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

Here are the details.

Granted Cases

There is no new activity to report.

Petition Cases

New Petitions

The Court received four new petitions for writ of certiorari.

In Wi-LAN, Inc. v. Hirshfeld, Wi-LAN asked the Court to review the following two questions:

  1. “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.”
  2. “Whether, if administrative patent judges are principal officers, the court of appeals properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. § 7513(a) to those judges.”

In Immunex Corp. v. Sanofi-Aventis U.S. LLC, Immunex asked the Court to review the following three questions:

  1. “Whether, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, administrative patent judges for 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.”
  2. “Whether, if administrative patent judges are principal officers, the Federal Circuit properly cured any Appointments Clause defect in the current statutory scheme prospectively by severing the application of 5 U.S.C. § 7513(a) to those judges.”
  3. “Whether this Court granting Arthrex the relief it seeks would vitiate the court of appeal’s prior forfeiture rule and deny the Patent Office Director the authority under 35 U.S.C. § 318(b) to issue a certificate cancelling Immunex’s patent claims.”

In Ono Pharmaceutical Co. v. Dana-Farber Cancer Institute, Inc., Ono asked the Court to review the following question:

Whether the Federal Circuit erred in adopting a bright-line rule that the novelty and non-obviousness of an invention over alleged contributions that were already in the prior art are “not probative” of whether those alleged contributions were significant to conception.

In Blanton v. Secretary of Veterans Affairs, Blanton asked the Court to review the following question:

Is the Cook standard to establish CUE in a VA decision erroneously restrictive?

Amicus Briefs

One new amicus brief was filed with the Court in Sandoz Inc. v. Immunex Corp. by The Association for Accessible Medicines (AAM) and America’s Health Insurance Plans, Inc. (AHIP). In its brief, the AAM and the AHIP argue that

There is hardly a more basic or important rule of patent law than that an inventor is entitled to a single patent for an invention. A central corollary to that rule is that a patentholder cannot obtain a patent claim on an obvious variant of an existing claim. The obviousness type double-patenting (“ODP”) doctrine has long extended both to instances in which a patent-holder applies for such a patent, and where it acquires a patent. Put simply, a patentholder cannot evade the ODP doctrine by acquiring an obvious patent claim via an assignment. These limits are critical to a well-functioning patent system in general. But they are particularly important in the context of patents on medicines where any gamesmanship by patentholders can so directly impact patients and public health by keeping low-cost generics and biosimilars off the market, impeding access on an individual level as well as burdening already scarce healthcare resources. The ODP doctrine’s protections have now been undermined by a Federal Circuit decision that will be immensely costly to American patients and taxpayers absent review by this Court. Although the panel majority maintained the prohibition on the assignment of obvious patents, it blessed a licensing arrangement that gave respondents (“Immunex”) all substantial rights to an obvious variant. As the dissent recognized, the panel decision allows Immunex to leave the “licensor” with commercially valueless rights in exchange for an extended “license” to practice patent claims that are patentably indistinct from previously issued claims. The decision offers an end-run around the rules against ODP, and a roadmap for companies seeking to extend their monopolies beyond their lawful term. . . . Certiorari is warranted to prevent these costs from recurring and to ensure that ODP correctly “polices the proper application of the patent term for each invention.”

Waivers of Right to Respond

One new waiver of right to respond was filed with the Court by the Secretary of Veterans Affairs in Jones v. Secretary of Veterans Affairs, which raises 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?”