The Supreme Court Term is winding down, with just one oral argument remaining and about two months before the last opinion release. Today, we’re checking in on the main Federal Circuit cases on the Court’s docket—including one breaking-news update.

American Axle and Section 101

Today’s big development was in American Axle & Manufacturing Inc. v. Neapco Holdings LLC, a case about patent eligibility under Section 101 (which we’ve discussed before). The Court called for the views of the Acting Solicitor General (a “CVSG”). That means the federal government will now weigh in on whether the Court should take up the questions here (about what subject matter is eligible for patenting and whether that issue is a question of law or fact).

Just last Term, the government filed a CVSG brief urging the Court to grant cert in an appropriate case to clarify Section 101 doctrine. But the Court denied a bunch of Section 101 petitions in January 2020. We’ll see if anything changes this time around. There’s no formal deadline for the CVSG brief, but based on past practice, the brief (and the eventual decision on cert) will likely come in fall 2021 or winter 2021/2022.

Minerva Surgical and assignor estoppel

The Court also recently held oral argument in Minerva Surgical Inc. v. Hologic Inc., which will decide the fate of the doctrine of patent assignor estoppel (see our earlier post here). That doctrine bars an inventor who has assigned a patent from later defending against an infringement suit by contesting the patent’s validity.

At the April 21 argument, many of the Justices’ questions were about middle-ground solutions that would preserve the doctrine but only in limited form. The federal government, participating as amicus, had proposed one way to limit the doctrine. Several Justices (including the Chief and Justices Breyer, Sotomayor, and Kavanaugh) asked the parties specifically for their reactions to the government’s proposal. Other questions, including from Justices Kagan and Sotomayor, described scenarios where applying assignor estoppel seems particularly just or unjust. The Court may try to tailor the doctrine to capture the former while excluding the latter.

But at the same time, some Justices signaled discomfort with tinkering with the doctrine. Justice Alito asked, “Why is this a question for us and not a question for Congress?” And Justice Gorsuch wondered what new questions would arise if the Court introduced a new version of the doctrine.

At the end of the day, one thing was clear: The Justices have hard questions to grapple with here. Even Justice Breyer, often a champion of pragmatic solutions, said he was “finding trouble in finding the right way” to limit the doctrine rather than keep or abolish it wholesale.

Arthrex and the constitutionality of PTAB judges

We’re still waiting for the decision in United States v. Arthrex about whether administrative patent judges are constitutionally appointed. (We’ve covered Arthrex extensively on this blog.) But in late April, we got a decision in Carr v. Saul, which presented a related issue: When a party believes an administrative judge is unconstitutionally appointed, must the party first raise that challenge before the agency before doing so in court?

In Carr, addressing only the Social Security context, the Court answered “no”: Challengers who fail to raise Appointments Clause challenges before Social Security Administrative Law Judges do not forfeit their claims. The Court reasoned that the proceedings at issue were not “adversarial” enough to justify an “analogy to judicial proceedings,” agency adjudications are “generally ill-suited to address structural constitutional challenges,” and raising the challenge before the agency would have been futile.

What does this mean to the patent world? If the Court finds a constitutional defect in Arthrex, the next logical question is the one in Carr—who can get relief for that kind of defect. But Carr, which analyzed only Social Security proceedings, doesn’t directly answer the question for patent proceedings. And the Court denied cert on that question in Arthrex. So if Arthrex goes in favor of the challengers, litigants (and eventually, the Federal Circuit) will be scrambling to figure out whether Carr’s holding about Social Security proceedings is distinguishable in the patent context. The issue may also arise in Federal Circuit appeals raising other types of constitutional challenges to the Patent Trial and Appeal Board’s authority. The government frequently argues forfeiture against such challenges if parties never raised them before the Board. The Federal Circuit may have to grapple with questions about Carr in those cases too.