Last week, retired U.S. Court of Appeals for the Federal Circuit (CAFC) Chief Judge Paul Michel and law professor John F. Duffy filed an amicus brief with the U.S. Supreme Court in support of CareDx, Inc. and the Board of Trustees of the Leland Stanford Junior University. The company and university are asking the Supreme Court to review a 2022 decision invalidating claims of its patents directed to detection levels of donor cell-free DNA (cfDNA) in the blood of an organ transplant patient. In the amicus brief, Michel and Duffy wrote, “this case concerns [us] because it represents a continuing trend of uncertainty and inconsistency in patent-eligibility jurisprudence…The outcome undermines the innovation promoting goals of U.S. patent law.”
The U.S. Solicitor General recommended Tuesday that the United States Supreme Court deny Apple, Inc.’s petition asking the Court to clarify the proper application of estoppel in inter partes review (IPR) proceedings. The case stems from a February, 2022, decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in which the court issued a mixed precedential decision that affirmed, vacated, and remanded in part a decision by the U.S. District Court for the Central District of California. That ruling related to a patent infringement suit filed by the California Institute of Technology (Caltech) against Broadcom Limited, Broadcom Corporation, and Avago Technologies (collectively “Broadcom) and Apple Inc. concerning Caltech’s U.S. Patent 7,116,710 (‘710 patent), U.S. Patent 7,421,032 (‘032 patent), and U.S. Patent 7,916,781 (‘781 patent).
As most in the IP world know by now, the U.S. Supreme Court issued its ruling in Amgen v. Sanofi on Thursday, holding that the U.S. Court of Appeals for the Federal Circuit (CAFC) was correct in finding that Amgen’s patents for its popular cholesterol drug failed to meet the enablement requirement…. IP practitioners diverge on the degree to which the decision will change patent practice in the biotech industry going forward, with some claiming the Court merely reiterated the existing law on enablement, and others saying it represents a major shift.
Can the Lanham Act apply to the conduct of foreign entities occurring entirely outside the United States and, if so, what is the test? The Supreme Court will soon decide this issue in Abitron v. Hetronic, potentially resolving a long-standing circuit split where six different tests presently co-exist. It will mark the first time since the Court’s 1952 ruling in Steele v. Bulova Watch Co. that it has spoken on extraterritoriality as it relates to the Lanham Act. Steele found that the Lanham Act does apply to a U.S. citizen using a registered U.S. trademark on spurious Bulova watches, many of which were bought by U.S. citizens in Mexico and brought back to the United States. Steele did not address whether the defendant’s U.S. citizenship, or his sourcing of parts from U.S. suppliers, were necessary conditions to subject matter jurisdiction. Enter Hetronic.
Earlier today, the United States Supreme Court issued its decision in Amgen, Inc. v. Sanofi et al. The Court held, as many feared they would, that the 26 antibody examples and detailed instructions for generating additional antibodies within the genus—which covered some 400 pages and included a CD Rom of the x-ray crystallography coordinates of Amgen’s “anchor” (or lead) antibodies 21B12 (Repatha) and 31H4—was insufficient to satisfy the enablement requirement. Unfortunately, the Supreme Court did not explain what level of detail would have been sufficient, nor did the Court provide direction to the industry on what more is expected to satisfy the enablement requirement. So, we simply learned today that the extraordinary disclosure and detail provided by Amgen was not enough.
The Supreme Court ruled today in Andy Warhol Foundation v. Goldsmith, Lynn, et. al. that the U.S. Court of Appeals for the Second Circuit was correct in holding that the Andy Warhol Foundation’s (AWF’s) licensing of an orange silkscreen portrait of the musician Prince, created by Andy Warhol using photographer Lynn Goldsmith’s photo, was not fair. Justices Gorsuch and Jackson authored a concurrence, while Justice Kagan, joined by Chief Justice Roberts, filed a 35-page dissent from Justice Sotomayor’s opinion, calling out the majority’s contradictory interpretation of similar facts in the recent Google v. Oracle case.
Real estate data firm CoStar and real estate digital marketplace CREXi are currently engaged in a high-profile intellectual property fight. Costar, which runs Apartments.com, alleges that CREXi is violating the Digital Millennium Copyright Act (DMCA) by using its images on Crexi.com without regard to its terms of service. The company has gone so far as to say that “CREXi is attempting to build its own online commercial real estate marketplace and auction platform by free-riding on CoStar’s billions of dollars of investments and the thirty-plus years of hard work by CoStar’s employees.” CrEXi, on the other hand, argues that all the images on the site are uploaded at brokers’ (not CrEXi’s) direction and thus the company can’t be held liable for IP violations.
On May 15, the U.S. Supreme Court issued an order list denying petitions for writ of certiorari filed to appeal several patent rulings, including a pair of 35 U.S.C. § 101 subject matter eligibility cases that the U.S. Solicitor General previously urged the nation’s highest court to hear. The Supreme Court also denied Teva Pharmaceuticals’ petition to review its appeal of the Federal Circuit’s “skinny label” induced infringement ruling over its generic version of carvedilol. While the full Court denied certiorari to these cases, the order list notes that Associate Justice Brett Kavanaugh would have granted cert to these three petitions.
Last month, the U.S. Department of Justice filed an amicus brief with the Supreme Court urging the Court to accept a certiorari case relating to patent eligibility. See Interactive Wearables, LLC v. Polar Electro Oy, et al, and David A. Tropp v. Travel Sentry, Inc., Nos. 21-1281 and 22-22. In each of these cases, which were separate from one another, the U.S. Court of Appeals for the Federal Circuit ruled the patents to be ineligible as being abstract ideas, and thus an exception to Section 101 patentable subject matter. This amicus brief follows an earlier amicus brief from the Justice Department, in May 2022, also supporting the petition for certiorari on a patent found by the Federal Circuit to be an abstract idea, and therefore not patentable under Section 101.
There is little doubt that the way patent rights are viewed and protected has transformed over the last 15 to 17 years. The patent system our government has enabled over that timeframe incentivizes stealing patent rights rather than engaging in an arm’s length negotiation. This is antithetical to basic, fundamental principles embedded throughout American law, and has caused dispute resolution, licensing and enforcement to emphatically derail.
On May 8, digital ID solutions company Avery Dennison filed a reply brief with the U.S. Supreme Court in support of its petition for writ of certiorari to appeal the U.S. Court of Appeals for the Federal Circuit’s decision last December affirming the validity of patent claims owned by ADASA. Of the cert petitions currently before the Supreme Court involving issues of patent subject matter eligibility under 35 U.S.C. § 101, Avery Dennison contends that its appeal provides the most useful vehicle for clarifying Section 101 invalidity in information management and technology, a field where the Federal Circuit’s division on patent eligibility “is especially stark and recurrent.”
CareDx, Inc. and the Board of Trustees of the Leland Stanford Junior University earlier this week filed a petition for certiorari with the U.S. Supreme Court asking the justices to review a 2022 decision holding certain claims of its patents directed to detection levels of donor cell-free DNA (cfDNA) in the blood of an organ transplant patient patent ineligible.
In late February, Avery Dennison corporation petitioned the U.S. Supreme Court to grant certiorari in its appeal of a decision upholding ADASA, Inc.’s patent for Radio Frequency Identification Device (RFID) technology as patent eligible. ADASA has now responded, telling the High Court that the U.S. Court of Appeals for the Federal Circuit’s (CAFC’s) decision in the case “is a beacon of clarity and oasis of correct legal analysis, not a plea for this Court’s intervention.” Avery Dennison said the CAFC’s decision “illustrates the depths of the Federal Circuit’s division” and represents “the other side of the coin” in the eligibility debate. While SCOTUS petitions on eligibility have traditionally focused on uncertainty due to the CAFC’s too-narrow view of the law and tendency to invalidate patents under Section 101, Avery Dennison’s petition takes the position that the Federal Circuit’s reading of 101 is too broad.
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.