Petitions / Supreme Court Activity

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 since our last update. With respect to petition cases, four new petitions were filed with the Court in two patent cases, a takings case, and a pro se case; reply briefs in support of petitions were submitted in a patent case and a case involving application of the Equal Access to Justice Act; and an amicus brief was filed in a patent case. Here are the details.

Granted Cases

There is no new activity to report.

Petition Cases

New Petitions

Four new petitions were filed with the Court.

In Tropp v. Travel Sentry, Inc., the petitioner asked the Court to consider the following question:

  • “Whether the claims at issue in Tropp’s patents reciting physical rather than computer-processing steps are patent-eligible under 35 U.S.C. § 101, as interpreted in Alice Corporation Pty v. CLS Bank International, 573 U.S. 208 (2014).”

In Junker v. Medical Components, Inc., the petitioner asked the Court to consider the following questions:

  1. “May a price quotation invoke the on-sale bar when made by a third party who had no right to sell the invention and with no involvement by the patentee?”
  2. “May a price quotation invoke the on-sale bar and be deemed an offer though it does not constitute a commercial offer for sale as understood by the relevant business community, thereby fundamentally undermining long-established federal contract law?”

In McCutchen v. United States, the petitioner asked the Court to consider the following question:

  • “For purposes of the Fifth Amendment’s Taking Clause, does a delegation of general legislative rule-making authority to an agency constitute an inherent restraint on title to any personal property that could be subsequently subjected to a prospective legislative rule, rendering the physical taking of the property non-redressable?”

In Tulipat v. United States, a pro se petitioner filed a petition.


In Interactive Wearables, LLC v. Polar Electro Oy, a patent case raising two of the same questions as in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, Interactive Wearables submitted its reply in support of its petition. According to Interactive Wearables, “[t]he United States’ patent eligibility doctrine is perilously fractured.” Interactive Wearables maintains that “some Federal Circuit panels have correctly stated that Section 101 is a wholly separate inquiry from other provisions of the Patent Act, such as Section 112.” Interactive Wearables argues, however, that “too many others, as in the present case, resort to a misplaced quasi-enablement inquiry, focused primarily on the patent specification’s level of detail, to determine whether the claims are directed to an abstract idea.” Furthermore, Interactive Wearables emphasizes how “[t]he Federal Circuit itself has unanimously called for this Court’s intervention, and the U.S. Solicitor General has recently recommended this Court grant certiorari to rectify the situation.” Accordingly, Interactive Wearables maintains, “[t]he only question is finding the appropriate case to address the problem in a manner that will have broad applicability across a wide range of industries . . . [and] Interactive Wearables’ petition presents such an opportunity.”

In Athey v. United States, a case concerning the Equal Access to Justice Act (EAJA), Athey filed his reply to the Solicitor General’s Brief In Opposition. Athey argues that “[t]his case exposes a government bureaucracy which—without the support of a single court precedent—insists that 28 U.S.C. § 2412(b) is rendered null and void by common law that allegedly shields ‘all defendants’ from liability for plaintiffs’ attorney fees and even the legitimate expenses of the court-appointed Class Action Administrator.” According to Athey, the Solicitor General “refuses to acknowledge settled law that section 2412(b) is an explicit ‘fee-shifting’ statute.” Moreover, Athey contends, “[u]nless this Court grants review, lower courts will deny attorney fees to thousands of small businesses which then will not have the legal resources in court to litigate against the overwhelming power of the DoJ and Federal agencies.”

Amicus Brief

The Chemistry and the Law Division (“CHAL”) of the American Chemical Society submitted an amicus brief in support of the petition in Biogen International GmbH v. Mylan Pharmaceuticals Inc., a patent case addressing the written description requirement. As explained by CHAL, “[t]he district court held, and the [Federal Circuit] affirmed, that Biogen’s disclosure in the specification did not show that it had possession of the claimed DMF480 dose.” In reaching this conclusion, moreover, CHAL explains that the Federal Circuit “found that Biogen did not have proof of the efficacy of the claimed dose.” CHAL argues, however, that “[t]he panel majority’s decision departs from precedent and 35 U.S.C. § 112‘s plain text requiring only ‘a written description of the invention,’ and instead requires that the specification itself prove the described effect at the DMF480 dose.” Moreover, CHAL contends, “[t]his holding is contrary to the plain language of the statute, and counter to longstanding precedent, creates confusion among practitioners, as it is contrary to the practice delineated in the [Manual of Patent Examining Procedure] for Section 112.”