Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights:

  • an article discussing the top patent cases to watch in the second half of 2022;
  • another article highlighting how a petition for a writ of certiorari claimed that a Federal Circuit decision “would upend the legal rules governing the modern prescription-drug marketplace”; and
  • a third article urging that the question of whether artificial intelligence can be an inventor under patent law “is one for Congress, not the courts, to address.”

Ryan Davis published an article for Law360 discussing how the “Supreme Court will consider several appeals from drugmakers seeking clarity on what constitutes an adequate written description for a patent, and a high-profile dispute over so-called ‘skinny labels’ for generic drugs.” As Davis notes, “[t]here are three petitions for certiorari at the Supreme Court dealing with the written description requirement in the Patent Act”—Amgen Inc. v. Sanofi, Juno Therapeutics Inc. v. Kite Pharma Inc., and Biogen International GmbH v. Mylan Pharmaceuticals Inc. In addition, Davis emphasized the importance of Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC, “a case that has alarmed the generics industry.” Davis noted how the latter case centers around “‘skinny labels,’ where a generics maker omits or carves out from its label an indication that is patented by the brand name company, and only seeks approval for unpatented uses.” Finally, Davis highlighted CustomPlay, LLC v., Inc., a case Davis says could “reshape inter partes reviews if the Supreme Court agrees to hear it because it takes aim at the fundamental structure of the proceedings.”

Matthew Schutte wrote an article for IPWatchdog also highlight the petition for a writ of certiorari filed in Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC. As explained by Schutte, Teva Pharmaceuticals USA asks the Supreme Court to review a Federal Circuit decision finding “that Teva could be held liable for inducement based on sections of a ‘skinny label’ that provided information about unpatented uses.” According to Schutte, “[t]he petition notes that the decision would wreak doctrinal havoc in two equally disturbing ways.” First, Schutte noted, according to the petition the Federal Circuit’s “decision eliminates the key element of inducement liability requiring plaintiffs to prove that a defendant took active steps to encourage the direct infringement.” In addition, Schutte emphasized, according to the petition the decision “effectively nullifies a Congressional act that was enacted to bring low-cost generic drugs to market.”

Brian E. Ferguson authored an article for Bloomberg Law addressing how, in Thaler v. Vidal, the Federal Circuit is reviewing the question of “whether something other than a person is eligible to receive a patent.” According to Ferguson, “[t]he plain text of the Patent Act strongly supports the conclusion that Congress intended to award patents only to natural persons.” Ferguson noted how the Federal Circuit has previously held “that an inventor can only be a natural person, making it highly unlikely that the court will rule in Thaler’s favor on this go-around.”