Petitions / 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, an amicus brief was filed in support of petitioner in Rudisill v. McDonough, a veterans case. With respect to petitions, three new petitions were filed in a veterans case, a patent case, and a pro se case. Additionally, two reply briefs were filed in two different cases, one concerning the jurisdiction of the Court of International Trade and one concerning patent eligibility. Here are the details.

Granted Cases

The Supreme Court is considering two cases previously decided by the Federal Circuit. One of those cases is Rudisill v. McDonough, a veterans case regarding educational benefits.

Since our last update, the Edison Electric Institute, Center for Energy Workforce Development, Veterans in Energy, the American Public Gas Association, Gas and Oil Association of West Virginia, Inc. and the Nuclear Energy Institute filed another amicus brief in support of the petitioner. This amicus brief is the same as their prior amicus brief, except for the brief’s first footnote:

“This brief was not authored in whole or in part by counsel for any party. A party or a party’s counsel did not contribute money that was intended to fund preparing or submitting this brief. No person, other than amici curiae, their members, or their counsel, contributed money that was intended to fund preparing or submitting this brief.”

Petition Cases

New Petitions

Three new petitions were filed with the Court.

In Van Dermark v. McDonough, a veterans case, Van Dermark submitted the following question for review:

  • “[W]hether eligible veterans are entitled to reimbursement of out-of-pocket costs incurred while receiving emergency treatment abroad based on the specific commands in 38 U.S.C. §§ 1728 & 1725.”

In HIP, Inc. v. Hormel Foods Corp., a patent case, HIP, Inc. asked the Court to review the following questions:

  1. “Whether joint inventorship requires anything more than a contribution to conception that is stated in a patent claim.”
  2. “Whether, under [Title 35] Section 116(a), a claimed and enabled contribution to conception can be deemed insignificant in quality based on the quantity of disclosure in the specification.”

In Bondyopadhyay v. United States, a pro se case, Bondyopadhyay submitted several questions for the Court to review.

New Replies

Two new reply briefs in support of petitions were submitted to the Court in two cases.

In Acquisition 362, LLC v. United States, Acquisition 362 filed a reply brief. In its original petition, Acquisition 362 presented three questions to the Court concerning the jurisdiction of the Court of International Trade.

In its brief in opposition, the United States aragued “[t]he court of appeals correctly held that the CIT lacked subject matter jurisdiction over this case.” The government asserted that the Federal Circuit correctly explained that “‘the statute is quite clear that liquidation of an entry finally establishes the duties unless a protest to the liquidation is filed.’” The government further argued that “petitioner could and should have filed timely challenges to the allegedly premature liquidations if it wished to preserve its entitlement to CIT review.”

Now, in its reply brief, Acquisition 362 asserts that it has “never claimed the liquidation to be erroneous.” Instead, it argues, its suit is in response to the U.S. Customs and Border Protection’s decision “not to follow Commerce’s instructions or issue the refund to which A362 was entitled as a matter of law.”  Acquisition 362 further maintains that it did file timely because there was “no erroneous action by CBP to protest at the time of liquidation.” Thus, according to Acquisition 362, it “would have been without any legitimate legal basis to protest the amount of duties withheld.”

In CareDx Inc. v. Natera Inc., the petitioners filed a reply brief. In the original petition, the petitioners asked the Court to review “whether a new and useful method for measuring a natural phenomenon . . . is eligible for patent protection under Section 101.”

Two briefs in opposition were filed, both relying on the Supreme Court’s decision in Mayo Collaborative Services v. Prometheus Laboratories, Inc. regarding patent eligibility subject matter. First, Natera Inc. argued in its brief in opposition that “the methods claimed by” the patents in suit “‘are indistinguishable from other diagnostic method claims’ that this Court found ineligible in Mayo.” According to Natera, moreover, “the ‘practice of the asserted method claims does not result in an inventive concept that transforms . . . natural phenomena into a patentable invention.’” Second, in its separate brief in opposition, Eurofins Viracor, Inc. argued CareDx is “attempting to do what this Court’s decisions forbid—claim ownership of subject matter that is ineligible for patenting.” 

Now, in its reply brief, the petitioners ask the Supreme Court to grant centiorari because “the Federal Circuit has effectively created a wholesale subject-matter exclusion from patentability.” The petitioners distinguish the current petition from the facts considered in Mayo, arguing with respect to the patents in suit that “the inventiveness lies not in discovering a natural phenomenon . . . but in identifying specified improvements upon prior methods.” Further, the reply brief maintains, “the Patent Act expressly covers a ‘new use of a known process.’ 35 U.S.C. 100(b).”