Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to granted cases, there is no new activity to report. As for still-pending petitions, three new petitions were filed: one in a patent case raising questions related to eligible subject matter and two filed by pro se petitioners. Waivers of right to respond were filed in two cases: the patent case already mentioned raising questions related to eligible subject matter and another patent case also concerning eligibility. Finally, a brief in opposition was filed in a patent case that raises a question regarding the appealability of a discretionary denial of inter partes review. Here are the details.
Granted Cases
No new activity.
Petition Cases
New Petitions
Three new petitions were filed with the Court this past week.
In Gabara v. Facebook, Inc., the Court was asked to address four questions:
- “What is the appropriate standard for determining whether a patent claim is ‘directed to’ a patent-ineligible concept under step 1 of the Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C § 101?”
- “Whether, and to what extent, a court may ignore the ‘claimed advance’ that distinguishes a patented invention over the prior art in its determination of what a claim is directed to under step 1 of the Court’s two step framework for determining patent eligibility under 35 U.S.C. § 101?”
- “Whether, and to what extent, a court may consider whether a patent claim provides sufficient disclosure regarding how the claimed invention may be made or used to determine whether a patent claim is eligible for patenting under 35 U.S.C. § 101, or whether that improperly conflates § 101 and § 112?”
- “Whether preemption is a consideration that the lower courts must consider in determining whether a claimed invention is directed to patent-eligible subject matter under Section 101, or whether it can be properly ignored if not raised by the patent-challenger?”
In Bey v. United States, a pro se petitioner asked the Court to consider a series of questions.
In Kurkjian v. Secretary of the Army, the pro se petitioner, raised questions relating to a contract with the government.
Waivers of Right to Respond
Facebook also waived its right to respond in Gabara v. Facebook, Inc., which as discussed above concerns patent eligibility.
Likewise, in PersonalWeb Technologies LLC v. Google LLC, which asks the Supreme Court for guidance regarding patent eligibility in the computing arts, Facebook, Google, and YouTube filed waivers of right to respond.
Brief in Opposition
The government filed a brief in opposition in Intel Corporation v. VLSI Technology LLC, which concerns the ability to appeal a decision of the U.S. Patent and Trademark Office denying a petition for inter partes review of a patent. The government noted in its brief that earlier in this term the Supreme Court denied certiorari in two petitions presenting the same question that the petitioner raises in this case. Accordingly, the brief seeks the same result for this case. Further, the government maintained that “ongoing agency reconsideration of the [relevant] policies,” namely, pending agency reconsideration of the so-called Fintiv factors currently used by the Patent Trial and Appeal Board to determine whether to deny institution, “provides an additional reason to deny review.”