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. While no new petitions were filed with the Court, waivers of right to respond were filed in two pro se cases; a brief in opposition was filed in a patent case; reply briefs in support of petitions were filed in a patent case and in two veterans cases; amicus briefs were filed in two patent cases; and the Court denied certiorari in three patent cases. Here are the details.

Granted Cases

There is no new activity to report.

Petition Cases

Waiver of Right to Respond

The government waived its right to respond in two pro se cases:

Brief in Opposition

The Solicitor General filed the government’s brief in opposition in Nike, Inc. v. Adidas AG, a patent case.

In this case, the petitioners presented the following questions for review:

  • “Whether, in inter partes review, the Patent Trial and Appeal Board may raise sua sponte a new ground of unpatentability—including prior art that the petitioner neither cited nor relied upon—and whether the Board may rely on that new ground to reject a patent-holder’s substitute claim as unpatentable.”

Now, in its brief in opposition to the petition, the government first contends that certiorari should be denied. Interestingly, alternatively, the government also suggests that, “to the extent petitioner wishes to raise any challenges based on the information contained in” an initial decision of the Merit Systems Protection Board relating to one of the PTAB judges being removed from the panel in this case, “the Court should grant the petition, vacate the decision below, and remand to allow the Federal Circuit to consider those challenges in the first instance.”

As to the question presented, the government highlights that, “[d]uring an inter partes review proceeding, the patent owner is entitled to propose a reasonable number of substitute claims to replace those being challenged.” The government argues that, “so long as the patent owner is given notice of the grounds of potential unpatentability and is afforded an opportunity to respond, the Board has discretion to hold claims unpatentable based on prior art in the record.” The government, however, also maintains that, “[e]ven if the question presented otherwise warranted the Court’s review, this case would be a poor vehicle for resolving it.”

Reply Briefs

Reply briefs in support of petitions were filed in three cases.

First, a reply brief was filed in Rudisill v. McDonough. The petitioner presented the following question for review:

  • “Whether a veteran who has served two separate and distinct periods of qualifying service under the Montgomery GI Bill, 38 U.S.C. § 3001 et seq., and under the Post-9/11 GI Bill, 38 U.S.C. § 3301 et seq., is entitled to receive a total of 48 months of education benefits as between both programs, without first exhausting the Montgomery benefit in order to obtain the more generous Post-9/11 benefit.”

In its brief in opposition to the petition, the government argued that “the en banc court of appeals correctly rejected” the contention that “Section 3327(d)(2)’s limitations apply only to a veteran with a single period of service, not to a veteran with multiple qualifying periods of service.”

Now, in his reply brief, Rudisill argues that, the question presented “is exceptionally important, given that it impacts over 1.7 million (and growing) veterans and billions of dollars in education benefits.” He asserts the “Solicitor General’s claim that this 1.7-million figure is ‘overstated’ does not purport to call into question the importance” of the question presented and, anyway, is “wrong in any event.” He contends the “Solicitor General, like the en banc Federal Circuit, rests her argument entirely on the unsupported claim that veterans with two periods of service qualifying them for both Montgomery and Post-9/11 benefits must make an ‘elect[ion]’ . . . and thus fall under Section 3327(d).” He further maintains the “Solicitor General offers no reason why Congress would have desired the perverse result that her interpretation achieves.”

Second, Skaar filed his reply brief in Skaar v. McDonough, another veterans case. The petitioner presented the following question for review:

  • “Does the Veterans Court have statutory or inherent authority to include veterans whose individual claims are not yet exhausted in a class seeking injunctive relief, where the court has jurisdiction over a named representative’s claim?”

In its brief in opposition to the petition, the government asserted the Federal Circuit “correctly held that the Veterans Court exceeded its jurisdiction by certifying a class that includes veterans who have not presented claims to the Board or who have not yet received Board decisions.” McDonough argued that “that conclusion does not conflict with any decision of this Court” and, as a result, “further review is not warranted.”

Now, in his reply brief, Skaar argues 38 U.S.C. § 7252 “authorizes the Veterans Court to ‘review decisions of the Board of Veterans’ Appeals’ and does not, contrary to the government’s reading, create a jurisdictional exhaustion requirement that each absent class member must independently satisfy.” He contends the “Veterans Court has the power . . . to issue writs in aid of its prospective jurisdiction—those claims that are pending within the VA system but not yet exhausted.” And, he asserts, the “Federal Circuit’s interpretation of Section 7252 is inconsistent with this Court’s precedent.”

Third, NST Global, LLC filed its reply brief in NST Global, LLC v. Sig Sauer Inc., a patent case. The petitioner presented the following three questions for review:

  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.”

In its brief in opposition, Sig Sauer argued the PTAB “did not rule sua sponte; it agreed with Sig Sauer’s contentions.” Additionally, Sig Sauer argued, “NST failed to dispute that the preambles were limiting during the IPR proceedings, thereby waving its challenge.” Sig Sauer further asserted that, “even if [the Board] ruled ‘sua sponte,’ the specific facts of this case limit its reach and counsel against review” because “NST had notice and opportunity” and “NST failed to challenge a second and independently sufficient ground the PTAB cited to support its findings.” Sig Sauer also remarked that “this case is not an appropriate vehicle to address issues of summary affirmance under Federal Circuit Rule 36” because “the presence or absence of a written decision has no impact on NST’s appeal” and “NST has not shown it has standing to challenge Federal Circuit Rule 36 affirmances.”

Now, in its reply brief, NST Global argues “Sig recognizes it failed to place the preamble constructions at issue,” “[r]ehearing is not an adequate opportunity to respond, nor a prerequisite for appeal of a sua sponte ruling,” and “there was no waiver.” NST also argues the Federal Circuit’s “frequent issuance of judgment without opinion contradicts its statutory duty and undermines the patent system.”

Amicus Briefs

Amicus briefs were filed in two cases.

First, an amicus brief was filed by the United States in Apple Inc. v. California Institute of Technology, a patent case concerning inter partes review estoppel. In its brief, the United States supports the Federal Circuit’s decision “that estoppel . . . applies ‘to all grounds not stated in the petition but which reasonably could have been asserted.'” The government maintains that this approach incentivizes “[a]ny party who makes [a] request [for review] with respect to particular patent claims . . . to marshal its best arguments for invalidating those claims.” The government also contends that the petitioners “do not identify any division among the lower courts suggesting a need for this Court’s guidance.” Moreover, according to the government, the petitioners “overstate the significance of the issue on which they seek review.”

Second, an amicus brief was filed by former Federal Circuit Chief Judge Paul R. Michel and Professor John F. Duffy in CareDx Inc. v. Natera Inc. This is a patent case in which the petitioner is asking 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. The brief contends the Supreme Court should “grant certiorari because the decision of the Federal Circuit is erroneous,” “overlooks the Patent Act’s text,” and “disregard[s] the specific, technologically advanced steps of the claimed processes.” The brief also asserts the “decision invokes a troubling reliance on ‘conventionality,’ which led to conflating patent eligibility . . . with the requirements for patentability.”


The Supreme Court denied certiorari in three cases: