Supreme Court Activity

Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. Currently, with respect to the Supreme Court’s October 2021 term, the Court has not granted any petitions in cases decided by the Federal Circuit. As for pending petitions, since our last update one new petition was filed in a taking case asking questions concerning choice of law, the government submitted a waiver of right to respond in a Tucker Act case, and respondents filed response briefs in a patent case and a pro se case. Here are the details.

Granted Cases

There is no new activity to report.

Petition Cases

New Petition

One new petition was filed with the Court this week.

In Albright v. United States, the petitioners asked the Court to review the following two questions:

  1. “Does constitutional federalism require a federal court that confronts an outcome-determinative and unresolved State law issue that is particularly within the expertise of a State court—here, whether railroad deeds created an easement or fee simple title, a question antecedent to Petitioners’ Fifth Amendment takings claim—to certify the question of State law to the State’s highest court rather than making an Erie-guess about how the State’s highest court would decide the issue?”
  2. “Under what standards may a federal court make an Erie-guess about how the State’s highest court would decide an outcome-determinative issue?”

Waiver of Right to Respond

In Sharifi v. United States, a Tucker Act case, the government submitted its waiver of right to respond.


In Biogen MA Inc. v. EMD Serono, Inc., the respondents filed their brief in opposition to the petition, which presents a question regarding anticipation of a method-of-treatment patent. EMD Serono explains “the Federal Circuit held that the jury’s verdict of anticipation was supported by legally sufficient evidence including two prior art references that disclosed every element of the claims.” EMD Serono states that “Biogen concedes that the Amgen framework applies to product-by-process claims, but argues that this same framework should not apply to treatment method claims with a nested product-by-process limitation.” EMD Serono then argues that “the Amgen analysis will necessarily result in the same conclusion on anticipation for both forms of claims.”

In Kaszuba v. Hirshfeld, a trademark case, the government filed its brief in opposition to the petition, which was presented by a pro se petitioner. In response to the first question, the government argues that “[t]he Federal Circuit has applied the principles articulated in Lexmark to determine whether various parties were entitled to petition for cancellation of trademarks, and petitioner’s . . . challenge to [that application] does not warrant this Court’s review.” The second question relates to intervention by the USPTO Director. The government contends “it is well-established that the Director may intervene on appeal to defend agency decisions, and the court of appeals’ summary order denying petitioner’s challenge . . . does not raise any issue that warrants further review.” Lastly, the third question relates to administrative trademark judges’ status as principal officers under the Constitution’s Appointments Clause. The government claims that “[p]etitioner forfeited any Appointments Clause challenge by failing to timely raise it in the proceedings below,” and anyways contends that “the argument lacks merit” because “the Lanham Act does not restrict the Director’s authority to review and reverse decisions of the Trademark Trial and Appeal Board—as a plurality of this Court recognized in Arthrex itself.”