Supreme Court on Patent Law for October 2022

by Dennis Crouch

It is time to pick-up our consideration of Supreme Court patent cases for the 2022-2023 term. A quick recap: Despite dozens of interesting and important cases, the Supreme Court denied all petitions for writ of certiorari for the 2021-2022 term.  The most anticipated case last year was the 101 eligibility petition regarding automobile drive shaft manufacturing process.  American Axle (cert denied). Bottom line, no patent cases were decided by the Court in the 2021-2022 term and none were granted certiorari for the new term starting this week.

The court’s first order of business comes on September 28, 2022 when it meets for the “long conference” to consider a fairly large pile of petitions that have piled-up over summer break.  Of the 17 pending patent-focused petitions, 13 are set to be decided at the long conference.  I have subjectively ordered the cases with the most important or most likely cases toward the top.  Leading the pack are three cases focusing on “Full Scope” Enablement & Written Description. Topics:

  • Enablement / Written Description (All three are biotech / pharma): 3 Cases;
  • Infringement (FDA Labeling): 1 Case;
  • Anticipation (On Sale Bar): 1 Case;
  • Double Patenting (Still the law?): 1 Case;
  • Procedure / Standing: 6 Cases;
  • Eligibility (AmAxle Redux): 3 Cases; and
  • Randomness (don’t bother with these): 2 Cases

1. Full Scope Written Description in Juno Therapeutics, Inc. v. Kite Pharma, Inc., No. 21-1566

According to the Federal Circuit, US patent law contains separate and distinct written description and enablement requirements.  This case focuses on the required “written description of the invention” and challenges the court’s requirement that the specification demonstrate possession of “the full scope of the claimed invention” including unknown variations that fall within the claim scope.

Juno’s patent covers the highly successful and valuable CAR-T gene therapy. The claims require a “binding element” to bind T-cells to cancer cells. The specification  does not provide much of any disclosure regarding how these binding cells actually work but instead states that binding elements are “known” and “routine” and cites to a decade-old article on the topic.  The idea here is that the patentee did enough to enable someone to make and use the invention–isn’t that enough?   But, the Federal Circuit concluded that the specification should have done more to disclose those binding elements, including all “known and unknown” elements covered by the claims.

Juno argues that the Federal Circuit’s test “is simply impossible to meet” for biotech inventions and is not part of the law envisioned by Congress.  The argument on virtual impossibility is a centerpiece of several enablement/written description cases pending.  Although the focus here is biotech, the same arguments are brewing with regard to AI-assisted inventions.  In its responsive brief, Kite reiterates that “as precedent has held for over 50 years—§ 112’s requirement of a “written description” is distinct from the requirement to “enable any person skilled in the art to make and use the” invention.”  That 50-year reference makes me chuckle because that is roughly the same period that Roe v. Wade was good law before being overturned by the Court last term.

The Federal Circuit’s decision in Juno was also a big deal because it overturned the jury verdict–holding that no reasonable jury could have found written description support.  But, it is tough to get the Supreme Court to hear a review on detailed factual findings.

Chief Judge Moore issued the decision in the case that was joined by Judges Prost and O’Malley.  The petition was filed by noted Jones Day attorney Greg Castanias along with former SG Noel Francisco and BMS (Juno) deputy GC Henry Hadad.  Joshua Rosenkranz (Orrick) is running the show for the respondent Kite Pharma. The petition has been supported by five amicus briefs, the most of any pending case.

2. Written Description for an Effective Treatment in Biogen International GmbH v. Mylan Pharmaceuticals Inc., No. 21-1567

If the Supreme Court grants certiorari in Juno, there is a good chance that it would also hear the parallel written description case of Biogen v. Mylan.  Biogen’s patent claims is directed toward a drug treatment for multiple sclerosis.  The treatment has one easy step: administer “a therapeutically effective amount [of] about 480 mg” of DMF per day along with an excipient for treatment of multiple sclerosis.  The Federal Circuit found the claim lacked written description support — especially for a showing that 480 mg is an “effective” treatment.  The specification expressly states that “an effective dose … can be from … about 480 mg to about 720 mg per day.” But, the court found that singular prophetic “passing reference” “at the end of one range among a series of ranges” was insufficient to actually the notion that the patentee possessed an “effective treatment” at the 480 mg dosage.  Effectiveness is often relegated to the utility doctrine, but here it is an express claim limitation.

In some ways Biogen and Juno are both outliers–albeit at opposite ends of the spectrum.  In Juno, the patentee is seeking a broad genus claim based upon a somewhat narrower disclosure while in Biogen, the patentee is seeking a quite narrow claim based upon a much more general disclosure. It is a forest-tree situation.  If you describe several trees, can you claim possession of the forest? Likewise, if you describe the forest, can you claim possession of individual trees?  Note also that there are similarities with the pending enablement petition in Amgen v. Sanofi as well as with the likely upcoming petition in Novartis Pharm. Corp. v. Accord Healthcare, Inc., 38 F.4th 1013 (Fed. Cir. 2022) (written description).  The overlap between written description and enablement is inextricable.  It is usually true that the arguments that prove or disprove written description have the same impact on enablement.  But here in these cases the defendants and courts continue to reiterate the potential differences.

The decision was authored by Judge Reyna and joined by Judge Hughes.  Judge O’Malley wrote in dissent.  The court then denied en banc rehearing despite a dissenting opinion from Judge Lourie joined by Chief Judge Moore and Judge Newman. Supreme Court expert Seth Waxman is handling the petition along with his team from Wilmer.  Nathan Kelley (Perkins) is representing Mylan. Kelley is the former USPTO Solicitor and PTAB Chief Judge.

3. Full Scope Enablement in Amgen Inc. v. Sanofi, No. 21-757

Amgen also fits well as a companion case to Juno v. Kite.  The difference is that Amgen asks about enablement rather than written description.  Still, the focus is the same–does enabling “the invention” require enabling all potential embodiments (even those not yet comprehended by the patentee).  As in Juno, the genus claim here is also functionally claimed, a feature that appears to make it more susceptible to invalidation under both WD and Enablement doctrines. I would have previously put this case even higher in the ranking, but the Gov’t recently filed an amicus brief in the case suggesting that the Court deny certiorari.

Jeff Lamkin (MoloLamkin) is representing the patentee Amgen in the petition. George Hicks (Kirkland) is counsel of record on the other side.  The Gov’t CVSG brief was filed by folks at the DOJ SG’s. USPTO officials did not join. Although the internal politics are always unclear, this often means that the USPTO does not fully agree with the Gov’t position.

4. Skinny Label Infringement in Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC, No. 22-37

This case delves deeply into the patent-FDA overlap and involves an increasingly common situation “skinny label” situation.  The setup involves an unpatented drug with multiple clinical uses, only some of which are patented.  What this means is that a generic producer should be permitted to market the drug for the unpatented uses, but excluded from marketing the drug for the patented uses.  One problem here is that the healthcare payers are going to recognize that the drugs are interchangeable and very quickly start buying the generic version even for the unauthorized patented use.  One way to think about this case is the level of responsibility that the generic manufacturer has to make sure that its drug is not used in an infringing way.  At what point do sales-with-knowledge equate with inducement?

The particular question presented focuses on FDA-approved labels that carve-out patented uses.  In the process, the FDA starts with the branded drug’s label and asks the brand manufacturer to identify which parts of the labeled uses are infringing.  Those labelled uses are then deleted from the label.  Teva and the FDA followed that exact process in this case.  But, the courts found that the “skinny label” still encouraged infringement — part of the problem was that the infringing and non-infringing uses were so similar to one another.  Petitioner here is seeking a safe-harbor, asking: “If a generic drug’s FDA-approved label carves out all of the language that the brand manufacturer has identified as covering its patented uses, can the generic manufacturer be held liable on a theory that its label still intentionally encourages infringement of those carved-out uses?”

Chief Judge Moore wrote the opinion in this case joined by Judge Newman. Judge Prost wrote in dissent. After an initial outcry, the panel issued a new opinion that toned-things down a bit and suggested that labelling will usually not be infringing, but that this was somehow an exceptional case. Subsequently the full court denied en banc rehearing, with Chief Judge Moore re-justifying her position while Judges Prost, Dyk, and Reyna all dissented.  The jury had originally sided with GSK — finding infringement.  However, the district court rejected the verdict and instead granted Teva’s motion for judgment as a matter of no infringement. Judge Stark who is now a member of the Federal Circuit was the district court judge in the case.

Willy Jay (Goodwin) is handling the petition; Juanita Brooks (Fish) is in opposition.

5. Post IPR Estoppel in Apple Inc. v. Caltech, No. 22-203 (Briefing ongoing)

This important case raises a question of statutory interpretation regarding post-IPR estoppel: Does IPR estoppel 35 U.S.C. § 315(e)(2) extend to all grounds that reasonably could have been raised in the IPR petition filed, even though the text of the statute applies estoppel only to grounds that “reasonably could have [been] raised during that inter partes review.”  Apple would like to challenge the validity of Caltech’s patents, was barred by the District Court based upon Apple’s unsuccessful IPR against the same patent.

Bill Lee (Wilmer) is counsel of record for petitioner. Briefing is ongoing in the case.

6. Judicial Recusal in Centripetal Networks, Inc. v. Cisco Systems, Inc., No. 22-246 (Briefing ongoing)

Although a patent case, the focus here is about the judicial code.  Cisco lost a $2 billion verdict, but was able to get the decision vacated on appeal because the Judge’s wife owned $5,000 in Cisco stock.  The judge had placed it in a blind trust, but the appellate court found that was insufficient since the statute requires “divestment” under the statute.  The petition asks whether this strict  statutory interpretation is correct; and whether any impropriety can be excused as harmless error.

Former Solicitor Paul Clement is handling the petition.

7. Summary Judgment standard in Hyatt v. USPTO, No. 21-1526

My favorite part of this litigation is the mock-up created by folks at the USPTO of Gil Hyatt applying the “Submarine Prosecution Chokehold.” Although the image was a ‘just a joke,’ Hyatt is not joking about what it represents. In particular, Hyatt argues that the USPTO created a secret policy to block issuance of his patents, regardless of the merits of his particular claims. Hyatt filed an APA lawsuit seeking an order forcing the PTO to actually examine his patent applications. But, the district court issued a sua sponte summary judgment — finding that the office was already diligently working.  Oddly though, the court did not apply the summary judgment standard provided by R.56 but instead drew inferences against Hyatt.  The petition asks simply: “Whether the ordinary summary judgment standard of Rule 56 applies to review of agency action.”  Hyatt also argues that the district court applied too-high a standard with regard to setting aside past agency actions.

Famed professor of constitutional law Erwin Chemerinsky (Berkeley) filed the petition.  The U.S. Gov’t waived its right to file a responsive brief.

8. Double Patenting and SawStop Holding LLC v. USPTO, No. 22-11

The petition here focuses on the non-statutory judicially created doctrine of obviousness type double patenting.  It asks: “Is the judicially created doctrine of nonstatutory double patenting ultra vires?”

A good percentage of patents (about 10% or so) are tied to another patent via terminal disclaimer.  In general, the patent office requires a terminal disclaimer in situations where a patentee is seeking to obtain a second (or subsequent) patent covering an obvious variation of an already obtained patent.  Otherwise, the second patent will be rejected on grounds of obviousness-type double patenting.  When I previously wrote about the case, I compared it to the Supreme Court’s abortion decision in Dobbs.  In that case, the court explained that a right to abortion “is nowhere mentioned in the Constitution.”  Similarly, obviousness type double patenting has no grounding in the Patent Act.  Dobbs also rejected the 50 year old precedent of Roe v. Wade (1972).  The fact that a precedent is old does not convert that precedent to a sacred text. One difference here is that OTDP has a somewhat older provenance than did Roe.

The need for terminal disclaimers was greatly reduced following the 1995-GATT patent term transformation. For the most part, all family members expire on about the same date. The big difference happens with patent-term-adjustment that can sometimes make a really big difference — especially if the patentee has successfully appealed.  The SawStop situation represents an interesting case-study for anyone thinking about the ongoing importance of OTDP and Terminal Disclaimers.

David Fanning is inhouse counsel for SawStop and filed the petition.  The USPTO (through the SG) waived its right to file in opposition.

9. Eligibility in Worlds Inc. v. Activision Blizzard Inc., No. 21-1554

Worlds was an early developer of 3-D virtual chatrooms and its US7,181,690 has a 1995 priority filing date. This particular patent has two steps to be performed on the client device being operated by a first user:

  • (a) Receive position information about some user-avatars
  • (b) Using that position information, determine which avatars to display to the first user

The courts found the claims directed to the abstract idea of “filtering.”  The petition asks (1) what is the standard being “directed to” an abstract idea; (2) who bears the burden of coming forth with evidence on Alice Step 2.  In particular, does a party seeking to invalidate a claim need to provide evidence of what was well-known, routine, and conventional?  The petition here is really a follow-on to American Axle. That was denied certiorari at the end of the 2021-2022 term.

Wayne Helge (Davidson Berquist) is counsel of record for Worlds.  Sonal Mehta  (Wilmer) represents Activision, but only filed a statement waiving her client’s right to respond.

10. Mandamus Jurisdiction in CPC Patent Technologies PTY Ltd. v. Apple Inc., No. 22-38

This petition fascinated me for a couple of days as I tried to think through the scope of mandamus jurisdiction.  We know that the Federal Circuit hears patent appeals, but the petition argues that the same court does not necessarily hear mandamus actions filed in patent cases.  Rather, according to the petition, the Federal Circuit’s jurisdiction should depend upon whether the mandamus action itself arises under the patent laws.  Here, the mandamus focused on  transfer for inconvenient venue under Section 1404(a).  Everyone agrees that issue is not patent law specific.

George Summerfield (K&L Gates) is handling the petition. Apple did not file a response.

11. Eligibility in Interactive Wearables, LLC v. Polar Electro Oy, No. 21-1281

This case has similar features to Worlds v. Activision and was also filed in prior to the denial of American Axle.  The petition explains that the patents claim “electronics hardware device comprising a content player/remote-control combination having numerous concretely-recited components that undisputedly qualifies as a ‘machine’ or ‘manufacture’ under the statutory language of 35 U.S.C. § 101.”

12. Junker v. Medical Components, Inc., No. 22-26

Junker’s petition raises an issue that has repeatedly come before the court — the on sale bar.  Here, the purported “offer to sell” was made by “a third party who had no right to sell the invention and with no involvement by the patentee?”  Junker asks whether that counts as an offer?

13. Licensee Standing in Apple Inc. v. Qualcomm Incorporated, No. 21-1327

This petition raises the identical issue that Apple raised in a 21-746.  That case was denied certiorari earlier in 2022 and is very likely to be denied here as well.  The question presented: “Whether a licensee has Article III standing to challenge the validity of a patent covered by a license agreement that covers multiple patents.”   Qualcomm restated the question as follows: “Whether a licensee that offers no evidence linking a patent’s invalidation to any concrete consequence for the licensee nevertheless has Article III standing to challenge the validity of the licensed patent.”

Mark Fleming (Wilmer) represents Apple and Jonathan Franklin (Norton Rose) represents Qualcomm.

14. Eligibility and Hardware in Tropp v. Travel Sentry, No. 22-22

This eligibility petition attempts to distinguish Alice on grounds of computer-technology vs real hardware with the following question presented: “Whether the claims at issue in Tropp’s patents reciting physical rather than computer-processing steps are patent-eligible under 35 U.S.C. § 101.”  One issue with the petition is that the problematic claims don’t really claim the physical hardware (a padlock with a master key), but rather a process of giving the extra key to TSA. In some ways, I see this as a lower-quality version of American Axle.

15. PTO Acting Ultra Vires in CustomPlay, LLC v., Inc., No. 21-1527

Anyone working with inter partes reviews (IPRs) knows that the PTAB first decides whether to institute the IPR and, after instituting, will hold the trial and issue a final written decision.  One oddity though is that the statute actually calls for the USPTO Director to decide the institution question with the PTAB only stepping in once the IPR is instituted.  The current procedure exists because the PTO Director has delegated her institution authority to the PTAB.  In its petition, CustomPlay asks the court to rule that this delegation is improper – a violation of “the statutory text and legislative intent.”  In addition, the petition asks a constitutional due process question: “Whether the PTO’s administration of IPR proceedings violates a patent owner’s constitutional right to due process by having the same decisionmaker, the PTAB, render both the institution decision and the final decision.”

16. Filler v. United States, No. 22-53

Filler had an interesting claim, but made a major error by dividing his patent rights between two entities in such a way that neither had enforcement power.  Filler argues that the U.S. Gov’t used his patented invention without paying and sued in the Court of Federal Claims. The petition here asks about whether his Fifth Amendment takings claim was properly barred by the Assignment of Claims Act.

Filler is the inventor and is also an attorney (and MD and PhD) filed the petition himself.

17. Arunachalam v. Kronos Incorporated, No. 22-133

Lakshmi Arunachalam has filed a number of patent related petitions over the past several years.  This one asks a number of questions including “Whether Trustees of Dartmouth College v. Woodward, 17 U.S. 518 (1819) was properly decided.”

69 thoughts on “Supreme Court on Patent Law for October 2022

  1. 12

    This case may have better cert grant odds than any of the above:
    The Solicitor General just filed a pro-cert brief against extraterritoriality with the Supreme Court in the trademark case Abitron Austria GmbH v. Hetronic International, Inc, where $90 million was allegedly awarded for trademark infringement occurring almost entirely outside of the U.S.

  2. 11

    BTW. I was wrong in my belief that Berkheimer is effectively dead. It has been resurrected in COOPERATIVE ENTERTAINMENT, INC., v. KOLLECTIVE TECHNOLOGY, INC., which was decided today.

  3. 10

    Don’t know the history of 35 USC 121 – could that section be viewed as a backdoor via which Congress gave its approval to obviousness-type double-patenting (by saying that OTDP is not available against claims that were divided out in response to a restriction requirement)?

    1. 10.2

      Definitely that is a Congressional sanction to ODP law (although without the clarity and specificity that one might like).

    2. 10.3

      by saying that OTDP is not available against claims that were divided out in response to a restriction requirement
      This is 35 USC 121:
      If two or more independent and distinct inventions are claimed in one application, the Director may require the application to be restricted to one of the inventions. If the other invention is made the subject of a divisional application which complies with the requirements of section 120 it shall be entitled to the benefit of the filing date of the original application. A patent issuing on an application with respect to which a requirement for restriction under this section has been made, or on an application filed as a result of such a requirement, shall not be used as a reference either in the Patent and Trademark Office or in the courts against a divisional application or against the original application or any patent issued on either of them, if the divisional application is filed before the issuance of the patent on the other application. The validity of a patent shall not be questioned for failure of the Director to require the application to be restricted to one invention.

      I see no explicit mention of OTDP.

      On the other hand, there is pre-AIA 103(c) and post-AIA 102(b)(2), which establishes that a commonly-owned reference could not be used as prior art (if the publication date of the reference was later than the priority date of the application).

      It seems to me that most OTDP rejections could also be made under pre-AIA 103(c) and post-AIA 102(b)(2). Please, if I’m wrong, someone correct me on this. However, Congress has made a determination that the references are not prior art.

      1. 10.3.1

        It seems to me that most OTDP rejections could also be made under pre-AIA 103(c) and post-AIA 102(b)(2). Please, if I’m wrong, someone correct me on this. However, Congress has made a determination that the references are not prior art.

        No, this is exactly backwards. ODP rejections are necessary precisely because Congress has excluded certain categories of the applicant’s own work as prior art against the applicant. It is precisely the rejections that cannot be made in view of pre-AIA §103(c) and post-AIA §102(b)(2) that necessitate ODP as a category of invalidity.

        Meanwhile, it is fine to say that Congress has made the choice to exclude those categories of prior art, but by the same token, Congress has also enacted §121—a code section that ceases to make any sense unless it is read in view of the judicially created invalidity category of ODP. Section 121 must be a Congressional approbation of ODP, because it simply makes no sense unless one reads it as Congress acceding to ODP as a category of invalidity. This is fine, because one is supposed to read statutes as having been written in view of the then-current case law. “Congress is understood to legislate against a background of common-law principles,” (internal quotations and ellipses omitted). Samantar v. Yousuf, 560 U.S. 305, 320 n.13 (2010).


          No, this is exactly backwards. ODP rejections are necessary precisely because Congress has excluded certain categories of the applicant’s own work as prior art against the applicant. It is precisely the rejections that cannot be made in view of pre-AIA §103(c) and post-AIA §102(b)(2) that necessitate ODP as a category of invalidity.
          Isn’t that indictive of Congress’s intent NOT to have these references be treated a prior art?

          Section 121 must be a Congressional approbation of ODP, because it simply makes no sense unless one reads it as Congress acceding to ODP as a category of invalidity.
          However, if you read Frederico’s commentary on the 1952 Patent Act, he makes no mention of ODP rejections with regard to section 121.


            Isn’t that indictive of Congress’s intent NOT to have these references be treated a prior art?

            Definitely, and the law as it stands gives effect to the Congressional intent here. If that §102(b)(2) exception did not exist, then there are patents that simply could not be granted in any circumstance. Because that §102(b)(2) exception exists, patents can be granted—with a terminal disclaimer.

            Frederico’s commentary on the 1952 Patent Act… makes no mention of ODP rejections with regard to section 121.

            If you mean that Federico never uses the words “obviousness-type double patenting,” then you are surely correct. I do not see, however, that anyone used those words in the 1950s. The first occasion that I can find of that exact phrase is In re Braithwaite, 379 F.2d 594, 600 (C.C.P.A. 1967).

            Still, Federico notes that “[a] body of case law… has, been developed,” and that “[s]ection 121 of this title is a new section which deals with this subject.” He then goes on to note that “[t]he third sentence of section 120 is the one which provides that neither the original or divisional application (or patent), resulting from a requirement for restriction, shall affect the validity of the other merely because of their being divided into several applications or patents as a result of the requirement.” Why even mention this? Why should a divisional affect the validity of the parent? The very observation only makes sense when we approach the text with the assumption that Federico is addressing an audience that is familiar with ODP law. This is made further clear when Federico goes on to observe that “[t]he provision obviously would not apply to matters having no relation to the particular requirement for restriction which was made.”

            Both the statute and the commentary are written against a background in which ODP exists as a category for invalidation of a patent claim, and neither the statute nor the commentary make sense except in this context. The only way cogently to read the statute is as an exception to the ODP rule, and thus as an implicit endorsement of the essential core of the ODP rule.

      2. 10.3.2

        As I said, I haven’t looked into the history of 121, so I don’t know if it had OTDP in mind in 1952 (which I believe is before the term “OTDP” came into vogue), or if it was later amended with the intent to address OTDP, or if OTDP wasn’t on anyone’s minds when it was drafted. But as Greg says below, the section makes no sense except in the context of OTDP, whether one calls the doctrine by that name or not. Note that the CAFC has related to 121 as covering OTDP, and has circumscribed the circumstances in which the exception from OTDP provided by 121 is applicable.

  4. 9

    “And I can’t think of any patent applicant/patentee that’s created more bad law for patent applicants/patentees than Gil Hyatt.”

    You can possibly be interested in DMAE, diethanolamine, iand its role re memory, seem to recall…. 🙂

    If Gil Hyatt’s inventions benefitted society, and he’s acted as the law permits and has been a good little citizen, he should be honored with some entitlement, and not to be made a show of, for trying to elliminate the CIP application, which is what any good lawyer with salt knows that it is what all this schmucksterism is all about. oooo, its the “cip abolitionists” oooo

    1. 9.1

      “ If Gil Hyatt’s inventions benefitted society, and he’s acted as the law permits and has been a good little citizen, he should be honored with some entitlement”

      So go ahead and give him some entitlement. Perhaps invite him to your house for drinks and some quiet music. He’s a star, isn’t he? Think about how cool that would make you.


          I would unironically love to see documentation of that event, should it ever happen. But it won’t happen. You’ll just have to hold onto the dream like Gil holds onto the idea that he isn’t bald and toxic.

      1. 9.1.2

        The thought which give me a little potential heartburn is seeing entitlements, lavishings, bestowed on the undeserving et al., passages from a certain Disquisition by J. Calhoun, statesman, come to mind 🙂 Entitlements and unfunded liabilities have been on the radar screen for a while now, so this all fits. Are other forms of private property rights, entitlements too ?


            No, it is Christ. History knows that my given name, Christopher, which you seem to find delight in having repeatedly slandered for foolish so long, la la la to you, or no meritorious reasons, literally translated, means “bringer of Christ”. But, I haven’t brought anybody with me, so, please continue, oh wise one…..

  5. 8

    “Written description” was originally crafted as a doctrine against the sin of so called late claiming. And was always one of those pernicous Judge made gotcha issues like did the inventor have that idea in mind in the original claims as filed. Sounds like the Fed Circuit has made it an even worse ‘goldie locks’ test. Rest assured, however, that if SCOTUS takes it up, it’s going to be yet another anti-patent ‘gist’ or “heart of the invention” subjective test.

    1. 8.1

      Exactly. There is no aspect of patent law that the SCOTUS cannot make worse. Always better to hope that the SCOTUS ignores us, rather than to invite them to make an even bigger hash of U.S. patent law than they already have.

      1. 8.1.1

        Unless of course one wants to learn from history and stomp on the accelerator to (finally) obtain Congress’s (non-bought) attention.

        Recall that prior to Congress “waking up” for the Act of 1952, the Supreme Court had dubbed itself with the phrase, “The only valid patent is one that has not yet appeared before us.

      2. 8.1.2

        Keep in mind, a coin-flip does the right thing, somewhere’s around 50% or so. When the flip goes the wrong way statistically for so long, demand that the dice be changed, or continue. Choices !! 🙂


          Haven’t we had that very “dice be changed” put in effect during the last presidential administration?

          Or do you mean some different dice being changed?


            Administrations haven’t been Presidential since ’63, perhaps you’d meant precedential. Another alternative of course is to just walk away from the game without requesting new dice, and fiddle happy songs as ya watch the House go bust…oops, I dozed off.

            You can’t change the dice in a coin-flip game, and if you convince others that you can, I’ll change it to roulette, by golly, if ya force me to !!

            NO CIP’S !!!!! That’s the last skin ya got, and now the pirrahanas are a nippin at it, the usual fiddlers in the bkcg !

            We need more actors ! And with some scripts truly entertaining, eloquence !!!!!!

    2. 8.2

      iwasthere +1

      I’d add that this is Lemley and his sort driven to limit the patent right. It is another way to invalidate a patent that the anointed don’t like.

      This “full scope” business is just outrageous. I will note again that one cannot know what the “full scope” of a claim is absent further innovation.

  6. 7

    Considering the mess that SCOTUS has made out of patent law with their 101 decisions, wouldn’t everyone be better of if every one of the these petitions is denied?

    1. 7.1

      Looking to SCROTUS for wisdom in patent law, some might adjudge it as being akin to asking an asparagus farmer how to program a 3D printer. They know nichts, otherwise there’d be no need for them to outsource to others for how to rule in patent cases. There should be at least one patent lawyer w/ at least 15 yrs experience on that court, if it is to legitimately rule on patent cases.

      1. 7.1.1

        There’s an old saying: “Washington, D.C. – the place where the greatest legal minds in America go to clerk for the Supreme Court Justices.”


          Never ever ever heard of that saying.

          I think that you are confused. The reality is that only the Elite and connected are groomed with the opportunity for such clerkships.

          Speaking of clerkships, any update on the unprecedented Dobbs leak?


            I was kidnapped by aliens in a dream and permitted to inspect the ancient true original scrolls of Shakespeare, and all I can remember from the ordeal was that the thing about “dispense with the Lawyers” was a clandestine re-write. The original text read “dispense with the CLERKS” 🙂

    2. 7.3

      Just wait till SCOTUS injects ‘written description’ into the 101 gist test. No patent claim will ever survive the double straw man analysis.

      1. 7.3.1

        I have complete faith in the group of patent practitioner scriviners to overcome ANY scrivining from the Justices of the Supreme Court.

        As does the Court as well — why else do you think that the Court keeps to its addiction of sticking their fingers into the wax nose of patent law?

        Congress: it is time for you to exercise your Constitutional power of jurisdiction stripping and remove the non-original jurisdiction of patent cases from the Supreme Court (resetting a lower Article III Court to be free of the Firehosed Simian effects).

  7. 6

    Ben [without agreeing with any conclusions about PTO Hyatt application prosecutions] you raise a good point. Even if Hyatt dies of old age while some of his thousands of pending claims in pre-1996 old-patent-term applications are still pending, the executor of his estate would logically be required to continue their prosecution to issuance for the benefit of his estate if there are any identifiable potential infringers.

    1. 6.1

      “the executor of his estate would logically be required to continue their prosecution to issuance for the benefit of his estate if there are any identifiable potential infringers.”

      Paul, given the continued uncertainty of Hyatt ever being able to assert any of this patents (claims) against any infringer(s), continuing to put out the millions he’s spending after his death could be treated as committing waste on (the assets of) his estate.

      No executor should be put in such a position.

      (Would be great if an estate atty or two would weigh in on this.)

      1. 6.1.1

        Details that would drive are not present, but given his drive, I could easily imagine a stipulation in his will to continue — forever if need be — his fight.


          An amusing loophole to the old rule against perpetuities, which Hyatt gets to beat the system either way.


            Patents – as a form of personal property – are not subject to any rules against perpetuities (IIRC).

      2. 6.1.2

        I have some experience with Trusts & Estates matters (from the beneficiary side). Whatever we may have learned in law school about the fiduciary duties of Trustees/Executors, in the real world, they have a lot more discretion and one person’s “waste” is another person’s rightful exercise of the Business Judgment Rule.
        As long as there is money to be made, the Trustee/Executor of Hyatt’s estate will likely be able to justify the filing of continuation applications for as long as they can under the Business Judgment Rule.


          Clearly, a proper assessment by a qualified assessment-maker is in the interests of all and until that IP Valuation is made, there is little sense for conjecture outside entertainment purposes. Were I interested, I’d want of course an option for a second appraisal. For now, it would be incompetent of any extant Trustee, to not fully empower the Lawyer on the patent case with anything but a fully-funded order to proceed and capture as much as IP possible for the Estate. period das ende, otherwise Trustee fails in Duty if the indenture was properly drafted, easy stuff


          Perhaps, but note ipguy’s comments. Also note that I said “IF there are any identifiable potential infringers” of claims he already has pending unexamined. Should infringed claims be given up that easily? Note that most Hyatt suits against the PTO so far never even went to trial [settlements or S.J’s] as compared to all the money Hyatt has already invested in all those applications and added claims. Also, what happens to the patent terms of pre-1996 [old term] applications when a subsequent continuation or CIP is later filed?


            No subsequent continuations are going to be filed. That is why it was worth Hyatt’s time to sue the PTO in the EDVa over some restriction requirements—because it would do him no good to file a DIV to pursue the restricted subject matter.

  8. 5

    If this is an invitation for betting on which, if any, patent case might have a chance to get cert granted, I would pick FDA approved skinny labeling – as the basis for a finding of inducing infringement – in Teva Pharmaceuticals v. GlaxoSmithKline. Because, drug pricing and patenting is such a hot topic of general interest outside of patent law, involving huge government sums, and this case being appealingly pitched as an unfair legal trap for generic drug providers after expiration of the patent on the drug itself. [Although the suit is about a later “new use” treatment patent.] [But, allegedly with no proof that the generic drug provider itself ever urged that “new use.”]
    But who knows what patent cases might have appellate appeal for this new six-justices majority, with some legal academics saying that they are obsessed with religious issues, which are hard to raise in any patent cases?

    1. 5.1

      I tend to agree… particularly after denying better 101 cases last term.

      Maybe Centripetal due to a perceived obligation to police the federal judiciary, even though the normal justifications are absent.

      Maybe Hyatt b/c SCOTUS is looking for vehicles to bring the administrative state back to heel.

    2. 5.2


      I hope that they do not take cert. on Teva v. GSK (or any of the others), but if they take cert. on any of these, that one strikes me as the most likely.

  9. 2

    “… the Federal Circuit concluded that the specification should have done more to disclose those binding elements, including all “known and unknown” elements covered by the claims.”

    But also… “The specification need not disclose that which is well-known to those skilled in thet art and preferably omits that which is well-known to those skilled and already available to the public.” In re Buchner 929 F2d 660 (1991) Hybridtech Inc v. Monocl. Antibodies Inc., 802 F. 2d 1367 (1986)

    So maybe the burden is on patentholder to make a showing that what was claimed in the spec as being well-known, truly was at the time of the application ? It must have been pretty well-known one might suppose, if those involved in preparing the spec opted to give such scant info., perhaps that is indicia that it must have been well known at that time. Time for a journal search…

    The specification preferably omits that which is well-known to those skilled in the art!

    Having to prove it later – painful. Prolixity in the spec. – priceless !

  10. 1

    Re Hyatt v USPTO:

    “The U.S. Gov’t waived its right to file a responsive brief.”

    (In other words, please SCOTUS don’t force us to make fools of ourselves by trying to explain why Hyatt’s wrong. Please.)

    1. 1.1

      “The effects of this image were palpable. After the image was disseminated, the PTO office actions regarding Hyatt’s applications began to include the phrase “prosecution chokehold.””

      Can someone please get this man a patent yet? He clearly deserves one for such pain and suffering!


          How is that game supposed to work? Wait him out only so the patent can be granted to his estate? Or wait for the end of the United States as a country so the patent is never granted?

          Honestly, the idea that the PTO is trying to “wait him out” is silly and contrary to the known facts. His applications are slowly but surely being prosecuted, reviewed by the courts, and abandoned.


            Wait until the famously fast-moving computer industry has moved on, technically speaking, from whatever he is claiming.


            Here’s how it works Ben:

            His heirs — unlike Mr. Hyatt himself — are not going to keep putting out the millions a year he’s willing to spend to make right that which is wrong.

            They will throw up their hands and throw in the towel . . . and “settle” for what his estate has left to provide them.

            Which is fully understandable.


              I can’t think of any patent applicant/patentee that’s been more badly served by his attorneys than Gil Hyatt.


                You think that this saga is the result of bad advice from his attorneys? I guess that is possible, but it seems unlikely to me. He filed these applications back in the 1990s. That is quite a lot of time for him to defer patiently to attorney advice, and he does not seem like the sort of fellow who is so dim as not to notice the results.

                I infer that his attorneys have been proceeding as they have because he is directing them to behave in this manner. I am skeptical that this is the result of bad advice. I suspect, rather, that it is the result of the client’s deliberate (if ill-conceived) choices.

                1. I agree that he’s probably behind a lot of it. But his attorneys should have educated him by now that most, if not all, of his litigation against the PTO is nothing more than tilting at windmills. And should have talked him out of it if at all possible. And disengaged if not. But hey, cashing his checks is easier I guess.

                  On the prosecution side, they never should have agreed to any of the PTO’s demands on limiting the number of claims to be examined. They should have told the PTO that the extra claims were bought and paid for, and the PTO should have done its job and examined all of them. The endless amendments were also terrible “strategy” for lack of a better term.

                  Again, I realize much (most?) of it may be at his direction. But when your client insists on shooting himself in the foot over and over and over and over, maybe try taking the gun out of his hand.

                2. And I can’t think of any patent applicant/patentee that’s created more bad law for patent applicants/patentees than Gil Hyatt.

                3. >On the prosecution side, they never should have agreed to any of the PTO’s demands on limiting the number of claims to be examined.

                  >The endless amendments were also terrible “strategy” for lack of a better term.

                  This was my sense too.

                4. “You think that this saga is the result of bad advice from his attorneys?”

                  He knows exactly what he’s doing. As he will let everyone know in his podcasts that he’s guested on before. It’s not his attorneys doing this or suggesting it.


            “Honestly, the idea that the PTO is trying to “wait him out” is silly and contrary to the known facts. ”

            See pro se’s comment.

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