Petitions / Supreme Court Activity
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Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to granted cases, the Supreme Court heard oral arguments last week in Bufkin v. McDonough. With respect to petitions, three new petitions were filed in two patent cases and a veterans case, two new briefs in opposition were filed in patent cases, and one new amicus brief was filed in a veterans case. In addition, the Court denied the petitions in a patent case and a pro se case. Here are the details.

Granted Cases

Last week, the Supreme Court heard arguments in Bufkin v. McDonough. In this veterans case, the Supreme Court will determine whether the Court of Appeals for Veterans Claims must “ensure that the benefit-of-the-doubt rule was properly applied during the claims process in order to satisfy 38 U.S.C. § 7261(b)(1),” which directs that court to “take due account” of the application of that rule. Our argument recap is posted here.

Petitions Cases

New Petitions

In Miller Mendel, Inc. v. City of Anna, a patent case, Miller Mendel, Inc. asked the Court to review the following questions:

  1. “Whether the Federal Circuit in removing a duly appointed Article III judge from judicial duties for her refusal to submit to a mental health evaluation usurped the exclusive constitutional authority vested in Congress by the United States Constitution, which provides that federal judges may only be removed through the impeachment process, and if so, whether such an act undermines the impartiality and integrity of patent appeals adjudication by depriving the patent owner of a fair hearing before a duly constituted appellate panel?”
  2. “Whether the Federal Circuit erred, contrary to this Court’s precedent in Carter v. Stanton, 405 U.S. 669, 92 S. Ct. 1232, 31 L. Ed. 2d 569 (1972), and deepening a recognized split among the circuits, by allowing the lower court to circumvent the requirements of Rule 12(d) of the Federal Rules of Civil Procedure, which mandates that when matters outside the pleadings are presented in a motion to dismiss, the motion must be treated as one for summary judgment, thereby providing the plaintiff a fair opportunity to present responsive evidence and engage in the summary judgment process?”
  3. “Whether the current judicial exception to patentability for abstract ideas for Section 101 of the criteria, allows courts to invalidate patents arbitrarily without factual development or evidentiary support, thus undermining the predictability and stability necessary for the patent system to function effectively?”
  4. “Whether the Court should eliminate the judicial exception to patentability for abstract ideas given that it does not enjoy the historical provenance of the other, much older judicial exceptions, is in derogation of the 1952 Patent Act, has never been defined nor objective criteria provided, and has created great uncertainty and chaos in the courts, at the United States Patent and Trademark Office, and among patent owners and the business community?”

In Edwards Lifesciences Corp. v. Meril Life Sciences Pvt. Ltd., another patent case, Edwards Lifesciences Corp. asked the Court to review the following question:

  • “Whether, under Hatch-Waxman’s safe harbor, an infringing act is ‘solely for uses reasonably related’ to the federal regulatory process, when the infringing act is performed for both regulatory and non-regulatory uses.”

In Frantzis v. McDonough, a veterans case, Frantzis asked the Court to review the following question:

  • “[W]hether, at least where the Board’s denial of a veteran’s claim is grounded in a credibility determination, the governing federal statutes or the Due Process Clause require that the Board member who conducts the hearing must be the same Board member who makes a credibility determination regarding the veteran’s testimony.”

Briefs in Opposition

In Zebra Technologies Corporation v. Intellectual Tech LLC, a patent case, Intellectual Tech filed its brief in opposition to the petition. The petition presented the following question:

  • “Whether a party has Article III standing to assert a claim for patent infringement against an accused infringer who has the ability to obtain a license from a third party.”

Now, in response, Intellectual Tech argues that “[n]either this Court nor the Federal Circuit has ever held that a patent owner loses Article III standing to enforce its own patent” because a third party could “grant a license to the defendant.” Rather, Intellectual Tech states, “[p]atent owners have Article III standing even when a third party has a ‘virtually unfettered right to sublicense’ the patent in suit.” Additionally, it contends, “there are antecedent questions the Court must decide before reaching the primary question presented.” For example, it argues the “Court must first determine whether Main Street [the third party in question] has an independent right to grant Zebra a license before deciding whether that right deprives IT of Article III standing.” According to Intellectual Tech, “Main Street has an unfettered right to license and/or assign the [relevant] patent in IT’s name,” meaning that “Main Street . . . does not have an independent right to license or assign the [relevant] patent to Zebra.” Intellectual Tech asserts “Zebra thus had no ability to obtain a license from anyone other than IT, and IT thus never lost Article III standing.”

In Return Mail, Inc. v. United States, another patent case, the government filed its brief in opposition to the petition. The petition presented the following question:

  • “Whether the claimed invention is ineligible for patent protection under the abstract-idea exception to 35 U.S.C. § 101.”

In response, the government argues the “Court has consistently held that claims seeking to patent abstract concepts cannot be rendered patent-eligible merely by reciting the use of a generic computer to apply the concept.” According to the government, “the claims here attempt to patent an abstract idea,” and “[n]othing in the claims identifies any particular technological method for accomplishing those steps.” The government further asserts that this case “is not an appropriate vehicle . . . to clarify the abstract-idea exception or patent-eligibility under Section 101 more generally . . . . [b]ecause the claims . . . fall within any reasonable conception or articulation of the abstract-idea exception.”

Amicus Brief

One new amicus brief was filed in Soto v. United States, a veterans case that presents the following question:

  • “When a person makes a demand for money from the federal government pursuant to federal statute, what test should courts and agencies use to determine whether that statute includes a settlement procedure that displaces the default procedures and limitations set forth in the Barring Act (31 U.S.C. § 3702)?”

The National Law School Veterans Clinic Consortium (NLSVCC) filed an amicus brief in support of the petitioner. In this brief, NLSVCC asserts that “Combat-Related Special Compensation is explicitly not military retired pay.” According to this brief, “[u]nlike retired pay, CRSC acknowledges the extraordinary sacrifice of veterans wounded in combat or in combat-like conditions who continued to serve.” The Supreme Court “must act,” the brief asserts, “so that the Secretary of Defense may properly offer these veterans equitable access to the benefits their sacrifice has earned, unencumbered by the Barring Act’s unjust limitations period.”

Denials

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