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, new petitions were filed in a takings case and a pro se case. The Court also received waivers of the right to respond in five pro se cases; briefs in opposition in two patent cases; a supplemental brief in a case addressing Federal Circuit Rule 36; and two new amicus briefs in a patent case. In addition, the Court denied petitions in two patent cases and two cases addressing Rule 36. Here are the details.
Granted Cases
There is no new activity to report.
Petition Cases
New Petitions
In Doyle v. United States, a takings case, Doyle asked the Court to review the following questions:
- “Whether a regulatory takings claim against the United States is ripe when a property owner demonstrates ‘de facto finality.’”
- “Whether a property owner can show that his regulatory takings claim against the United States is ripe without obtaining the government’s denial of a complete application for administrative relief.”
In White v. Office of Personnel Management, a pro se case, White asked the Court to review several questions.
Waivers of the Right to Respond
Waivers of the right to respond were filed in five pro se cases:
- Al Shara v. United States (pro se)
- Bhagat v. United States Patent and Trademark Office (pro se)
- Deweese v. United States (pro se)
- Katz v. Department of Justice (pro se)
- Mattison v. Department of Veterans Affairs (pro se)
Briefs in Opposition
In two cases, three briefs in opposition have been filed.
In Brumfield v. IBG LLC, a patent case, IBG filed its brief in opposition to the petition. The petition presented 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?”
Now, in response, IBG argues that ‘both courts below found ‘no fraud by IBG,'” so Brumfield’s “first ‘question presented’ is not in fact presented” and is instead “a fact-bound appeal for error correction.” Also related to the first question presented, IBG asserts that “the court below did not deepen a circuit split on Rule 60(b)(3)’s application in fraud cases,” and, furthermore, that “alleged split is illusory.” According to IBG, Brumfield “ignores Rule 60(b)’s mandate that courts may grant relief from judgment, an extraordinary remedy, only ‘on just terms’ not present here.”
Regarding the second question, IBG contends that “the Court has repeatedly declined to review materially identical cases involving weak, ‘apply it with a computer’-style software patents,” and that “there is ‘no material distinction’ between the patents here and those invalidated in a related case” in which Brumfield unsuccessfully sought review.
IBG further asserts that “the notion that this case is a candidate for the Court to exercise its ‘supervisory authority’—the subject of TT’s third question—is frivolous.” According to IBG, the “court below issued a unanimous, 57-page opinion thoroughly addressing the issues [and] applying the very standards that [Brumfield] asks this Court to reapply.”
In Celanese International Corp. v. International Trade Commission, another patent case, two briefs in opposition to the petition have been filed. The petition presented 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.”
Now, in response, the International Trade Commission argues that “longstanding precedents” related to the on-sale bar “appl[y] in this situation.” According to the ITC, this case is easily resolved based on a “straightforward application” of Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., and Celanese “does not ask this Court to overrule Helsinn.” According to the ITC, Celanese’s “various attempts to sidestep that controlling decision lack merit,” because the Court in Helsinn “was unpersuaded” by the same arguments. The ITC further asserts that Celanese “initially did not dispute the state of the pre-AIA law on this question.” And, the ITC argues, Celanese “identifies no decision holding that the on-sale bar does not apply when an inventor sells a product made (secretly or otherwise) through use of a process invention.”
Jinhe Industrial Co., Ltd. and Jinhe USA LLC filed their own response to the petition. In it, they highlight how Celanese claims that “Congress abrogated the settled understanding of the on-sale bar, as it applies to process patents, when it enacted the AIA.” But, they say, in fact “[s]ettled precedent from this Court and the Federal Circuit established that the on-sale bar applies in the circumstances here.” Furthermore, they argue, “nothing in the AIA shows Congress’s intent to abrogate that settled understanding.” According to their brief, “Celanese simply disagrees with this Court’s decision in Helsinn, but it does not actually ask the Court to overrule that decision, or provide any compelling reason for this Court to grant review.” They further assert that “nothing in Helsinn’s reasoning depends on a difference between secret sales of products and sales of products made using secret processes.”
Supplemental Brief
In Island Intellectual Property LLC v. TD Ameritrade, Inc., a patent case, Island Intellectual Property filed a supplemental brief in support of its petition. The petition presented the following questions:
- “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?”
- “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?”
In this brief, Island Intellectual Property asserts that the problems raised in its petition “have now been raised in three other petitions related to summary judgment (Question 1), and four other petitions related to Local Rule 36 (Question 2).” On the first question, Island Intellectual Property argues that the misapplication of summary judgement standards “not only ignore[s] FRCP 56 but also violate[s] patent owners’ Seventh Amendment rights to a jury trial.” On the second question, Island Intellectual Property further argues that the Federal Circuit’s practice of issuing “one-word affirmances” “contradicts appellate tradition and runs counter to the practices of other sister circuits.”
As noted below, the Supreme Court later denied the petition in this case.
Amicus Briefs
Two new amicus briefs were filed in Hikma Pharmaceuticals USA Inc. v. Amarin Pharma, Inc., a patent case presenting the following questions:
- “When a generic drug label fully carves out a patented use, are allegations that the generic drugmaker calls its product a ‘generic version’ and cites public information about the branded drug (e.g., sales) enough to plead induced infringement of the patented use?”
- “Does a complaint state a claim for induced infringement of a patented method if it does not allege any instruction or other statement by the defendant that encourages, or even mentions, the patented use?”
Thirty Scholars of Law, Economics, and Medicine filed an amicus brief in support of the petitioner. In this brief, the Scholars argue that, under the Federal Circuit’s decision, “a generic may be liable under new-use patents, and might even be forced off the shelves, based on the routine additional act of truthfully characterizing the generic as a generic equivalent.” According to the brief, the Federal Circuit “relied on the doctrine of patent inducement, which imposes liability on one who actively encourages others to infringe,” even though “[a] mere descriptive statement about a product’s equivalence . . . ‘actively encourages’ nothing.” The brief further asserts that “[t]his vague conception of patent inducement is contrary to law and policy” and “is not just jurisprudentially unreasonable, but also economically and societally dangerous.”
The Association for Accessible Medicines also filed an amicus brief in support of the petitioner. In this brief, the Association argues the Federal Circuit’s decision has “effectively nullified a key statutory protection allowing manufacturers to provide high-quality, affordable generic drugs to the American public.” Now, according to this brief, “every generic drug manufacturer who uses a skinny label is at risk for an infringement suit.” The brief further asserts that the Federal Circuit’s decision is “flatly inconsistent with black-letter principles of secondary liability for intellectual-property infringement,” namely that “induced infringement requires an active form of instruction, encouragement, or suggestion that third parties infringe.” According the brief, “[a]t most, the allegations [in this case] are that the generic manufacturer provided truthful information that enabled third parties to infringe,” which “has never been enough for inducement liability.”
Denials
Since our last update, the Supreme Court has denied certiorari in the following cases: