Supreme Court Activity

Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. While no new petitions were filed with the Court, three waivers of the right to respond were filed in pro se cases; a reply brief was filed in a patent case; and the Court denied certiorari in a pro se and a veterans case. 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 three pro se cases:

Reply Brief

reply brief in support of the petition was filed in Nike, Inc. v. Adidas AG. The petitioner presented the following question 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.”

In its brief in opposition to the petition, the government first contended that certiorari should be denied. Interestingly, alternatively, the government also suggested 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 highlighted 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 argued 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 maintained that, “[e]ven if the question presented otherwise warranted the Court’s review, this case would be a poor vehicle for resolving it.”

Now, in its reply brief, Nike maintains that vacatur and remand is “the minimum remedy that would be consistent with basic due process principles.” It further asserts that, if “the Court does not vacate and remand, however, it should grant plenary review to consider the Question Presented.” It argues “it is Congress’s policy choices that govern the scope of the [Board’s] authority.” It also contends that the “Court should not allow the Board to shield its authority on a pure question of statutory interpretation by adding an overlay of administrative deference.”


The Supreme Court denied certiorari in two cases: