Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to granted cases, there is no new activity to report. With respect to petitions, one new petition was filed in a patent case presenting questions related to enablement of prior art. The Court also received a brief in opposition in a patent case presenting a question related to the use of Federal Circuit Rule 36 in appeals from decisions of the Patent Trial and Appeal Board, a reply in support of a petition in a trade case, and an amicus brief in another patent case addressing alleged improper application of Federal Rule of Civil Procedure 56. Here are the details.
Granted Cases
There is no new activity to report.
Petition Cases
New Petitions
In Converter Manufacturing, LLC v. Tekni-Plex, Inc., a patent case, Converter Manufacturing asked the Court to review the following questions:
- “Whether the patent challenger always has the burden of proving that the disclosures in an asserted prior art patent or printed publication are enabling of the claimed subject matter under Sections 102 and 103 of the Patent Act.”
- “Whether the standard for proving a prior art patent or printed publication enables claimed subject matter under Sections 102 and 103 of the Patent Act is the one set forth in this Court’s holding in Seymour v. Osbourn, 11 Wall. 516, 555 (1870).”
- “Whether this Court’s Loper Bright Enterprises v. Raimondo decision prohibits the Federal Circuit from deferring to the USPTO’s interpretation of the law of prior art enablement by silently adopting that interpretation using Fed. R. App. P. 36.”
Brief in Opposition
In ParkerVision, Inc. v. TCL Industries Holdings Co., a case related to Federal Circuit Rule 36, TCL Industries Holdings filed its brief in opposition to the petition. The petition presented 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.”
Now, in response, TCL Industries Holdings argues that “this case raises a single issue that already has been rejected by this Court—repeatedly—as unworthy of a grant of certiorari.” According to TCL Industries Holdings, “[i]n just the last seven years, this Court has denied at least ten challenges to the Federal Circuit’s practice of issuing summary affirmances under Rule 36.” It further contends that “ParkerVision erroneously argues throughout its petition that ‘the PTAB invalidated claims in ParkerVision’s patents through inter partes review,'” even though “the PTAB does not and cannot ‘invalidate’ anything.” According to TCL Industries Holdings, “[t]he PTAB simply reconsiders whether an earlier grant of a patent by the PTO was correct in view of additional information,” and “ParkerVision’s collateral attack on inter partes review is irrelevant to the narrow question before the Court.”
Reply
In Saha Thai Steel Pipe PCL v. Wheatland Tube Co., a trade case, Saha Thai Steel Pipe filed its reply brief in support of its petition. The petition presented the following questions:
- “Did the court below err by deferring to Commerce, rather than ascertaining for itself, whether the Commission had made the requisite material injury determination?”
- “May Commerce use scope rulings to assess antidumping duties on merchandise for which the Commission did not investigate material injury?”
In its response brief, Wheatland Tube argued that the plain terms of 19 U.S.C. § 1673(1) “authorize Commerce to define the ‘class or kind of foreign merchandise’ as part of its dumping analysis,” before, under 11 U.S.C. § 1673(2), the Commission “determines whether a domestic industry is materially injured . . . by reason of ‘that’ merchandise.” According to Wheatland Tube, “[a]n affirmative final material injury determination . . . presumptively applies to the entire ‘class or kind of foreign merchandise’ subject to Commerce’s affirmative final dumping determination.” It then argued that “there is no legal requirement that the Commission specifically identify and analyze each and every possible variation of the subject merchandise.” Further, Wheatland Tube asserted, “[t]he Federal Circuit’s review of Commerce’s scope rulings involves mixed questions of law and fact.” Thus, according to Wheatland Tube, although Commerce is not given discretion “on the initial legal question,” it is granted “‘substantial deference’ regarding its ultimate factual determination of whether the product at issue is covered by the scope based on the relevant evidence.”
Now, in its reply, Saha Thai Steel Pipe argues that Wheatland Tube “reframes the [petition’s first] question in terms of whether ‘the product at issue meets the scope’s description,’ and argues that Commerce’s answer to that question is reviewed under the deferential substantial evidence standard.” According to Saha Thai Steel Pipe, however, “[t]hat argument presupposes that Commerce’s scope ruling is supported by the Commission’s material injury determination,” but the actual question is “whether there has been an affirmative determination by the Commission that dual-stenciled line pipe materially injures the same domestic industry as standard pipe.” It further asserts that “the majority repeatedly leaned on what ‘Commerce explained'” to conclude that “the Commission’s original determination . . . supported ‘Commerce’s reasonable interpretation’ of the Thailand Order.” Saha Thai Steel Pipe argues, though, that that analysis is flawed “because interpreting the meaning of the Commission’s determination is a question of law and, under Loper Bright, must be reviewed independently by the courts.” It also contends that “the Commission determines whether that merchandise injures one or multiple domestic industries,” and, until this decision, “the Federal Circuit had never upheld a scope ruling without satisfying itself that it was supported by the Commission’s material injury determination for the merchandise at issue.”
Amicus Brief
One new amicus brief in support of the petitioner was filed in Brumfield v. IBG LLC, a patent case presenting the following questions:
- “Whether the lower courts abused their discretion by denying the meritorious Rule 60(b)(3) motion, and whether Rule 60(b)(3) requires a showing that a moving party was diligent in uncovering fraud, misrepresentation, or misconduct to obtain relief from a judgment?”
- “Whether this Court’s three categorical judicial exceptions to patent eligibility that are further defined by the two-step Alice/Mayo test impose limitations on patent eligibility that are inconsistent with the text of 35 U.S.C. § 101 of the Patent Act of 1952?”
- “Whether this Court’s supervisory authority is needed to correct the Federal Circuit’s improper (1) application of Rule 56 to patent cases and (2) practice of deciding issues that were never argued or briefed on appeal?”
Island Intellectual Property, LLC filed the amicus brief. In it, Island Intellectual Property asserts the “lower courts have a ‘clear misapprehension’ of the proper application of ‘fundamental’ summary judgment standards in patent cases.” Further, the brief argues, this Court should intervene to confirm that “courts should apply ‘the same common-law principles, methods of statutory interpretation, and procedural rules as other areas of civil litigation.'” According to the brief, “it is an ‘axiom’ that in ruling on a motion for summary judgment, ‘[t]he evidence of the nonmovant is to be believed, and all justifiable inferences are to be drawn in his favor.'” This means, it argues, that “a district court generally cannot grant summary judgment based on its assessment of the credibility of the evidence presented.” The brief asserts that “the courts below failed to follow these rules,” and in substituting “their own credibility determinations instead, [they] contravene[] the Seventh Amendment right to a jury trial.”