Panel Activity

Here is an update on activity in cases pending before panels of the Federal Circuit where the cases involve at least one amicus brief. We keep track of these cases in the “Other Cases” section of our blog. Today, with respect to these cases we highlight two recent opinions in cases that attracted amicus briefs: one a patent case and one a trade case; three new cases we have identified that attracted amicus briefs: a takings case, a trademark case, and a veterans case; and new briefing in several cases that previously attracted amicus briefs: a new response brief in a patent case, two new reply briefs in patent cases, and supplemental briefing in a pro se case. Here are the details.


Since our last update, the Federal Circuit has issued two opinions in cases that attracted amicus briefs.

Sun Pharmaceutical Industries, Inc. v. Incyte Corporation

In this case, the Federal Circuit reviewed a judgment of the Patent Trial and Appeal Board invalidating Sun’s patent claims in an inter partes review proceeding for failure to meet the non-obviousness requirement. In an opinion by Judge Stark joined by Judges Linn and Hughes, the Federal Circuit affirmed the PTAB’s judgment. In particular, the court held that the Board had “substantial evidence to conclude that a person of ordinary skill would have reasonable expectation” of success in modifying compounds as directed in Sun’s patent claims. See our opinion summary for more information.

Solar Energy Industries Association v. United States

In this case, the Federal Circuit reviewed a determination by the Court of International Trade that “the statutory authority to ‘modify’ a safeguard is limited to trade-liberalizing changes” and that Proclamation 10101 exceeded the President’s authority. In an opinion authored by Judge Stark joined by Judges Lourie and Taranto, the Federal Circuit reversed the judgment, holding that the “the President’s view that a ‘modification’ may include a change in a trade-restricting direction, and is not limited to trade-liberalizing changes, is not unreasonable.” Check out our opinion summary for more details.

New Cases

Since our last update, we’ve identified three new cases that attracted amicus briefs.

City of Fresno v. United States

In this takings case, the appellants presented the following questions:

  1. “Article 3(n) of the Friant Contracts prohibits the United States from delivering San Joaquin River water to the Exchange Contractors unless and until ‘required’ to do so by the terms of the Exchange Contract. Did the United States breach Articles 3(n) and 3(a) of the Friant Contracts in 2014 by delivering nearly all the available waters of the San Joaquin River to the Exchange Contractors, and almost none to the Friant Contractors?”
  2. “The Growers who put Friant Division water to beneficial use on their land have a constitutionally protected property right in Friant water, consistent with the federal Reclamation Act (which requires that the right to Project water be appurtenant to the land irrigated), California law, and decisions of this Court. Did the trial court err as a matter of law in holding that Growers lack standing to bring their taking claims?”
  3. “The Friant Contractor water districts are state agencies created to contract for and distribute Friant Division water, levy charges against Growers, and pay Reclamation the costs of facility construction, operation, maintenance, and replacement. They are authorized by state law to sue to protect ‘the use of water’ that is ‘a benefit to any land’ within the district. Did the trial court err as a matter of law in holding that the water districts could not bring these takings claims on behalf of their Growers?”

In re Chestek PLLC

In this trademark case, the appellant presented the following questions:

  1. “Whether the domicile address requirement is invalid because it is not a logical outgrowth of the PTO’s notice of proposed rulemaking, which affirmatively repudiated any impact on U.S. applicants and any new reporting requirements.”
  2. “Whether the domicile address requirement is arbitrary and capricious where the PTO failed to provide any explanation for its adoption, failed to consider the requirement’s obvious impacts on applicant privacy, and failed to consider obvious alternatives like exempting applicants represented by U.S. counsel.”
  3. “Whether the PTO’s denial of Chestek’s trademark application was arbitrary, capricious, or otherwise not in accordance with law.”

Beaudette v. McDonough

In this veterans law case, the government presented the following questions:

  1. “Whether the United States Court of Appeals for Veterans Claims (Veterans Court) erred in issuing a writ of mandamus that did not aid its exercise of actual or prospective jurisdiction, but rather expanded it.”
  2. “Whether the Veterans Court erred when it held that claimants-appellees Jeremy and Maya Beaudette, acting on behalf of a class, were entitled to a writ of mandamus because they: 1) did not have adequate alternative means to obtain their desired relief; and 2) had a clear and indisputable right to the writ.”

New Briefing

Since our last update, three patent cases and a pro se case attracted new briefing: a response brief, two reply briefs, and supplemental briefing.

AliveCor, Inc. v. International Trade Commission

In this patent case, AliveCor, Inc. appealed a “determination of no Section 337 violation.” AliveCor argued the “the Commission legally erred” in ruling certain claims invalid under 35 U.S.C. § 101. In addition, AliveCor argued a “non-infringement determination should be reversed.” Apple, Inc. cross appealed, arguing the Federal Circuit “should reverse the Commission’s finding of a Section 337 violation” and its entry of remedial orders. With respect to its cross-appeal, Apple argued the “Commission erred in finding infringement . . . by ignoring the plain meaning of the asserted claims.” Further, Apple argued, “[t]he Commission erroneously held that AliveCor’s patent claims are not obvious.”

Since our last report about this case, the International Trade Commission filed its response brief. It addresses Apple’s contentions and argues “the Commission properly construed the limitation” in question and, “[u]nder that construction, Apple does not dispute that its accused products infringe.” In addressing Alivecor’s arguments, it argues “[s]ubstantial evidence supports the Commission’s finding that Apple’s accused products do not infringe.” It further argues the Commission correctly determined that the relevant claims “are directed to a patent-ineligible abstract idea and merely recite activities that physicians routinely conduct, using conventional and generic sensors in their ordinary manner to measure cardiac activity.”

US Synthetic Corp. v. International Trade Commission

In this patent case, US Synthetic appeals a decision of the International Trade Commission finding patent claims invalid for being directed to a patent-ineligible abstract idea. In its response breif, the International Trade Commission argues “the Commission properly applied the Supreme Court’s and this Court’s § 101 precedent to the asserted claims.”

Since our last report about this case, US Synthetic has filed its reply brief. In it, US Synthetic argues its “invention ‘is not nature’s handiwork.”

Jiaxing Super Lighting Electric Appliance, Co. v. CH Lighting Technology Co.

In this patent case, CH Lighting appeals a district court grant of partial judgment as a matter of law of no invalidity of asserted patents. CH Lighting argued the district court excluded “highly relevant, admissible evidence of invalidity” based on “the legally unsustainable notion that expert testimony cannot support a jury finding unless the facts and data on which the expert relied are admitted into evidence.” CH Lighting argued Jiaxing Super’s arguments regarding validity and infringement were contradictory. In addition, CH Lighting argued the “damages evidence was woefully deficient.” In its response brief, Jiaxing Super asserted the “district court correctly granted JMOL” that certain asserted claims were not invalid. It also contends “substantial evidence supported the jury’s verdict” one claim was infringed and was not proven invalid. Finally, it argues, “Defendants’ attacks on the damages award are misguided.

Since our last report about this case, CH Lighting has filed its reply brief. In it, CH Lighting makes several arguments. For example, it contends “Super identifies no authority supporting the district court’s theory that expert testimony cannot constitute substantial evidence unless underlying facts and data are themselves admitted into evidence.” Indeed, it argues, Super’s “theory defies Rule 703 and an array of precedent.”

W. J. v. Secretary of Health and Human Services

In this pro so case, parents of a minor filed an appeal to reverse a grant of a motion to dismiss their claims under the Rules of the Court of Federal Claims 12(b)(6). In response, the Secretary of Health and Human Services argued “Special Master Dorsey did not abuse her discretion in determining that petitioners failed to file a timely petition under the Vaccine Act.” Additionally, the government maintained, that minor did “not establish[] a basis for equitable tolling of the statute of limitations, or a violation” of the minor’s Constitutional rights.

“After considering the parties’ submissions,” the Federal Circuit issued an order in this case appointing an attorney, Angela M. Oliver, as “amicus curiae counsel in support of W.J. on the issue of equitable tolling.” Oliver submitted an amicus brief, the government responded to it, and the court held oral argument. We reported on the oral argument.

Since our last report about this case, the court requested and the parties and Oliver have filed numerous supplemental briefs. For example, in a supplemental response brief, the Secretary of Health and Human Services argues “equitable tolling is not warranted here simply because petitioners opted to proceed pro se, or because petitioners asserted claims on behalf of their child, who is mentally incapacitated.” According to the government, “[n]either of those circumstances is extraordinary.” Furthermore, the Secretary argues, “the Special Master and Court of Federal Claims considered all relevant facts, appropriately concluding that nothing prevented petitioners from timely filing.”

Oliver in turn filed a response to the government’s supplemental response brief. In her brief, Oliver argues that, “rather than carefully analyzing whether W.J.’s parents had adequate information . . . to protect W.J.’s rights under the Vaccine Act,”the Special Master “expected the parents to establish their own basis for tolling.” According to Oliver, “that approach skips the most critical step—ensuring the parent is sufficiently able to protect the child’s rights.”