Supreme Court Patent Law 2023

by Dennis Crouch

Although somewhat slow thus far, there is some potential that 2023 will turn out to be a major year for Supreme Court patent law jurisprudence.

Full Scope Enabling Written Description: The court has granted only one petition, Amgen Inc., v. Sanofi, No. 21-757, with merits briefs due beginning December 27, 2022. Although Amgen presented two questions in its petition, the Supreme Court indicated its interest only in hearing the second:

Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, 35 U.S.C. § 112, 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,’ ”

Amgen Petition.  Enablement rejections continue to primarily be found in chem and biotech areas.  This case, for instance, focuses on a functionally claimed monoclonal antibody.  Still, the Federal Circuit has been clear in recent years that the “full scope” requirement applies to all tech areas and both to enablement and written description requirements.   The parallel full-scope written description issue is raised in the parallel case of Juno Therapeutics, Inc., v. Kite Pharma, Inc., No. 21-1566.  Juno’s petition argues that the Federal Circuit’s test goes too far by requiring the original patent filing “demonstrate the inventor’s possession of ‘the full scope of the claimed invention,’ including all ‘known and unknown.'”  Juno Petition.  The Court is holding conference on January 6, 2023 to consider the fate of Juno.  Although petition-stage briefing is complete in Juno, questions raised by Amgen and its amici will hopefully influence the court to simultaneously pick-up this Juno case.  USPTO written description rejections most often occur based upon late-stage claim amendments, and those can happen in any area of technology.  (Note here that often the result is refusal to permit a priority claim resulting in intervening prior art rather than a straight written description rejection.)

Six additional petitions remain pending. Of these, the Court has indicated at least some interest in five (three CVSGs and two additional requests for responsive briefing).  The sixth petition was only recently filed and so the court has not had the opportunity to indicate interest.

Eligibility: Similar to the enablement/WD cases, the eligibility petitions all come from patent holders who argue that their claims were wrongly invalidated.

  • Interactive Wearables, LLC v. Polar Electro Oy, No. 21-1281 (System for displaying media information while simultaneously experiencing the media content).
  • Tropp v. Travel Sentry, Inc., No. 22-22 (method of using a luggage lock with a master key held by TSA for airport security).

Both of these cases argue that the Federal Circuit has taken Alice Corp., too literally and in a way that is limiting the patentability of traditionally eligible subject matter.  Also in both, the Supreme Court has asked for views of the Solicitor General (CVSG) and will very likely await that filing before deciding whether to grant or deny certiorari. In my view, the Interactive Wearables claims are much stronger because they recite an arguably novel device. See, US9668016.  It will be interesting to see whether the SG splits hairs or simply refiles a version of its American Axle brief supporting certiorari.

Skinny Label: Although it involves a fairly narrow issue, the pending case of Teva Pharms. v. GlaxoSmithKline LLC, No. 22-37, has a good chance of being heard by the Court, although it may be better for Congress to work to resolve the pending questions.  The basic issue here involves a generic drug with several medical treatments.  Some of the treatments are covered by method-of-use-patents while other treatments are no longer patented.  Teva has been selling the drug for the non-patented uses, and the question is whether the FDA-approved drug label that purported to carve-out the patented actually encourages infringement.  Question presented:

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?

Teva petition.  The Federal Circuit held that the drug label could induce infringement, even though FDA approved it.  In my view, the generic manufacturer here has a very strong estoppel defense because the patentee itself proposed the language used on the generic label.  That defense has not yet been considered at the district court.  As with the eligibility cases, the Supreme Court has asked for the views of the Biden Administration in this case as well.  Although the SG’s views have often been important in guiding certiorari grant/denial, it is unclear to me what influence Solicitor General Prelogar’s statements will have on the strongly conservative court.

Estoppel and Procedure: The remaining three pending petitions all relate to some form of estoppel or procedure.

  • Apple Inc., et al. v. California Institute of Technology, No. 22-203.  Following  an inter partes review, the petitioner is estopped from re-raising validity arguments that “reasonably could have been raised during that inter partes review.”  Apple lost the IPR against CalTech’s patent and wants to raise additional defenses in the district court litigation.  Apple has argued for a very narrow interpretation of the 315(e) estoppel while the Federal Circuit broadly interpreted the statute.
  • Jump Rope Systems, LLC v. Coulter Ventures, LLC, dba Rogue Fitness, No. 22-298. This case focuses on the doctrine of collateral estoppel and asks whether the Federal Circuit is correct that “a determination of unpatentability by the Patent Trial and Appeal Board in an inter partes review proceeding, affirmed by the Federal Circuit, has a collateral estoppel effect on patent validity in a patent infringement lawsuit in federal district court.”  In other parallel scenarios, there would be no collateral estoppel because the first decision (invalidity at PTAB) is judged with a lower preponderance-of-the-evidence standard as compared with the later district court case that requires clear-and-convincing-evidence.
  • Innovation Sciences, LLC v. Amazon.com, Inc., No. 22-554.  This final asks the Supreme Court to reinvigorate its old precedent requiring contemporary corroboratory evidence in order to invalidate a patent based upon prior art.

These final three cases are all in the petition briefing stage.  They could still be heard and decided by June if the Court quickly grants certiorari.  However, it is increasingly more likely that the briefing would extend over the summer.

Three more petitions likely coming soon:

  • Thaler v. Vidal (patentability of AI-created inventions)
  • Novartis v. HEC. (Written description and changed panel composition)
  • Wakefield v. Blackboard (pro se; indefiniteness of means-plus-function claim for failure to disclose corresponding algorithm in the specification)

23 thoughts on “Supreme Court Patent Law 2023

  1. 6

    I bet the Supreme Court will gut the enablement requirement because it has long been a bane to corporate America. Enablement prevents corporations from claiming the entire world in its patents and actually makes the corporation produce useful information for the public. We can’t have our corporate overlords being required to actually contribute and we need need more corporate welfare in the form of favorable court opinions. All hail our corporate overlords and their Supreme Court minions. (The funny thing is that enablement is such a rarely used objection/invalidation to patents that the US Supreme Court ruling on this issue is like trying to kill a mosquito with a sledge hammer.)

    1. 6.1

      The funny thing is that enablement is such a rarely used objection/invalidation to patents…

      Indeed, the SCOTUS appears to prefer that all validity concerns—utility, differentiation from the prior art, adequacy of disclosure, the whole shebang—be adjudicated as a function of §101. The way that the Court applies §101, you have to wonder why Congress bothered to draft §§ 102, 103, & 112.

      1. 6.1.1

        Thanks for the contribution. Looks like Congress is going to have to enact a statute to fix all the havoc the Supreme Court is reeking in patent law, but I don’t expect any relief any time soon. Patent law seems to be one area for bipartisanship agreement because if we don’t get it right then the whole economy goes down the drain.

  2. 5

    Thaler v. Vidal (patentability of AI-created inventions)
    The sooner this is denied the sooner we can this waste of time to bed. There is zero chance that this Supreme Court will interpret the term “individual” includes machines.

    1. 5.1

      There is zero chance that this Supreme Court will interpret the term “individual” includes machines.

      I think that this is correct. I expect that the SCOTUS is conflicted here. On the one hand, they like to take issues of cutting edge, social import, so that such matters can be regarded as “settled.” On the other hand, they know that they will not reverse the CAFC’s holding here, and they hate to affirm the CAFC. Obviously there is also no circuit split to resolve.

      My bet is always that they choose not to take a case, so I expect that they will pass on this and the matter will remain settled with the CAFC’s judgment. One way or the other, I share your confidence that the law on this point is not going to change without Congressional input.

    1. 4.1

      Now that was funny, 6.

    2. 4.2

      Hysterically true!

  3. 3

    1) timing the market is a foo l’s game. Buying quality securities is massively more important than when you buy them.

    2) The Interactive Wearables patent is a jok e. It discloses a new device does it?

    All it says is to go digitize some liner notes and display them with a computer. It says nothing about how to do that, because doing so was always within PHOSITA’s ability anyway.

    After all, previous to this “teaching”, the name or title of the media content, respective performers), singer(s), actor(s), directors), producer(s), writers), composers), conductors), involved in, and/or featured in, the respective media content could not be shared with consumers….wait, what?

    1. 3.1

      “1) timing the market is a foo l’s game. Buying quality securities is massively more important than when you buy them.”

      In many cases true, but if we dump another 10% it ain’t rocket science to drop on google/microsoft/apple (esp apple)/VOO/VTSAX with any change you have sitting around. Also, many of the dividend payers (long term holds) are super low right now and when they inevitably recover in a few years they will be paying 1.2-1.5x dividends immediately.

      1. 3.1.1

        “ if we dump another 10% it ain’t rocket science to drop on google/microsoft/apple (esp apple)/VOO/VTSAX with any change you have sitting around. Also, many of the dividend payers (long term holds) are super low right now and when they inevitably recover in a few years they will be paying 1.2-1.5x dividends immediately.”

        MBHB supports this message.

        1. 3.1.1.1

          Microsoft and Apple are solid, with tons of free cash flow and a reasonable dividend. FB is a travesty with the two-class voting stock. Zuckerberg cannot be trusted. Google has Android, which will save the company because the search business is going to get automated and decentralized faster than people think…see c.f ChatGPT. Google is freaking out about it- not because its better or will actually supplant Google search, but because it demonstrates that such a thing could happen.

          As to the wider index funds: the timing is especially impossible to predict. Dollar cost averaging of those securities is the smartest play.

          In a fat-rising rate environment and a potential recession looming, the best portfolio ratio between fixed-income and equities CAN change, especially for older folks or those with otherwise shorter investment timelines. That’s something that should be timed and carefully considered.

          PS, while I’m definitely not a lawyer and patents are a hobby, I’m actually a licensed investment advisor. Any opinions I post here are my own, not those of my firm.

          link to adviserinfo.sec.gov

        2. 3.1.1.2

          I don’t know why any rational person would think they do support or do not support his comment.

          I do like the Patent Docs site, though. Thank you for highlighting it to us.

          Be well.

        3. 3.1.1.3

          “MBHB supports this message.”

          MBHB supports this message.

  4. 2

    Off topic of the Supreme Court, but I notice that the new chief judge for the WD Tex has issued a new order governing assignment of judges to cases in the district. It will remain the case that non-patent cases filed in the Waco division will be automatically assigned to Judge Albright (the only judge in the Waco division). Patent cases filed in the Waco division, however, will be randomly assigned among the WD Tex judges in active service.

      1. 2.1.1

        What category does an unfair competition + patent infringement case fall into? 100% of non-patent cases are supposed to go to Judge Albright.

        1. 2.1.1.1

          Also whats the timing of assignment, can you play games like file complaint for trade secret, or unfair competition (or licensing, or trademark or whatever), get Albright, then amend to include patent claims, etc.

          1. 2.1.1.1.1

            I have the same questions. I guess we will see how the rule gets applied with time.

            Incidentally, this new rule is not great vis-a-vis non-patent cases. No plaintiff should get to choose his/her judge. This is not a principle unique to patent cases. It really should be the rule that all cases filed in single-judge divisions get randomly assigned among the judges of the district.

      2. 2.1.2

        Hey now wait a minute – I am seeing TONS of “100% to” and “all to” certain judges.

        Where is the umbrage for “judge selection” in these non-patent law cases?

        Congress…?
        Supreme Court…?
        Greg….?

    1. 2.2

      Whatever new order the new chief judge for WD TX issues re the assignment of new patent suits to Judge Albright, it now makes somewhat less difference, due to the higher odds of defendants being able to get IPRs with good art instead of Fintiv IPR denials.

  5. 1

    market gettin way down bros, lowest its been in years. buyin time now or soon unless you think black swan inc.

    1. 1.1

      lol – more of 6’s “time to buy (because I still need to unload)…

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