Here is an update on recent activity at the Supreme Court in cases decided by the Federal Circuit. With respect to granted cases, the Supreme Court will hear oral arguments next week in Arellano v. McDonough, a veterans case. With respect to petitions, one new petition was filed with the Court in a pro se case. Additionally, the views of the Solicitor General were submitted in a patent case raising questions related to patent law’s enablement requirement. Here are the details.
On Tuesday, the Supreme Court will hear oral arguments in Arellano v. McDonough, a case raising questions about equitable tolling of a one-year filing deadline for retroactive veterans benefits. For more information, check out our argument preview.
One new petition was filed with the Court in Aljindi v. United States, a pro se case.
The United States filed its amicus brief expressing the views of the Solicitor General in Amgen Inc. v. Sanofi, Aventisub LLC, a patent case raising questions related to the enablement requirement. In the brief, the Solicitor General explains that the government does not recommend the Court grant review in this case.
The questions presented by the petitioner are:
- “Whether enablement is ‘a question of fact to be determined by the jury,’ Wood v. Underhill, 46 U.S. (5 How.) 1, 4 (1846), as this Court has held, or ‘a question of law that [the court] review[s] without deference,’ Pet. App. 6a, as the Federal Circuit holds.”
- “Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to ‘make and use’ the claimed invention, 35 U.S.C. § 112, or whether it must instead enable those skilled in the art ‘to reach the full scope of claimed embodiments’ without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial ‘ ‘time and effort,’ ‘ Pet. App. 14a (emphasis added).”
As to the first question presented, the government argues Amgen’s contention that “[e]nablement is a factual determination for a jury” is “overly simplistic.” The government maintains that “[t]he enablement inquiry includes both legal and factual components.” Contrary to Amgen’s argument that the Federal Circuit “usurped the jury’s role by overturning its verdict as a matter of law,” the government contends that “a court may resolve a question initially decided by the jury on a motion for JMOL.”
As to the second question presented, the government maintains that “[w]hen, as here, a patent claims an entire genus based on its function, the patent must enable that entire genus.” It contends that the Federal Circuit does not, as Amgen claims, “apply ‘a different,’ more stringent ‘enablement test for genus claims’ than for other types of claims.”