By Dennis Crouch
The Supreme Court has closed-out its 2021-2022 term without deciding or granting certiorari in any patent cases. Overall, the court denied certiorari in 40+ patent cases, including the biggest case of American Axle. I’ll post a review of those denied cases later this month. Meanwhile we can start a preview for the 2022-2023 term.
Eight patent cases are now pending before the Supreme Court. Several focus on the written description and enablement requirements of 35 USC 112(a).
The current most-likely big case is Amgen Inc., et al. v. Sanofi, No. 21-757. Amgen asks fundamental questions of how the enablement doctrine should operate and whether enablement is a question-of-fact or a question-of-law. These are important issues fundamental to patentability that also touch on some of the same principles as the eligibility cases. The Court has requested an amicus filing from the Solicitor General. Interactive Wearables, LLC v. Polar Electro Oy, No. 21-1281, is a patent eligibility case, but it asks a related question about the extent that principles of Section 112 are applicable to the eligibility analysis. In Juno Therapeutics, Inc. v. Kite Pharma, Inc., No. 21-1566 focuses on “full scope” written description – arguing that the Federal Circuit’s application goes too far beyond the statutory text. Biogen International GmbH, et al. v. Mylan Pharmaceuticals Inc., No. 21-1567, also focuses on the written description requirement – asking what level of disclosure is necessary for a claim limitation requiring a therapeutic treatment to be “effective.”
The one other case that I would suggest has a good chance of certiorari is Hyatt v. USPTO. But, that case focuses on the summary judgment standard for APA cases and so would in reality have very little impact on the patent system.
The final three cases are all well written briefs, but I expect that they have a very low chance of being heard because of intervening events:
- Apple Inc. v. Qualcomm Incorporated, No. 21-1327 (appellate standing – same question as the already denied parallel Apple v Qualcomm petition);
- CustomPlay, LLC v. Amazon.com, Inc., No. 21-1527 (can the same PTAB judges both institute and decide IPR – I believe that Arthrex implicitly solved this issue, at least from a Constitutional perspective); and
- Worlds Inc. v. Activision Blizzard Inc., et al., No. 21-1554 (eligibility same question as the already denied petition in American Axle).
The court takes a summer break and then returns in the fall for the October 2022 term.
link to hbs.edu
Check out fig. 4. Warped changes to our immigration laws bid fair to do orders of magnitude more damage to our innovation system than any change to our patent laws ever could.
Nice what-aboutism.
Can other areas be improved?
No doubt.
But such just won’t matter if the mess of eligibility is not corrected.
“Our Constitution was made only for a moral and religious people. It is wholly inadequate to the government of any other.” – John Adams.
Where ya gonna find any of those ?
I always enjoy your writings, in case I didn’t mention it. Have a blessed day.
In reply to your Adams quote, I would posit that the Mass Media (read that as Liberal Left propaganda rags for the most part) simply have no clue as what the First Amendment actually portends to in regards to either the enshrinement clause or the separation of church and state clause.
It’s this type of post that makes me wonder why you’re allowed to post here. Or why posts are allowed at all.
BobM,
Keep wondering — and being that very special Sheeple that you excel at.
Others actually engage on legal concepts.
(You are free to not even open up the comments section — which is an item that even Greg pointed out to you the last time that you whined.
That you whine again – on the same point – only confirms that it is merely opinions you do not like that you wish to make “go away.”
YOU are the danger here, with such an attitude.
This whole idea about some new “written description requirement” seems hooky too.
Because enablement and written description are inseparably joined at the hip, and possibly in eternal coitus.
Enabling an invention, requires describing it in writing, except for those who file their specs in picture-only format. The rest of us, write.
Enablement comes in degrees, depending on how much one writes, and in the best situations,”the spec” is absolutely congruent in content and construction as are the claims.
It was common parlance in the early 90’s for practitioners to use words in claims not fully found for description in the spec, and they got away with it for a long time.
Saw a lot of claims asserted that could have been challenged, but weren’t, but for the prevailing interpretations.
I think its wrong to separate enablement from written description, I see it as an interesting academic exercise, but nothing can ever separate the two. Maybe they’re like Venus and Mars. Have the looschiest ones yet attempted to re-define Venus ?
One can’t writtengly describe an invention without enabling it, otherwise they’re not describing an invention, and the scope of the invention depends on the scope of the writing.
easy as pie. Don’t over-assert what’s not supported in the spec, and…. no problem. The media sensationalists will always be sensational to themselves at least.
umm – that’s an interesting conflation – but quite a different topic and well worth keeping different than patent eligible subject matter.
as to, “ common parlance in the early 90’s for practitioners to use words in claims not fully found for description in the spec” – you are aware that there is no requirement for ipsis verbis AND that the claims (as originally files ARE a part of the spec, eh?
not really unrelated to topic if elligible subject matter, talk about written descrip being wronfully divorced from enable enablement, b/c it is but different prongs of attack, it is ancient knowledge about “silent weapons for quiet wars”, possibly maybe a book about that sort of stuff. The mantra is clearly to deliver a huge letter F to a huge chunk of ppl involved in IP law, right ? Who can’t see that ? what are ya , drinkin or somethin ??? (not you) Its over, das Ende, Kaputt, nobody participates with the good inventions any longer, but I bet they pop up at some time, somewhere !
Everybody knows !!!!!!!
OFF TOPIC
If you put aluminum foil around the outer edges removing the foil about 15 minutes before it comes out of the oven. WAHLAH.
Freedom of the press, has always been limited to those who own one !!
yeah, its an easy one… “Congress shall make no law ….” Grants no rights, is but a limitation on the nat’l gov.
This whole argument’s been going on in one form or another since Andrew Jackson breathed nearly his last breath, allegedly having quipped something about “my greatest regret is having not shot Henry Clay”. There was always seemingly a fringe with loonifets crowd. I used to ascribe it partly to physicians prescriptions of mercurials (Hg, neurotoxin) to their patients regularly. “Mad as a Hatter” some of them got !
I odn’t know if it matters but some of these cases a lot of folk rely on for discussions surrounding sec. 101, like Oreilly, Flook &cet about 6 or 8 more, were all decided prior to Erie. So, to whatever extent the high court was relying on the existence of any sort of Swift v. Tyson-style federal common law when they wrote those decisions, some of those cases may not be as relevant.
But, Congress was aware of those cases in 1952, and even Erie. In view of all of that, they wrote 101 in its current form in view thereof. It should stand strong, as not imposing any limitation on patents, if properly asserted. One would think…..
At first, we didn’t care, b/c the applicability of those earlier flooks was limited – most inventions weren’t impacted by it, and nobody minded a little bit of bench-writing.
But, at last, it became too much, Congress was too lazy or busy, to add new requirements and conditions elsewhere in 35 USC, so the Judges had their way with it.
At some point it becomes too much.
Where does it end ? Assemble an Eccleastical Court and take patent matters there ? haha
Noice brain draining india and china (along with UK and germany). But I’m not sure that such is a “wise” policy. I wonder why the ROW wasn’t shown? Surely many more are in WIPO.
Brain draining China is a critical part of preserving peace and orderly world commerce. It is not sufficient, but it is definitely necessary.
It has been abundantly evident (over a number of scandals) that “brain draining China” carries serious espionage risks.
Metasthesizing gliomas, it grows. There used to be a well-known quote about something or other along the lines of “when treason doth prosper, none dare call it treason”, but I can’t seem to find it on the internet anymore
Are you thinking of John Harrington?
Treason doth never proper, what’s the reason? For if it prosper, none dare call it Treason.
link to brainyquote.com.
could be, just cobwebs in the closet. haha, that’s an ancient statement, I’d be surprised if Shakespeare hadn’t heard it.
Happy birthday, America! I hope that everyone has a fine Fourth of July holiday.
The conservative majority is more interested in destroying a century’s worth of jurisprudence. Thomas seems more than willing to overrule Graham.
… destroying…?
… a century…?
link to youtu.be
It wasn’t that long ago, like Kavanaugh he went through the same situation. He was also able to lie his way out of it. The only hope here is to remove them if they show they are not qualified, and are found to be more interested in settleing scores with those that didn’t believe him either.
What is really the Elephant in the room, is now not only is he cut from the same cloth as the other two, now his partner believes in what she has got caught doing, and he will defend her even if he knows what he got away with, should have been his only take down instead of the Country.
My situation is not about IP. IP is just one of the Tools.
Lady Justice is a visual tool for those who don’t understand what balance is for. The GOP has taken that balance away. They used two of the worst. Church and state are no longer separate. Let me bring my whole case before the Courts for my denied due process. My situation will force more Justices for the balance. Let Her visuals show why she holds the Scales. Let my denial that should be heard, prove it is about balance not balance of power
I suggest you ask the Atty. that offered my counsel a better deal to hide why he took the offer, and even dropped his state license as one of the hoops he jumped through to get it done.
If you mean he wants to roll back to Lochner era decisions, then quite possibly. Given the way he’s willing to overturn well-settled law, I agree that Graham is on the table as far as he is concerned. Someone needs to tell him (and Ginni) that he’s opened the door to re-visiting Loving v. Virgina.
No – Lochner is the type of decisions BEING rolled back
That’s what he said. They want to revisit those decisions .
No – I suggest that you read more closely (from page 68 of the majority opinion:
If the rule were otherwise, erroneous decisions like Plessy and Lochner would still be the law. That is not how stare decisis operates.)
Do not accept any misinformation from the dissent.
If the Sup. Ct. could as in Erie, declare almost a century of Federal jurisprudence unconstitutional, sua sponte, then nothing is off the table. Some have said that what little remains, is just for appearances sake, but I don’t believe that.
link to lawyersgunsmoneyblog.com
Links to a blog that Malcolm celebrates sends a bit of a different message than the one that you had (perhaps) thought that you were sending.
Yeah I was just reading a bit of that, so full of outright tar dation. Calls the 4th of july dude a right wing lunatic. Lol, he’s a rando stoner/rapper that lost touch with reality as stated by his friends.
I’m guessing you haven’t listened to him.
For whatever reason, I am simply not allowed to respond to this on the “He,
She,& They” thread, so I am posting a brief response here.I do not pretend to be a scholar of his body of work. Like I said, I listened to a couple podcast episodes. They did not prove to be worth my time, so they did not get a lot of my time. I found them boring and facile. If you think that one episode in particular is particularly convincing or enlightening, I will be glad of a link.
Yeah, enablement. Hmm, there’s In re Wands and iirc there’s a bullet point list in it of factual inquries. Hah, if other concepts get their own statute, then, why not, as long as the patent laws are being re-sculpted, why not create a new stand alone 35 USC 104 that states someting about an enablement requirement. Question of Law baseed same as what 103 is based on. But “enablement” is not concrete !! There are degrees of enablement ! Presumably directly connected to the metes and bounds of the deed. haha, a “104” rejection.
Re the cert petition in Interactive Wearables, LLC v. Polar Electro Oy noted in paragraph 3 above, Polar Electro Oy has filed a brief in opposition to the petition.
I recently noted a large number of patent case cert petitions in which the other party waives filing any reply. With the above-noted 40+ to zero odds of cert denial this term, that makes sense.
I expect that [CustomPlay, LLC v. Amazon.com, Inc., No. 21-1527] ha[s] a very low chance of being heard because of intervening events… [C]an the same PTAB judges both institute and decide IPR[?]… I believe that Arthrex implicitly solved this issue, at least from a Constitutional perspective.
I will take the contrary side of that one. I would have thought that it was not possible to find a case whose gravamen was smaller or more trivial than SAS, but some of the justices really like these niggling points of statutory construction, and Justice Gorsuch sees them as vehicles by which to dismantle administrative law. Precisely because they recently handled Arthrex, I predict that they will take cert. on this one, even if only of the GVR variety.
I would disagree Greg [except about Gorsuch] and one reason is that the Supremes did recently “decide” Arthrex, rejecting draconian arguments. And, sent it back to the Fed. Cir.. So they are unlikely to take related issues again so soon.
I believe that Dennis is referring to the recent Fed. Cir. Arthrex remand decision.* In particular, the part of that decision that approved the delegation of reconsideration motions, which discussed many examples of broad PTO Director delegation authority in general absent any express statutory prohibition on that delegation. The court notes that patent law is full of many other provisions about what the PTO Director does that are even more widely delegated.
*An important relevant decision which for some reason has not yet been on this blog, so, no direct opportunity to discuss it.
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