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Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. There are currently no cases pending before the Supreme Court that were previously decided by the Federal Circuit. As for pending petitions, since our last update, five new petitions were filed in three patent cases, a case presenting questions related to copyright and government contract law, and a pro se case; a reply brief in support of a petition was filed in a government contract case; and six amicus briefs were filed in a patent case. Here are the details.

New Petitions

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

Genuine Enabling Technology LLC v. Sony Group Corp.

In this patent case, Genuine Enabling Technology filed a petition asking the Court to review the following question:

  • “Whether a patentee’s statutory entitlement to ‘equivalents thereof’ under 35 U.S.C. § 112(f) may be extinguished as a matter of law, regardless of the evidence comparing the structures as wholes, whenever the patentee does not separately account for each component of the disclosed structure or explain why any should be omitted.”

Centripetal Networks, LLC v. Cisco Systems, Inc.

Centripetal Networks filed a petition in another patent case asking the Court to review the following question:

  • “Whether a court, without providing notice, may adopt a new, dispositive, materially different claim construction after the evidentiary record is closed, and without permitting supplemental briefing or a meaningful opportunity to be heard.”

Fortress Iron, LP v. Digger Specialties, Inc.

In this third patent case, Fortress Iron filed a petition asking the Court to review the following questions:

  1. “Whether an agreed, omitted, co-inventor whose patent rights have been entirely assigned to the patent owner but who could not be found to receive notice is a ‘party concerned’ entitled to notice and hearing under 35 U.S.C. § 256(b) preventing their contribution from being recognized even when all parties agree the omitted inventor is a true co-inventor who should be recognized, the omitted inventor’s rights are owned by the patent owner, and the omitted inventor can only be benefited, not harmed, by being recognized.”
  2. “Whether a patent that correctly names at least some true inventors can be held invalid for the omission of one co-inventor after Congress repealed 35 U.S.C. § 102(f) in the America Invents Act, where the Federal Circuit’s invalidity holding relies on the very statutory framework that Congress eliminated and is contrary to the statutory trend of making correction of inventorship easier and invalidity for incorrect inventorship harder to achieve.”
  3. “Whether the Federal Circuit’s interpretation of 35 U.S.C. § 256(b) and 35 U.S.C. § 101 and its holding that inventorship errors render patents permanently invalid when a co-inventor cannot be located undermines the harmonization of United States patent law with international patent standards that Congress intended to advance through the America Invents Act, by making inventorship errors more consequential to patent validity in the United States than under the patent laws of other major jurisdictions.”

HEALTHeSTATE, LLC v. United States

In this case raising copyright and government contract law-related questions, HEALTHeSTATE filed a petition asking the Court to review the following questions:

  1. “Whether ‘willful blindness,’ when used to establish the statutory knowledge required by § 411(b)(1)(A), retains the two requirements this Court defined in Global-Tech Appliances, Inc. v. SEB S.A; subjective belief in a high probability of the relevant legal inaccuracy and deliberate action to avoid learning it.”
  2. “Whether the Contract Disputes Act authorizes the Federal Acquisition Regulation’s ‘sum certain’ requirement as a mandatory prerequisite to a contractor’s monetary claim.”

Dreiling v. United States

In this pro se case, Dreiling filed a petition asking the Court to review three questions.

Reply Brief

Since our last case, a reply brief in support of a petition was filed in ASG Solutions Corp. v. United States, a government contract case. As a reminder, the petition in this case presented the following questions:

  1. “Whether the government must prove that a contracting officer exercised independent, contemporaneous discretion prior to [termination for default (‘T4d’)], or whether a T4D remains valid when the evidentiary record contains zero evidence that the contracting officer exercised any independent business discretion, so long as an underlying breach occurred.”
  2. “Whether the government may satisfy its burden to prove the contemporaneous exercise of administrative discretion by relying solely on an unauthenticated memorandum that appears fraudulent on its face and is admitted ‘not for the truth of its contents.’”

In its brief in opposition, the United States contended the “lower courts here properly applied the [Contract Disputes Act of 1978]’s de novo review standard and determined that adequate cause for terminating the contract for default existed at the time the contracting officer made the decision.” Furthermore, the United States claimed, “[r]eview is . . . unwarranted because the record shows that the contracting officer did consider the [Federal Acquisition Regulation] factors that petitioner invokes.”

Now in its reply brief, ASG Solutions argues a “court’s de novo review of the objective breach of contract does not excuse the agency’s failure to exercise that discretion in the first instance.” Furthermore, ASG Solutions emphasizes, “the Federal Circuit has left government contractors defenseless and opened the door for arbitrary and pretextual terminations that ultimately harm the United States.”

Amicus Briefs

Since our last update, six amicus briefs were filed in Kahoot! AS v. Interstellar Inc., a patent case. As a reminder, the questions presented in this case are:

  1. “Whether the PTO lacks statutory authority to deny inter partes review institution based on ‘settled expectations’ premised on a patent’s age where Congress prescribed express timing limits for inter partes review based on a patent’s minimum age (which is tied to the expiration of the statutory period for seeking post-grant review, a separate type of patent validity challenge) but imposed no maximum patent age bar.”
  2. “Whether 35 U.S.C. § 314(d) bars judicial review, even by way of mandamus, of whether the PTO exceeded its statutory authority when denying inter partes review institution on grounds that are contrary to the statute.”

The six amicus briefs all support review and were filed by the following parties: