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, the Court still has not granted any petitions in cases decided by the Federal Circuit. Since our last report, however, ten new petitions have been filed in patent, government contract, veterans, and pro se cases; briefs in opposition have been filed in three patent and veterans cases; replies in support of petitions have been filed in three patent cases; the Court requested a response to a petition in a patent case; and the Court denied petitions in three patent, trademark, and pro se cases. Here are the details.
Granted Cases
With respect to the Supreme Court’s October 2021 term, the Court still has not granted any petitions in cases decided by the Federal Circuit.
Petition Cases
New Petitions
In Amgen Inc. v. Sanofi, Aventisub LLC, the petitioner asked the Court to consider the following questions:
- “Whether enablement is ‘a question of fact to be determined by the jury,’ Wood v. Underhill, 46 U.S. (5 How.) 1, 4 (1846), as this Court has held, or ‘a question of law that [the court] review[s] without deference,’ Pet. App. 6a, as the Federal Circuit holds.”
- “Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to ‘make and use’ the claimed invention, 35 U.S.C. § 112, or whether it must instead enable those skilled in the art ‘to reach the full scope of claimed embodiments’ without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial ‘ ‘time and effort,’ ‘ Pet. App. 14a (emphasis added).”
In WhitServe LLC v. Dropbox, Inc., the petitioner asked the Court to consider the following questions:
- “If a patentee makes factual assertions and provides supporting evidence that its claimed invention is directed to patent-eligible subject matter under 35 U.S.C. § 101, is a court permitted to overlook the patentee’s assertions and evidence, provide no opportunity for a hearing, ignore the perspective of a person having ordinary skill in the art at the time of the invention, find that the claimed invention is directed to patent-ineligible subject matter, and dismiss the patentee’s complaint with prejudice despite the requirements of Rule 12(b)(6) and the statutory presumption of § 282(a)?”
- “Whether 35 U.S.C. § 101 requires a patent specification to explain the technological processes underlying the purported technological improvement in a patent claim, or if this encroaches on the enablement test under 35 U.S.C. § 112?”
In Baxter Corp. v. Beckton, Dickinson & Co., the petitioner asked the Court to consider the following questions:
- “Whether the Federal Circuit’s practice of allowing IPR petitioners to rely on evidence other than patents and printed publications, such as expert testimony, to fill in gaps in the prior art violates the plain text of § 311(b).”
- “Whether the Federal Circuit’s practice of resolving contested issues of patentability on appeal from Board decisions—rather than remanding those issues for the agency to decide in the first instance— violates the ‘ordinary remand rule.’”
In Apple Inc. v. Qualcomm Inc., the petitioner asked the Court to consider the following question:
- “Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents.”
In FG SRC LLC v. Microsoft Corp., the petitioner asked the Court to consider the following question:
- “[W]hether the Federal Circuit’s summary decisions below should be vacated and these cases remanded to cure the constitutional violation in accordance with this Court’s decision in Arthrex.”
In Yu v. Apple Inc., the petitioner asked the Court to consider the following question:
- “Whether, when applying the test for patent eligibility set forth in Mayo Collaborative Services v. Prometheus Laboratories, Inc., 566 U.S. 66 (2012), a patent claim should be considered ‘as a whole’ in accordance with Diamond v. Diehr, 450 U.S. 175 (1981), or instead, whether all conventional elements of the claim must be disregarded prior to determining its ‘point of novelty’ as set forth in this Court’s older precedent in Parker v. Flook, 437 U.S. 584 (1978).”
In NVS Technologies, Inc. v. Department of Homeland Security, the petitioner asked the Court to consider the following questions:
- “Can a federal agency refuse to allot available funds to an incrementally funded contract for any reason or no reason, and so terminate that contract, unconstrained by the duty of good faith and fair dealing, and still maintain an enforceable contract supported by consideration?”
- “Can a federal agency repudiate its contractual obligations when its justifications for doing so are arbitrary, and unsupported by any evidence, and no reasoned analysis is offered for its supposed redefinition of its mission?”
- “Does a summary affirmance of a Board decision that acknowledged, but did not adjudicate, Petitioner’s good-faith-and-fair-dealing claim violate due process?”
In Snyder v. McDonough, the petitioner asked the Court to consider the following questions:
- “Whether the Secretary of Veteran Affairs’ imposition of a length of service requirement for the presumption of service connection for ALS is counter to this Court’s holdings in Motor Vehicles Mfrs. Ass’n v. State Farm Auto. Ins. Co., 463 U.S. 29 (1983) and its progeny, which require ‘reasoned rulemaking,’ showing a rational connection between the facts found and the choices made?”
- “Whether the Secretary’s insertion of a condition precedent related to length of service into an evidentiary presumption violated the Veterans Benefits Act of 1957, which revoked the VA’s authority to define who is – and who is not – a veteran for disability benefits based on this specific precondition?”
- “Whether the Federal Circuit’s decision declaring the extensive breadth of the Secretary’s general rulemaking authority opens the door for the VA to impose upon veterans other requirements that Congress has not authorized for the receipt of benefits?”
In addition, petitions were filed in two pro se cases: Philippeaux v. United States and Gaylord v. McDonough.
Briefs in Opposition
Microsoft Corp. filed its brief in opposition to the petition in FG SRC LLC v. Microsoft Corp., which as discussed above requested the Court grant the petition, vacate the judgment, and remand the case “to cure the constitutional violation in accordance with this Court’s decision in Arthrex.” In its opposition, Microsoft argues that the petitioner “failed properly to present its Appointments Clause challenge” at the Federal Circuit and “therefore has forfeited that challenge.” Moreover, Microsoft contends, “nothing about this case calls for a different result than other cases in which a petition failed properly to present an Appointments Clause challenge on appeal.”
The Secretary of Veterans Affairs filed its brief in opposition to the petition in Kisor v. McDonough. The petitioner sought to convince the Court to consider “[w]hether the term ‘relevant official service department records’ in 38 C.F.R. § 3.156(c)(1)’s ‘reconsideration’ provision encompasses all records that ‘go to a benefits criterion,’ or is instead restricted to only those records that ‘relate to the basis of the VA’s initial denial of benefits.’” In its brief in opposition, the Secretary maintains that the Federal Circuit “correctly rejected that reading of Section 3.156(c), and its decision does not conflict with any decision of this Court or another court of appeals.” As a result, he contends, “[f]urther review is not warranted.”
The Secretary of Veterans Affairs also filed a brief in opposition in George v. McDonough, a case presenting a question about clear and unmistakeable error in the context of veterans’ claims. The Secretary characterizes the petitioner’ as contending “that the Board’s 1977 disability-benefits decision in his case constitutes ‘clear and unmistakable error’ because the Federal Circuit later held that a regulation in existence at the time of the decision reflected an impermissible interpretation of the governing statute.” According to the Secretary, the Federal Circuit “correctly rejected that contention, and its decision does not conflict with any decision of [the Supreme] Court or another court of appeals.” Moreover, the Secretary maintains, “this case would be a poor vehicle in which to address the question presented because, under the clear-and-unmistakable-error standard, a claimant must show that ‘the result would have been manifestly different but for the error’ and the “Petitioner cannot make that showing and did not attempt to do so in the courts below.”
Replies in Support of Petitions
In Olaf Sööt Design, LLC v. Daktronics, Inc., a patent case in which the petitioner raised a question regarding patent claim construction, the petition filed its reply in support of its petition. The petitioner maintains that “review is necessary to address the Federal Circuit’s erroneous interpretation of Markman as allowing it to set aside jury verdicts when no claim construction is warranted.”
In Infineum USA L.P. v. Chevron Oronite Company LLC, a patent case concerning the Appointments Clause, the petitioner filed its reply in support of its petition. In it, the petitioner argues that it “did not waive its Appointments Clause challenge,” that “GVR is appropriate in this case.”
In Apple Inc. v. Optis Cellular Technology LLC, Apple filed its reply in support. Its petition raised a question regarding whether the Federal Circuit may review, by appeal or mandamus, a denial of a petition for inter partes review of a patent, where review is sought based on the argument that the denial was based on an agency rule exceeding the authority of the Patent and Trademark Office. In its reply brief, Apple contends that the “government does not dispute that the petition presents a recurring question of vital importance to the patent system.” Furthermore, it argues the “government’s position rests almost entirely on an attempted defense of the decision below on the merits.” But, says Apple, that defense is incorrect and “contravenes a bedrock principle that judicial review is available to correct and remedy agency action that exceeds the bounds established by Congress.”
Request for Response
In Apple Inc. v. Optis Cellular Technology LLC, discussed above, the Court requested a response, presumably from the private party respondent, Optis Cellular Technology, LLC, which had previously filed a wavier of right to respond to the petition.
Denials
The Court denied the petitions in the following cases: