RELIST WATCH
on Nov 2, 2022 at 2:43 pm
The Relist Watch column examines cert petitions that the Supreme Court has “relisted” for its upcoming conference. A short explanation of relists is available here.
There are four newly relisted cases this week. Perhaps unsurprisingly, two involve cases in which the court called for the views of the solicitor general, thus indicating (since it takes the vote of four justices to CVSG) that there was already a high level of interest among the justices in the case. Two other cases involve a dispute involving the Navajo Nation’s rights to Colorado River water.
Abitron Austria GmbH v. Hetronic International, Inc. involves the international reach of the Lanham Act, which provides civil remedies for infringement of U.S. trademarks. After a dispute over the trademarks for remote controls used to operate heavy construction equipment, a jury awarded Oklahoma-based Hetronic International, Inc. approximately $90 million in damages for Lanham Act violations by Abitron Austria GmbH and affiliated German and Austrian corporation defendants — including a sibling company named “Hetronic Germany GmBH,” which may give you some idea of the basis for the suit. Before the U.S. Court of Appeals for the 10th Circuit, Abitron argued that the Lanham Act should not apply to its foreign sales. Of approximately $90 million in worldwide sales, the 10th Circuit concluded that only around 3% of sales ultimately was destined for the United States; the defendants’ other goods were sold abroad for use abroad, and thus never confused U.S. consumers. Nevertheless, the 10th Circuit upheld the district court’s award on a “diversion of foreign sales” theory, namely that defendants “stole sales from Hetronic abroad, which in turn affected Hetronic’s cash flows in the United States. In its petition, Abitron argues that the approach of the 10th Circuit conflicts from those of other circuits, which apply a total of six different tests for “deciding whether the Lanham Act governs a defendant’s foreign conduct.”
The justices called for the views of the solicitor general back in May, and her brief arrived in late September. She agrees that the courts of appeals are divided, that the Lanham Act’s application abroad is an important issue, and argues the Supreme Court should take the case, although she argues that the question presented should be reformulated. Hetronic filed one last brief arguing against review and Abitron filed a shorter brief arguing that its question presented was just fine as it is, thanks all the same. Mark this one down as a likely grant.
Then comes Amgen v. Sanofi, a case arising from Amgen’s efforts to patent antibodies that lower cholesterol levels. Under the Patent Act, a patent must describe the invention and “the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art … to make and use [it],” a concept known as “enablement.” Amgen argues that the Supreme Court has held that whether a patent satisfies the “enablement” requirement is a jury question, and argues that the U.S. Court of Appeals for the Federal Circuit has deviated from that by holding that enablement is a question of law that courts review without deference. It also asks the court to answer whether “enablement” is satisfied only if those skilled in the art can practice the full scope of the patent, meaning basically all the possible embodiments of the invention, without substantial time and effort.
In April, the court called for the views of the solicitor general, and her brief arrived in latish September. The government argues that although enablement inquiry requires some factual findings, it also includes questions of law, and the Federal Circuit properly set aside a jury verdict favoring Amgen on legal grounds. The government also says a patent’s enablement “must be commensurate with the scope of its claims,” and since Amgen’s patent was broad, it “naturally require[s] more extensive enablement.” Amgen has filed a supplemental brief trying to salvage a grant despite the government’s contrary recommendation. We’ll have a better idea Monday whether it’s been successful.
The Colorado River flows through seven southwestern states and the reservations of several Native American tribes, including the Navajo Nation. In the dry west, water is a precious resource, and access to the river’s water has prompted over a century of negotiations and lawsuits between states, tribes, and the federal government. The Supreme Court has held that the federal government assumes a trust obligation to assert reserved water rights for Native tribes only when it “expressly accepts those responsibilities by statute,” by regulation, or by treaty with a tribe. The government has done so by treaty on behalf of the Navajo Nation for water from two of the Colorado River’s main tributaries, but those treaties do not cover water from the river itself.
Claiming rights to water from the Colorado River itself, the Navajo Nation sued the federal government. The tribe argued that the government violated its trust obligations by asserting water rights for other tribes along the Colorado River but not for the Navajo. The government countered that it never entered any treaties with the Navajo Nation covering the Colorado River. The U.S. Court of Appeals for the 9th Circuit disagreed, holding that the federal government owes “an affirmative trust duty … to ensure that the Nation has an adequate water supply,” including from the Colorado River. The Department of the Interior, joined by intervenor the state of Arizona, seek the Supreme Court’s review to revisit that determination. The cases are Department of the Interior v. Navajo Nation and Arizona v. Navajo Nation.
New Relists
Amgen Inc v. Sanofi, 21-757
Issues: (1) Whether enablement for purposes of Section 112 of the Patent Act is “a question of fact to be determined by the jury,” as the Supreme Court has held, or “a question of law that [the court] review[s] without deference,” as the U.S. Court of Appeals for the Federal Circuit holds; and (2) whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, or whether it must instead enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial “time and effort.” CVSG: 9/21/2022.
(relisted after the Oct. 28 conference)
Abitron Austria GmbH v. Hetronic International, Inc., 21-1043
Issue: Whether the U.S. Court of Appeals for the 10th Circuit erred in applying the Lanham Act, which provides civil remedies for infringement of U.S. trademarks, extraterritorially to Abitron Austria GmbH’s foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers. CVSG: 9/23/2022.
(relisted after the Oct. 28 conference)
Arizona v. Navajo Nation, 21-1484
Issues: (1) Whether the opinion of the U.S. Court of Appeals for the 9th Circuit, allowing the Navajo Nation to proceed with a claim to enjoin the secretary of the U.S. Department of the Interior to develop a plan to meet the Navajo Nation’s water needs and manage the mainstream of the Colorado River in the Lower Basin so as not to interfere with that plan, infringes upon the Supreme Court’s retained and exclusive jurisdiction over the allocation of water from the LBCR mainstream in Arizona v. California; and (2) whether the Navajo Nation can state a cognizable claim for breach of trust consistent with the Supreme Court’s holding in United States v. Jicarilla Apache Nation based solely on unquantified implied rights to water under the doctrine of Winters v. United States.
(relisted after the Oct. 28 conference)
Department of the Interior v. Navajo Nation, 22-51
Issue: Whether the federal government owes the Navajo Nation an affirmative, judicially enforceable fiduciary duty to assess and address the Navajo Nation’s need for water from particular sources, in the absence of any substantive source of law that expressly establishes such a duty.
(relisted after the Oct. 28 conference)
Returning Relists
Anthony v. Louisiana, 21-993
Issues: (1) Whether the presumption of innocence, the right to confrontation and the right to a fair trial permit a court to allow the grand jury prosecutor to take the stand and offer testimony regarding the prosecutor’s belief about the credibility of the alleged victims, the guilt of the defendant and the strength of the state’s evidence; (2) whether the admission of such prosecutorial testimony constitutes structural error or, instead, is subject to harmless error review; and (3) whether a reviewing court’s conclusion that the evidence at trial supports the defendant’s convictions even excluding the grand jury prosecutor’s testimony meets the state’s burden of proving harmless error beyond a reasonable doubt.
(rescheduled before the June 16 conference; relisted after the June 23, June 29, Sept. 28, Oct. 7, Oct. 14 and Oct. 28 conferences)
Buffington v. McDonough, 21-972
Issues: (1) Whether the doctrine of Chevron U.S.A., Inc. v. Natural Resources Defense Council, Inc. permits courts to defer to the Department of Veterans Affairs’ construction of a statute designed to benefit veterans, without first considering the pro-veteran canon of construction; and (2) whether Chevron should be overruled.
(rescheduled before the May 12, May 19, May 26, June 2, June 9, June 16, June 23 conferences; relisted after the Sept. 28, Oct. 7, Oct. 14 and Oct. 28 conferences)
Khorrami v. Arizona, 21-1553
Issue: Whether the Sixth and 14th Amendments guarantee the right to a trial by a 12-person jury when the defendant is charged with a felony.
(relisted after the Sept. 28, Oct. 7, Oct. 14 and Oct. 28 conferences)
Juno Therapeutics, Inc. v. Kite Pharma, Inc., 21-1566
Issue: Whether the adequacy of the “written description of [an] invention” is measured by the statutory standard of “in such full, clear, concise, and exact terms as to enable any person skilled in the art to make and use the same” in 35 U.S.C. § 112(a), or by the Federal Circuit’s test that the “written description of the invention” must demonstrate the inventor’s “possession” of “the full scope of the claimed invention” including all “known and unknown” variations of each component.
(relisted after the Sept. 28, Oct. 7, Oct. 14 and Oct. 28 conferences)
Shoop v. Cunningham, 21-1587
Issues: (1) Whether the U.S. Court of Appeals for the 6th Circuit erred by granting habeas relief based on an alleged misapplication of its own circuit precedent under the Antiterrorism and Effective Death Penalty Act, which generally prohibits courts from awarding habeas relief to state prisoners but lifts that prohibition with respect to prisoners in custody because of a state-court ruling that was “contrary to, or involved an unreasonable application of, clearly established Federal law, as determined by the Supreme Court of the United States”; and (2) whether, when the requirements for a federal evidentiary hearing are otherwise satisfied but Federal Rule of Evidence 606(b)(1) forbids considering the only evidence supporting an evidentiary hearing, a court must hold the hearing regardless.
(relisted after the Sept. 28, Oct. 7, Oct. 14 and Oct. 28 conferences)
Chinn v. Shoop, 22-5058
Issues: (1) Whether a petitioner who raises a claim under Brady v. Maryland must establish that they were more likely than not prejudiced by the government’s suppression of favorable evidence; and (2) whether the judgment of the U.S. Court of Appeals for the 6th Circuit requiring the petitioner in this case to establish that he was more likely than not prejudiced by the government’s suppression of favorable evidence should be summarily reversed.
(relisted after the Sept. 28, Oct. 7, Oct. 14 and Oct. 28 conferences)
Dubin v. United States, 22-10
Issue: Whether a person commits aggravated identity theft any time they mention or otherwise recite someone else’s name while committing a predicate offense.
(relisted after the Oct. 14 and Oct. 28 conferences)