Federal Circuit CVSG Update

• Published date: 01 June 2022
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Morrison & Foerster LLP
• Author: Mr Samuel B. Goldstein

With the Supreme Court's October 2021 Term winding down, we thought we'd check in on the cases from the Federal Circuit where the Supreme Court called for the views of the Solicitor General on whether to grant review (often called CVSGs). We've discussed the CVSG process in more detail in a previous post.

Starting with the biggest CVSG news: last Tuesday the government filed its long-awaited CVSG brief in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC, just over a year after the Court sought the government's views. That case involves patent claims covering an industrial manufacturing process. The petitioner asked the Supreme Court to take up (1) whether those claims are patent-eligible under Section 101 and (2) whether patent eligibility is a question of law or fact.

The government recommended that the Court grant review limited to the first question. It noted that the Supreme Court's existing Mayo/Alice patent-eligibility framework "has given rise to substantial uncertainty." And it contended that the Federal Circuit erred in holding the manufacturing-method claims in American Axle ineligible under Section 101. The government stated that any consideration of the petition's second, procedural question should await the Court's clarification of the "substantive Section 101 standard."

The government's recommendation doesn't necessarily mean the Court will grant certiorari. As our readers may recall, in early 2020 the Supreme Court denied certiorari in another Section 101 case, Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC, despite the government's suggestion that review was warranted. But as a general matter, the Supreme Court usually grants review when the Solicitor General recommends it after a CVSG. We'll likely learn soon whether the Court will hear American Axle. If it grants review, briefing will begin over the summer, and the case likely will be argued in the fall or winter.

The government also recently filed its CVSG brief in Olaf Soot Design, LLC v. Daktronics, Inc., which we described in an earlier post. In that case, the Federal Circuit concluded that the district court erred in failing to resolve a claim-construction dispute before trial under O2 Micro International Ltd. v. Beyond Innovation Technology Co., 521 F.3d 1351 (Fed. Cir. 2008). The Federal Circuit then construed the relevant limitation itself and held that the defendant's products did not infringe as a matter of law under the correct construction, thus...