Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit.
- The Court invited the Acting Solicitor General to file a brief in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, a patent case presenting questions related to eligibility.
- Five new petitions were filed in patent, veterans, Tucker Act, and trademark cases.
- Seventeen new briefs in opposition were filed in sixteen cases.
- Five new reply briefs were filed.
- One supplemental brief was filed.
- One amicus brief was filed in a patent case.
- Five waivers of right to respond were submitted.
- The Court denied eight petitions.
Here are the details.
There is no new activity to report with respect to cases with granted petitions. As a reminder, we are waiting for the Court to issue opinions in United States v. Arthrex, Inc. (concerning Administrative Patent Judges and the Appointments Clause) and Minerva Surgical, Inc. v. Hologic, Inc. (concerning assignor estoppel).
Call for the Views of the Solicitor General
Earlier this month, the Court invited the Acting Solicitor General to file a brief on behalf of the United States in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, a patent case that raises two questions related to patent eligibility law.
Five new petitions were filed.
In Fast 101 Pty. Ltd. v. Citigroup Inc., Fast 101 asked the Court to consider three questions:
- “When analyzing patent claims for subject matter eligibility ‘as a whole,’ does a court need to evaluate the differences between prior art allegations and the alleged inventive concept in order to fully appreciate the claim language selected by the patent drafter?”
- “When the plaintiff alleges either that the claims are ‘directed to’ an ‘improvement’ or that the ‘inventive concept’ is found in an ‘ordered combination’ of claim elements, do the relevant steps of the Alice/Mayo Test become questions of fact because a technical analysis of prior art is required, thus precluding a 12(b)(6) dismissal?”
- “Whether it is appropriate for a court to dismiss a complaint (and thus invalidate all asserted patents) using Rule 12(b)(6) without amendment to the complaint or oral argument by making factual findings and rejecting the plaintiff ’s detailed factual assertions inconsistent with Bell Atl. Corp. v. Twombly, 550 U.S. 544 (2007).”
The petitioner in Garvey v. McDonough asked the Court to consider the following two questions:
- “Under Chevron step 1, is it permissible for the Secretary to write a regulation that redefines a ‘veteran’ where Congress has provided a clear, unambiguous definition?”
- “In the alternative when evaluating the meaning of a statute
- a. Against what threshold must a federal court evaluate whether a statute’s text and structure, the traditional canons of construction, and the statute’s legislative history permit more than one reasonable interpretation of Congress’ intent?
- b. What role does Brown v. Gardner and Kisor v. Wilkie play in the Court’s framework used to interpret a statute?”
In United States v. Common Ground Healthcare Cooperative, the United States presented the following question:
- “Whether the court of appeals erred in concluding that Congress intended to afford insurers an implied money-damages remedy as compensation for CSR payments that were not made because the government determined that it lacked an appropriation to pay them and that could generally be offset under other ACA provisions that insurers invoked to obtain a recovery.”
In Naked TM, LLC v. Australian Therapeutic Supplies Pty. Ltd., Naked TM asked the Court to review three questions:
- “A majority of a Federal Circuit panel ruled that respondent has standing under 15 U.S.C. § 1064 to cancel petitioner’s trademark registration even though respondent had already agreed that petitioner could register and use the mark in the United States. Does this grand of standing to respondent square with the Court’s statutory cause of action jurisprudence of Lexmark Int’l, Inc. v. Static Control Components, Inc., 572 U.S. 118 (2014)?”
- “Does the majority’s reliance on respondent’s post-filing conduct to confer standing under 15 U.S.C. § 1064 contravene this Court’s precedents or extend Lexmark sub silentio?”
- “Does the majority’s ruling create a split of authority with the Fourth Circuit about the proper standing analysis under the Lanham Act?”
And in TCL Communication Technology Holdings Ltd. v. Godo Kaisha IP Bridge 1, the petitioner presented the following two questions:
- “Whether under 35 U.S.C. § 271 and this Court’s precedent, a patentee may prove literal infringement by relying solely on the essentiality of its patent to an industry standard, rather than comparing the accused product directly to the asserted claim or linking the industry standard to the claim during claim construction.”
- “Whether a court must first determine claim construction and conclude as a matter of law that the scope of the asserted claims covers an industry standard and that a patentee may rely on an industry standard in proving literal infringement.”
Briefs in opposition to petitions were filed in sixteen cases.
In Ariosa Diagnostics, Inc. v. Illumina, Inc., Illumina submitted its brief in opposition arguing that “the Federal Circuit’s determination that [the patented] enrichment process is eligible for patent protection does not conflict with Myriad and instead is factbound and correct.” Illumina goes on to explain that “[t]he claims are not directed at a natural phenomenon.” Illumina further argues that “[t]he Federal Circuit merely held that this generalized enrichment process is a ‘process,’ and that process does not target any specific gene sequence.” As a result, Illumina contends, “[t]here is . . . no risk of patenting DNA itself.”
In RPM International Inc. v. Stuart, Alan Stuart submitted his brief in opposition arguing that “[t]he court of appeals correctly held that APJs are principal officers.” Stuart further contends that, with respect to timeliness, the petition “has shown no grounds for reversal” because “Stuart timely raised its constitutional challenge in the first forum capable of adjudicating the claim” and, “[e]ven if the claim were untimely, the court of appeals had discretion to
In Sasso v. Warsaw Orthopedic, Inc., Warsaw filed its brief in opposition contending that “[t]he Federal Circuit concisely and properly determined that this dispute falls within the federal courts’ exclusive jurisdiction (and that the Federal Circuit, not the Seventh Circuit, had appellate jurisdiction) because the dispute necessarily raised substantial issues of federal patent law.”
In United States v. Maine Community Health Options, Maine Community Health Options submitted its brief in opposition arguing that “Maine Community makes inescapably clear that petitioners are entitled to bring suit under the Tucker Act, as there is no plausible basis for distinguishing the unambiguous shall-pay mandate of § 1402 from the unambiguous shall-pay mandate that supported a Tucker Act suit in Maine Community.”
In Roadie, Inc. v. Baggage Airline Guest Services, Inc., Baggage Airline Guest Services filed its brief in opposition contending that “[t]he Federal Circuit’s decision to defer to Judge Andrews’ reasoned analysis, which took into account and did not overlook all of the arguments presented in Roadie’s Petition, does not satisfy Rule 10’s requirement of a compelling reason to grant certiorari.” Baggage Airline Guest Services goes on to explain that “[t]he only new argument provided in its Petition is in the statement of the case, summary of factors, reasons for granting the petition, and summary of argument sections,” which “alone should warrant a denial of the Petition as it does not include anything persuasive not already considered by the district court and the Federal Circuit.” This reason aside, the Respondent also argues that “Roadie fails to offer a compelling justification for this Court to revisit and overturn its past precedent.”
In Immunex Corp. v. Sanofi-Aventis U.S. LLC, two briefs in opposition were filed.
- In its brief, Sanofi-Aventis argues that “Immunex did not mention the Appointments Clause until its reply brief in the Federal Circuit, thus forfeiting the issue under well-established Federal Circuit law” and that the Court “consistently denie[s] petitions raising forfeited Appointments Clause challenges.” Sanofi-Aventis further contends that this ‘is a dispositive defect that no amount of creative lawyering can cure,” so “Immunex is not entitled to relief from this Court.”
- In its brief, the United States also brings up the Appointments Clause forfeiture, claiming that “regardless of this Court’s resolution of the Appointments Clause and severability questions presented in Arthrex, that decision will provide no basis for disturbing the court of appeals’ judgment in this case.” Like Sanofi-Aventis, the Government further argues that “[t]his Court has repeatedly denied petitions for writs of certiorari asserting similar Appointments Clause challenges where the petitioner had first raised the issue after filing its opening brief in the Federal Circuit.”
In Warsaw Orthopedic, Inc. v. Sasso, Rick C. Sasso submitted his brief in opposition claiming that “that the Federal Circuit affirmance: (a) is consistent with prior precedent and without conflict in the lower courts; (b) approves a prudent decision of a district court judge attentive to the actual issues of the dispute; and (c) would be a poor vehicle for review of questions of patent law jurisdiction in contract cases involving patents.”
In Wi-LAN, Inc. v. Hirshfeld, the government filed its brief in opposition, contending that “petitioners forfeited their Appointments Clause challenge by failing to raise that challenge at any point before the Board or the court of appeals,” so “even if this Court affirms the Federal Circuit’s Appointments Clause ruling in Arthrex, that decision will provide no basis for disturbing the court of appeals’ judgment in this case.” The government explains that “[t]his Court has repeatedly denied petitions for writs of certiorari asserting similar Appointments Clause challenges where the petitioner had first raised the issue after its opening brief in the Federal Circuit, including where, as here, the issue was raised for the first time in the petition for a writ of certiorari.”
In Ono Pharmaceutical Co. v. Dana-Farber Cancer Institute, Inc., the Institute submitted its brief in opposition arguing that “[Bristol-Myers Squibb’s (BMC)] petition presents no issues warranting review.” The Institute contends that, “[c]ontrary to BMS’s contrived arguments, the Federal Circuit’s decision did not, and did not purport to, make new law or impose any bright-line rule for assessing inventorship evidence.” Therefore, the Institute goes on to argue, “[a] fact-bound determination of joint inventorship presents no occasion for this Court to revisit settled law, on which patent owners and inventors have relied for decades.”
In Comcast Cable Communications, LLC v. Promptu Systems Corp., the Federal Respondent filed its brief in opposition claiming that “[t]he court of appeals’ decisions in these cases were issued after the Federal Circuit’s decision in Arthrex, and the court neither relied on nor disavowed any aspect of the Arthrex decision.” The Respondent goes on to argue that because “the Federal Circuit has repeatedly refused to excuse parties’ forfeitures in similar circumstances . . . there is no reason to suppose that this Court’s disposition of Arthrex, which does not present any question of forfeiture, will cast doubt on the result here.”
In Sellers v. Secretary of Veterans Affairs, the Secretary of Veterans Affairs filed his brief in opposition contending that, “[a]lthough Congress designed the veterans-benefits system to be pro-claimant and nonadversarial, it set a common-sense starting point by making veterans responsible for presenting and supporting their claims for disability benefits.” The brief explains that the Petitioner’s argument is that “a veteran need only identify the type of benefit sought . . . at which point VA must obtain and search the veteran’s records for anything that could support his claim,” but that “[t]he Federal Circuit correctly rejected this argument, which would upend longstanding precedent and significantly burden VA’s claims process.”
In Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc., Hikma filed its brief in opposition. The petition presented the question of “[w]hether a court must consider objective indicia of nonobviousness together with the other factors bearing on an obviousness challenge before making any obviousness determination.” Now Hikma argues that “[c]ertiorari should be denied, first, because the petition’s question presented is not presented by either the Federal Circuit’s decision or the district court’s decision that it summarily affirmed.” Hikma further argues that, “[e]ven if the petition’s question presented were raised by either decision below . . . this case would still be an exceptionally poor vehicle because answering that question in Amarin’s favor would not affect the outcome of the case.” Hikma goes on to contend that “[e]ven if the decisions below implicated the question presented . . . and even if that question could affect the outcome . . . certiorari would still be unwarranted because the ‘prima facie framework’ that Amarin purports to challenge is consistent with both this Court’s and the Federal Circuit’s precedent,” so “[t]here is no conflict to resolve.”
In Gadsden Industrial Park, LLC v. United States, the United States submitted its brief in opposition contending that “[t]he court of appeals correctly rejected petitioner’s claim for compensation under the Fifth Amendment, and its fact-bound application of well-established principles does not conflict with any decision of this Court or of any other court of appeals.” The government further argues that “[t]he Federal Circuit here articulated the well-settled rule that a property owner must establish the value, if any, of property taken by the government” and that “the trial court did not err in concluding ‘that it was “not given sufficient reliable proof of what a willing buyer would have paid for the scrap and kish” to independently determine a damages award.’” Additionally, the government claims, “[n]either of the recent cases petitioner cites . . . supports its contention that the Fifth Amendment invariably requires compensation whenever a taking occurs.”
In Hyundai Heavy Industries Co. v. United States, the United States submitted its brief in opposition. The government first summarizes the petitioner’s argument “that Commerce revised its methodology for classifying service-related revenues during the third administrative review and applied that revised methodology retroactively in calculating its antidumping duty.” The government, however, claims that “[n]either the Federal Circuit’s summary affirmance nor the CIT’s opinion found that Commerce had modified its methodology, much less that it had done so retroactively,” but rather that “the difference in outcome between prior administrative reviews and the Commerce review at issue here rested on differences in the record evidence assembled during the various proceedings.” Therefore, the government argues, “petitioner’s claim . . . of a conflict in the circuits over the retroactivity of agency methodologies is not implicated on these facts—and is, in any event, mistaken.”
In Oracle America, Inc. v. United States, the United States filed its brief in opposition explaining that the “[p]etitioner contends . . . that the court of appeals erred in affirming the Court of Federal Claims’ holdings that (1) the agency’s decision to award a single-source contract did not prejudice petitioner, given that petitioner could not qualify for a contract under Gate 1.2 anyway, and (2) three DoD employees’ conflicts of interest in potential violation of 18 U.S.C. 208 did not materially affect the procurement.” The Government argues that “[t]hose rulings are correct and do not conflict with any decision of this Court or another court of appeals,” so “[f]urther review is unwarranted.”
In United States v. Common Ground Healthcare Cooperative, Common Ground Healthcare Cooperative submitted its brief in opposition claiming that “[t]he Government’s cross-petition sets forth no new factual issues beyond those already addressed in Common Ground’s petition,” so “the Government is left to argue that, although it has violated the ACA, Plaintiffs have no remedy for such a violation,” which “cannot be reconciled with Maine Community or the text of the ACA.”
Five new reply briefs were filed with the Court.
In Ariosa Diagnostics, Inc. v. Illumina, Inc., Ariosa filed its reply brief contending that “Respondents’ Alice step two argument is not only wrong but reinforces the need for review.” Ariosa also argues that “[t]he panel majority’s decision in this case conflicts with Myriad and other Section 101 precedent precisely because it held that the separation of smaller fetal DNA from larger maternal DNA survived Section 101 review at Alice step one without considering whether the process claimed was innovative or nonconventional under Alice step two.” Additionally, Ariosa contends that “[t]his Court created a two-step test for a reason and should not allow the Federal Circuit to collapse the framework it created,” as well as that “the panel majority’s decision creates incoherence in the Federal Circuit’s own jurisprudence.”
In Ono Pharmaceutical Co. v. Dana-Farber Cancer Institute, Inc., Ono filed its reply brief in support of review of “[w]hether 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.” Ono argues that “Dana-Farber asserts that the Federal Circuit did not apply a bright-line rule, but simultaneously argues that the Federal Circuit applied ‘settled law that, for a contribution to be significant, the ideas contributed must not have been contemporaneously available to an ordinary skilled artisan at the time of the contribution’ and that ‘joint inventorship does not “depend on” the novelty and nonobvious[ness] of the invention over a particular researcher’s contribution.’” Ono argues that “[t]his bright-line rule that Dana-Farber labels ‘settled’ contravenes black-letter patent law, conflicts with this Court’s precedent, and creates a circuit split.”
In Comcast Cable Communications, LLC v. Promptu Systems Corp., Comcast filed its reply brief arguing that “[i]f patent owners who present an Appointments Clause challenge on appeal are entitled to a new hearing under Arthrex, petitioners should be as well.” Comast further contends that “IPR petitioners have the same constitutional rights and remedies as patent owners.” Comcast goes on to argue that “[i]f the APJs who decided these cases were not constitutionally appointed, that structural defect in the tribunal’s composition affects Comcast no less than patent owner Promptu” and that “Petitioners should not be treated differently than patent owners merely because petitioners invoked the Board’s jurisdiction by requesting IPR.” Therefore, Comcast claims, “[t]he Federal Circuit’s bright-line rule that patent owners get case-specific relief, but petitioners do not, has no basis in the Appointments Clause, the Patent Act, or principles of equitable remedy” and “should be rejected.”
In Sellers v. Secretary of Veterans Affairs, Robert M. Sellers filed his reply brief contending that “[t]he Federal Circuit[‘s holding] . . . that Mr. Sellers’s psychiatric disability was not within the scope of his 1996 claim . . . is not supported by the statute, and VA lacks the authority to rewrite the law to deny Mr. Sellers the benefits to which he is statutorily entitled.” Sellers further argues that “[t]he Federal Circuit’s test permits—indeed, encourages—VA to ignore obvious evidence of a disability merely because it is not specified on a veteran’s form,” which “defies both the plain text of the specific statutory provisions at issue and the non-adversarial, pro-claimant character of the system Congress established for veterans benefits.”
In Oracle America, Inc. v. United States, Oracle filed its reply brief arguing that “[t]he Federal Circuit has construed the harmless-error exception so broadly as to nullify Chenery,” therefore “transform[ing] a record-based inquiry about what the agency actually said into a ‘hypothetical’ inquiry into what the agency ‘would have’ done ‘had the error not been made.’” Oracle further contends that “[w]ith $10 billion of taxpayer money at stake, this appeal to semantics is misguided” because, “[a]bsent this Court’s intervention, the JEDI contract will proceed for the next decade as an illegal single-source award.” Oracle goes on to argue that “[w]hat matters here is that neither court below conducted an independent review,” but rather that “[t]he Federal Circuit held only that ‘the contracting officer’s investigation . . . was sufficient,’ . . . while the Claims Court focused on ‘whether the [contracting officer’s] conclusion of no impact is reasonable.’”
In Corcamore, LLC v. SFM, LLC, Corcamore submitted a supplemental brief to correct an error in the First Question Presented and provide a supplemental citation. The First Question Presented now reads:
- “Whether this Court’s Lexmark test is the sole determinant of the statutory power of the Trademark Trial and Appeal Board to adjudicate a § 1064 petition to cancel a trademark registration, or can the Federal Circuit’s make its ‘real interest’ and ‘reasonable belief’ approach an optional, more lenient way to plead for the statutory remedy. Whether the Federal Circuit panel erred in its decision (i) that does not adhere to this Court’s Lexmark precedent, and (ii) that also conflicts with the Fourth Circuit’s decision on the interpretation and application of the same statutory standard that applies to pleading for the remedy created in Section § 1064 of the Lanham Act.”
An amicus brief was filed by CFL Technologies LLC in PersonalWeb Technologies, LLC v. Patreon, Inc., agreeing with the petitioner and arguing that “Kessler, as applied at the Federal Circuit, allows [patent] infringers to reap an extraordinary windfall through the improper use of equity to generate and expand legal rights, rather than proper use of equity to protect legal rights that already exist.”
Waivers of Right to Respond
Parties in five separate cases submitted waivers of right to respond to petitions.
- In Optimum Services, Inc. v. Secretary of the Interior, the Secretary of the Interior submitted her waiver of right to respond.
- In PersonalWeb Technologies, LLC v. Patreon, Inc., Patreon, Inc. submitted its waiver of right to respond.
- In Security People, Inc. v. Hirshfeld, the government submitted a waiver of right to respond.
- In Oracle America, Inc. v. United States, Amazon Web Services, Inc. submitted its waiver of right to respond.
- In Fast 101 Pty. Ltd. v. Citigroup Inc., Citigroup submitted its waiver of right to respond.
Lastly, the Court denied petitions in eight cases:
- Khan v. Merit Medical Systems Inc. (Rule 11 sanctions)
- Alberto Solar-Somohano v. The Coca-Cola Company (pro se)
- Merit Medical Systems, Inc. v. Khan (attorneys’ fees)
- WPEM, LLC V. SOTI, Inc. (exceptional case determinations)
- Blanton v. Secretary of Veterans Affairs (clear and unmistakeable error standard)
- Lakshmi Arunachalam v. Citigroup, Inc. (pro se)
- Ericsson Inc. v. TCL Communication Technology Holdings Limited (summary judgment)
- Sandoz Inc. v. Immunex Corp. (double patenting)