Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to the Supreme Court’s October 2021 term, since our last update the Court has not granted any petitions in cases decided by the Federal Circuit. Additionally, since our last update no new petitions have been filed with the Court. As for previously filed petitions, however, in three patent cases four briefs in opposition were filed. In addition, the Court denied a petition in another patent case. Here are the details.
As mentioned, with respect to the Supreme Court’s October 2021 term, since our last update, the Court has not granted any petitions in cases decided by the Federal Circuit.
Since our last update, no new petitions were filed.
Briefs in Opposition
In Apple Inc. v. Optis Cellular Technology, LLC, the government filed a brief in opposition. According to the government, the Federal Circuit “correctly dismissed petitioner’s appeals of the Board’s determinations not to institute inter partes review in this case” because determination by the Director whether to institute an inter partes review is “final and nonappealable.” The government further argued that this case would be a “poor vehicle to consider the questions presented, given that the agency has sought public input on and is currently considering whether to modify the Fintiv factors, which petitioner seeks to challenge.” Therefore, the government urges the Court to deny certiorari.
Two briefs in opposition were filed in Mylan Laboratories Ltd. v. Janssen Pharmaceutica, N.V., another case involving a challenge to the denial of a request for inter partes review.
First, the respondent, Janssen Pharmaceutica, filed its brief in opposition arguing that decisions denying institution of inter partes review “fall comfortably within [the] broadly worded appeal bar.” Janssen asserted that “there is no mandate to institute inter partes review even when statutory prerequisites are met, and the institution decision is ultimately committed” to the discretion of the U.S. Patent and Trademark Office. Moreover, according to Janssen, “this case would not be an appropriate vehicle for resolving the threshold jurisdictional question presented—much less Mylan’s merits challenge to the ‘NHK-Fintiv’ factors.”
Second, the government also filed a brief in opposition. In it, the government argued that, “[b]ecause the court of appeals correctly held that it lacked jurisdiction over petitioner’s appeal, and petitioner has not challenged the court’s denial of mandamus relief, this case presents no opportunity to address those arguments.” Therefore, the government explained, the petition should be denied.
In Infinity Computer Products, Inc. v. Oki Data Americas, Inc., the respondent also filed a brief in opposition. According to Oki Data, the Federal Circuit “correctly held Petitioner Infinity’s patent claims invalid as indefinite by applying well-established legal principles to a particularly idiosyncratic record.” Moreover, Oki Data argued, Infinity’s approach to determining indefiniteness, “if accepted, would overturn decades of jurisprudence and introduce conflict and confusion into the law well beyond the issue of indefiniteness.”
The Court denied certiorari in ENCO Systems, Inc. v. DaVincia, LLC, in which the petitioner raised a question concerning patent eligibility.