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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 petitions, since our last update, two new petitions were filed in a case raising a question related to appellate procedure and a pro se case; four waivers of the right to respond to petitions were filed in four pro se cases; two briefs in opposition were filed in patent cases raising questions related to inter partes review proceedings; one reply brief in support of a petition was filed in another patent case raising questions related to inter partes review proceedings; one supplemental brief was filed in a pro se case; and one amicus brief was filed in another patent case raising questions related to eligibility. Here are the details.

New Petitions

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

Crocs, Inc. v. International Trade Commission

In this case, Crocs filed a petition asking the court to review the following question:

  • “Whether an agency disposition is final as to some issues, thus triggering deadlines for judicial review, while other issues decided in the same disposition remain subject to further executive or administrative review.”

Coleman v. Merit Systems Protection Board

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

Waivers of the Right to Respond

Since our last update, four waivers of the right to respond to petitions were filed in the following cases:

Briefs in Opposition

Since our last update, briefs in opposition were filed in two patent cases.

Federal Express Corp. v. Qualcomm Inc.

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

  • “Does 35 U.S.C. § 314(d) bar judicial review of the Patent Office’s refusal to determine whether a petition identifies all real parties in interest when § 312(a)(2) authorizes the Office to consider petitions ‘only if’ they identify ‘all’ such parties?”

Now, in its brief in opposition, Qualcomm contends “FedEx’s narrow challenge . . . has no ongoing effect since the PTO has changed the specific policy of which FedEx complains and there is thus no likelihood that the issue will ever recur in the foreseeable future.” Moreover, Qualcomm argues, “the Federal Circuit merely followed this Court’s straightforward precedents in finding that § 312(d) barred review of a non-merits argument that FedEx made in opposing [inter partes review] institution and that was rejected by the Board in granting institution.”

Tesla, Inc. v. Granite Vehicle Ventures LLC

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

  • “Whether courts have power to review a PTO decision denying inter partes review on grounds that are contrary to statute, like an extra-statutory restriction based on time to trial in separate litigation.”

Now, in its brief in opposition, the government claims the Federal Circuit “correctly held that petitioner was not entitled to mandamus relief,” because the “petitioner does not satisfy any of the three prerequisites.” Furthermore, the government argues, the Leahy-Smith America Invents Act “places no constraints on the USPTO’s discretion to decide whether a review should be instituted.”

Reply Brief

Since our last update, a reply brief in support of a petition was filed in Google LLC v. VirtaMove, Corp., a patent case. As a reminder, the petition in this case presented 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.”

In its brief in opposition, the government argued the Federal Circuit “correctly held that petitioner was not entitled to mandamus relief” because “petitioner does not satisfy any of the three prerequisites to mandamus relief.” Furthermore, the government contended, “given the absence of any statutory language that even arguably precludes the Director from considering patent age in making a discretionary institution decision, there is no reason to suppose that the question presented will ever warrant this Court’s review.”

Now, in its reply brief, Google asserts “the mandamus posture provides no reason to deny review” because the Court “regularly reviews questions of law arising from mandamus denials, without deciding whether to issue the writ itself.” Furthermore, Google argues, the “time bar is irreconcilable with fundamental aspects of the Patent Act.” The fundamental laspects identified by Google are, “[m]ost notably, Congress’s considered decision to enact age-based limitation periods in other administrative contexts but not for [inter partes review], and the bedrock principle that only Congress may expand the patent grant by conferring presumptive immunity from administrative cancellation after six years.”

Supplemental Brief

Since our last update, a supplemental brief was filed by the petitioner in Doe v. Kennedy, a pro se case.

Amicus Brief

Since our last update, an amicus brief was filed in US Patent No. 7,679,637 LLC v. Google LLC, a patent case. As a reminder, the questions presented in this case are:

  1. “Whether a court applying Alice may hold patent claims ineligible at both steps because they do not describe how their result is achieved, so that the identity of the abstract idea has no effect on the outcome, converting 35 U.S.C. § 101 into a disclosure inquiry that belongs to 35 U.S.C. § 112, conducted without evidence, claim construction, or the challenger’s burden of proof.”
  2. “Whether a patent-infringement complaint may be dismissed because the patent owner did not plead facts negating ineligibility, an invalidity defense that 35 U.S.C. § 282(b) requires the accused infringer to plead, and where leave to add those facts was denied as futile.”

The amicus brief supports the petition and was filed by: The Association of Amicus Counsel, Mr. Christopher Pratley, Dr. Prof. Heinz Goddar, U.S. Female Inventors, U.S. Inventor Inc., The Small Business Technology Council, and the Association for American Innovation.