Some of the big news a couple weeks ago was the Supreme Court’s decision to invite the Solicitor General (SG) to file a brief expressing the views of the United States in American Axle, a Section 101 case involving an industrial process for manufacturing. This action—commonly referred to as a CVSG (Call for the Views of the Solicitor General)—provides a strong indication that the Supreme Court is seriously considering granting review in a case.
As readers no doubt know, the Supreme Court often CVSGs in patent cases before granting cert. The Court recently CVSG’d two 101 cases only to deny review last Term (discussed in our article here). Given the importance of CVSGs and the fact they are intermediate stopping points for many patent cert petitions that actually get granted, we decided to catch up with the co-chair of MoFo’s Appellate and Supreme Court practice, Deanne Maynard, to discuss them. Before joining the firm, Deanne was an Assistant to the Solicitor General for five years, representing the United States in the Supreme Court.
Brian Matsui: I know you’re well-versed in CVSGs, both from being in the SG’s office and in private practice when cases get CVSG’d. So generally speaking, what does it mean when the Supreme Court CVSGs?
Deanne Maynard: In the simplest terms, it means the Supreme Court is interested but wants more guidance. Some Justices on the Court are considering granting the petition, but there may be something holding the Court back. So they invite the views of the SG. And although it’s called an “invitation,” the SG views it as an order to file a brief on the cert-worthiness of the case and the question presented.
As for what it means, it often allows the Court to get the views of an “honest broker,” a non-party who doesn’t have its own axe to grind in the case but still knows and cares a lot about the question presented. And the SG can tell the Court whether the case is a good vehicle to resolve the question or if there might be some obstacle that might get in the way. That can be helpful for the Justices. Of course, in patent cases, the United States may have more of an interest in how the question comes out: the government issues patents, handles agency patent challenges, owns patents itself, and is sometimes sued on others’ patents.
Brian: So how does the process work? The Court asks for a brief, and after some period of time, one is filed?
Deanne: There’s no deadline for CVSG briefs. But often you can tell, depending on the time of year of the invitation order, when the SG might file the brief. Generally, the SG tries to file briefs in time for cert petitions to be considered for certain Conferences, where the Justices discuss the petitions and decide which ones to grant. So some briefs will be filed in time for the Court to consider them before it recesses in July. Others will be filed over the summer, in time for the long summer Conference in September. And then in December, the SG might file briefs so that they can be granted in time for them to be heard before the last oral argument in April.
So for American Axle, it’s too soon for the SG to file a brief before the Court recesses this summer. That means the first possibility would be over the summer before the September Conference. The Office generally will try to file the brief by then. But since there’s no deadline, it could take longer. If we look at the 101 cases denied last Term, the Court CVSG’d one several months before the other. But the second invitation came before the SG had responded to the first, so the SG decided to file both briefs the same time so it could coordinate its views across the two cases.
Brian: How does the SG go about figuring out what the views of the United States should be? Does the SG’s Office have patent expertise?
Deanne: As soon as the SG gets an invitation, the Office sends a request for the views of every affected agency as well as various Justice Department divisions. In patent cases, that often includes at least the PTO, the Department of Commerce, and the FTC, which often has views on intellectual property issues relating to competition. Depending on the case, it may also include agencies like the FDA and NIH. For the DOJ, it would include several parts of the civil division, which often deals with government IP issues, and the antitrust division. These agencies and divisions will send written views to the SG on what they think the United States’ position should be, on both the cert-worthiness and the merits of the question presented. But ultimately, it’s the SG who will decide what the view of the United States should be, and who will resolve any competing interests within the government. The Office currently has the benefit of a Deputy Solicitor General, Malcolm Stewart, who has supervised the patent docket for over decade.
Before filing an invitation brief, the Office often meets with counsel for the parties to the case. If either party requests a meeting, the Office will meet with both sides. But if neither party makes a request, the Office generally doesn’t reach out to them. The meeting is a chance for the parties to explain why the cert petition should be granted or denied. In addition to the Deputy SG, the Assistant to the SG assigned to the case will be at the meeting, as well as representatives from the interested federal agencies and DOJ divisions. The meetings are often set up so the Office will meet with each party separately, followed by a government-only meeting so the Office can discuss with the other government entities what position the SG’s brief should take.
Brian: Does the Court pretty much always follow the SG’s recommendation?
Deanne: It depends on what the SG recommends. Yes, the Court almost always grants cert if the SG recommends grant. It’s confirmatory, as the Justices were already interested.
But if the SG recommends deny, then it might depend on why the SG says deny. Sometimes the SG’s brief might recommend deny but say that the issue itself is really important and should be reviewed, just not in this case. In that situation, the SG might identify some possible reason why the case isn’t the right vehicle to resolve the question presented and say the Court should wait for a later case. The Court might grant anyway.
The Court also might grant review if the SG says the case was wrongly decided but cert should be denied. For example, the SG might say the issue won’t have any widespread significance or the disagreement in the lower courts might resolve itself. But because the Court was already interested in the case when it CVSG’d, it might grant anyway.
Still, we never know for sure why the Court grants or denies review because those orders are unexplained.
Brian: So what do we make of American Axle given the cert denials on the 101 cases last Term?
Deanne: Obviously the Court is interested, given the CVSG in American Axle. And on a superficial level, three CVSGs in 101 cases over the past couple of years suggests the Court sees something of interest.
But I’m not sure how much you can draw from the other CVSGs or the cert denials last Term. The SG recommended deny in both 101 CVSGs, but it identified and recommended granting a third petition addressing methods of treating diseases. Of course, the Court denied that one too, and there’s no way to know why. But given the difference between the mechanical arts issues in American Axle and methods of treating diseases, I don’t think the Acting SG (or the SG, if one is confirmed before the brief is filed) will feel constrained by the prior grant recommendation. That recommendation was pretty closely tied to patent eligibility questions related to methods of treating diseases, even though the brief noted broader confusion stemming from the Supreme Court’s 101 jurisprudence. And while the Deputy SG is the same, the Administration is different. And we don’t yet know if the Biden administration will feel differently about these issues.
One thing to keep an eye on is how the SG views American Axle from a simplicity of technology perspective. In recommending deny in one of the CVSGs last Term, the brief noted that the Supreme Court in particular had less experience addressing patent eligibility questions in the software context. The SG suggested taking a case involving industrial processes, which is more like the issues in American Axle. But now that a case actually is before the Court, it will be interesting to see if the Office has any concerns that the technology and issues aren’t the best vehicle to address some of the 101 confusion the previous SG identified.