Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to granted cases, Amgen filed its opening merits brief in Amgen Inc. v. Sanofi, Aventisub LLC, which concerns patent law’s enablement requirement. With respect to petitions, although no new petitions were filed with the Court, a brief in opposition and a reply brief were filed in patent case concerning inter partes review estoppel, and another reply brief was filed in a veterans case. Here are the details.
Granted Cases
Amgen submitted its opening merits brief in Amgen Inc. v. Sanofi, Aventisub LLC, a patent case raising questions related to the enablement requirement. Amgen argues that the Federal Circuit’s decision “imposes a different [enablement] standard for certain patent claims, requiring that skilled artisans be able to ‘reach the full scope of claimed embodiments’—i.e., to cumulatively identify and make all, or nearly all, possible variations of the invention—without ‘substantial time and effort.’” According to Amgen, this heightened standard “has no basis in § 112’s text.” Amgen maintains that “[t]his Court has never suggested that enablement turns on the cumulative ‘time and effort’ that would be required to make all, or virtually all, of a claimed invention’s potentially numerous embodiments.” Amgen argues that “Section 112 itself supplies the controlling standard.” Moreover, it contends, “that is a standard of ‘reasonableness’ in view of the patent’s subject matter.” Finally, Amgen argues that its patents “satisfy any proper formulation of §112’s enablement standard.”
Petition Cases
Brief in Opposition
California Institute of Technology (Caltech) filed a brief in opposition to the petition in Apple Inc. v. California Institute of Technology, a patent case concerning inter partes review estoppel. The petition presented the following question:
- “Whether the Federal Circuit erroneously extended IPR estoppel under 35 U.S.C. § 315(e)(2) to all grounds that reasonably could have been raised in the petition filed before an inter partes review is instituted, even though the text of the statute applies estoppel only to grounds that ‘reasonably could have [been] raised during that inter partes review.’”
Now, in response, Caltech argues that “estoppel under 35 U.S.C. § 315(e)(2) precludes Petitioners from asserting in district court that Caltech’s patent claims are invalid in light of prior art that Apple knowingly excluded from its inter partes review petitions.” Caltech maintains that “[inter partes review] estoppel applies not just to claims and grounds asserted in the petition and instituted for consideration by the Board, but to all grounds not stated in the petition but which reasonably could have been asserted against the claims included in the petition.” According to Caltech, Apple’s “narrow reading of the statute contradicts the plain statutory language as well as the statute’s legislative history and purpose.” Moreover, Caltech contends, “the Federal Circuit’s decision will have little impact on the patent system, and this case presents no question of exceptional importance warranting certiorari.”
Reply Briefs
Jones filed a reply brief in support of his petition in Jones v. United States, a case concerning the statute of limitations for a veteran’s claim for retirement pay. The petitioner presented the following questions for review:
- “Whether a cause of action for retirement pay can accrue and for the statute of limitations to run before a service member receives a disability rating of at least 30 percent . . . .”
- “Whether the Federal Circuit erred in holding that the ‘accrual suspension rule’—i.e., the principle that the accrual of a cause of action against the United States is suspended during the period of time that the nature of the injury is inherently unknowable—is categorically inapplicable to veterans’ injuries . . . .”
In response, the government argued that the Federal Circuit was correct to hold that “petitioner’s challenge to those PEB [Physical Evaluation Board] determinations accrued [in 1988].” The government maintained that the relevant statutory provision “provides retirement pay to those servicemembers who are at least 30% disabled at the time of their separation.” The government contended, moreover, that “the factual record did not support the application of the accrual-suspension rule because petitioner ‘had an understanding of the seriousness of his condition . . . at the time of the 1988 PEB evaluation.’” Finally, the government argued that, at least in the circumstances presented, “[the] application of the accrual-suspension rule would not be compatible with the statute.”
Now, in reply, Jones argues that, with respect to the first question presented, “[t]he Government does not dispute that as relevant here, the plain language of 10 U.S.C. § 1201 permits retirement pay only after the Secretary has issued a disability rating of at least 30 percent.” With respect to the second question presented, Jones argues that “the Federal Circuit’s rigid [accrual-suspension] rule is incompatible with the uniquely pro-claimant nature of the veteran compensation system.” Moreover, Jones contends, “if it is indeed the Government’s view that the accrual-suspension rule cannot exist in the absence of equitable tolling, this Court should grant certiorari to clarify the point.”
Apple filed its reply brief in support of its petition in Apple Inc. v. California Institute of Technology, the same patent case discussed above concerning inter partes review estoppel. As discussed, Caltech argued in its brief in opposition that “estoppel under 35 U.S.C. § 315(e)(2) precludes Petitioners from asserting in district court that Caltech’s patent claims are invalid in light of prior art that Apple knowingly excluded from its inter partes review petitions.”
In reply, Apple argues that “the Federal Circuits decision conflicts with the plaint text of section 315(e).” According to Apple, “[t]he term ‘during that inter parties review’ cannot be stretched to mean before inter partes review even begins.” Moreover, Apple contends, “Caltech relies heavily on legislative history and inapt analogies that do not—and cannot—change the meaning of the statute.” Apple maintains that this case is “exceptionally important because the Federal Circuit’s decision will govern hundreds of patent disputes, with billions of dollars on the line.”