Supreme Court Activity

Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. Five new petitions were filed with the Court–four in patent cases and one in a pro se case. Additionally, the respondents in two different patent cases filed their briefs in opposition, while the Court requested a response to a petition in a government contract case. Upon the parties’ request, the Court dismissed Ariosa Diagnostics, Inc. v. Illumina Inc.. Finally, the Court denied two other petitions, one in a trademark case and one in a patent case.

Here are the details.

Granted Cases

There is no new activity to report. We are still waiting for the opinions in United States v. Arthrex, Inc. and Minerva Surgical, Inc. v. Hologic, Inc.

Petition Cases

New Petitions

There were five new petitions filed this week.

In Hirshfeld v. Implicit, LLC, the petitioner asked the Court to consider the following question:

  • “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.”

In Earley v. Hirshfeld, Matthew Earley requested that the Court consider the following question:

  • “Can the ‘burden of proof’ regarding inherency shift if the Court (US Court of Appeals/Federal Circuit) and Board (US Patent Trial and Appeal Board) have not determined or demonstrated that the prior art reference and the claimed invention are identical or substantially identical as is required in MPEP 2112 and MPEP 2125?”

The petitioner in Kaszuba v. Hirshfeld presented the following three questions:

1. “Has the Federal Circuit erred in refusing to follow this Court’s Lexmark precedent, and in not applying precedent to standing under 15 U.S.C. § 1064.”

2. “Has the Federal Circuit erred in allowing Intervention by the USPTO Director under 35 U.S.C. §143 which only allows the Director to intervene in an appeal from a decision entered of the Patent Trial Appeal Board hearings and not an appeal from the Trademark Trial and Appeal Board which is the case in question.”

3. “Whether Administrative Trademark Judges of the U.S. Trademark Trial and Appeal Board, ‘who are appointed by the Secretary of Commerce, in consultation with the Director’ pursuant to 15 U.S.C. § 1067, are, for purposes of the Appointments Clause, U.S. Const. Art. II, § 2, Cl. 2, principal officers who must be appointed by the President with the Senate’s advice and consent.”

In Biogen MA Inc. v. EMD Serono, Inc., Biogen asked the Court to review the following question:

  • “Whether courts may disregard the express claim term ‘recombinant’ so as to render a method-of-treatment patent anticipated—and thus invalid—in light of prior-art treatments that used the naturally occurring human protein, where it is undisputed that the recombinant protein was not used in the prior art?”

In Turner v. Merit Systems Protection Board, a pro se petitioner filed a petition.

New Responses

In TCL Communication Technology Holdings Ltd. v. Godo Kaisha IP Bridge 1, Godo Kaisha submitted its brief in opposition to the petition, which presented two questions related to literal infringement with respect to industry standards. The opposition argues that the petitioners “do not present any issue that warrants review, or even that is genuinely presented by this case, because the Petition rests on mischaracterizations of what happened at trial, what role the district court played, and what the Federal Circuit held.” Therefore, Godo Kaisha contends, “this case is a particularly poor vehicle for . . . review.”

California Air Resources Board (CARB) submitted its brief in opposition to the Court in Sowinski v. California Air Resources Board, which presents a question related to preclusion in patent cases. In its brief, CARB contends that “[n]either the parties nor the courts applied or even referenced the Kessler doctrine (until petitioner invoked it in an unsuccessful petition for rehearing en banc).” Therefore, CARB argues that “[t]his is . . . not a proper vehicle for considering whether the Federal Circuit erred in other cases by ‘appl[ying] “a separate and distinct doctrine known as the Kessler Doctrine,”‘ especially . . . because petitioner’s suit is meritless and barred by sovereign immunity in any event.”

Response Requested

In Oracle America, Inc. v. United States, the Court requested a response from Amazon Web Services to the petition, which raised questions related to the law applicable to bid protests in government contracts cases.


The Court dismissed the petition in Ariosa Diagnostics, Inc. v. Illumina Inc. after the parties filed a joint stipulation of dismissal under Rule 46.1.


The Court denied two petitions this week.