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 petitions, although no new petitions were filed, the Court invited the Solicitor General to file a brief expressing the views of the United States in a patent case related to inter partes review estoppel. Here are the details. 

Granted Cases

There is no new activity to report.

Petition Cases

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  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.’”

In response to the petition, Caltech argued 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 maintained 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 contended, “the Federal Circuit’s decision will have little impact on the patent system, and this case presents no question of exceptional importance warranting certiorari.”