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 certiorari in any cases decided by the Federal Circuit. Three new petitions, however, have been filed with the Supreme Court: two in patent cases and one in a pro se case. Moreover, nine amicus briefs across three cases have been filed. Additionally, four waivers of right to respond, two briefs in opposition, and three replies have been filed. Here are the details.
With respect to the Supreme Court’s October 2021 term, the Court has not granted any petitions in cases decided by the Federal Circuit.
In Intel Corporation v. VLSI Technology LLC, the petitioner asked the Court the following question:
- “Whether the U.S. Court of Appeals for the Federal Circuit may review, by appeal or mandamus, a decision of the U.S. Patent and Trademark Office denying a petition for inter partes review of a patent, where review is sought on the grounds that the denial rested on an agency rule that exceeds the PTO’s authority under the Leahy-Smith America Invents Act, is arbitrary or capricious, or was adopted without required notice-and-comment rulemaking.”
In Apotex Inc. v. Cephalon, Inc., the petitioner sought review of the following question:
- “Whether claimed inventions involving reformulating and administering an old drug in ways that are no better than prior techniques, and which had been taught and suggested in the prior art, are nevertheless patentable although these formulations and methods were at least ‘obvious to try’ under this Court’s decision in KSR, Int’l v. Teleflex, Inc., merely because the court found that a person of ordinary skill in the art would not have been sufficiently motivated to make and administer the drug in this way.”
A pro se petitioner filed a petition in Straw v. United States.
Three amicus briefs were filed in support of the petition in Amgen Inc. v. Sanofi, Aventisub LLC, which raised two questions related to the enablement requirement.
- The Association of University Technology Managers, Inc. filed an amicus brief arguing that Supreme Court review is necessary because “the decision below threatens to disrupt the patent bargain and thereby impede (rather than promote) the ‘Progress’ of ‘useful Arts.'” According to the Association of University Technology Managers, Inc., the Federal Circuit replaced the statutory enablement standard with an “artificially elevated and uncertain standard,” which will compel innovators “to divert precious resources away from making new discoveries . . . devoting them instead to making and testing additional examples of their invention and adding information already known to skilled artisans to their patent applications.” Additionally, the brief stated, the Federal Circuit erred “by reaffirming its view . . . that enablement is a question of law.”
- In another amicus brief in this case, Glaxosmithkline asserted that “[t]he decision below joins a trend of Federal Circuit decisions that impose obstacles preventing innovators from receiving commensurate protection for their contributions to science.” This in turn, according to Glaxosmithkline, provides little incentives for companies to invest money in research and development. Glaxosmithkline therefore argued that, “without a course correction, the Federal Circuit’s holding risks eviscerating incentives to innovate that the patent system’s quid pro quo was designed to provide.”
- A third amicus brief was filed by various Intellectual Property professors throughout the United States. These professors argued that the “Federal Circuit has changed the law dramatically in recent years, to the point where it is no longer possible to have a valid genus claim in the chemical and biotechnology industries.” The professors therefore contended that review is necessary “to return the law to its traditional moorings.”
Two amicus briefs were filed in Transpacific Steel LLC v. United States, a trade case.
- Several members of the United States Senate filed an amicus brief citing to the dissent and arguing that “[t]he Federal Circuit’s decision, if upheld, permits a President to breach statutory requirements and assume powers that are explicitly reserved to Congress.”
- A second amicus brief filed by Oman Fasteners, LLC and Koki Holdings America, Ltd. argued that the lower court diverged from plain statutory text. In effect, according to the brief, the Federal Circuit “topple[d] the most significant guardrails Congress enacted to cabin its otherwise expansive delegation of international commerce power to the President.”
Four amicus briefs were filed in Apple Inc. v. Qualcomm Inc. in support of the petition, which raised a question related to standing.
- Engine Advocacy filed an amicus brief arguing that the Federal Circuit’s “overly-restrictive view of Article III standing in a series of patent appeals contravenes Supreme Court precedent and Congress’s choice to allow such appeals to proceed.” According to Engine Advocacy, Supreme Court intervention “is necessary to prevent harms to the patent system, domestic innovation, and the broader public that the Federal Circuit’s lopsided deference to the Patent Trial and Appeal Board (‘PTAB’) will otherwise inflict.”
- In the same case, Senator Patrick Leahy and Congressman Darrell Issa filed an amicus brief asserting that one of the major components of the Leahy-Smith America Invents Act was “the establishment of new procedures at the Patent Office to improve patent quality—both for the benefit of patent owners and for those seeking to avoid claims of infringement.” According to Leahy and Issa, the Federal Circuit’s decision threatens the effectiveness of the review procedures under this Act. Specifically, the brief stated that by “unnecessarily curtailing an IPR petitioner’s appellate review rights in ways that the Constitution does not require, the Federal Circuit threatens to turn one of the Leahy-Smith America Invents Act’s major achievements into an empty shell.”
- Unified Patents, LLC also filed an amicus brief arguing that the Federal Circuit has “narrowed competitor standing in the patent context so that even bitter rivals with a history of litigation struggle to establish standing.” According to Unified Patents, the Federal Circuit’s approach to standing “ignores the economic reality of patent assertions in the market.”
- In the fourth amicus brief, Thales argued for review because the “Federal Circuit’s decision deviates from [the] Court’s holding in MedImmune, Inc. v. Genentech, Inc.” Moreover, Thales claimed, the owners of “standard-essential patents” (SEPs) are tempted to “seize on the Federal Circuit’s decision to restrict the ability of Thales and other companies who have taken, or are likely to take, SEP portfolio licenses to challenge patents that should never have been issued or declared essential to a standard.”
Waivers of Right to Respond
Waivers of right to respond were filed in four cases:
- Dropbox filed a waiver of right to respond in WhitServe LLC v. Dropbox, Inc., which raises questions related to patent eligibility.
- In Intel Corporation v. VLSI Technology LLC, which challenges the authority to review a denial of inter partes review, VLSI Technology filed a waiver of right to respond.
- The government waived its right to respond in Philippeaux v. United States, a pro se case.
- In another pro se case, Gaylord v. McDonough, the government again waived its right to respond.
Briefs in Opposition
Optis Cellular Technology filed a brief in opposition in Apple Inc. v. Optis Cellular Technology, LLC, which involves a challenge to the holding that a denial of a petition for inter partes review is not reviewable. The opposition brief argues that “IPR is only one of several procedures, both judicial and administrative, to challenge patents’ validity.” Accordingly, the brief contends, “a petitioner whose request for an IPR is denied has not lost anything of substance.” Moreover, Optis argues, “judicial review of which IPRs to conduct would waste resources better spent on IPRs themselves.” Ultimately, Optis claims, “Apple’s arguments are best raised to the PTO itself, and to the extent the PTO rejects them, the APA is a more natural pathway to challenge that decision.”
In Arellano v. McDonough, which presents a question related to tolling in a veterans case, the government filed a brief in opposition arguing that further review is not warranted here because the petitioner “would have no reasonable likelihood of obtaining any tangible relief.”
The petitioner filed a reply in George v. McDonough asserting that it is undisputed that “the Federal Circuit’s holding will prevent disabled veterans from recovering potentially life-changing compensation in numerous cases where the statute requires it.” Further, the petitioner argued that this case is a proper vehicle for the Court to clarify the scope of clear and unmistakable error.
In Apple Inc. v. Optis Cellular Technology, LLC, Apple submitted its reply brief, asserting that “the Federal Circuit has given the PTO free rein to deny hundreds of IPR petitions based on an irrational rule that the public had no opportunity to comment on, that the Director decreed without explanation (much less a reasoned explanation), and that contradicts the America Invents Act.” According to Apple, this case is an ideal vehicle to review a critical legal question.
In FG SRC LLC v. Microsoft Corp., the petitioner filed a reply arguing that, in light of the recent Arthrex decision, a “grant, vacate, remand order is the appropriate remedy in this case.” The petitioner claimed that “[a] decision to the contrary would mean that parties must indefinitely and exhaustively appeal all issues to the Federal Circuit just in case the controlling law may change after the Federal Circuit issues a decision but before a party’s right to seek this Court’s review is exhausted.”