After reflecting upon the events of the past twelve months, Patent Docs presents its 15th annual list of top patent stories.  For 2021, we identified nine stories that were covered on Patent Docs last year that we believe had (or are likely to have) a significant impact on patent practitioners and applicants.  On Monday, we counted down stories #9 to #7, and today we count down stories #6 to #4, as we work our way towards the top three stories of 2021.  As with our other lists (2020, 2019, 2018, 2017, 2016, 2015, 2014, 2013, 2012, 2011, 2010, 2009, 2008, and 2007), links to our coverage of these stories (as well as a few links to articles on related topics) have been provided in case you missed the articles the first time around or wish to go back and have another look. 

6.  Patent Community Living with Subject Matter Eligibility Status Quo Nearly a Decade after Mayo v. Prometheus

It has been almost a decade since the Supreme Court issued its decision in Mayo v. Prometheus, and in the time that has passed since that decision, the current subject matter eligibility standard has become the status quo with little prospect for change.  Notwithstanding the subject matter status quo, subject matter eligibility once again made our top stories list -- as has been the case in seven of the past eight years.  In particular, stories involving subject matter eligibility took the #2 and #3 spots on our list last year after taking the #2 and #5 spots on our 2019 list; the #2 spot on our 2018 list; the #1, #2, and #4 spots on both our 2016 and 2015 lists; the #1 and #2 spots on our 2014 list; and the #1 spot on our 2013 list.

The year started with Patent Docs authors Kevin Noonan and Michael Borella joining two other Chicago patent attorneys in filing an amicus brief supporting Supreme Court review of the Federal Circuit's decision to invalidate claims of American Axle's U.S. Patent No. 7,774,911 under 35 U.S.C § 101 (our #3 story in 2020 was the Federal Circuit's decision in American Axle & Manufacturing, Inc. v. Neapco Holdings LLC).  In May, the Supreme Court requested the views of the Solicitor General in its consideration of American Axle's certiorari petition, which asks the Court to reverse the Federal Circuit's decision in American Axle.

And then in June, a divided Federal Circuit panel affirmed a District Court determination that claims directed to a digital camera were invalid under § 101 in Yu v. Apple.  A few months earlier, Senators Thom Tillis (R-NC), Mazie K. Hirono (D-HI), Tom Cotton (R-AR), and Chris Coons (D-DE) wrote to Drew Hirschfeld, current Commissioner of Patents and Acting Director of the U.S. Patent and Trademark Office, asking the USPTO to publish a request for information on the current state of patent eligibility jurisprudence in the United States, evaluate the responses, and provide Congress with a detailed summary of the Office's findings, particularly with regard to how the current jurisprudence has adversely impacted investment and innovation in critical technologies like quantum computing, artificial intelligence, precision medicine, diagnostic methods, and pharmaceutical treatments.  The Senators asked for a response by March 2022, so subject matter eligibility is likely to keep its top stories streak going in 2022.

For information regarding this and other related topics, please see:

• "CardioNet, LLC v. InfoBionic, Inc. (Fed. Cir. 2021)," November 16, 2021
• "On the Nature of Prior Art in the 35 U.S.C. § 101 Inquiry," August 10, 2021
• "Yu v. Apple (Fed. Cir. 2021)," June 13, 2021
• "Supreme Court Requests View of Solicitor General in American Axle v. Neapco," May 3, 2021
• "Could Alice Be Used to Invalidate Diehr? Of Course It Could," April 20, 2021
• "In re Board of Trustees of the Leland Stanford Junior University (Fed. Cir. 2021)," March 28, 2021
• "On the Patent Eligibility of Information Processing," March 15, 2021
• "In re Board of Trustees of the Leland Stanford Junior University (Fed. Cir. 2021)," March 14, 2021
• "Senators Request USPTO to Provide Information on Subject Matter Eligibility," March 9, 2021
• "Chicago Patent Attorneys File Supreme Court Amicus Brief in American Axle," February 4, 2021

5.  Federal Circuit Continues to Develop (and Limit) Section 112

In 2017, the Federal Circuit's decision in Amgen Inc. v. Sanofi, which brought clarity to how the Court (and U.S. Patent and Trademark Office) should apply the written description requirement in 35 U.S.C. § 112(a) to properly circumscribe the scope of claims to monoclonal antibodies, made it to #11 on our top stories list.  In February, the Federal Circuit took aim at the enablement requirement for antibody claims in Amgen, Inc. v. Sanofi, with similar, scope-limiting results.

The Federal Circuit followed that decision with several other decisions implicating the written description and enablement requirements, including Bayer Healthcare LLC v. Baxalta Inc. (enablement); Raytheon Technologies Corp. v. General Electric Co. (enablement); Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc. (enablement); Juno Therapeutics, Inc. v. Kite Pharma, Inc. (written description); Indivior UK Ltd. v. Dr. Reddy's Laboratories S.A. (written description); and Biogen Int'l GmbH v. Mylan Pharmaceuticals Inc. (written description).  As a result of the Federal Circuit's decision in Juno Therapeutics, the scope of claims relating to antibodies (as well as other chemical species) will likely be limited to a "what you see (i.e., disclose expressly) is what you get (patented)" model, which will no doubt (by reducing valid claim scope) allow copyists to piggyback on others' inventions to make their own competing species of valuable therapeutic agents.

For information regarding this and other related topics, please see:

• "Biogen Int'l GmbH v. Mylan Pharmaceuticals Inc. (Fed. Cir. 2021)," December 1, 2021
• "Indivior UK Ltd. v. Dr. Reddy's Laboratories S.A. (Fed. Cir. 2021)," November 28, 2021
• "Juno Therapeutics, Inc. v. Kite Pharma, Inc. (Fed. Cir. 2021)," August 26, 2021
• "Pacific Biosciences of California, Inc. v. Oxford Nanopore Technologies, Inc. (Fed. Cir. 2021)," May 20, 2021
• "Raytheon Technologies Corp. v. General Electric Co. (Fed. Cir. 2021)," April 18, 2021
• "Bayer Healthcare LLC v. Baxalta Inc. (Fed. Cir. 2021)," March 8, 2021
• "Amgen Inc. v. Sanofi (Fed. Cir. 2021)," February 21, 2021

4.  Supreme Court Reaffirms (But Limits Application of) Assignor Estoppel Doctrine

In June, a five-justice majority of the Supreme Court reaffirmed the doctrine of assignor estoppel, while at the same time limiting its application, in Minerva Surgical, Inc. v. Hologic, Inc.  Assignor estoppel prohibits an inventor or other owner of rights in a patent from selling that patent to another party, then practicing the invention while attempting to avoid infringement liability by claiming the patent was invalid from the start.  The Minerva majority found that the doctrine was well-established in the law and thus was unwilling to abandon it.  However, consistent with the equitable nature of the doctrine, the Court limited the doctrine to those instances where the assignor could be fairly understood to have warranted (either expressly or implicitly) the validity of the claims that ultimately issued.  Thus, in many circumstances -- such as when an inventor assigns rights to a patent application that issues with significantly broader claims -- the doctrine will not apply.

For information regarding this and other related topics, please see:

• "Minerva Surgical, Inc. v. Hologic, Inc. (2021)," June 30, 2021
• "Oral Argument in Minerva Surgical Inc. v. Hologic, Inc.," April 25, 2021