John F. Murphy, of Baker & Hostetler, left, and Michael H. McGinley, of Dechert, right. John F. Murphy, of Baker & Hostetler, left, and Michael H. McGinley, of Dechert, right.

The solicitor general has been called the “tenth justice,” in part because the nine actual U.S. Supreme Court justices often call on the Solicitor General’s Office to offer its considered view on questions pending before the court. In particular, the Supreme Court occasionally will call for the views of the solicitor general—what is known as a “CVSG” in Supreme Court lingo—on whether the court should grant certiorari in cases where the United States is not a party. Recent years have seen a marked uptick of CVSG’s in patent-related cases, including a record-setting six CVSG’s so far in the Supreme Court’s current term. That trend is both a reflection of the court’s growing interest in patent disputes and an illuminating signal of which specific patent questions the court is interested in deciding—especially since the court almost always adopts the solicitor general’s recommendation in this context. This article explores this recent trend in more detail, describes the currently pending patent CVSGs, and offers some thoughts on why the trend should interest patent litigators.

Despite the recent growth of CVSGs in patent cases, the CVSG device has a relatively long history at the court. In some cases, such as cases implicating foreign affairs, CVSG responses provide the court with the Executive Branch’s input on how the court’s actions might impact U.S. interests. In other cases, where a clear federal interest is not apparent, the CVSG process simply confirms that the Supreme Court values the solicitor general’s advice as a candid, repeat litigant before the court. In all instances, a CVSG indicates that the court is strongly considering granting certiorari in the relevant case—or at least is interested in deciding the question presented at some point.

CVSGs are especially illuminating in patent cases. Because virtually all patent cases come to the Supreme Court from the U.S. Court of Appeals for the Federal Circuit, they rarely implicate the court’s primary criterion for granting certiorari: whether lower appellate courts are in conflict over how to resolve the question presented. As a result, the court’s evaluation of certiorari petitions involving patent cases often turns on whether the Federal Circuit’s decision was incorrect and whether the issue has broad, national implications—especially relating to issues more general than just patent law—that warrant the court’s review. Thus, when the court uses CVSGs in a patent case, it is an especially reliable indicator that the court is interested in the question presented and is likely to agree with the solicitor general’s recommendation.

Indeed, the Supreme Court has followed the recommendation of the solicitor general in almost every patent case. The first CVSG in a patent case was reportedly in 1994 and the second in 2000, with at least 34 more in the 20 years that followed. The Supreme Court followed the solicitor general’s recommendation in all but three of those cases, including 22 of the last 23 occasions. That consistency is especially impressive given that, historically, the court has tended to agree with the solicitor general’s recommendation about 80% of the time. And, in recent years, that rate dipped down to 68%. As far as we can tell, the Supreme Court has never declined to take a patent case after the solicitor general recommended granting certiorari.

That context makes this term’s large group of patent law CVSGs all the more interesting. By all accounts and our own examination, there have never been as many as five pending CVSGs in Federal Circuit patent cases. In the past 10 years, only one term brought more than two, and the average has been about 1.5. The six CVSGs this term—five patent cases plus the related copyright case Google v. Oracle, will be closely watched, and could provide a window into where the Supreme Court—with Justices Neil Gorsuch and Brett Kavanaugh on board—might be heading on patent law issues.

The six petitions cut a wide swath across IP law, touching on fundamental issues of eligibility for IP protection, infringement, prior art and standing to appeal decisions in contested cases at the U.S. Patent Office.

Three of the appeals relate to the fundamental question of whether, and how, certain types of IP can be protected: HP v. Berkheimer; Hikma Pharmaceuticals USA v. Vanda Pharmaceuticals; and Google v. Oracle.

In Berkheimer, the petition asks “whether patent eligibility is a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of the art at the time of the patent.” The question arises from a Federal Circuit decision reversing a summary judgment of patent ineligibility on the ground that there was a genuine dispute of material fact underlying the legal question of patent eligibility. Because Supreme Court law calls for analyzing whether the patent claims are merely a “conventional” application of an otherwise patent-ineligible abstract idea, Berkheimer reasons that this analysis raises fact questions about the state of the art. Furthermore, the Supreme Court’s Section 101 jurisprudence has had the practical effect of providing defendants with a tool for early disposal of cases through motions to dismiss and summary judgment motions, because patent eligibility can be decided by the judge as a matter of law. But in some cases, the fact questions recognized by Berkheimer could preclude the early disposal defendants seek.

In contrast to the procedural question of Berkheimer, the petition in Hikma goes to the substantive scope of the Supreme Court’s exceptions to patent eligibility, asking “whether patents that claim a method of medically treating a patient automatically satisfy Section 101 of the Patent Act, even if they apply a natural law using only routine and conventional steps.” Hikma concerns patent claims on a method for treating a schizophrenia patient with iloperidone in a specific dose determined by the result of a genetic test. The Supreme Court held a dosage-correlation claim invalid in its 2012 decision in Mayo Collaborative Services v. Prometheus Laboratories. The Mayo decision has caused concern about the patentability of methods of treatment more generally, and Hikma seeks to test the lines that the Federal Circuit has drawn between unpatentable methods like Mayo and patent eligible treatment methods.

Google v. Oracle is a copyright case that asks, inter alia, “whether copyright protection extends to a software interface.” This question is of great importance to a software industry and patent bar that has struggled with the equivalent question of patent eligibility for software interfaces since the Supreme Court’s 2014 decision in Alice v. CLS Bank. The Federal Circuit (applying the law of regional circuits) has been generally favorable to the copyrightability of software interfaces, but this issue has produced divergent lines of thinking across the Circuits. The petitioner argues that some circuits, like the First and Sixth, have held that Section 102 of the Copyright Act precludes copyright protection for a method of operation constituting a software interface. In a 2014 CVSG in this same case, the solicitor general recommended denying certiorari, diminishing the alleged circuit split, and pointing out that the fair use defense had not yet been adjudicated (it now has).

The fourth appeal, RPX v. Chanbond, concerns standing in appeals from the Patent Office to the Federal Circuit and asks “can the Federal Circuit refuse to hear an appeal by a petitioner from an adverse final decision in a Patent Office inter partes review on the basis of lack of a patent-inflicted injury in fact?” In the Patent Office’s inter partes review (IPR) proceeding, any person can present a petition to the Patent Office challenging the validity of an issued patent on particular grounds. If the Patent Office takes up the petition, the challenger will be estopped from some future challenges, and thus has a keen interest in the outcome of the IPR. Under Federal Circuit law, however, even though any person may initiate an IPR, only those with Article III standing may appeal an adverse outcome from the Patent Office to the Federal Circuit.  RPX seeks the right to appeal adverse IPR decisions even though RPX itself may lack the requisite standing to challenge the patent in a federal court. On May 9, the solicitor general filed a brief recommending that the writ of certiorari be denied.

Fifth, Ariosa Diagnostics v. Illumina relates to the proper definition of a category of prior art under 35 U.S.C. Section 102(e). The question is “do unclaimed disclosures in a published patent application and an earlier application it relies on for priority enter the public domain and thus become prior art as of the earlier application’s filing date, or, as the Federal Circuit held, does the prior art date of the disclosures depend on whether the published application also claims subject matter from the earlier application?” This appeal concerns situations where a prior art patent application traces its lineage back to a provisional patent application that lacks all of the disclosure of the later, published patent application or issued patent. The Federal Circuit requires that such applications disclose the later-claimed invention, but the petitioner in Ariosa argues that the test contradicts Supreme Court law that predates Section 102(e). On one hand, the sweep of the question is limited because it concerns the pre-AIA version of Section 102, meaning only patents filed before March 16, 2013, but on the other hand, the operative post-AIA language has many similarities, so the appeal could ultimately affect all patents.

Finally, Texas Advanced Optoelectronic Solutions v. Renesas Electronics America concerns patent infringement and asks “whether an offer to sell occurs where the offer is actually made or where the offer contemplates that the proposed sale will take place.” This issue first arose at the Federal Circuit in 2010, in Transocean v. MaerskTransocean presented the problem of an apparatus that—as it was offered for sale—infringed the patent, but—as it was eventually sold and delivered—did not infringe the patent. Thus the patent owner in Transocean relied on the “offer for sale” for liability rather than the sale, but the “offering” took place outside the United States. The Federal Circuit examined the statutory language in Section 271 and determined that the location of an “offer for sale” is not the location of where the “offering” took place but rather the location of where the contemplated sale takes place. Transocean led to a petition for certiorari, and the Supreme Court issued a CVSG, but the case settled and was dismissed before the government filed its brief. A decision in this case would presumably also affect the Federal Circuit’s mirror image rule, established in Halo v. Pulse, that offering activity in the United States does not infringe where the contemplated sale is outside the United States. Interestingly, the Supreme Court had the opportunity to take up this issue in Halo, but specifically limited its grant of certiorari in that case to the first question of willful infringement.

As of this writing, the solicitor general has responded to only one of the CVSGs in these six cases, recommending denial in RPX v. Chanbond. The responses are likely to be strong indicators of the Supreme Court’s resolution of the petitions. As explained above, the court frequently agrees with the solicitor general’s recommendations in patent CVSGs. And, when it grants certiorari in a patent case, the court typically reverses the Federal Circuit’s decision—the historical reversal rate of the Federal Circuit in patent cases is around 90%. Thus, especially in cases where the solicitor general recommends that the court grant certiorari and reverse, the CVSG process can strongly foreshadow the ultimate outcome of a case. We will be following these cases with great interest—and we recommend that other patent litigators and Supreme Court junkies do the same.

John F. Murphy is a partner in the Philadelphia office of Baker & Hostetler, where he focuses his practice on intellectual property litigation. He previously served as a law clerk to Federal Circuit Judge Kimberly A. Moore.

Michael H. McGinley is a partner in the Philadelphia and Washington offices of Dechert. He focuses his practice on appellate and complex commercial litigation. He previously served as a law clerk to Justice Samuel A. Alito, Jr. and to then-Judge Neil M. Gorsuch.