Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. The Court granted the petition for certiorari in Vidal v. Elster, a trademark case raising a question related to the First Amendment. While no new petitions were filed with the Court, the Court requested a response to a petition raising a question concerning patent eligibility; a waiver of right to respond was filed in a pro se case; a reply brief was filed in a veterans case; and a supplemental brief was filed in a patent case raising a question concerning inter partes review estoppel. Here are the details.
As we previously reported, the Supreme Court granted the petition for certiorari in Vidal v. Elster, a trademark case raising a question related to the First Amendment. Specifically, the Supreme Court will review whether the U.S. Patent and Trademark Office’s “refusal to register a mark under Section 1052(c) [of the Lanham Act] violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.”
Request for Response
The Court requested a response to the petition in CareDx Inc. v. Natera Inc., a patent case. 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.
Waiver of Right to Respond
- “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 involuntarily moot following the Court of Appeals’ opinion?”
- “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?”
In its brief in opposition to the petition, the government argued that “[i]ntervening 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 government further contended “[n]either of those prerequisites is satisfied here.”
Now, in its reply brief, Military-Veterans Advocacy argues that its “appeal is moot, and the Secretary’s argument to the contrary misunderstands the remedies [Military-Veterans Advocacy] sought below and on appeal.” Military-Veterans Advocacy further asserts that, while “vacatur entails an equitable inquiry, the equitable factors favor vacatur, and the Court should grant [Military-Veterans Advocacy’s] Petition.”
The petitioners filed a supplemental brief in Apple Inc. v. California Institute of Technology, a patent case concerning inter partes review estoppel. In the brief, the petitioners address the Solicitor General’s view that the Court should not grant review in this case.
The petitioners presented the following question for review:
- “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 its amicus brief, the United States supported 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 maintained 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 contended 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.”
Now in its supplemental brief, the petitioners point out how “the government concedes that ‘Petitioners are correct that the phrase “during that inter partes review” refers specifically to post-institution proceedings.'” The petitioners further note how, despite its concession, the government “endorses the Federal Circuit’s rewriting of the statute to encompass any ground that could have been raised in a petition requesting institution of an IPR.” The petitioners further highlight that the “question presented is also exceptionally important” as evidenced by estimates that “the question will arise in more than 100 patent cases each year.“