Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. The last week has been a busy one. As for granted cases, this week the Court decided United States v. Arthrex, Inc., agreeing with the Federal Circuit that the America Invents Act created an Appointments Clause violation with respect to the appointment and supervision of Administrative Patent Judges in inter partes review proceedings. As for petition cases:
- three new petitions were filed in patent law, Tucker Act, and pro se cases;
- two respondents filed briefs in opposition in vaccine and government contract cases;
- a respondent filed a brief in support of a petition in a patent case;
- a reply brief was submitted in supported of a petition in a patent case;
- the government filed waivers of right to respond in a tax case and a pro se case;
- a petitioner in a patent case filed a motion to dismiss; and
- the Court dismissed thirteen petitions.
Here are the details.
On June 21, the Court issued its decision in United States v. Arthrex, Inc. In a controlling opinion authored by Chief Justice Roberts, the Court found that the America Invents Act created an Appointments Clause violation with respect to the appointment and supervision of Administrative Patent Judges in inter partes review proceedings. The Court vacated the Federal Circuit’s judgment and remanded the case to allow the Director of the Patent and Trademark Office to consider whether to overturn the Patent Trial and Appeal Board’s underlying decision. You can learn more by reading our breaking news post here. Our opinion summary will be published soon.
As of this writing, we are still waiting for the Supreme Court’s decision in Minerva Surgical, Inc. v. Hologic, Inc., which addresses patent law’s assignor estoppel doctrine. The Supreme Court will decide the case within the next week, perhaps even this morning. We will report on the Court’s decision.
There were three new petitions filed this week.
In iLife Technologies, Inc. v. Nintendo of America, Inc., iLife Technologies requested that the Court review two questions:
- “What is the appropriate standard for determining whether a patent claim is “directed to” a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?”
- “Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent?”
In Sharifi v. United States, the petitioner asked the Court to consider the following question:
- “Whether a United States citizen can be denied his Fifth Amendment rights to just compensation for property taken by the United States based upon foreign law.”
In Meidinger v. United States, the petitioner requested that the Court consider the following four questions:
- “What are each courts’ jurisdiction authority and limitations of Whistleblower contracts of the Tax Court, and the Federal Claims Court, created under 26 USC § 7623(b)?”
- “What are each courts’ jurisdiction authority and limitations of Whistleblower Office administrative procedures by the Tax Court, and the Federal Claims Court, created under The Tax Relief and Healthcare Act of 2006?”
- “Whether, under 26 USC § 7623(b), can a Whistleblower have a contractual relationship with the IRS Whistlbl[ow]er Office without an express contract?”
- “When is the contract formed between the Whistleblower and the IRS Whistleblower Office?”
In Dupuch-Carron v. Secretary of Health and Human Services, the government filed its brief in opposition to the petition, which presents questions relating to the interpretation of sections of the National Childhood Vaccine Injury Act. The government explains that “[p]etitioners contend that [a minor whose name is abbreviated using the acronym] A.R. D-C. satisfies the Vaccine Act’s requirement of having ‘returned’ to the United States within six months after vaccination.” The government, however, further states that “A.R. D-C. was never present in the United States between the time of his birth and the time of his vaccination,” and so argues “his first visit to the United States, for medical treatment following vaccination, did not qualify as a ‘return’ to the United States.” The government also contends that “[p]etitioners’ contrary interpretation of the Vaccine Act would lead to results that Congress is unlikely to have intended,” as petitioner “prefer[s] a broader interpretation of the term ‘returned.'” The government argues that “the term ‘returned’ is not naturally read to encompass ‘children whose pre-vaccination presence in the United States was while in utero.'” Additionally, the government argues, “[b]ecause the case’s significance is limited to the parties, it does not warrant the Court’s review.”
In Oracle America, Inc. v. United States, Amazon Web Services, Inc. (Amazon) filed its brief in opposition to the petition, which asks the Court to review questions regarding a bid protest. Amazon explains that it “takes no position on the first question presented—i.e., whether the procurement should have been structured differently.” Amazon, however, argues that, with respect to “the second question presented—i.e., whether the court of appeals correctly concluded the procurement was not prejudiced by the personal conflicts of interest of three DoD employees— this case is a poor vehicle for deciding that issue” because “[t]he alleged personal conflicts of interest . . . are highly fact-bound and had no effect on Oracle’s exclusion from the competitive range.” Amazon further contends that “the [Department of Defense], the [Government Accountability Office], the Court of Federal Claims, and the Federal Circuit each correctly concluded the alleged personal conflicts could not have affected the procurement.”
In Hirshfeld v. Implicit, LLC, Apple Inc. filed a response brief in support of the petition, which presents a question regarding the appointment of administrative patent judges. Apple explains that it “was the appellee in one of two consolidated Federal Circuit appeals that were recently remanded . . . in light of the Federal Circuit’s decision in Arthrex, Inc. v. Smith & Nephew, Inc.” Apple contends that “if [the Court] ultimately reverses the Federal Circuit’s decision, the ruling will almost certainly require vacatur of the remand order in Apple’s appeal.” Therefore, Apple claims, “the petition should be held and disposed of following the issuance of this Court’s judgment in Arthrex.”
In TCL Communication Technology Holdings Ltd. v. Godo Kaisha IP Bridge 1, the petitioner filed its reply brief in support of its petition, which presents questions related to claim construction in patent cases. TCL argues that “[t]he Federal Circuit’s decision violates the Supreme Court’s precedent in Markman, which requires the district court to decide claim construction issues, not the jury.” TCL contends that “[t]his Court has never permitted a party to prove patent infringement solely by showing through expert testimony that a patent is essential to a standard and that the accused product complies with that standard,” and “such an analysis . . . is a plain violation of Markman.” TCL further claims that “[r]espondent’s argument allows the jury . . . to conclude that the patent claims are coextensive with an industry standard,” but, as stated in Markman, “judges are better suited than juries to determine the construction of written instruments and technical terms, and . . . allowing judges to construe patent terms provides more uniformity than if terms were construed by the jury.” TCL further argues that, “[i]f juries are allowed to perform this analysis, the uniformity described above will be compromised,” leading to “severe risk that a jury’s lack of expertise with interpreting legal and technical terms will result in scenarios where patent claims are found coextensive with a standard when they are not and vice versa.”
Waivers of Right to Respond
The government submitted waivers of right to respond to petitions in two separate cases.
- In Kimble v. United States, a tax case, the government submitted a waiver of right to respond.
- In Mooney v. United States, a pro se case, the government also submitted a waiver of right to respond.
Motion to Dismiss
Lastly, the Court denied petitions in thirteen cases:
- Earley v. Hirshfeld (burden of proof for inherency)
- United States v. Common Ground Healthcare Cooperative (application of non-statutory mitigation defense)
- Common Ground Healthcare Cooperative v. United States (application of non-statutory mitigation defense)
- Sasso v. Warsaw Orthopedic, Inc. (Federal Circuit jurisdiction)
- Warsaw Orthopedic, Inc. v. Sasso (Federal Circuit jurisdiction)
- Nixon v. General Motors Corporation (pro se)
- United States v. Maine Community Health Options (government’s statutory shall-pay obligations under the ACA)
- Maine Community Health Options v. United States (government’s statutory shall-pay obligations under the ACA)
- Immunex Corp. v. Sanofi-Aventis U.S. LLC (administrative patent judges)
- Wi-LAN, Inc. v. Hirshfeld (administrative patent judges)
- Amarin Pharma, Inc. v. Hikma Pharmaceuticals USA Inc. (factors for an obviousness challenge)
- Gadsden Industrial Park, LLC v. United States (takings)
- Hyundai Heavy Industries Co. v. United States (circuit split regarding administrative agency authority)