Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to granted cases, the Secretary of Veterans Affairs filed its merits brief in George v. McDonough, which concerns the scope of clear and unmistakable error in the context of veterans’ claims. With respect to petitions, one new petition was filed in a case presenting a question related to Article III standing for patent licensees; a brief in opposition was submitted in a case raising questions related to patent eligibility; and reply briefs were filed in two patent cases: one raising questions related to inter partes review and one raising questions concerning enablement. Here are the details.
The government submitted its merits brief in George v. McDonough, which presents a question about clear and unmistakable error in the context of veterans’ claims. According to the government, “the Board does not commit [a clear and unmistakeable] error by applying a VA regulation later deemed invalid.” The government further argued that a statutory interpretation “can both establish what a statute has always meant and reflect a change in the prevailing interpretation of the law.” Moreover, the government stated that the Court “should decline to upset [the] balance reflected in the statutory framework by expanding the nature of collateral review as petitioner suggests, particularly given the immense scope of the veterans’ benefits system and the real-world constraints in which the system operates.” Finally, it asserted that the petitioner cannot establish clear and unmistakable error because petitioner has not shown that the outcome “would have been manifestly different but for the error.”
- “Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents.”
Brief in Opposition
Apple submitted its brief in opposition in Universal Secure Registry LLC v. Apple Inc., arguing that this case presents a poor vehicle to clarify or modify principles of patent eligibility because petitioner’s “patent claims recite nothing more than the type of abstract concept that this Court and the Federal Circuit have long held patent-ineligible—regardless of the test applied.” Here, Apple asserted, the patents describe the “secure verification of a person’s identity.” According to Apple, these patents do not provide a technological advance or a patentable improvement over longstanding practices within financial institutions in confirming one’s identity.” Moreover, Apple asserted, “even if this Court were to take up and reverse the Section 101 ruling below, the underlying patent claims would likely be invalidated on other grounds.” Ultimately Apple urged the Court to deny review because “the unanimous decision below applied Section 101 in a wholly uncontroversial manner that is in line with the longstanding precedent of this Court and the Federal Circuit.”
In Baxter Corp. v. Becton, Dickinson & Co., which challenges the Federal Circuit’s practices in reviewing Patent Trial and Appeal Board decisions, Baxter filed its reply in support of its petition. According to Baxter, Becton’s brief in opposition distorted the arguments raised in the petition. According to Baxter, “[t]he issue is not whether [inter partes review] challengers may use expert testimony at all, but whether they may use such evidence to supply claim limitations that are necessary to invalidate a patent but are not found in ‘patents and printed publications,'” as stated under 35 U.S.C. § 311(b). Baxter argued that the Federal Circuit has repeatedly engaged in “statutory defiance” by permitting “IPR challengers to use evidence that is not a patent or printed publication,” such as background statements and expert testimony. Furthermore, Baxter asserted, the Federal Circuit’s “distortion of § 311(b) harms both the inventive community and the broader public.” Additionally, Baxter argued, the Federal Circuit’s failure to follow the ordinary remand rule, which requires the court to remand the case so that the Board can make the ultimate obviousness determination, “impedes judicial review of agency decisions and violates separation-of-powers principles.”
A reply in support of another petition was submitted in Amgen Inc. v. Sanofi, Aventisub LLC, which raises questions related to patent law’s enablement requirement. According to Amgen, in contravention of Supreme Court precedent, the Federal Circuit has repeatedly treated enablement as a question of law. As a result, Amgen argued, the Federal Circuit’s treatment of enablement as a legal question “regularly permits courts to substitute their judgments on issues ‘[i]t was the right of the jury to determine.'” According to Amgen, review is necessary to address the Federal Circuit’s heightened standard, which could have a devastating impact on innovation.