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, the Supreme Court heard arguments this week in Arellano v. McDonough, a veterans case. With respect to petitions, two new petitions were filed with the Court in a patent case and a pro se case; the government waived its right to respond to a petition filed in a pro se case; the Court invited the Solicitor General to file briefs expressing the views of the United States in two patent cases related to so-called skinny labelling and eligibility, respectively; a supplemental brief was filed in a patent case raising questions related to patent law’s enablement requirement; a reply brief was submitted in a veterans case addressing the standard of proof governing rejection of disability claims; and, finally, the Court denied more than 20 petitions. Here are the details.

Granted Cases

On October 4, the Supreme Court heard arguments in Arellano v. McDonough, a veterans case. We will post an argument recap soon. 

Petition Cases

New Petitions

Two new petitions were filed with the Court.

In Jump Rope Systems, LLC v. Coulter Ventures, LLC, the petitioner asked the Court to review the following question:

  • “Whether, as a matter of federal patent law, a determination of unpatentability by the Patent Trial and Appeal Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit in federal district court.”

In McGhee v. United States, the pro se petitioner asked the Court to review three questions.

Waiver of Right to Respond

The government waived its right to respond in Jarvis v. United States, another pro se case. 

Call for the Views of the Solicitor General

Earlier this week, the Court invited the Solicitor General to file a brief on behalf of the United States in two patent cases: Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC, a case raising a question about so-called skinny labelling, and Interactive Wearables, LLC v. Polar Electro Oy, a case concerning patent eligibility. 

Supplemental Brief

Amgen filed a supplemental brief in Amgen Inc. v. Sanofi, Aventisub LLC, a patent case raising questions related to the enablement requirement. In the brief, Amgen addresses the Solicitor General’s view that the government does not recommend the Court grant review in this case.

The questions presented by the petitioner are:

  1. “Whether enablement is ‘a question of fact to be determined by the jury,’ Wood v. Underhill, 46 U.S. (5 How.) 1, 4 (1846), as this Court has held, or ‘a question of law that [the court] review[s] without deference,’ Pet. App. 6a, as the Federal Circuit holds.”
  2. “Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to ‘make and use’ the claimed invention, 35 U.S.C. § 112, or whether it must instead enable those skilled in the art ‘to reach the full scope of claimed embodiments’ without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial ‘ ‘time and effort,’ ‘ Pet. App. 14a (emphasis added).”

In its amicus brief, the government addressed both questions presented for review. As to the first question, the government maintained that “[t]he enablement inquiry includes both legal and factual components.”  The government contended that “a court may resolve a question initially decided by the jury on a motion for JMOL.” As to the second question, the government contended that the Federal Circuit does not, as Amgen claims, “apply ‘a different,’ more stringent ‘enablement test for genus claims’ than for other types of claims.”

With respect to the first question presented, Amgen now contends that the government’s “mixed question of law and fact” view “[c]ontradict[s] this Court’s view that enablement is a fact question, and the Federal Circuit’s view that it is a legal issue.” Moreover, it argues, “[t]hat disagreement with everyone supports review.” Amgen maintains that “the government never addresses whether that ‘mixed question’ should be reviewed deferentially as ‘factual,’ or de novo as ‘legal.'”

With respect to the second question presented, Amgen argues that the Federal Circuit’s enablement standard “raise[d] the bar” for genus claims. It contends that the government “never explains what in §112’s text suggests enablement turns on the cumulative time and effort required to make all variations of the invention one-by-one.”

Reply Brief

Lynch filed his reply brief in support of his petition in Lynch v. McDonough, a case raising a question related to the standard of proof used to deny veterans disability claims. Lynch asked the Court to consider whether veterans are “entitled to have the VA meet a higher threshold of proof to deny their claims than the preponderance-of-the-evidence standard.” Lynch, in particular, argued that the Secretary of Veterans Affairs should be required to present “clear-and-convincing evidence” to reject a veteran’s disability claim. In response, the government argued that the Federal Circuit’s standard for denying claims is correct because it “reflects the most natural understanding” of the statutory benefit-of-the-doubt provision. The government contended that, when the Federal Circuit stated that the statutory provision does not apply when “the evidence persuasively favors one side or the other,” the Federal Circuit “was referring to circumstances” where the evidence is not in approximate balance or nearly equal. 

In his reply, Lynch now argues that the government and the Federal Circuit are “fundamentally incorrect” to “assume that the term persuasively, in and of itself, defines a standard of proof.” He contends that, “[a]t best, the court’s persuasive-evidence articulation is a tautology of the preponderance-of-the-evidence standard.” Moreover, Lynch contends, VA claimants “will not know with any reasonable certainty the quantum of positive evidence needed to prevail in their claims.” Lynch argues that, “[e]ven assuming arguendo (but not conceding) that clear-and-convincing-evidence should not be the governing standard for denying VA claims . . . , then a new intermediate standard must be formulated.”  


The Supreme Court denied certiorari in the following cases: