Here is a report on recent news and commentary related to the Federal Circuit and its cases. Today’s report highlights:
- an article commenting on the recent Supreme Court ruling in Amgen v. Sanofi concerning patent law’s enablement requirement;
- an article highlighting the Biden administration urging the Supreme Court to deny certiorari in Apple v. Caltech, a case presenting a question about inter partes review estoppel;
- a post noting the effects of the Federal Circuit’s holding addressing inducement of infringement by so-called skinny labels in Teva v. GlaxoSmithKline after the Supreme Court denied certiorari in the case; and
- an article arguing the recent precedential opinion by the Federal Circuit in Sanofi-Aventis Deutschland v. Mylan Pharmaceuticals addressing a limit on what qualifies as analogous prior art “adds to [the] toolbox for patentee prosecution and litigation success.”
Kathleen Williams authored an article for Bloomberg Law arguing that the Supreme Court “whiffed in adopting” a “rigid test for patent enablement” in Amgen Inc. v. Sanofi, Aventisub LLC. In this article, Williams contends “[t]he Supreme Court missed an opportunity to address the law on patent enablement and only ‘half-heartedly’ engaged with the legal precedent in this area, which until recently had been flexible and fact-dependent.” Williams further contends the approach adopted by the Supreme Court “is troublesome because if the goal of enablement as articulated by statutory law is knowing ‘how to make and use an invention,’ then one need not know in advance which species (or how many) species will work.”
Blake Brittain authored an article for Reuters highlighting how the Biden administration is urging the Supreme Court to deny certiorari in Apple Inc. v. California Institute of Technology, a patent case concerning inter partes review estoppel. In this article, Brittain notes how “Solicitor General Elizabeth Prelogar said the U.S. Court of Appeals for the Federal Circuit was correct when it ruled last year that the [petitioners] could not seek to invalidate Caltech’s patents in court after Apple failed to raise its invalidity arguments at the U.S. Patent Office.”
Chad Landmon, Ross Blau, and Gulrukh Haroon posted to Life Sciences Intellectual Property Review about the effects of the Federal Circuit’s holding in Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC after the Supreme Court denied certiorari in the case. They note how the denial “lock[s] in the . . . Federal Circuit’s second panel decision which held that Teva’s attempted section viii carve-out of an indication covered by a patented method of use was not ‘skinny’ enough to avoid being liable for infringement.” They contend the case may “have wide-reaching implications for generic drugs, biosimilars, and how skinny labels are read.”
Kevin McNish authored an article for IAM arguing the recent precedential opinion by the Federal Circuit in Sanofi-Aventis Deutschland v. Mylan Pharmaceuticals “adds to [the] toolbox for patentee prosecution and litigation success.” McNish notes how the opinion “solidified one of the limits on what qualifies as analogous prior art that can prove whether a patent claim is obvious.” McNish further stresses that the opinion is important “because it provides patent owners with new tools for arguing that an examiner or challenger may not have proven that a reference is analogous art.”