Posts in US Supreme Court

Jeffrey Killian yesterday submitted a petition for writ of certiorari to the United States Supreme Court asking the Court to provide clear guidance on or else throw out the Alice/Mayo test for patent eligibility. Killian is involved in an ongoing patent dispute in which the Patent Trial and Appeal Board (PTAB) rejected claims of his  U.S. Patent Application No. 14/450,042 under Section 101. The U.S. Court of Appeals for the Federal Circuit (CAFC) affirmed the ruling in August 2022. In the petition, Killian claims that the U.S. Patent and Trademark Office (USPTO) violated Supreme Court precedent by ruling the patent application ineligible under the Alice/Mayo test.

One day before the U.S. Patent and Trademark Office (USPTO) is set to hold its first public listening session on AI inventorship, the U.S. Supreme Court today denied certiorari in the case of Thaler v. Vidal, which asked the Court to consider the question: “Does the Patent Act categorically restrict the statutory term ‘inventor’ to human beings alone?” Dr. Stephen Thaler lost his case at the U.S. Court of Appeals for the Federal Circuit (CAFC) last August, when the CAFC said the USPTO’s reading of the statute as clearly referring to inventors as natural person was “unambiguously” correct.

The New Civil Liberties Alliance (NCLA), the firm representing U.S. Court of Appeals for the Federal Circuit (CAFC) Judge Pauline Newman in CAFC Chief Judge Kimberly Moore’s bid to oust her from the court, sent a letter today to the CAFC Chief Judge calling for the case to be transferred to a new circuit. The letter charges that Moore has ordered that no new cases be assigned to Newman, that the complaint Moore identified against her “contains basic errors of fact”, and that Newman was not afforded enough time to respond to Moore’s numerous demands, among other accusations. U.S. Supreme Court Chief Justice John Roberts also received a copy of the letter.

On April 17, the U.S. Supreme Court denied a petition for writ of certiorari filed by pharmaceutical developer Novartis seeking to overturn a decision on rehearing by the U.S. Court of Appeals for the Federal Circuit that invalidated patent claims covering the blockbuster multiple sclerosis (MS) treatment, Gilenya. The cert denial leaves in place a CAFC decision derided by commentators as “procedural insanity” and increases the focus upon certain machinations at the appellate court bearing the fingerprints of Chief Judge Kimberly Moore.

On Wednesday, April 5, the United States Solicitor General (SG) recommended that the U.S. Supreme Court grant certiorari in two patent eligibility cases in order to “clarify the proper reach and application of the abstract-idea exception to patent eligibility under Section 101.” The SG filed the same brief in each of the two cases, Interactive Wearables, LLC v. Polar Electric Oy and David A. Tropp v. Travel Sentry, Inc. et. al.

The U.S. Solicitor General on Wednesday filed an amicus brief with the United States Supreme Court advising it to grant Teva Pharmaceuticals’ petition for writ of certiorari relating to generic manufacturers’ liability for infringement through the use of “skinny labels” on generic drugs. The SG’s brief said that the U.S. Court of Appeals for the Federal Circuit (CAFC) got it wrong, and that the decision could upend the careful balance contemplated by the Hatch-Waxman Amendments between incentivizing new brand name drugs and allowing cheaper generics into the market.

Yesterday’s oral argument in Amgen v. Sanofi was long-awaited and closely watched by many in the patent community. The Justices seemed skeptical that the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) decision was a significant departure from existing law, and they repeatedly questioned whether this particular case can be resolved on the facts and by employing current legal tests. During oral argument, Sanofi’s counsel, Paul Clement, admitted that the Court’s affirmance of the CAFC decision could result in the inability to functionally claim a genus in this particular area of antibody science, but said that’s ok because “functional genus claims are terrible. I think they retard the science.”

The U.S. Supreme Court heard three separate arguments today in Amgen v. Sanofi, a case that even Sanofi’s counsel agreed could effectively wipe out patents involving genus claims if the Court sides with Sanofi, or—as counsel for Sanofi and the Solicitor General’s Office suggested the Court could do—if it were to dismiss the case as improvidently granted.

On Monday, March 27, the Supreme Court will hear oral argument in Amgen v. Sanofi, a case with the parties and 27 Amici, including the United States, weighing in on whether and how the Court should address the enablement requirement of Section 112 in the context of genus claims, and in particular, genus claims to antibodies in the pharmaceutical sciences. Depending on how the court focuses its analysis, the opinion could be as narrow as how the jury instruction should read for pharmaceutical antibody claims written in the form of “a binding site plus a function.” But some of the briefs invite the court to loosen the constraints of Section 112 by eliminating the requirement of enablement of the “full scope” of the claimed embodiments in favor of a test focused on the “make and use the invention” language in the statute without the “full scope of the claimed embodiments” language the courts have used for years, with implications not just for pharma but for any art that uses functional or genus claiming.

Following the Supreme Court oral arguments in Jack Daniel’s Properties, Inc. v. VIP Products LLC last week, I was reminded of an article I penned years ago for Cardozo Arts & Entertainment Law Journal exploring the boundaries of parodies when up against allegations of trademark infringement and dilution. That article observed: “Many of the trademark parody cases do not spend time analyzing what a parody is. Rather, the sheer majority of cases assume that any attempt at humor while using another’s trademark is presumptively a parody.” It noted that in the face of the essentially blanket parody exception contained in the TDRA, “courts may more heavily weigh the threshold parody question.”

At today’s hearing in Jack Daniel’s v. VIP Products, the U.S. Supreme Court Justices suggested to both sides that there might be an easier way out on the facts of this particular case than either party is proposing, but weighed the need to overturn the Second Circuit’s test in Rogers v. Grimaldi, 875 F.2d 994 (2d Cir. 1989), which some of the Justices characterized as injecting unnecessary confusion. Though the Court seemed equally concerned about retaining a way for defendants making clearly parodic use of a mark to get out of litigation quickly, which Rogers is intended to do, they questioned both sides about why in this case they couldn’t either find for Jack Daniel’s by just saying that VIP is clearly using a source identifier on a commercial product, or remand to the district court to say they failed to properly weigh the parody or proximity factors of the product, for instance. Overall, the Justices seemed skeptical that the product in question represents a non-commercial use.

The U.S. Supreme Court today heard oral arguments in Abitron Austria GmbH v. Hetronic International, Inc., which asks the Court to consider whether the U.S. Court of Appeals for the Tenth Circuit erred in applying the Lanham Act extraterritorially to Abitron’s foreign sales, “including purely foreign sales that never reached the United States or confused U.S. consumers.” The Justices struggled with the appropriate reach of the Lanham Act and whether reversing the Tenth Circuit would require overruling Steele v. Bulova Watch Co., 344 U.S. 280, 282-285 (1952), but overall seemed to be considering the need for a new or narrowed test to account for the realities of modern commerce.

On March 9, e-commerce company Ingenio Inc. filed a petition for writ of certiorari with the U.S. Supreme Court asking it to take up an appeal of a decision last August by the U.S. Court of Appeals for the Federal Circuit in favor of patent owner Click-to-Call Technologies. Ingenio’s petition asks the Supreme Court to overturn the Federal Circuit’s ruling that Ingenio was estopped from challenging the validity of patent claims that were denied institution during inter partes review (IPR) validity proceedings at the Patent Trial and Appeal Board.

Several carefully watched copyright developments are combining to have a significant impact on the invention as well as the content landscape. A judgment from the Supreme Court of the United States is expected any day that will address the potentially shape-shifting Warhol Foundation “fair-use” suit against rock photographer, Lynn Goldsmith. This decision is also of concern to inventors and patent holders, few of whom see the writing on the IP wall: weaker intellectual property rights are gaining momentum, and lawmakers and the public don’t know enough to care.

On March 6, biotechnology developer Amgen filed a reply brief  with the U.S. Supreme Court in its appeal of the invalidation of its patent claims covering antibodies effective at blocking low-density lipoprotein (LDL) cholesterol receptors. The brief responds to arguments raised both by rival pharmaceutical firm Sanofi and the U.S. federal government in Amgen’s appeal of the invalidation of its patent claims as a matter of law under 35 U.S.C. § 112, which the district court entered on judgment as a matter of law (JMOL) after a jury verdict upheld the validity of Amgen’s patent claims.