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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, since our last update the Court issued its decision. As for pending petitions, no new petitions were filed; two waivers of the right to respond to petitions were filed in a patent case and a pro se case; and two reply briefs were filed in patent cases. Here are the details.

Pending Cases

In the only pending case, Hikma Pharmaceuticals USA Inc. v. Amarin Pharma, Inc., which addresses inducement of infringement and so-called skinny-labeling, since our last update the Supreme Court has issued its decision. An initial summary has been posted. We plan to post a full opinion summary soon.

Pending Petitions

Waivers of the Right to Respond

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

Reply Briefs

Since our last update, two reply briefs in support of a petition were filed.

Hyatt v. Squires

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

  • “Whether the PTO may invoke the equitable doctrine of ‘prosecution laches’ to deny a patent to an applicant who has complied with all the Patent Act’s timeliness provisions.”

In its brief in opposition, the government argued that, “while petitioner contends that prosecution laches is frequently invoked, he cites no case in which the Federal Circuit has relied on the doctrine to bar a patent application that was filed after the effective date” of the amendment in 1995 to the patent statute to change the expiration date of patents. As a result, the government said, “[t]here is consequently no sound basis for petitioner’s assertion.”

Now, in his reply brief, Hyatt asserts the “doctrine of prosecution laches has no basis in the text of the Patent Act, its history, or any relevant precedent.” He argues the PTO, “[l]eft without any statutory authorization, . . . argues that Congress implicitly approved the doctrine as a ‘background principle of patent adjudication.'” According to Hyatt, however, such “a background principle cannot trump statutory text, and no such doctrine lingered in the background anyway.”

Dolby Laboratories Licensing Corp. v. Unified Patents, LLC

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

  1. “Whether a patent owner is injured by the Patent Trial and Appeal Board’s refusal to require a petition to identify all real parties in interest.”
  2. “Whether [35 U.S.C.] § 314(d) bars judicial review of a final decision regarding real parties in interest.”

In its brief in opposition, Unified Patents argued that, “beyond a conclusory assertion that the Federal Circuit’s decision ‘conflicts with this Court’s precedent interpreting § 314(d),’ . . . the Petition cannot identify what that conflict actually is—or why this Court should intervene.”

Now, in its reply brief, Dolby asserts the “Director concedes that Dolby’s reading of the statutory text is correct.” Dolby contends “Section 314(d) does not bar this appeal” because, “[b]y its terms, §314(d)’s bar is limited to ‘[t]he determination by the Director whether to institute an inter partes review.'” According to Dolby, it “is not asking to ‘undo’ the Director’s institution decision; it is asking for the Board’s final decision on the merits to adhere to the requirements of §312(a)(2).”