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, the Supreme Court heard arguments last week in Rudisill v. McDonough, a veterans case. With respect to petitions, two new petitions were filed with the Court in two patent cases raising questions related to the Federal Circuit’s practice of reversing agency decisions and patent eligibility. Two waivers of right to respond were filed, one in the patent case raising the question about reversing agency decisions and one in a pro se case. A brief in opposition was filed in a patent case addressing the ability to review determinations whether to institute inter partes review proceedings. An amicus brief was filed in a veterans case. And, finally, the Court denied a petition in a patent case. Here are the details.

Granted Cases

Last week, the Supreme Court heard arguments in Rudisill v. McDonough, a veterans case in which the Supreme Court is reviewing a question concerning the intersection of two statutory provisions related to education benefits. Our argument recap is posted here.

Petition Cases

New Petitions

Two new petitions were filed with the Court.

In MacNeil IP LLC v. Yita LLC, a patent case, the following questions were presented to the Court for review:

  1. “Is it legal error for the Federal Circuit to substitute its own findings of fact for those of an agency and reverse on that basis instead of remanding as required by this Court’s ‘ordinary remand rule’ as set forth in I.N.S. v. Orlando Ventura, 537 U.S. 12, 18, 123 S. Ct. 353, 154 L.Ed.2d 272 (2002)?”
  2. “Does the Federal Circuit’s expanding practice of reversing agency decisions in lieu of remand now conflict with the binding precedent of this Court?”

In Realtime Data LLC v. Fortinet, Inc., another patent case, the Court was asked to review the following question:

  • “Whether the claimed inventions are ineligible for patent protection under the abstract-idea exception to Section 101.”

Waivers of Right to Respond

Yita LLC waived its right to respond in MacNeil IP LLC v. Yita LLC, the first new petition mentioned above.

The government waived its right to respond in Lomax v. United States, a pro se case.

Brief in Opposition

In Intel Corp. v. Vidal, the government filed its brief in opposition to the petition. This is a patent case where the petitioner is asking the Court to review “whether 35 U.S.C. § 314(d), which bars judicial review of ‘[t]he determination . . . whether to institute an inter partes review,’ applies even when no institution decision is challenged to preclude review of PTO rules setting standards governing institution decisions.” 

In its brief, the government argues that, “even when a petition meets the statutory conditions for inter partes review, there is ‘no mandate’ for the USPTO ‘to institute review.’” Additionally, the government asserts, “the statute identifies no criteria the agency should consider” and thus the “decision whether to institute inter partes review . . . is committed to the USPTO’s discretion by law.” Furthermore, the government argues, the “APA’s judicial-review provisions do not apply where another ‘statute[] preclude[s] judicial review.’” And, according to the government, a statute precludes judicial review where “the congressional intent to preclude judicial review is ‘fairly discernible’” and “[s]uch an intent is fairly discernible here.” 

Amicus Brief

An amicus brief was filed in Military-Veterans Advocacy Inc. v. McDonough, a veterans case in which the petitioner is asking the Court to review the following questions:

  1. “Whether the Federal Circuit’s Decision Warrants Certiorari When the ‘Airspace’ Rule was upheld despite its conflict with the Convention on International Civil Aviation, T.I.A.S. No. 1591, arts. 1-2 (Dec. 7, 1944) (Chicago Convention).”
  2. “Whether a Proper Construction of the BWN Act Warrants Certiorari when the Federal Circuit’s decision and the VA’s BWN Rule conflicts with the plain statutory language and departs from the plain meaning of the Agent Orange Act and the Federal Circuit’s Own decision in Procopio v. Wilkie, 913 F.3d 1371 (Fed. Cir. 2019) (en banc).”
  3. “Whether the Secretary conducted a flawed interpretation of the Agent Orange Act contrary to its own established precedent and in contravention of the pro-veteran/pro-claimant canon of construction[.]”

Thomas A. Bianco Jr. filed an amicus brief in support of the petitioner with respect to the last two questions. In his brief, Bianco asserts that, “[i]n order to effectuate [the pro-veteran] canon . . . it is appropriate to look to the legislative history of the Agent Orange Act of 1991 to illuminate . . . meaning of having served ‘in the Republic of Vietnam’ as used in 38 U.S.C. § 1116.“ According to Bianco, the “legislative history . . . supports the conclusion that . . . Congress chose a wide net for the veterans to be covered.” Additionally, Bianco argues, the phrase “in the Republic of Vietnam” has “no plain words of limitation.” Thus, Bianco contends, Congress intended to “cover[] all veterans regardless of whether their service included presence on or within the landmass of the Republic of Vietnam.”


The Supreme Court denied certiorari in Cioffi v. Google LLC, a patent case asking the Court to review the following question:

  • “Should the Antares Pharma, Inc. v. Medac Pharma Inc., 771 F.3d 1354, 1358 (Fed. Cir. 2014) ‘exact embodiment’ standard for ‘original patent’ disclosure be overruled as inconsistent with 35 U.S.C. § 251 and this Court’s decision in U.S. Industrial Chemicals, Inc. v. Carbide & Carbon Chemicals, Corp., 315 U.S. 668 (1942)?”