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Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. In the only pending case, a patent case addressing inducement of infringement and so-called skinny-labeling, oral argument took place in late April. As for pending petitions, since our last update, six new petitions were filed; three waivers of the right to respond to petitions were filed; three briefs in opposition were filed; three reply briefs were filed; two amicus briefs were filed; and the Supreme Court denied petitions in five cases. Here are the details.

Pending Cases

Since our last update, oral argument took place in Hikma Pharmaceuticals USA Inc. v. Amarin Pharma, Inc., the only currently pending case previously decided by the Federal Circuit. As a reminder, the petition presented the Court with the following questions:

  1. “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?”
  2. “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?”

We will post an argument recap soon.

Pending Petitions

New Petitions

Since our last update, six new petitions have been filed in cases decided by the Federal Circuit:

Polar Electro Oy v. Firstbeat Technologies Oy

In this case, Polar Electric Oy filed a petition asking the Court to review the following questions:

  1. “Whether a court may create its own invalidity argument – including independently finding evidence, assembling rationales, and supplying evidentiary showings the movant did not provide – when the movant has raised a defense but failed to adequately support it, or whether doing so violates the party-presentation principle. This question arises here in the context of patent eligibility under 35 U.S.C. § 101, where the concern is reinforced by (a) the challenger’s burden of proving invalidity by clear and convincing evidence, and (b) the statutory presumption of validity that Congress established, but the principle extends to all litigants across all areas of law.”
  2. “Whether a claimed process that takes a real world physiological input from the body and uses that input within a specific, improved process to produce a more accurate technological result –such as estimation of energy expenditure or body temperature – is patent eligible under § 101 even though it employs data processing.”
  3. “Whether the judicially created exceptions to 35 U.S.C. § 101 for abstract ideas, laws of nature, and natural phenomena – which appear nowhere in the statutory text – constitute impermissible judicial legislation that this Court should overrule and replace with the statute Congress actually wrote.”

Game Plan, Inc v. Uninterrupted IP, LLC

In this case, Game Plan filed a petition asking the Court to review the following questions:

  1. “Whether the Court of Appeals for the Federal Circuit erred in holding that common law trademark rights are superior to and can displace a federally registered trademark.”
  2. “Whether the acquisition of common law trademark rights after the commencement of a inter partes proceeding is an appropriate mechanism, which can defeat a federally registered trademark for a cancellation proceeding.”

Google LLC v. VirtaMove, Corp.

In this case, Google filed a petition asking the Court to review the following questions:

  1. “Whether the PTO lacks statutory authority to deny institution based on ‘settled expectations’ where the patent statutes allow for administrative review at any time during the life of a patent.”
  2. “Whether courts have power to review a PTO decision denying inter partes review on grounds that are contrary to statute.”

Deweese v. United States

In this pro se case, Deweese filed a petition.

Ferrell v. Department of the Interior

In this pro se case, Ferrell filed a petition.

Hutchinson v. United States

In this pro se case, Hutchinson filed a petition.

Waivers of the Right to Respond

Since our last update, three waivers of the right to respond to petitions were filed:

Briefs in Opposition

Since our last update, three briefs in opposition were filed:

Sauer West LLC v. United States

As a reminder, the petition in this case presented the following question:

  • “Whether the Surface Transportation Board’s issuance of a Notice of Interim Trail Use and accompanying authorization of recreational trail use triggers a per se categorical physical taking under the Trails Act.”

Now, in its brief in opposition, the United States argues the “agency action had not caused any change to petitioners’ property interests or prevented any dissolution of an existing encumbrance that otherwise would have occurred.”

King v. United States

As a reminder, the petition in this case presented the following question:

  • “Under the Takings Clause, does a per se rule apply when a government authorizes one private party to appropriate another party’s vested right to payment of money?”

Now, in its brief in opposition, the United States argues that, “where ‘the United States has taken nothing for its own use, and only has nullified a contractual provision . . . by imposing an additional obligation that is otherwise within the power of Congress to impose,’ there is no taking.” The United States further contends the petition “fails for the antecedent reason that they lack a cognizable property interest—an alternative argument advanced by the government below that the court of appeals did not need to reach—and because subsequent legislation has greatly reduced the practical stakes of petitioners’ claim.”

HMTX Industries, LLC v. United States

As a reminder, the petition in this case presented the following question:

  • “Whether USTR’s streamlined authority under Section 307 to ‘modify’ an existing tariff action confers on the agency essentially unlimited power to expand the scope of that initial action, as reflected in the ten-fold expansion challenged here.”

Now, in its brief in opposition, the United States argues the term “modify” “can be read to encompass larger changes or alterations, as long as they are not radically transformative.” According to the United States, moreover, “Congress’s inclusion of ‘elimination’ in the definition of ‘modification’ necessarily precludes petitioners’ narrower reading because completely eliminating a previously imposed duty obviously goes far beyond just an ‘increment[al]’ or ‘minor’ alteration to that duty.”

Reply Briefs

Since our last update, three reply briefs in support of petitions were filed in the following cases:

Sauer West LLC v. United States

As a reminder, the petition in this case presented the following question:

  • “Whether the Surface Transportation Board’s issuance of a Notice of Interim Trail Use and accompanying authorization of recreational trail use triggers a per se categorical physical taking under the Trails Act.”

The government’s brief in opposition argued the “agency action had not caused any change to petitioners’ property interests or prevented any dissolution of an existing encumbrance that otherwise would have occurred.”

Now, in its reply brief, Sauer West asserts the “NITU . . . authorizes an additional burden—recreational trail use—upon a landowner’s fee interest” and, as a result, “the NITU itself causes a per se physical taking.” According to Sauer West, the “NITU itself satisfies causation in Trails Act cases because the NITU authorizes a physical appropriation of land upon its issuance, notwithstanding any subsequent events that ultimately limit the appropriation’s duration.”

King v. United States

As a reminder, the petition in this case presented the following question:

  • “Under the Takings Clause, does a per se rule apply when a government authorizes one private party to appropriate another party’s vested right to payment of money?”

In its brief in opposition, the United States argued that, “where ‘the United States has taken nothing for its own use, and only has nullified a contractual provision . . . by imposing an additional obligation that is otherwise within the power of Congress to impose,’ there is no taking.” The United States further contended the petition “fails for the antecedent reason that they lack a cognizable property interest—an alternative argument advanced by the government below that the court of appeals did not need to reach—and because subsequent legislation has greatly reduced the practical stakes of petitioners’ claim.”

In his reply brief, King asserts the Federal Circuit’s approach “clashes” with the Supreme Court’s precedent, “all of which applied a per se test in situations where the plaintiff lacked a property interest in the underlying assets that would be used to pay them.” Kind further argues there are “three conflicting standards for when an appropriation of money, outside of the land-exaction context, gives rise to a per se taking.” And, King says, this split is “outcome-determinative.” Thus, it continues, “this case is important.”

United States v. Cotter Corp.

As a reminder, the petition presented the following question:

  • “Whether a downstream purchaser’s liability for mishandling nuclear material that the purchaser obtained for private benefit, but that was originally produced more than a decade earlier under a government contract with another party, is subject to indemnification by the United States under the original government contract because it qualifies as ‘public liability arising out of or in connection with the contractual activity’ under 42 U.S.C. 2210(d).”

In its brief in opposition, Cotter argued “[t]his case does not warrant review” because the lower court “appear[s] to be the first to ever consider whether government-contract indemnity . . . extends to so-called ‘downstream purchasers.’” According to Cotter, there “is no reason for this Court to issue only the second ever appellate decision on that issue.” Moreover, Cotter contended, the “unusual legal issue here” is not “outcome dispositive in this case.” Cotter asserted that “[c]oncerns for the nuclear industry’s growth are instead reasons to grant a different petition currently pending before the Court, which presents the antecedent question of when liability attaches for nuclear incidents.” Cotter also claimed the Court’s intervention is “unnecessary because the Federal Circuit got the result exactly right, and the government has failed to propose any plausible alternative rule.”

Now, in its reply brief, the United States asserts “Respondent fails to reconcile the Federal Circuit’s sweeping new standard with the statutory text.” The United States argues the rule “Respondent repeatedly and confusingly attacks as ‘atextual'” actually “comes straight from” precedent.

Amicus Briefs

Steele v. Collins

Since our last update, the National Organization of Veterans’ Advocates and Military-Veterans Advocacy, Inc. both filed amicus briefs supporting the petitioner in Steele v. Collins. As a reminder, the petition presented the following question:

  • “Under the statutory and regulatory notice requirements governing VA decisions since 1990, is the VA permitted to retroactively deem a claim ‘implicitly denied’ when the agency never issued a notice explicitly setting forth the claim at issue or the reason for its denial?”

In its amicus brief, the National Organization of Veterans’ Advocates argues “continued affirmation and application of the implicit denial rule will erode . . . clarity and deference, especially given the larger historical context in which most of claims affected by the rule were filed.” It also argues the Federal Circuit’s approach “is at odds with the regulations and precedent” and complaints about “retroactive application of a judicially-created rule.”

In its amicus brief, Military-Veterans Advocacy, Inc. argues “the implicit-denial doctrine, validated by the Federal Circuit below, . . . erodes veterans’ entitlement to hard-earned disability benefits.” It contends the approach “permits VA to ignore the mandatory notice regarding denied claims that VA ‘shall’ give a veteran.”

Denials

Since our last update, the Supreme Court denied petitions in the following five cases: