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 three new petitions were filed in patent cases addressing eligibility, procedure in inter partes review proceedings, and the printed publication category of prior art. Additionally, the Court requested responses to two pending petitions involving challenges to the use of administrative patent judges under the Appointments Clause. Here are the details.
There is no new activity to report.
There were three new petitions filed this week.
In Hu v. Hirshfeld, Hu requested that the Court consider the following questions:
- “Whether the PTO’s varied standards, buttressed by the decisional law of the lower reviewing courts, for determining operability under § 101 are biased towards conventional inventions but against groundbreaking inventions or discoveries, thus hindering the promotion of the ‘Progress of Science and Useful Arts’ emanating from the Intellectual Property Clause of the U.S. Constitution.”
- “Whether the Federal Circuit erred by applying a ‘heightened standard’ of operability under § 101, ‘typically measured by reproducibility of results’, when claimed inventions or discoveries are considered to contain concepts straining scientific principles, thus effectively raising the standard of proof on operability from ‘more likely than not true’ to ‘beyond a reasonable doubt’ or ‘as a matter of statistical certainty.'”
- “Whether the decisional law of the reviewing courts, creating judicial exceptions to patent eligibility under § 101, has no statuary basis and thus inapplicable in light of this Court’s recent decision in Henry Schein, Inc. v. Archer & White Sales, Inc. 139 S. Ct. 524 (2019).”
- “Whether the PTO personnel and the Federal Circuit can substitute their common sense and knowledge and expertise of a person having ordinary skill in the art (‘PHOSITA’) in determining operability under § 101.”
In Mylan Laboratories Ltd. v. Janssen Pharmaceuticals, N.V., petitioner asked the Court to review two questions:
- “Does 35 U.S.C. § 314(d) categorically preclude appeal of all decisions not to institute inter partes review?”
- “Is the NHK-Fintiv Rule substantively and procedurally unlawful?”
In Centripetal Networks, Inc. v. Cisco Systems, Inc., petitioner asked the Court to consider the following question:
- “Can a document qualify as a printed publication if it is stored on a password-protected website, not accessible to the public, and available only to customers who pay over $25,000 dollars to purchase related software?”
In Sonos, Inc. v. Implicit, LLC, the Court requested a response to the petition, which raised an issue related to the constitutionality of administrative patent judges under the Appointments Clause.
In Hirshfeld v. Implicit, LLC, the Court requested a response to the petition, which also involved issues relating to the constitutionality of administrative patent judges under the Appointments Clause.