Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit.
- The Court received seven new amicus briefs in a case that has been granted certiorari, Minerva Surgical, Inc. v. Hologic, Inc.
- The Court received five new petitions for writ of certiorari.
- One new response brief was filed with the Court in Iancu v. Fall Line Patents, LLC.
- One new reply brief was filed with the Court in Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corporation.
- In petition cases, the Court received six new amicus briefs in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, two new amicus briefs in Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc., and one new amicus brief in Oracle America, Inc. v. United States.
- Lastly, the Court denied the petition for writ of certiorari in Christy, Inc. v. United States.
Here are the details.
The Court received seven new amicus briefs in Minerva Surgical, Inc. v. Hologic, Inc.:
- Amicus brief of New York Intellectual Property Law Association in support of neither party
- Amicus brief of Engine Advocacy in support of Minerva
- Amicus brief of Intellectual Property Owners Association in support of neither party
- Amicus brief of American Intellectual Property Law Association in support of neither party
- Amicus brief of New York City Bar Association in support of neither party
- Amicus brief of United States in support of neither party
- Amicus brief of Intellectual Property Law Professors in support of Minerva
The Supreme Court received five new petitions for writ of certiorari.
In Common Ground Healthcare Cooperative v. United States, Common Ground asked the Court to review the following question:
May the United States invoke a non-statutory mitigation defense to avoid the unambiguous requirement of section 1402 of the Patient Protection and Affordable Care Act (‘ACA’) that the Government ‘shall make’ cost-sharing reduction payments to insurers in set amounts?
In IBSA Institut Biochimique, S.A. v. Teva Pharmaceuticals USA, Inc., IBSA asked the Court to review the following question:
Whether, pursuant to the United States’ obligations under the TRIPS Agreement, codified at 19 U.S.C. § 3511, a court construing the claims of a U.S. patent may give no weight to a foreign priority patent application, despite its submission to the U.S. Patent & Trademark Office during prosecution of the patent-in-question, because it is written in a foreign language and exhibits minor differences from the U.S. patent resulting from a translator’s judgment.
In Simmons v. Secretary of Veterans Affairs, Simmons asked the Court to review the following question:
Must a court, when taking due account of the rule of prejudicial error on review of agency action, comport with Chenery?
In Comcast Cable Communications, LLC v. Promptu Systems Corp., Comcast asked the Court to review the following question:
Whether administrative patent judges are ‘principal’ or ‘inferior’ Officers of the United States within the meaning of the Appointments Clause.
In SynKloud Technologies, LLC v. Adobe, Inc., SynKloud asked the Court to review the following three questions:
- “Whether the Federal Circuit wrongly overruled a district court judge’s discretionary 1404(a) transfer decision when rational basis exists for all of the transfer factors and the ‘extraordinary error’ standard was not met when multiple factors favored plaintiff’s chosen venue including the completion of third-party discovery in the current forum, the court congestion factor and the only evidence supporting transfer was set forth in self-serving declarations from defendant.”
- “Whether the equities lie considerably against granting mandamus, . . . when defendant operates in, hires employees and transacts business in transferor forum; and in contrast (i) plaintiff is not subject to personal jurisdiction or venue in the transferee forum, (ii) a declaratory judgment action of patent non-infringement could not have been brought against plaintiff in the transferee forum, and (iii) a small business such as plaintiff would be forced to incur significant delays and significantly greater costs and expenses in the transferee forum.”
- “Whether the district court’s lack of explanation requires the Federal Circuit to remand the case back for an explanation instead of drastically ruling that there was a clear abuse of discretion leading to a patently erroneous result . . . .”
[f]or example, Fall Line agrees with petitioner that, if the Court reverses in Arthrex, then the Court should vacate the judgment of the Federal Circuit and remand for further proceedings. The petition in the Fall Line case should thus be held pending the issuance of this Court’s decision in Arthrex, and then should be disposed of as appropriate in light of that decision. Snyders also agrees with petitioner that, if the Court reverses in Arthrex, then granting, vacating, and remanding would be warranted. But there is an additional reason why the Court should grant, vacate, and remand in the Snyders case: Snyders has voluntarily waived its Appointments Clause challenge. That waiver eliminates the only basis for the judgment below. It also provides petitioner with the exact relief that it seeks from the Court. So no matter how (or when) the Court decides Arthrex, the Court should grant the petition, vacate the judgment of the Federal Circuit, and remand so that the Federal Circuit can reach Snyders’s merits issues.
One new reply brief was filed with the Court in Argentum Pharmaceuticals LLC v. Novartis Pharmaceuticals Corporation by Argentum. In its brief, Arguentum contends
Unable to defend the erroneous standing framework created and applied by the appellate court, [Novartis] now instead seeks to distract from the legal issues by miscasting the Federal Circuit’s decision as involving merely fact-bound evidentiary rulings that are purportedly not “important to anyone other than” [Argentum].  Novartis’s efforts, however, only further highlight its fundamental misapprehensions regarding the issues at hand and perpetuate the Federal Circuit’s improperly limiting injury-in-fact analysis for Article III standing. . . . On this record, any court should readily conclude that Argentum has an injury in fact.  The Federal Circuit’s categorical denial of standing simply based on Argentum’s role in the joint venture is inconsistent with the Constitution and this Court’s precedent.
The Court received six new amicus briefs in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC:
- Amicus brief of Professors Jeffrey A. Lefstin and Peter S. Menell in support the petition
- Amicus brief of Ameranth, Inc. in support of American Axle
- Amicus brief of Biotechnology Innovation Organization and AUTM in support of American Axle
- Amicus brief of Jeremy C. Doerre in support of American Axle
- Amicus brief of United States Senator Thom Tillis, Honorable Paul R. Michel and Honorable David J. Kappos in support of the petition
- Amicus brief of Houston Intellectual Property Law Association in support of American Axle
Additionally, the Court received two new amicus briefs in Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc.:
- Amicus brief of LiquidPower Specialty Products Inc. in support of Amarin
- Amicus brief of Aimed Alliance in support of Amarin
Lastly, one new amicus brief was filed with the Court in Oracle America, Inc. v. United States by Frederick W. Claybrook, a government contracts law practitioner, in support of Oracle. In his brief, Claybrook argues
The Federal Circuit’s “no prejudice” determination in the decision below is but the latest example of its supplanting the agency’s authority by overstating and misapplying the APA’s harmless error standard, which controls in procurement review actions. . . . After confirming that the agency committed legal error in its initial procurement decision, the Federal Circuit gave “clearly erroneous” deference to the no “substantial” prejudice finding of the Court of Federal Claims (“CFC”).  That finding was, instead, entitled to no deference, as the CFC’s forward-looking determination of what the agency most likely would do on remand exceeded the CFC’s authority as a matter of law. Moreover, the Federal Circuit applied a heightened, “substantial” prejudice formulation,  one neither found in the text of the APA nor used by this Court or other courts of appeal. This Court should issue the writ to correct this longstanding and continuing arrogation of power by the Federal Circuit and the CFC.
The Court denied the petition for writ of certiorari in Christy, Inc. v. United States, which raised questions relating to the invalidation of patents through post-grant review proceedings.