Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. There is no news to report on granted cases. Five new petitions, however, were filed. The Supreme Court also denied one petition, Harris v. United States, this week. Here are the details.
Activity in Granted Cases
No new activity.
Activity in Petition Cases
In Enzo Life Sciences, Inc. v. Roche Molecular Systems, Inc., the petitioner asked the Court to review the following questions:
1. “In light of a patent’s presumption of validity under 35 U.S.C. § 282 and the concomitant clear and convincing standard for proving invalidity, may patent claims that cover a class be invalidated as non-enabled under 35 U.S.C. § 112 based on a finding of high unpredictability in the art despite an absence of any evidence of inoperability within the class?”
2. “In concluding that the patent claims that cover a class are invalid as non-enabled under 35 U.S.C. §112 despite an absence of any evidence of inoperability within the class, did the United States Court of Appeals for the Federal Circuit (“Federal Circuit”) erroneously shift the burden to the patent owner to prove the claims were enabled, and therefore valid, in violation of the presumption of validity under 35 U.S.C. § 282?”
In Dr. Reddy’s Laboratories, Ltd. v. Eli Lilly and Company, the petitioner asked the Court to review whether, “[u]nder Festo’s ‘tangential’ exception to prosecution history estoppel, patent owners may recapture subject matter they could have claimed in prosecution but did not, by arguing that they surrendered more than they needed to during prosecution to address a rejection by the Patent Office.”
In Celgene Corp v. Peter, the question presented was: “Whether retroactive application of inter partes review to patents issued before passage of the America Invents Act violates the Takings Clause of the Fifth Amendment.”
In Hospira, Inc. v. Eli Lilly and Company, the petitioner asked the Court to review “[w]hether a patentee may recapture subject matter via the doctrine of equivalents under the ‘tangential relation’ exception by arguing that it surrendered more than it needed to during prosecution to avoid a prior art rejection, even if a claim could reasonably have been drafted that would literally have encompassed the alleged equivalent.”
In CJ ChellJedang Corp. v. International Trade Commission, the petitioner asked “[w]hether, to avoid prosecution history estoppel under Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., ‘the rationale underlying the amendment’ must be the rationale the patentee provided to the public at the time of the amendment.”
No new replies.
New Grants and Denials
The petition in Harris v. United States was denied this week.