Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. This week, the Supreme Court set a date for oral argument in a veterans case that raises questions regarding the scope of clear and unmistakable error. As for still pending petitions, one new petition was filed with the Court in a patent case raising questions related to patent eligibility; one brief in opposition was filed in another patent case raising questions related to enablement; and one reply in support of a petition was submitted in a government contract case. Here are the details.
The Supreme Court set the oral argument in George v. McDonough for Tuesday, April 19. This case seeks clarification from the Supreme Court on the the scope of clear and unmistakeable error (CUE) with regard to cases involving veterans whose benefits have been wrongly withheld based on an incorrect interpretation of a statute.
- “What is the appropriate standard for determining whether a patent claim is ‘directed to’ a patent-ineligible concept under step 1 of the Alice two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101?”
- “Is patent eligibility (at each step of the Court’s two-step framework) a question of law for the court, based on the scope of the claims alone or a question of fact, based on the state of art at the time of the invention?”
Brief in Opposition
Sanofi submitted a brief in opposition in Amgen Inc. v. Sanofi, Aventisub LLC, which raises questions related to patent law’s enablement requirement. According to Sanofi, the Federal Circuit was correct in holding that Amgen’s broad functional claims concerning a genus of antibodies that bind to a certain protein “are not enabled and thereby invalid.” In its brief, Sanofi rejected both of the questions presented in the petition. First, Sanofi argued that the Supreme Court has “consistently held that patent validity issues like enablement are questions of law based on underlying findings of fact, and the Federal Circuit holds the same with respect to enablement specifically.” Second, Sanofi denied that the decision below created a special test for functional genus claims. Rather, Sanofi maintained, the Federal Circuit’s holding was “simply the result of applying factors that the [court] has long used when evaluating enablement to the undisputed relevant evidence in this case.”
In NVS Technologies, Inc. v. Department of Homeland Security, NVS Technologies filed a reply in support of its petition, asserting that the “government evidently aims to preserve the unfettered ability of a government agency to walk away from its contractual obligations.” According to NVS Technologies, Supreme Court intervention is needed to address “the disarray in Federal Circuit precedents governing the termination-for-convenience power.” Moreover, the petitioner stated, “the need for the Court’s review is underscored by the Board’s and the government’s divergent, but equally flawed, understanding of the limitation-of-funds (‘LOF’) clause” at issue in the case. The petitioner further claimed that “the generous boundary due process may set for Rule 36 summary affirmances was exceeded here, where the Board decision never truly addressed the merits of [the] good-faith-and-fair-dealing claim because it adjudicated that claim under a bad-faith standard.”