Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to granted cases, last week the Supreme Court issued its opinion in Vidal v. Elster, a trademark case. With respect to petitions, one new petition was filed in a patent case, five new amicus briefs were filed in another patent case, and two pro se petitions were denied. Here are the details.
Granted Cases
As mentioned, last week the Supreme Court issued its opinion in Vidal v. Elster, a trademark case. The petitioner in that case asked the court to review the following question:
- “Whether the refusal to register a mark under Section 1052(c) [of Title 15] violates the Free Speech Clause of the First Amendment when the mark contains criticism of a government official or public figure.”
As explained in the petition, “Section 1052(c) of Title 15 provides in pertinent part that a trademark shall be refused registration if it ‘[c]onsists of or comprises a name . . . identifying a particular living individual except by his written consent.’”
In an opinion written by Justice Thomas, the Court reversed the judgment of the Federal Circuit and held that the provision does not violate the First Amendment. We plan to post a full opinion summary soon.
Petitions
New Petitions
Since our last update, one new petition was filed with the court.
In United Therapeutics Corp. v. Liquidia Technologies, Inc., United Therapeutics presented the following questions:
- “Whether the IPR statute and SAS require the Federal Circuit to review de novo, or only for an abuse of discretion, the PTO’s reliance on new grounds and new printed publications—not raised in the initial petition— when deciding to cancel patent claims.”
- “Whether, if [35 U.S.C.] § 312 is deemed ambiguous, the Court should overrule Chevron.”
Amicus Briefs
Several amicus briefs were filed in Chestek PLLC v. Vidal, another patent case, presenting the following question:
- “Whether the PTO is exempt from notice-and-comment requirements when exercising its rulemaking power under 35 U.S.C. § 2(b)(2).”
The New Civil Liberties Alliance filed a brief supporting a grant of certiorari. In its brief, the NCLA argues that “[t]he decision below is wrong for two reasons.” First, the NCLA believes that the decision below is “contrary to the established methods of statutory interpretation,” because “it reads out of the statute a provision that Congress deliberately added.” Moreover, it argues, “the Federal Circuit’s decision simply ignored a separate provision in the Administrative Procedure Act, which subordinates its own provisions to those.” Second, the NCLA believes that “the decision below ignores and undermines a deliberately chosen Congressional policy in favor of public participation in the PTO’s rulemaking.”
The International Game Developers Association likewise filed a brief supporting a grant of certiorari. In its brief, the IGDA argues the Federal Circuit “erred in holding that the PTO was not obligated to engage in notice-and-comment rulemaking when it enacted a final rule materially modifying a proposed rule with an additional requirement that all trademark applicants provide their domicile addresses.” The IGDA believes this was an error because “[n]otice-and-comment rulemaking is mandated by the statute setting out the PTO’s rulemaking authority where substantive rights of individuals are concerned” and, here, there are “significant secondary harms related to trademark registration applicant privacy and safety.”
The Cato Institute also filed a brief supporting a grant of certiorari. In it, Cato argues that the PTO is required to “engage in the notice-and-comment process when establishing rules like the one at issue in this case.” Cato contends “[t]he procedural requirements of notice-and-comment rulemaking . . . exist . . . [to] hold agencies accountable to the public and foster reasoned decisionmaking.”
The Bar Association for the District of Columbia similarly filed a brief supporting a grant of certiorari. In its brief, the Bar Association argues the Court should grant certiorari “to correct the precedence which has afforded the USPTO such latitude and to provide necessary guidance to the USPTO on providing notice-and-comment.”
The IEEE-USA also filed a brief supporting a grant of certiorari. In its brief, the IEEE-USA explains that they are concerned that if the Federal Circuit’s decision is allowed to stand, “just as other members of the public would be precluded, so would IEEE-USA no longer be able to impart the major benefits of its expertise and vast experience to inform the PTO’s rulemaking process.” IEEE-USA also believes that, if thedecision is allowed to stand, it “may also deny our members the right to protect their interests through participation to prevent promulgation of arbitrary, capricious, or otherwise harmful rules.”
Denials
Since our last update, the Supreme Court denied certiorari in two pro se cases: