Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to granted cases, there is no new activity to report since our last update. With respect to petitions, one new petition was filed with the Court in a patent case raising a question related to inter partes review estoppel; a brief in opposition was submitted in another patent case raising a question related to patent eligibility; the government waived its right to respond to a petition filed in a pro se case; and two reply briefs were submitted in patent cases addressing so-called “skinny labelling” and the written description requirement. Here are the details.
There is no new activity to report.
In Apple Inc. v. California Institute of Technology, the petitioner asked the Court to review the following question:
- “Whether the Federal Circuit erroneously extended [inter partes review] estoppel under 35 U.S.C. § 315(e)(2) to all grounds that reasonably could have been raised in the petition filed before an inter partes review is instituted, even though the text of the statute applies estoppel only to grounds that ‘reasonably could have [been] raised during that inter partes review.’”
Brief in Opposition
Travel Sentry filed a brief in opposition to the petition in Tropp v. Travel Sentry, Inc., a case raising a question about patent eligibility. In his petition, Tropp asked the Court to “revisit the Alice two-step framework [governing patent eligibility] and to provide much-needed guidance on the scope of the judicially created exceptions to 35 U.S.C. § 101.”
Now, in response, Travel Sentry argues that “[t]his is a typical “run-of-the-mill” case, like hundreds before it, where the district court and Federal Circuit correctly applied the two-part Alice/Mayo test.” Travel Sentry contends that the “[p]etitioner’s claims recite an abstract method of selling dual-access luggage locks and performing security screening at airports and describes nothing inventive at all.” It argues that “[t]here is no ‘pressing need’ for the Court to revisit Alice or to provide further ‘guidance’ on the judicially created exceptions to eligibility under 35 U.S.C. § 101.” It notes that “even if there were [a pressing need], this case is a very poor candidate” for review. Travel Sentry contends, moreover, “that the Alice/Mayo framework is working, across the vast majority of cases.” It notes that “to the extent any modification to the eligibility standard is warranted . . . Congress is the proper body to make such law.”
Waiver of Right to Respond
Two replies were filed in support of petitions.
First, a reply was filed in Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC, a patent case raising a question about so-called skinny labelling. The petitioner asked the Court to review the following question: “If a generic drug’s FDA-approved label carves out all of the language that the brand manufacturer has identified as covering its patented uses, can the generic manufacturer be held liable on a theory that its label still intentionally encourages infringement of those carved-out uses?” In response, GlaxoSmithKline argued that “the law of induced patent infringement was correctly stated and applied below.”
Most recently, Teva filed its reply in support of its petition. Teva argues that, “because FDA defers entirely to the brand manufacturer’s representations about what its patents cover . . . a carve-out consistent with those representations cannot be active inducement.” Moreover, it maintains that “the Federal Circuit’s decision, requiring the generic applicant to beware even a carve out drafted by FDA, leaves the skinny-label system broken.” Teva contends that the “decision guts a key element of inducement law and distorts Hatch-Waxman’s careful balance.”
Second, a reply was filed in Juno Therapeutics, Inc. v. Kite Pharma, Inc., another patent case. In this case, the petition asked the Court to consider the appropriate test for the written description requirement. Effectively, however, Juno seeks to eliminate the current test for the written description requirement in favor of the current test for the enablement requirement. In response, Kite argued that “Congress plainly established two distinct requirements.” Kite maintained that “the independent written-description requirement is ‘firmly embedded in the operation of the patent system’ and ‘only the most extraordinary justification could warrant’ ‘upsetting statutory interpretations as settled as this.’”
Juno has now filed its reply in support of its petition. Juno argues that, “[a]s is frequently true in the biological arts . . . the underlying science makes it impossible for [these] inventors to provide ‘common structural features’ or ‘representative species’ . . . much less to demonstrate their ‘possession’ of all ‘known and unknown’ embodiments, as [the Federal Circuit] now requires” for purposes of satisfying the written description requirement. Juno maintains “[t]he inventors fulfilled their end of the patent bargain by disclosing their invention and teaching the public to make and use it.” Juno contends that if “the Federal Circuit’s interpretation has become entrenched in that court,” that “is reason to grant, not deny review.” The Supreme Court, Juno says, “must now step in to restore the written-description requirement to its proper, textual mooring.”