by Dennis Crouch
On Oct 14, the Supreme Court met in conference to discuss pending petitions, including two patent cases, both of which remain pending.
Relist on Written Description: The first is the big biotech full-scope written description case of Juno v. Kite. A jury awarded $1.2 billion in damages, but the Federal Circuit found the claims invalid. This is the third conference where the case was considered, and for a third time the court has decided to put-off its decision and instead relist the petition for a later conference. Although the Juno petition remains alive, its odds of being granted are going down (according to historic relisting numbers).
In Ariad, the Federal Circuit definitively held that Enablement and Written Description are two separate and distinct doctrines, but the Supreme Court has not since offered its remarks. Juno’s petition asks for the court to compare the statutory language of 112(a) against the Federal Circuit’s requirement of showing “possession [of] the full scope of the claimed invention” including all “known and unknown” variations of each component?
CVSG on Eligibility: In the patent eligibility case of Tropp v. Travel Sentry, the Supreme Court asked for the Solicitor General to provide the Government’s views on eligibility. Tropp’s petition asks “Whether the claims at issue in Tropp’s patents reciting physical rather than computer-processing steps are patent-eligible.” U.S. Patent Nos. 7,021,537 and 7,036,728. The SG has already been requested to file an eligibility brief in Interactive Wearables, LLC v. Polar Electro Oy. That petition asks identical questions to those proposed in American Axle as well as one focusing on the overlap between sections 112 and 101. “Is it proper to apply 35 U.S.C. § 112 considerations to determine whether a patent claims eligible subject matter under 35 U.S.C. § 101?” In its May 2022 filing, the Biden SG’s office supported granting certiorari in American Axle, arguing that Alice Corp. continued to create “uncertainty and confusion in the lower courts.” This was the same conclusion drawn by President Trump’s SG in Hikma v. Vanda.
1. A method of improving airline luggage inspection by a luggage screening entity, comprising:
making available to consumers a special lock having a combination lock portion and a master key lock portion, the master key lock portion for receiving a master key that can open the master key lock portion of this special lock, the special lock designed to be applied to an individual piece of airline luggage, the special lock also having an identification structure associated therewith that matches an identification structure previously provided to the luggage screening entity, which special lock the luggage screening entity has agreed to process in accordance with a special procedure,
marketing the special lock to the consumers in a manner that conveys to the consumers that the special lock will be subjected by the luggage screening entity to the special procedure,
the identification structure signaling to a luggage screener of the luggage screening entity who is screening luggage that the luggage screening entity has agreed to subject the special lock associated with the identification structure to the special procedure and that the luggage screening entity has a master key that opens the special lock, and
the luggage screening entity acting pursuant to a prior agreement to look for the identification structure while screening luggage and, upon finding said identification structure on an individual piece of luggage, to use the master key previously provided to the luggage screening entity to, if necessary, open the individual piece of luggage.
People seem baffled at the invasiveness and rights being breached through USPTO patent #111075B2 and WIPO Wo2020060606A1. Do you have any hindsight 20/20 thoughts on these 2020 coercive, influential patents?
link to patents.google.com
I do hope that this case makes it to the Supreme Court because the parallel case at the EPO, EP-B-2532812, has been opposed by Travel Sentry and I look forward to comparing patentability in the two jurisdictions under conditions of contested inter partes proceedings taken to the highest instance available.
I see the reference to Vanda claims, note that Tropp’s people speak of “physical” steps and wonder whether there is any consensus that the step of “marketing” is “physical”.
The opposed claim in Europe is directed to a plurality of special locks. Will Sentry see off the patent? I’m not sure. For sure though, this case is more than a bit “special”.
Those Vanda claims are good for a Monday laugh. Thank you! They are special.
Juno’s petition asks for the court to compare the statutory language of 112(a) against the Federal Circuit’s requirement of showing “possession [of] the full scope of the claimed invention” including all “known and unknown” variations of each component?
I know that Juno phrases its question as if it is being held to a “known and unknown” standard, but it is a bit sloppy simply to repeat Juno’s characterization as if it were the real standard at issue. The court’s opinion in Juno v. Kite did not require that all patentees recite “known and unknown” variations of each invention component. Rather, the court concluded that Juno’s patent lacked adequate written description because it was phrased so broadly as to read on unknown embodiments.
In other words, the court was not reading §112(a) in such a manner that they require patentees to do the impossible (i.e., describe the unknown). Rather, they were requiring patentees to confine their claims to that which they can describe (i.e., only the known).
If Juno had been content with narrower claims, then the claims would not have failed for lack of written description. On the breadth of Juno’s asserted claims, however—extending, as they did, to cover embodiments that Juno could not possibly have described because no one had yet invented the relevant scFvs—Juno rightly deserved to lose. Their claims extended beyond that which §112 permits, and therefore the CAFC was right to reverse the district court’s finding of validity.
Question presented: Did the court err by barring Juno from patenting unknown compounds?
Rather, the court concluded that Juno’s patent lacked adequate written description because it was phrased so broadly as to read on unknown embodiments.
Most claims using the phrase “comprising” read on unknown embodiments. A claim reciting “A and B” reads on “A and B and C” and “A and B and D” … and “A and B and Z” and so on and so forth. As another example, it is possible that the genus of B can include unknown species that are identified subsequent to the filing of the application.
Fair enough. We are talking about the written description requirement—i.e., the requirement that you establish that you really have invented that which you are claiming by describing the invention in sufficient detail that the skilled reader can recognize—after publication—that you really had invented the full scope of the claims as of the filing date.
If you think that your #1.2 makes a relevant rejoinder to #1 in the context of a WD discussion, perhaps you might want to revisit the WD case law. If you are merely amusing yourself with a cheap debating point, however, then chacun à son goût…
From the write-up at JDSupra blog:
“[T]he fate of the ’190 patent provides a cautionary tale with respect to balancing the desire to publish scientific results against the need to protect an invention, filing one or more follow-up provisional applications, and omitting functional elements from at least some claims. Here, the inventors published their invention in January of 2002, filed a provisional application in May of 2002, and filed the more substantial non-provisional application in May of 2003. The provisional application consisted of a little over one page of description and a copy of the publication. They did not file a second provisional application. During prosecution, the Examiner found that many of the filed claims were not entitled to the claimed priority date and thus asserted the publication against those claims as anticipatory art published over one year before filing. Apparently as a result, the applicant cancelled some of their claims in order to gain allowance of the remaining claims over their own publication.”
The patent at issue here was bit of a rescue operation from its inception. It’s not surprising given these facts that there are lethal WD issues (and not surprising that the issues were beyond the capability of a jury).
I have often wondered if any corporation or university ever considered suing any of its employed scientists for destroying valuable foreign patent rights of the employer by publishing before giving their employer any opportunity to file a patent application?
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