Supreme Court Activity

Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. As for granted cases, we are still waiting for the Court to issue opinions in the two pending patent cases. As for petitions, one new petition was filed in a patent case raising an Appointments Clause challenge; one respondent filed a brief in opposition to a petition raising questions related to an inmate’s right to assert patent infringement; the government submitted a waiver of its right to respond to a petition in a pro se case; and the Court requested a response to a petition raising questions related to preclusion. Additionally, four petitioners filed reply briefs in cases presenting questions related to the Federal Circuit’s jurisdiction, the Appointments Clause, and retroactivity in agency adjudication.

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 Petition

In Sonos, Inc. v. Implicit, LLC, the petitioner 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.”

New Response

In Tormasi v. Western Digital Corporation, Western Digital filed its brief in opposition to the petition, which presented three questions related to an inmate’s right to assert patent infringement. The opposition argues that “Petitioner’s constitutional and federal statutory arguments–which disregard Petitioner’s status as [a New Jersey State Prison] inmate who has no liberty or property interest in operating a business while incarcerated–are without merit.” Western Digital further contends that “Petitioner identifies no conflict with this Court’s precedent and no conflict among the circuit courts that would warrant this Court’s exercise of its discretion to review the Federal Circuit’s decision.” Western Digital goes on to argue that “Petitioner is simply dissatisfied with the Federal Circuit’s . . . conclusions that his patent infringement suit was in furtherance of his unauthorized business activities, and thus he lacked the capacity to sue for infringement.”

Waiver of Right to Respond

In Earley v. Hirshfeld, the government submitted a waiver of right to respond to the petition.

Response Requested

In PersonalWeb Technologies, LLC v. Patreon, Inc., the Court requested Patreon respond to the petition, which raised questions regarding preclusion and, in particular, the interpretation and application of the Kessler doctrine.

New Replies

Four new reply briefs were filed with the Court.

In Warsaw Orthopedic, Inc. v. Sasso, Warsaw Orthopedic filed its reply brief supporting its petition, which presents a question regarding the Federal Circuit’s jurisdiction. Warsaw argues that the Federal Circuit’s decision “[d]eclining to exercise exclusive federal jurisdiction to allow ultra vires state-court proceedings to run their course is incoherent and would ultimately increase this Court’s workload.” Warsaw further contends that “Sasso cannot make sense of the Federal Circuit’s fundamentally contradictory decision . . . [n]or does [he] identify any other case, in the entire history of the federal courts, in which a federal court with exclusive jurisdiction abstained in favor of a competing state-court proceeding.” Therefore, Warsaw claims, “[t]he decision below is at war with the basic notion of exclusive federal jurisdiction.”

In another case bearing the same name, Sasso v. Warsaw Orthopedic, Inc., Rick C. Sasso filed his reply brief supporting his cross-petition, which also asks the Court to review a question regarding the Federal Circuit’s jurisdiction. In his brief, Sasso claims that “[i]f the Federal Circuit had dismissed on the absence of subject-matter jurisdiction, the result would have been the same as affirming the abstention decision of the district court” because “[i]n both circumstances, the district court makes no decision on the merits.” He further argues that “patent law simply was not essential to any theory of recovery under the December 1999 Agreement” and that “[p]atent issues are not substantial in Medtronic’s complaint.” Sasso goes on to explain that he “made clear that this is a conditional cross petition to be considered if and only if Medtronic’s petition were granted,” but contends that “Medtronic’s position that only its petition merits review demonstrates instead that neither petition should be reviewed by this Court.”

In Wi-LAN, Inc. v. Hirshfeld, Wi-LAN filed its reply brief arguing that “Respondent’s sole argument against granting this petition that squarely presents the questions presented in Arthrex is forfeiture.” However, Wi-LAN explains, “forfeiture is excused where there is an intervening change in the law,” and “Wi-LAN’s petition neither seeks this Court’s guidance on the forfeiture issue nor raises any issue unrelated to the Appointments Clause challenge.” Rather, the petition “presents the same two questions currently being considered by this Court in the Arthrex cases.” Therefore, Wi-LAN contends, because “this Court is already considering the two questions presented in this petition, the petition should be held pending the resolution of those questions in the Arthrex cases, and then disposed of accordingly.”

In Hyundai Heavy Industries Co. v. United States, Hyundai Heavy Industries (HHI) filed its reply brief in support of its petition, which raises a question relating to a circuit split regarding administrative agency authority. In its brief, HHI claims that the Government “would have the Court believe that there is no circuit split, and that the Department [of Commerce] made no . . . change to its methodology,” yet “[b]oth assertions are incorrect.” HHI stresses that there is a “pressing need to resolve the circuit split at issue.” HHI further contends that, “[i]n attempting to respond to Hyundai’s argument, the Government mischaracterizes both the argument itself as well as the precedent underlying it.” HHI also argues that, as an alternative to resolving the split, “the Court can grant the petition for the purpose of vacating the Federal Circuit’s decision and remanding it thereto for further explanation.”