within the veteran’s service records?
Lastly, in Ericsson Inc. v. TCL Communication Technology Holdings Limited, Ericsson asked the Court to review the following two questions:
- “Whether, notwithstanding the ordinary rule that a pretrial denial of a motion for summary judgment is not reviewable on appeal, there is an exception for summary judgment decisions that turn solely on ‘legal issues.'”
- “Whether an order denying summary judgment can be reviewed following trial, at the discretion of the court of appeals, notwithstanding a party’s failure to seek judgment as a matter of law on those grounds under Rule 50.”
One new response brief was filed with the Court in Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corporation. In its response, Novartis contends that
Here, the Federal Circuit applied well-settled law and found that Argentum’s declarations were insufficient as a factual matter to meet the injury-in-fact requirement. Pet. App. 6a-8a. The only issue properly presented by the judgment below is the Federal Circuit’s case-specific finding that Argentum’s evidence was insufficient to satisfy Article III’s requirements. There is no reason for this Court to review the court of appeals’ fact-bound conclusion that Argentum, having been given an opportunity to carry its evidentiary burden, simply failed to do so. Indeed, even a cursory review of the evidence—which Argentum did not include with its petition, but which Novartis attaches to this response for the Court’s convenience—demonstrates that the court of appeals’ factual finding was entirely correct. And the routine application of long established standing principles to this factual record does not come close to warranting this Court’s review.
One new amicus brief was filed by a non-profit advocacy organization, US Inventor, Inc., in the new case Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc. In favor of granting the petition, US Inventor argues that
This Court values real-world nontechnical markers of how persons in the art themselves think about the level of inventiveness attributable to an idea. Such markers are called objective indicia of nonobviousness. When present and strong, they should preclude a conclusion of obviousness. Strong objective indicia indicate that an idea deserves the protection of a patent. The Federal Circuit has consistently overlooked this Court’s authority that gives objective indicia (such as long-felt need) controlling weight in the determination of an invention’s patentability. This case presents an excellent vehicle because the district court found Amarin’s patent claims met a long-felt need, but declared its groundbreaking drug patent obvious anyway.
Waivers of Right to Respond
Hikma filed a waiver of its right to respond to the petition in Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc.
The Supreme Court denied six petitions for writ of certiorari in the following cases: