Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to granted cases, a response brief was filed in Amgen Inc. v. Sanofi, Aventisub LLC, a patent case addressing the enablement requirement. With respect to petitions, one new petition was filed with the Court in a contract case; the government waived its right to respond in a patent case and a pro se case; a brief in opposition and a reply brief were filed in a patent case addressing inter partes review estoppel; and another reply brief was filed in a veterans case. Here are the details.
In its opening merits brief, Amgen argued 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 maintained 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 argued that “Section 112 itself supplies the controlling standard.” Moreover, it contended, “that is a standard of ‘reasonableness’ in view of the patent’s subject matter.” Finally, Amgen argued that its patents “satisfy any proper formulation of § 112’s enablement standard.”
Now, in its response, Sanofi argues that “the statutory text [§ 112], this Court’s cases, and a whole line of Federal Circuit precedents guard against what Amgen has done here: claim a lot and disclose a little, such that skilled artisans . . . must engage in undue experimentation.” According to Sanofi, “[t]here is no special rule for functional or genus claims, but the more that is claimed, the more that must be enabled.” It argues that Amgen “attack[s] a straw man, adding its own language to a passage in the decision below to claim that the Federal Circuit adopted a novel enablement standard.” This assertion, Sanofi contends, “egregiously mischaracterizes the decision, which neither endorses nor relies on any such cumulative-effort standard—and in fact, expressly rejects it.” It maintains that, “[d]espite Amgen’s sky-is-falling lamentations, innovation has not been harmed by the decision below.” Finally, Sanofi argues, the “flaws in Amgen’s specification are fundamental and would fail any viable test for enablement.”
A new petition was filed with the Court in Calapristi v. United States, a contract case. The petitioner presented the following question for review:
- “Whether the Federal Circuit’s rule — that no degree of government involvement or control over a contract between a government contractor and a third party — can create an implied contract binding the government, should be overruled.”
Waivers of Right to Respond
Brief in Opposition
Coulter Ventures filed its brief in opposition to the petition in Jump Rope Systems, LLC v. Coulter Ventures, LLC, a patent case raising a question related to inter partes review estoppel. Coulter Ventures argues that the petitioner’s case is moot and that the petitioner lacks standing “[b]ecause petitioner has no patent rights” and therefore “there is no actual controversy.” It contends that, “[o]nce the Federal Circuit affirmed the [Patent Trial and Appeal Board] determination, petitioner was collaterally estopped from further litigating infringement and validity of the unpatentable claims.” Addressing the petitioner’s argument that unpatentable claims should be litigated in district court, Coulter Venture maintains that such a proposal is a “significant departure from established precedent and would frustrate the framework” of the America Invents Act.
Jump Rope Systems filed its reply brief in Jump Rope Systems, LLC v. Coulter Ventures, LLC, the patent case just discussed that raises a question related to inter partes review estoppel. Coulter Venture’s brief in opposition is discussed above. In response, Jump Rope Systems (“JRS”) argues that “this case is justiciable because, at the very least, the [USPTO] Director’s ‘certificates of cancellation’ did not extinguish JRS’s right to sue [Coulter Ventures] for pre-cancellation damages resulting from [Coulter Ventures]’s infringement.” Moreover, it contends, “because inter partes review proceedings violate due process, the purported cancellations had no legal effect.” According to JRS, inter partes review proceedings violate due process for two reasons: “[f]irst, front-line adjudicators are not sufficiently insulated from political forces” and, “second, by not permitting traditional live cross-examination of witnesses.” JRS maintains that, because the Federal Circuit did not address the due process issue, “this Court may vacate and remand with instructions to address that issue, if ‘cancellation’ were deemed to have some ex ante effect.” Before doing so, however, it argues that the Court “should address the merits of the collateral-estoppel issue.”
- “Whether courts can defer to the construction of a statute by the Department of Veterans Affairs without first considering whether the statute permits a pro-veteran construction pursuant to the Pro-Veteran Canon.”
- “Whether Chevron should be clarified or replaced to protect canons of construction, including the Pro-Veteran Canon, from becoming a nullity.”
In its brief in opposition to the petition, the government argued that, as to the first question presented, the Pro-Veteran Canon “does not apply when the agency charged with administering an Act of Congress has formally adopted its own interpretation of ambiguous statutory text.” The government contended the Pro-Veteran canon is “not properly applied to displace a reasonable interpretation formally adopted by the agency that Congress has charged with filling gaps in a statutory scheme.” As to the second question presented, the government argued the petitioners “offer no persuasive ‘special justification’ for replacing Chevron, let alone the type of ‘particularly special justification’ that would be required to overturn such a deeply ingrained precedent.”
Now, in its reply brief, Veteran Warriors argues that, “[b]y treating the mere existence of a formal agency interpretation as an automatic bar against the Pro-Veteran Canon, the government’s analysis improperly skips the first step of Chevron by immediately deferring to the agency’s interpretation, effectively assuming statutory ambiguity.” Veteran Warriors contends that “courts should apply the Pro-Veteran Canon at Chevron step one, and properly applied, the canon will make it unnecessary to proceed to step two because any ambiguity should result in a reading that favors the veteran, not the government.” Moreover, Veteran Warriors contends, this petition is “in search of clarity on what role, if any, Chevron should have in veterans’ cases, especially amidst the well-known issues with the interaction between Chevron and the Pro-Veteran Canon.”