Posts in US Supreme Court

To succeed on a claim of induced infringement, a patent owner must show that the accused infringer (1) actively encouraged infringement, (2) knew that the acts they induced constituted patent infringement, and (3) actuated direct patent infringement by those encouraging acts. In many courts, the knowledge requirement can be satisfied by service of a complaint for patent infringement itself. So, the accused infringer can start to incur liability at the onset of litigation. In the minority of courts, only pre-suit knowledge can satisfy the knowledge requirement. In those jurisdictions, the plaintiff must show the accused infringer knew about the alleged infringement before the onset of litigation. The amount of evidence required to show pre-suit knowledge at the pleading phase is an open question.

Last week, the U.S. Supreme Court received several amicus briefs filed in support of the petition for writ of certiorari filed in Biogen International GmbH v. Mylan Pharmaceuticals Inc. If cert is granted, this case will ask the nation’s highest court to clarify the written description requirement under 35 U.S.C. § 112. The appeal follows a contentious decision this March from the U.S. Court of Appeals for the Federal Circuit to deny panel rehearing and rehearing en banc of an earlier ruling affirming the Northern District of West Virginia’s invalidation of Biogen’s patent claims covering a method of treating multiple sclerosis (MS) under Section 112.

On July 11, Teva Pharmaceuticals USA filed a Petition for Writ of Certiorari to the U.S. Supreme Court asking it to review a decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) in which the CAFC found that Teva could be held liable for inducement based on sections of a “skinny label” that provided information about unpatented uses. Teva claims that the decision by the CAFC would upend the legal rules governing the modern prescription-drug marketplace. The petition notes that the decision would wreak doctrinal havoc in two equally disturbing ways. First, the court’s decision eliminates the key element of inducement liability requiring plaintiffs to prove that a defendant took active steps to encourage the direct infringement. Secondly, it effectively nullifies a Congressional act that was enacted to bring low-cost generic drugs to market, which is precisely what Teva was doing.

Interactive Wearables, the petitioner in yet another patent eligibility case that the U.S. Supreme Court is being asked to review, filed a reply brief on July 11 distancing its petition from that of American Axle & Manufacturing, Inc.’s, which was denied certiorari on June 30, 2022. The brief characterizes U.S. patent eligibility doctrine as being “perilously fractured” and narrows its arguments to focus on the third question presented in its petition, since the first two were addressed, and have now been rejected by the Court, in the American Axle case.

The idea of patented inventions brings to mind machines fully realized – flying contraptions and engines with gears and pistons operating in coherent symphony. When it comes to artificial intelligence (AI), there are no contraptions, no gears, no pistons, and in a lot of cases, no machines. AI inventors sound much more like philosophers theorizing about machines, rather than mechanics describing a machine. They use phrases like “predictive model” and “complexity module” that evoke little to no imagery or association with practical life whatsoever. The AI inventor’s ways are antithetical to the principles of patent writing, where inventions are described in terms of what does what, why, how, and how often.

Despite the U.S. Supreme Court’s rejection of the petition in American Axle v. Neapco just a few days earlier, inventor David Tropp on July 5 again asked the Court to unravel U.S. patent eligibility law. Tropp, who owns two patents relating to luggage lock technology that enables airport screening of luggage while still allowing the bags to remain locked, is asking the Court to answer the question: “Whether the claims at issue in Tropp’s patents reciting physical rather than computer-processing steps are patent-eligible under 35 U.S.C. § 101, as interpreted in Alice Corporation Pty v. CLS Bank International, 573 U.S. 208 (2014).”

Last week, the Supreme Court refused certiorari in yet another patent eligibility appeal. I’ve lost count as to how many times the Court has refused to provide clarity to the fundamental question of patent eligibility since it last muddied the waters in Alice back in 2014. I stopped counting several years ago, when the number of petitions—pleas begging for help really—crossed over 50. But the petition in American Axle was supposed to be different. Yes, the Federal Circuit has been hopelessly, and helplessly, split for years—a division and impotence of their own making. In American Axle the self-castrated Federal Circuit seemed to believe the Supreme Court modern quartet of patent eligibility cases renders nothing of importance or value patent eligible. In fact, the Federal Circuit actually ruled that a drive shaft is not patent eligible because the operation of the drive shaft fundamentally relies on Hooke’s law.

For anyone surprised about the Supreme Court refusing certiorari in the America Axle v. Neapco case after the Department of Justice (DOJ) (aided by the Solicitor’s Office of the U.S. Patent and Trademark Office [USPTO]) submitted its brief for the Supreme Court’s review, the question arises: why would anyone be surprised? The brief at issue is garbage, and one wonders what exactly its purpose was.

To save time for concerned readers, the DOJ’s brief may be summarized as follows: (1) a bunch of decisions were made on patent eligibility by the Supreme Court over the last 50 years; (2) the Federal Circuit is divided on the exceptions to patent eligibility; and (3) the Solicitor would like clarification as to what is abstract and what is an inventive concept, but not if it involves evidence. That is, the DOJ and PTO now demand more subjective theory on Alice-Mayo while deliberately eschewing any objective basis for the test despite the fact that the claims in Bilski, Alice, and Mayo were considered abstract based on evidence in the record.

As we’re all aware by now, the U.S. Supreme Court denied the petition in American Axle & Mfg., Inc. v. Neapco Holdings LLC late last week, in its last Orders List of the term. This leaves it up to Congress and the U.S. Patent and Trademark Office (USPTO) to restore any semblance of clarity on U.S. patent eligibility law for now. In a statement sent to IPWatchdog following the denial, the U.S. Patent and Trademark Office said it is “committed to making every effort to ensure that the U.S. patent system is as clear and consistent as possible.” Whether Congress will take eligibility up again remains an open question.

The U.S. Supreme Court has denied certiorari in American Axle v. Neapco Holdings, Inc., leaving it up to Congress and the U.S. Patent and Trademark Office (USPTO) to restore any semblance of clarity on U.S. patent eligibility law for now. Many expected that the Court would grant the petition after the U.S. Solicitor General in May recommended granting review. The SG’s brief said that inventions like the one at issue in American Axle have “[h]istorically…long been viewed as paradigmatic examples of the ‘arts’ or ‘processes’ that may receive patent protection if other statutory criteria are satisfied” and that the U.S. Court of Appeals for the Federal Circuit “erred in reading this Court’s precedents to dictate a contrary conclusion.”

Juno Therapeutics last week petitioned the U.S. Supreme Court, asking it to review an August 2021 decision of the U.S. Court of Appeals for the Federal Circuit (CAFC) that reversed a jury verdict for Juno and Sloan Kettering Institute for Cancer Research, wiping out a $1.2 billion judgment for the entities. The CAFC found that the jury’s verdict with respect to written description was not supported by substantial evidence.

Following a denial of rehearing en banc by the U.S. Court of Appeals for the Fifth Circuit in February, publishing company Canada Hockey L.L.C., doing business as Epic Sports, and Michael Bynum, a sportswriter and editor, have now filed a petition for writ of certiorari with the U.S. Supreme Court in their appeal of a copyright case against both Texas A&M University and a pair of school officials. The petition claims the Fifth Circuit’s decision leaves copyright holders “at the mercy of state infringers.” In their petition, the plaintiffs argue that the Fifth Circuit’s ruling affirming the Southern District of Texas’ dismissal of copyright claims over Texas A&M’s unauthorized reproduction of portions of Bynum’s manuscript on the nearly 100-year history of the famed “12th Man” tradition at Texas A&M erred in failing to find constitutional violations of both the Fifth Amendment’s Takings Clause and due process under the Fourteenth Amendment. The Texas ruling followed the U.S. Supreme Court’s March 2020 decision in Allen v. Cooper, which declared that Congress’ abrogation of state sovereign immunity under the Copyright Remedy Clarification Act was unconstitutional.

“A” is one of the smallest words, but it is not the simplest—most Supreme Court judges can disagree on its meaning. In Niz-Chavez v. Garland, 141 S. Ct. 1474 (2021), the Court issued a 5-3 decision and held that “a” meant “one” in a statute regarding “a notice to appear.” Although the Niz-Chavez case is not about patent claim interpretation, it behooves us to pay attention to this tiny word. Soon after the Supreme Court decision, this issue has appeared again, this time in a patent case.

The U.S. Department of Justice is encouraging the Supreme Court to grant certiorari to American Axle to clarify U.S. patent eligibility law. Thus, it appears that the chances are better than ever for this issue to get some much-needed attention…. After more than one year of waiting, the Justice Department filed their amicus brief on May 24, 2022. The Solicitor unequivocally stated that the Federal Circuit’s holding that the ‘911 claims are patent ineligible “is incorrect,” and that the appellate decision reflects “substantial uncertainty about the proper application of Section 101.” The Solicitor also noted that the Alice two-part test for patent eligibility enunciated by the Supreme Court in Alice Corp. Pty. Ltd. v. CLS Bank Int’l, 573 U.S. 208 (2014), has produced confusion in lower courts, and has “fractured” the Federal Circuit. (See Solicitor’s brief at page 19). The Solicitor also acknowledged the admitted difficulty for the U.S. Patent and Trademark Office (USPTO), inventors, businesses, and other patent stakeholders, in applying the Supreme Court’s precedents consistently with regard to patent eligibility under Section 101. The Solicitor urged that the Section 101 inquiry be guided by historical practice and judicial precedent. But Supreme Court precedent appears to be irreconcilable.

Last week, the United States Solicitor General recommended granting review in American Axle & Manufacturing v. Neapco Holdings, a case many in the patent community hope will provide clarity on U.S. patent eligibility law. IPWatchdog asked stakeholders to weigh in on whether the SG took the right approach and what this latest development means for the fate of U.S. patent eligibility. Here is what they had to say.