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, seven new petitions were filed, three briefs in opposition, and three reply briefs in support of petitions were filed. The Court also denied four petitions. Here are the details.

Granted Cases

There is no new activity to report.

Petition Cases

New Petitions

New petitions were filed in seven cases.

In CareDx Inc. v. Natera Inc., CareDx asked the Court to review “whether a new and useful method for measuring a natural phenomenon . . . is eligible for patent protection under Section 101” of the patent statute.

In NST Global, LLC v. Sig Sauer Inc., NST Global asked the Court to review the following three questions:

  1. “Whether the Federal Circuit’s affirmance of the Patent Trial and Appeal Board’s decision that results from the Board’s sua sponte construction of a patent’s preambles as limiting based on convoluted and conflicting preamble construction standards, impermissibly eliminates or shifts the burden to invalidate a patent from the patent challenger in an Inter Partes Review Proceeding in contravention of statutory requirements under 35 U.S.C. §§ 112, 282, and 316.”
  2. “Whether the Federal Circuit’s affirmance of the Patent Trial and Appeal Board’s Decision violated Patent Owner’s Due Process Rights and the Administrative Procedure Act where Patent Owner was not given notice that the Board was considering whether the language of a patent’s preamble was limiting such as to invalidate patent claims nor given an opportunity to present argument or evidence that the preamble was not limiting.”
  3. “Whether in appeals from the United States Patent and Trademark Office, the Federal Circuit’s use of Federal Circuit Rule 36, which (ii) provides for a summary affirmance without opinion, violates constitutional guarantees, statutory protections under 35 U.S.C. § 144, and undermines public trust in the judicial system.”

Pro se petitioners filed petitions in five cases:

Briefs in Opposition

Three briefs in opposition were filed.

ADASA Inc. filed its brief in opposition in Avery Dennison Corp. v. ADASA Inc., a patent case raising questions about patent eligibility under 35 U.S.C. § 101. The petitioner presented the following question for review:

  • “The question presented is whether that claim, by subdividing a serial number into ‘most significant bits’ that are assigned such that they remain identical across RFID tags, constitutes patent-eligible subject matter under 35 U.S.C. § 101.”

In its brief in opposition to the petition, ADASA argues that “the Federal Circuit’s fact-bound decision was correct.” ADASA further argues that “this case is not a good vehicle, and petitioner complains only of the application of properly-stated law.”

Steve Elster filed a brief in opposition in Vidal v. Elster, a trademark case concerning a section of the trademark statute that states that a trademark shall be refused registration if it “[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent.” The question presented is:

  • “Whether the refusal to register a mark under Section 1052(c) violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.”

In its brief in opposition, Elster argues “[t]he Federal Circuit’s decision is narrow and bound to the specific circumstances of this case.” Elster further argues “the Federal Circuit correctly held that the First Amendment prohibits the PTO from denying registration on the ground that a trademark criticizes a former president.”

The Secretary of Veterans Affairs filed a brief in opposition in Military-Veterans Advocacy Inc. v. McDonough, a veterans case raising questions about SEC rulemaking and mootness. The petitioner presented the following questions for review:

  1. “Whether under the United States v. Munsingwear 340 U.S. 36 (1950) [holding that, where mootness prevents appellate review, the decision below should be vacated] the Court should grant certiorari and vacate the decisions below in this case that became involuntary moot following the Court of Appeals’ opinion?”
  2. “Whether the Federal Circuit contravened SEC v. Chenery, 318 U.S. 80 (1942) by sustaining the Secretary’s rulemaking denial on a ground other than the one adopted by the agency?”

McDonough argues in his brief in opposition that “Intervening events that postdate a court of appeals decision justify Munsingwear vacatur only if (1) those events have rendered the case moot and (2) but for the mootness, the decision would have warranted this Court’s review.” The Secretary argues “[n]either of those prerequisites is satisfied here.”

Reply Briefs

Avery Dennison Corporation filed its reply brief in Avery Dennison Corp. v. ADASA Inc., a patent case. As discussed above, in its brief in opposition ADASA argued the question presented for review concerning patent eligibility is fact-bound and correct, and this case is not a good vehicle to review patent eligibility law.

In its reply, Avery Dennison contends “[t]he Federal Circuit’s fundamental error in construing Section 101 cries out For this Court’s intervention.” Avery Dennison further argues “this case is the best vehicle of the three Section 101 petitions now pending.” In more detail, it argues this case “is the only one that arises from a precedential decision; it most squarely implicates a recurring conflict within the Federal Circuit; and it has the greatest practical import.” It also is “the only of the three petitions in which the Federal Circuit found a patent eligible.”

The Director of the Patent and Trademark Office, Katherine K. Vidal, filed a reply brief in Vidal v. Elster, a trademark case. As discussed above, in his brief in opposition, Elster argued “the Federal Circuit correctly held that the First Amendment prohibits the PTO from denying registration on the ground that a trademark criticizes a former president.” In her reply, Vidal argues “this Court regularly grants review of decisions holding federal statutes invalid as applied, including under the First Amendment.” Vidal further contends “this case also presents an opportunity for the Court to address a recurring issue left open” in prior cases, “whether a Lanham Act bar” on the registration of a trademark is “a condition on a government benefit or a simple restriction on speech.” In this regard, Vidal maintains that “Section 1052(c) is not a restriction on speech, but a condition on a government benefit.” Furthermore, she argues, “because it is a reasonable viewpoint-neutral condition, Section 1052(c) is consistent with the First Amendment, both on its face and as applied to marks like respondent’s.”

Arthrex, Inc. filed its reply brief in Arthrex, Inc. v. Smith & Nephew, Inc., another patent case. The brief in opposition filed by Smith & Nephew argued that “there is no conflict of appellate authority regarding the scope” of the Federal Vacancies Reform Act of 1998. Accordingly, it contended, “the decision below does not present the constitutional crisis petitioner hypothesizes.” Smith & Nephew maintained, moreover, that this case presents a poor vehicle for addressing the applicability of the FVRA because, “even if petitioner could obtain a remand back to the Director, all it would get is a formal denial of its request for review.” It argued, anyway, that the Federal Circuit’s decision is correct because “[t]he Patent Act expressly permits the Director to delegate her authority to inferior officers, and the authority to review decisions of the PTAB falls within the scope of such delegated authority.”

Arthrex now argues in its reply brief that “Congress enacted the FVRA to impose real constraints on the use of temporary officers during a vacancy.” But, it argues, the Federal Circuit “made those constraints optional.” As a result, Arthrex argues, its “ruling presents exceptionally important issues that warrant this Court’s review.” Arthrex further contends that a statutory provision “makes the FVRA ‘the exclusive means for temporarily authorizing an acting official to perform the functions and duties’ of a vacant presidentially appointed, Senate-confirmed office.” As a result, “[a]n agency succession plan that authorizes someone else to perform all the agency head’s functions, solely in the event of a vacancy, violates that mandate because it is a substitute method of appointing an acting officer.”


The Court denied certiorari in the following cases: