Petitions / Supreme Court Activity

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

Here are the details.

Granted Cases

On April 5, 2021, the Supreme Court rendered its decision in Google LLC v. Oracle America, Inc., the long-running software copyright case. The Court sided with Google in a 6-2 opinion, holding that Google’s copying of the Java API code constituted fair use. We have posted a summary of the opinion.

Three amicus briefs were filed in Minerva Surgical, Inc. v. Hologic, Inc., a case that has been granted certiorari:

  • Leading Technology Composites, Inc. and Clarkwestern Dietrich Building Systems LLC filed an amicus brief in support of Hologic.
  • Pharmaceutical Research and Manufacturers of America filed an amicus brief in support of Hologic.
  • United Therapeutics Corporation filed an amicus brief in support of Hologic.

Petition Cases

New Petitions

The Court received three new petitions for writ of certiorari.

In PersonalWeb Technologies, LLC v. Patreon, Inc., PersonalWeb asked the Court to review the following questions:

  1. “Whether the Federal Circuit correctly interpreted Kessler to create a freestanding preclusion doctrine that may apply even when claim and issue preclusion do not.”
  2. “Whether the Federal Circuit properly extended its Kessler doctrine to cases where the prior judgment was a voluntary dismissal.”

In Tormasi v. Western Digital Corporation, Tormasi asked the Court to review the following questions:

  1. “Does imprisonment (1) forfeit a patent owner’s right not to be deprived of personal property without due process of law and (2) render a person wholly without equal protection of the law?”
  2. “Does Lewis v. Casey, stating that the right of access to the courts ‘does not guarantee inmates the wherewithal to transform themselves into litigating engines,’ enable state agencies to affirmatively eliminate an inmate’s access to court on general civil matters?”
  3. “The patent statute authorizes patent owners to enforce their constitutionally recognized exclusionary rights in federal court. Did the lower courts create a dangerous slippery slope that (1) establishes a mechanism by which states can, via an administrative rule, nullify federally granted statutory rights and (2) oppresses prisoners by depriving them of property without redress?”

In Security People, Inc. v. Hirshfeld, Security asked the Court to review the following questions:

  1. “Whether the retroactive application of inter partes review under the Leahy–Smith America Invents Act, Pub. L. No. 112-29, 125 Stat. 284 (2011), the ‘AIA’, to Petitioner’s patent issued eight years before the passage of the AIA deprived Petitioner of its vested property in violation of the Due Process Clause of the Fifth Amendment?”
  2. “Whether the Federal Circuit erred in its published opinion affirming that the district court lacked jurisdiction under 28 U.S.C. § 1331 to entertain Petitioner’s as applied constitutional challenge to the retroactive application of inter partes review to its patent issued in 2003.”

New Responses

One new brief in opposition was filed with the Court in response to the petition in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC. In its response brief, Neapco contends that the petition should be denied because

American Axle petitions for guidance in determining whether a claim is directed to patent-ineligible subject matter under step one of Alice. But what American Axle seeks—a universal, easy-to-apply decisional mechanism— would not clarify Alice, it would discard it. Building on 150 years of precedent, Alice set forth a flexible, context-driven approach that eschews rigid rules. . . . Indeed, it is telling that while American Axle and most amici ask the Court to provide some elusive “clarity,” none makes any proposal for doing so. Nor does American Axle identify competing views about how to “fix” the Alice framework. American Axle’s true grievance is not with the standard, but with how that standard was applied to the particular facts of this case.

New Replies

One new reply brief was filed with the Court in Ericsson Inc. v. TCL Communication Technology Holdings Limited. In its brief, Ericsson argues

TCL concedes [] that the courts of appeals are in conflict following Ortiz v. Jordan, 562 U.S. 180 (2011). . . . TCL does not deny the circuit conflict is entrenched. It does not dispute the importance of resolving the conflict. . . . TCL’s “effectively granted summary judgment” characterization, however, merely restates the “purely legal issue” exception. . . . TCL’s further assertion that the Federal Circuit “exercised its discretion to excuse” TCL’s failure to file a Rule 50 motion, [] supports granting review. Whether such discretion exists—whether appellate courts have power to direct entry of judgment for the party that lost below absent a Rule 50 motion—is the second question the petition presents. . . . This Court has repeatedly held that, absent a Rule 50 motion, a court of appeals is “ ‘powerless’ ” to set aside a verdict and direct judgment for the losing party. [] The court of appeals’ insistence that it has that power (indeed “discretion,” Pet.App.7a) defies those precedents and places Federal Circuit law in conflict with other circuits. Review is warranted.

Amicus Briefs

One new amicus brief was filed with the Court in Common Ground Healthcare Cooperative v. United States by Anthem, Inc., Blue Cross of Idaho Health Service, Inc., Highmark Inc., L.A. Care Health Plan, and Molina Healthcare of California, Inc. In their amicus brief, the amici argue in support of Common Ground that

As the petition amply demonstrates, prior to the Federal Circuit’s decision here, neither this Court, nor any other federal court, had ever concluded that contract mitigation-of-damage principles apply to a claim for specific monetary relief mandated by a federal statute where the statutory text makes no mention of such principles. The reason is clear: courts must enforce statutes as written. The same result must follow here, and compellingly so, because neither the remedy-creating statutory provision at issue—ACA § 1402, 42 U.S.C. § 18071—nor the ACA’s separate premium-tax-credit provision, § 1401, 26 U.S.C. § 36B—makes any mention of contract mitigation principles, or even alludes to each other at all. . . . To borrow an observation this Court recently made, the Federal Circuit’s decision to “tinker with, and then engraft a” contract-law principle onto a statute without any textual basis for doing so—would “require more than a little judicial adventurism, and look a good deal more like amending a law than interpreting one.” [] That, of course, is not what courts should or can do. The Court should say so—again.

Denied Petitions

Lastly, the Court denied the petitions in three cases: