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Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to granted cases, earlier this month the Supreme Court heard oral arguments in Feliciano v. Department of Transportation, and we have since posted our argument recap. With respect to petitions, two new petitions were filed in a patent case and a pro se case; waivers of the right to respond were filed in two patent cases, a case addressing Rule 36, and two pro se cases; briefs in opposition were filed in two patent cases; replies in support of petitions were filed in a patent case, a case addressing Rule 36, a veterans case, and a case addressing procedure; and six amicus briefs were filed in a case addressing Rule 36. In addition, the Court denied the petition in the case addressing procedure. Here are the details.

Granted Cases

On December 9, the Supreme Court heard arguments in Feliciano v. Department of Transportation. In this case originally decided by the Merit Systems Protection Board, the Supreme Court will determine whether “a federal civilian employee called or ordered to active duty under a provision of law during a national emergency is entitled to differential pay even if the duty is not directly connected to the national emergency.” Since our last update, we’ve posted our argument recap.

Petitions Cases

New Petitions

In Celanese International Corp. v. International Trade Commission, Celanese International asked the Court to review the following question:

  • “Whether the sale of an end product made by secret use of a later-patented process places ‘the claimed invention’—that is, the process itself—on sale and thus invalidates the patent on that process, even where the claimed process was not disclosed by the sale and cannot be discovered by studying the end product.”

In Doyle v. Department of Veterans Affairs, a pro se petitioner filed a petition with the Court.

Waivers of Right to Respond

Waivers of the right to respond to petitions were filed in the following cases:

Briefs in Opposition

Briefs in opposition to petitions were filed in two patent cases.

In Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd., Meril Life Sciences filed its brief in opposition to the petition. The petition presented the following question:

  • “Whether, under Hatch-Waxman’s safe harbor, an infringing act is ‘solely for uses reasonably related’ to the federal regulatory process, when the infringing act is performed for both regulatory and non-regulatory uses.”

Now, in response, Meril Life Sciences argues that “this case does not merit review by the Court” because it “does not involve even de minimis harm to any party.” Additionally, it contends, the petition is based on the position of “a single dissenting judge” and “asks this Court to overturn over 30 years of safe harbor precedent . . . because that precedent allegedly reads ‘solely’ out of [35 U.S.C. § 271(e)(1)] and immunizes commercial ‘alternative’ uses.” According to Meril Life Sciences, however, the Federal Circuit’s “analysis does not ignore the word ‘solely,’ let alone read it out of the statute.” It further asserts the Federal Circuit “is clear that ‘each act’ or use must be analyzed separately to determine if it is reasonably related to regulatory approval,” meaning that it has not “ignored commercial ‘alternative’ uses.”

In Roku, Inc. v. International Trade Commission, both Universal Electronics and the Federal Respondents filed their briefs in opposition to the petition. The petition presented the following questions:

  1. “Did the ITC exceed its Section 337 authority by finding the entirety of complainant’s investments in unpatented, multi-purpose software to be ‘with respect to the articles protected by the patent?’”
  2. “Did the ITC exceed its Section 337 authority by failing to consider whether the complainant’s investments in unpatented, multi-purpose software were ‘substantial’ ‘with respect to the articles protected by the patent?’”

In response, Universal Electronics argues the decision applies “established and uncontroversial precedent that relief . . . is available ‘[a]s long as the patent covers the article that is the subject of the exclusion proceeding, and as long as the party seeking relief can show that it has a sufficiently substantial investment in the exploitation of the intellectual property to satisfy the domestic industry requirement.'” According to Universal Electronics, the Federal Circuit has noted that Section 337(a)(3)(C) of the Tariff Act of 1930 has been “consistently interpreted . . . this way” and this interpretation is “derived from ‘the clear intent of Congress and the most natural reading of the 1988 amendment.'” Universal Electronics asserts the amendment in question “expand[ed] the coverage of section 337 so that it would provide protection for American industries that did not manufacture products but were engaged in engineering, research and development, or licensing of the technology that others used to make products.” Universal Electronics contends the Federal Circuit “needed only two paragraphs to confirm [this] application here,” and that “[t]his Court’s intervention is unnecessary.”

The Federal Respondents likewise argue that the Federal Circuit “correctly found that UEI’s U.S.-based investments in the research and development of the QuickSet software . . . meet the standard in Section 337(a)(3)(C), because they are domestic investments in the patent’s ‘exploitation.'” It asserts Roku’s view that “UEI was required to show that it has made substantial domestic investments in the Samsung televisions as a whole” “reflects a misreading of the statutory language.” According to Federal Respondents, “Sections 337(a)(2) and 337(a)(3)(C) [only] require that the exploitation-based investment have a connection with the patent-protected article.” They further contend that this case “does not conflict with any decision of another court of appeals” and that the petitioner does not “meaningfully argue that the court of appeals’ decision conflicts with any relevant decision of this Court.”

New Replies

New replies supporting petitions were filed in four cases.

In Roku, Inc. v. International Trade Commission, one of the patent cases mentioned above, Roku filed its reply brief in support of its petition. Again, the petition presented the following questions:

  1. “Did the ITC exceed its Section 337 authority by finding the entirety of complainant’s investments in unpatented, multi-purpose software to be ‘with respect to the articles protected by the patent?’”
  2. “Did the ITC exceed its Section 337 authority by failing to consider whether the complainant’s investments in unpatented, multi-purpose software were ‘substantial’ ‘with respect to the articles protected by the patent?’”

Now, in its reply, Roku argues that, “for the ITC to find a domestic industry exists, it needed to determine that these QuickSet-related investments were both (1) made ‘with respect to’ the protected Samsung TVs and (2) ‘substantial’ when viewed in the context of the Samsung TVs.” According to Roku, without an allocation of “the relied-upon component-related investments to the articles protected by the patent,” “the ITC cannot determine . . . which investments were made with respect to the articles protected by the patent.” It contends “[t]he ITC’s finding that no such allocation was necessary under [Section 337(a)(3)(C)]—and the Federal Circuit’s affirmance thereof—eviscerates . . . [the] statutory requirement.” It additionally asserts that “Respondents misinterpret several Federal Circuit cases, all of which support Roku’s plain language reading of the statute.”

In Island Intellectual Property LLC v. TD Ameritrade, Inc., a case addressing Rule 36, Island Intellectual Property filed its reply brief in support of its petition. The petition presented the following questions:

  1. “Do the Federal Rules of Civil Procedure apply to patent cases like any other federal case, including in particular FRCP 56 and its prescription against granting summary judgment when the nonmoving party presents evidence that raises material facts in dispute?”
  2. “Is it proper for the Federal Circuit to use its own unique Local Rule 36 to affirm district court rulings with one-word decisions lacking explanation or analysis, when the grounds for affirmance are unclear in view of the arguments made on appeal?”

Now, in its reply, Island Intellectual Property argues that, in previous cases, the Court “used historical facts to establish the claims were ‘long prevalent in our system of commerce,'” but in this case “[t]he courts below did not identify any similar evidence but instead ignored factual disputes.” It further asserts that the patent’s “inventiveness goes beyond any abstract idea and extends to the particular way Island solved tiered interest problems using details elaborated in the claims.” Additionally, according to Island Intellectual Property, “the Federal Circuit’s Rule 36 affirmance is not an opinion,” and “[t]he overuse of one-word affirmances defies the Federal Circuit’s mandate to explain patent law.”

In Soto v. United States, Soto filed his reply brief in support of his petition. The petition presented the following question:

  • “When a person makes a demand for money from the federal government pursuant to federal statute, what test should courts and agencies use to determine whether that statute includes a settlement procedure that displaces the default procedures and limitations set forth in the Barring Act (31 U.S.C. § 3702)?”

Now, in his reply, Soto argues that, “[c]ontrary to the government’s assertions, [10 U.S.C. § 1413a] has its own settlement power and does not fall under the purview of the Barring Act.” According to Soto, § 1413a “explicitly details how to determine a veteran’s entitlements and gives the Secretary the authority to pay amounts owed.” He further asserts that § 1413a “does not fall into any of the Barring Act’s categories,” because its benefits “are not pay, allowances, travel, transportation, payments for unused accrued leave, survivor benefits, or retired pay.” Soto additionally contends that “the other military compensation statutes the government points to [as settled under the Barring Act] lack the specificity contained in § 1413a to settle a claim and administratively determine the amount due.”

In Salix Pharmaceuticals, Ltd. v. Norwich Pharmaceuticals Inc., Salix Pharmaceuticals filed its reply brief in support of its petition. The petition presented the following questions:

  1. “When a district court’s findings of fact are unsupported by the evidence the district court relied on, may a court of appeals affirm based on other evidence in the record, particularly when the relevance of that evidence depends on unresolved factual disputes.”
  2. “When a district court’s findings of fact rely on impermissible evidence, what standard applies to determine whether the error is harmless.”

Now, in its reply, Salix argues its “petition squarely presents two important, recurring questions of core appellate procedure” and that “[l]itigants and the lower courts would benefit from guidance from this Court on both issues.” According to Salix, “[o]n both questions, the panel majority departed from first principles of appellate procedure” and “Norwich identifies no serious ground for denying certiorari.” Moreover, it says, “[t]he stakes are high: sales of Salix’s drug protected by the wrongfully-invalidated patents exceed a billion dollars annually.” Thus, it argues, the “Court should not sit idle as the Federal Circuit’s errors destroy valuable intellectual property.”

Amicus Briefs

Since our last update, six new amicus briefs were filed in ParkerVision, Inc. v. TCL Industries Holdings Co., a case raising the following question:

  • “Whether 35 U.S.C. § 144, which requires the Federal Circuit to issue ‘opinion[s]’ in PTAB appeals, is a reason-giving directive that prohibits the Federal Circuit’s practice, under Federal Circuit Rule 36(a), of summarily affirming PTAB decisions without issuing opinions.”

Phyllis Schlaefy Eagles and Eagle Forum Education & Legal Defense Fund filed an amicus brief in support of the petitioner. In this brief, PSE and EFELDF assert that “Rule of Law requires more than the Federal Circuit is providing with its concealment of its bases for its decision-making.” According to this brief, “[t]he parties, other branches of government, and the public have no means of determining if arbitrariness, mistakes, or abuse of power underlie these unexplained decisions.” The brief further asserts that “[u]ndisclosed reasoning by the Federal Circuit in negating patent rights impedes the ability to repair what is broken.”

The Bar Association for the District of Columbia filed an amicus brief in support of the petitioner. In its brief, the BADC argues that a Rule 36 order is an “Affirmance Without Opinion,” meaning that it violates 35 U.S.C. § 144, and, according to “federal court rules and statutes governing judicial proceedings,” it cannot be an opinion. This brief further asserts that Rule 36 “disserves the intellectual property community” by “not sharing the analysis and explanation from the differing perspective.”

The Association for American Innovation, Paul Morinville, and Jeffrey Depp filed an amicus brief in support of the petitioner. This brief argues that “Federal Circuit Rule 36 flouts the plain text of 35 U.S.C. § 144 by allowing the Federal Circuit to affirm decisions of the Patent Trial and Appeal Board (PTAB) without issuing an opinion explaining its reasoning for doing so.” According to the brief, the “purpose of inter partes review is undermined when the information necessary to create a quality feedback loop via judicial review of streamlined PTAB proceedings is abandoned.” It also argues that “thorough and articulated judicial review of PTAB decisions as required by § 144 serves to mitigate some of the property rights and separation of powers concerns raised by the novel IPR procedures.” The brief further asserts that “the opinion requirement of § 144 . . . ensures the proper functioning of the Federal Circuit and this Court, and facilitates the checks created by en banc review and by writs of certiorari from this Court.”

Harris Brumfield, Trustee for Ascent Trust, filed an amicus brief in support of the petitioner. In his brief, Brumfield argues Rule 36 “is inappropriate because it undermines the principles of transparency and accountability in the judicial process.” He further asserts that Rule 36 “creates a barrier for potential Supreme Court review, as it deprives the highest court of a reasoned explanation to evaluate in the context of a writ of certiorari.” According to the brief, the Federal Circuit “stands in stark contrast to the other circuit courts,” the majority of which “do not have a rule that permits a summary affirmance.”

Island Intellectual Property LLC filed an amicus brief in support of the petitioner. It its brief, Island Intellectual Property argues Rule 36 “is unique and different from the other Courts of Appeal’s rules” and “is contrary to the purpose of the creation of the Federal Circuit.” According to the brief, “[t]he Federal Circuit’s overuse of its Local Rule 36 contravenes our nation’s long history of ‘explaining enough to tell you what the law is in every case.'”

The Alliance of U.S. Startups and Inventors for Jobs (“USIJ”) filed an amicus brief in support of the petitioner. In its brief, USIJ argues that “a property owner is entitled to know why his or her property right is to be effectively confiscated by a federal agency” because “[d]ue process demands as much.” According to the brief, there is “little question that the Federal Circuit’s frequent use of Rule 36 in lieu of providing an ‘opinion’ is ultra vires.” The brief asserts that, “where the patent owner has lost an IPR challenge and suffered the ‘cancellation’ of its property right, the Federal Circuit should be required, at the very least, 1) to demonstrate that the panel has at least considered the appellant’s briefs, and 2) to provide an analysis of why the appellant’s arguments did not prevail.”

Denial

Since our last update, the Supreme Court denied certiorari in the following case: