SCOTUS: Three Potential Patent Cases

38 thoughts on “SCOTUS: Three Potential Patent Cases”

1. 11

   Read re the pending Teva v. GSK cert petition awaiting Solicitor input that: “Amid all the skinny labeling whiplash, fellow generics player Viatris in August jumped in with its own Supreme Court appeal, warning that the Teva-GSK verdict had “sparked copycat suits, threatening carveout labels generally.” ?
2. 10

   Off Topic: But here is the best SCOTUS Amicus brief ever. The Onion Brief. link to supremecourt.gov
   1. 10.1

      100% agree. Read the whole thing. BEST BRIEF EVER.
      1. 10.1.1

         Probably one of the most engaging and well-written briefs. It was an enjoyable read. Thanks for posting.
3. 9

   Yeah, its always entertaining, entertaining conjectures. Since I have nothing to add, let me add to ask the question of whether the Sup. Ct. suggestion that they’re going to take up a sec. 230 matter, might be more pertinent to Patents and other IP than the seemingly-most-impoprtant two highlighted above !! 🙂 Yeah, a good question for me to answer next year is “did the Sup. Ct’s ruling in the 230 case have at least $100B impact on the “IP World” ? Does “vegas” offer odds on these sorts of things ? 🙂
4. 8

   Gilbert P. Hyatt v. United States Patent and Trademark Office, No. 21-1526
   link to cafc.uscourts.gov

   Starting at the bottom of page 7:

   ————-
   In any case, as the PTO observes, the Manual of Patent Examining Procedure (“MPEP”) section 803.03 provides examples of inaction—including delays—that it categorizes as falling under the “actions by the applicant” exception.3 “Although the MPEP does not have the force of law, it is entitled to judicial notice so far as it is an official interpretation of statutes or regulations with which it is not in conflict.” Airbus S.A.S. v. Firepass Corp., 793 F.3d 1376, 1380 (Fed. Cir. 2015) (cleaned up). And here, the MPEP demonstrates that “the public has been on clear notice of the [PTO]’s interpretation” of the applicant-action exception. Appellees’ Br. 21.
   ————

   The MPEP does not have the force of law except that it does.

   The MPEP is a self-serving pile of B*S*.

   The Federal Circuit opinion is pure B*S*.

   SCOTUS is pure B*S*.

   All of which everyone already knows.
   1. 8.1

      In In re Hubbell, the Federal Circuit adopted the MPEP’s application of nonstatutory double patenting rejections based upon a common inventor alone, NOT common ownership. Such a position was against years of case law, including their own. Technically, the MPEP was not in conflict with a statute or regulation because NDP was judge-made, but the USPTO changed the law through the MPEP.
      1. 8.1.1

         “NDP was judge-made”

         If twas judge made then how was it a law (or “the law”) that the MPEP then changed?
         1. 8.1.1.1

            That was my point. Cannot argue the MPEP is contrary to statute. But it was contrary to the case law.
   2. 8.2

      Big +1 No One.

      Hypocrisy and duplicity rein.
5. 7

   Re: IW v PE:

   How many clarifications does it take . . . to equal . . . a change?
6. 6

   BREAKING: Supreme Court To Review Broad Immunity For Big Tech
   The Supreme Court on Monday agreed to reconsider the broad legal immunity afforded to internet companies under Section 230 of the Communications Decency Act, taking up a request to revive a suit against Google over its Youtube unit’s alleged aiding of the 2015 Paris terror attacks.
   1. 6.1

      Hoo
      Ray

      Note that this speaks to your position Night Writer (and away from Wt’s).
   2. 6.2

      (1) One notes that the cert. petitioner does not ask that the Court hold that 230 violates the constitution. Just that Google should be held liable when its algorithms make recommendations. Still and all, and interesting development, cert.-wise.

      (2) Another interesting case is In re Grand Jury, which presents the question “[w]hether a communication involving both legal and non-legal advice is protected by attorney-client privilege where obtaining or providing legal advice was one of the significant purposes behind the communication”? I confess that I did not realize that this is an unsettled question. I will be interested to see the result.
   3. 6.3

      SCOTUS was going to have to do Section 230 eventually.
      Interesting timing given that both Left and Right hate Big Tech at the moment.
7. 5

   It’s entirely possible that the case the Supremes are waiting for relating yo eligibility is a case that is even more poorly decided than the CAFC’s decision in Prometheus v Mayo. And they will use that case to drive another mail into the diseased dreams of the patent maximalists who want to patent “a method comprising drinking a glass of milk and thinking about a non-obvious medical correlation”.
8. 4

   >Interactive Wearables v. Polar Electro, 21-1281 (Eligibility)

   This doesn’t surprise me as I said they seemed to be looking for a 101 case like this.
   1. 4.1

      It is a better case than American Axle, I’ll grant that. Perhaps there is some interest at the Supreme Court for ‘clarifying’ 101 jurisprudence. However, before I get my hopes up, I can say that the Supreme Court had head-faked us before. Hopefully, it won’t take a 1 year + for the Solicitor General to file an Amicus Brief.
9. 3

   For the same reasons [copied below] that I had previously picked Teva Pharmaceuticals v. GlaxoSmithKline as most likely of the 13 to get consideration of their cert petitions , I also think it is also more likely of the two remaining to get support in the now-requested U.S. Solicitors input:
   ————————————————-
   “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.”]”
   1. 3.1

      Makes sense.
   2. 3.2

      >Interactive Wearables v. Polar Electro, 21-1281 (Eligibility)

      I think this one falls into the bucket of it is a talking point that big things are being invalidated by small parts of the big things.
      1. 3.2.1

         I don’t understood that, but I do note the Interactive Wearables v. Polar Electro issues-presented wisely only asks to clarify – not overrule – prior Sup. Ct. decisions on unpatentable subject matter:
         “Issues: (1) What the appropriate standard is for determining whether a patent claim is “directed to” a patent-ineligible concept under step one of the Supreme Court’s two-step framework for determining whether an invention is eligible for patenting under 35 U.S.C. § 101; (2) whether patent eligibility (at each step of the Supreme Court’s two-step framework) is a question of law for the court based on the scope of the claims or a question of fact for the jury based on the state of art at the time of the patent; and (3) whether it is proper to apply 35 U.S.C. § 112 considerations to determine whether a patent claims eligible subject matter under 35 U.S.C. § 101.”
         [And, they might take only one or two of these three if they take any.]
         1. 3.2.1.1

            I do note the Interactive Wearables v. Polar Electro issues-presented wisely only asks to clarify – not overrule – prior Sup. Ct. decisions on unpatentable subject matter.
            That is what most of them do.
            1. 3.2.1.1.1

               Wt,

               Paul will snipe from the sidelines on ANY big C issue, and avoid any actual discussion on the merits.

               He’s probably still in denial on the Dobbs case.
10. 2

    It gives me indigestion to think of it, but Paul’s supposition that GSK v. Teva is the likeliest cert. proposition is looking ever more apt. I am still hopeful that they do not take cert. (we can all remember recent incidents in which they ask for SG input and then pass on cert. nevertheless). The call for SG input, however, is not a good sign for those of us who would prefer that the Court leave well enough alone.
    1. 2.1

       … an equivalent of a Hippocratic Oath for the Supreme Court….?
    2. 2.2

       Greg, the issue here is quite narrow, involving only CAFC acceptance of allegedly inadequate proof of inducement for an induced [not direct] infringement decision]. There is no need for a draconian outcome if the Supremes take up this case. [Unlike cert petitions trying to convince the Supremes to overrule all their own prior “unpatentable subject matter” decisions.]
       1. 2.2.1

          It is because the issue is so narrow that this case really does not merit the SCOTUS’ time and attention. It becomes worthy of their attention precisely in proportion to the extent that they wish to make a broad ruling rather than a narrow one. That is what has me unsettled (not that my indigestion makes a whit of difference to the outcome).
          1. 2.2.1.1

             Even if narrow, it’s still a potential big money issue.

             I think its bigger problem, SCOTUS-wise, is being too dependent on quirks of FDA processes/ can be ‘fixed’ by the FDA, if necessary.
             1. 2.2.1.1.1

                That raises an intriguing question. Could the Supremes could grant cert to use Teva Pharmaceuticals v. GlaxoSmithKline a vehicle for regulatory-bashing re the FDA labeling regulations?
                1. 2.2.1.1.1.1

                   ???? To what end would the top of the Judicial Branch hope to achieve with ANY regulatory bashing?
          2. 2.2.1.2

             To put all my cards on the table, however, I should also add that I do not want the SCOTUS to take cert. because I think that the CAFC got this one right. GSK v. Teva has an unusual set of facts, and on this unusual set of facts, the skinny label ought not to be approved. This really has very little relevance to most skinny label cases, to the actual economic impact of the case is far less than supposed.
             1. 2.2.1.2.1

                Greg, your other Teva v. GSK argument previously [if I understood it correctly] was that if “inducing” infringement by skinny labeling was not available it would not be practicable to sue all the pharmacists who were selling unpatented generic drugs for an “off label” disease on a “new use” patent for that? But, are not most pharmacists these days employee-agents of multi-billion-dollar companies like Walgreens, Rite-Aid, CVS, large grocery stores and hospital chains, well worth suing for Direct infringement?
                1. 2.2.1.2.1.1

                   What “direct” infringement? It is not “infringement” merely to sell an off-patent drug, which is all that the pharmacist does in most instances. The method claims are all drafted in terms of “administering” the drug, but the pharmacist does not administer any dosages. The pharmacist merely hands you the bottle. The patient then takes it home and administers the drug. The direct infringer is the patient, not the pharmacist.

                   Incidentally, if the pharmacist does administer the dose (as, for example, where the pharmacist is licensed to give vaccine shots in certain states), then that makes the pharmacist into a “medical practitioner” who comes within the §287(c)’s exclusion from liability. The pharmacy chain for which the pharmacist works would similarly be a “related health care entity” that is similarly immune from liability.
11. 1

    Strangely, the court both (1) keeps inviting SG input on subject-matter eligibility cases and (2) keeps passing on cases that clearly present the issue for consideration. I stand by my assertion that if they meant to reconsider the excesses of Mayo/Alice they would have done so in Ariosa v. Sequenom, and again in American Axle v. Neapco.

    They have had, in other words, many excellent chances to rein in their earlier decisions, and have passed every time. Nothing materially about either the court’s composition nor society as a whole has much changed since they took a pass on American Axle. What are they looking for that they keeping inviting SG comment, only to pass?
    1. 1.1

       I wonder whether this is also a case that they will pass on. Not that it necessarily matters, but there is no Federal Circuit opinion provided in Interactive Wearables v. Polar Electro to guide the court, merely an affirmance of the judgment below. Although, perhaps they don’t actually want any arguments from the Fed. Cir. judges, as that might be too confusing.
       1. 1.1.1

          I wonder whether this is also a case that they will pass on.

          One can hope…
    2. 1.2

       “What are they looking for that they keeping inviting SG comment, only to pass?”

       A brief infused with divine intervention?

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