News & Analysis as of September 21, 2024

Supreme Court of the United States › Patent Act

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The United States Supreme Court is the highest court of the United States and is charged with interpreting federal law, including the United States Constitution. The Court's docket is largely discretionary with only a limited number of cases granted review each term. The Court is comprised of one chief justice and eight associate justices, who are nominated by the President and confirmed by the Senate to hold lifetime positions. less -

Written Description for Genus Claims Following Juno Therapeutics v. Kite Pharmaceuticals

Haug Partners LLP on 3/29/2024

Section 112 of the Patent Act contains multiple requirements that relate to the adequacy of an inventor’s disclosure within a patent application. The Supreme Court has offered some clarity to inventors seeking to patent...more

Split Decision on Patents for Restricting Access to Computer Files

AEON Law on 11/7/2023

A Federal Circuit judge, sitting by designation in the District of Delaware, granted-in-part and denied-in-part a Rule 12(c) motion by the defendant for judgment based on patent eligibility under 35 U.S.C. § 101. The case...more

D.C. Circuit Dismisses FTC Antitrust Suit: Exclusive Pharma Patent Licenses Remain Permissible Under The Patent Act

Haug Partners LLP on 9/22/2023

On Friday, August 25, 2023, the U.S. Court of Appeals For The District Of Columbia Circuit affirmed dismissal of an antitrust action brought by the Federal Trade Commission regarding Endo Pharmaceuticals’s grant of an...more

Amgen Ratifies CAFC’s Requirement to Enable a Claim’s Full Scope

Buckingham, Doolittle & Burroughs, LLC on 6/27/2023

The Court’s reasoning in Amgen v. Sanofi upholds the Federal Circuit’s long-standing requirement to enable the full scope of a claimed invention. Since the Patent Act of 1790, patent law has required describing inventions...more

Amgen v. Sanofi Ruling: Supreme Court Upholds Existing Legal Framework for Patent Enablement

Saul Ewing LLP on 6/12/2023

On May 18, 2023, the Supreme Court unanimously affirmed the Federal Circuit's decision, Amgen Inc. v. Sanofi, 987 F.3d 1080 (Fed. Cir. 2021), that the claims of two of Amgen's patents were invalid for lack enablement. The...more

Client Alert: Supreme Court Affirms High Enablement Bar for Drug Patents

Jenner & Block on 6/7/2023

On May 18, 2023, the Supreme Court affirmed the Federal Circuit’s (CAFC) decision on enablement in Amgen Inc. v. Sanofi, 987 F.3d 1080 (CA Fed. 2021). The Court thus left in place a significant decision making it more...more

Can Judge Michel (and John Duffy) Convince the Supreme Court to Revisit Subject Matter Eligibility?

McDonnell Boehnen Hulbert & Berghoff LLP on 6/2/2023

Einstein's aphorism that doing the same thing over and over again and expecting a different outcome is a hallmark of madness (or at least an inability to learn from the past) inevitably comes to mind when perusing the recent...more

Enablement Unchanged: Amgen v. Sanofi and the Future of Software Patents

Levenfeld Pearlstein, LLC on 6/1/2023

In a unanimous ruling, the Supreme Court of the United States (SCOTUS) addressed the enablement requirement under Section 112 of the Patent Act, placing this into sharper focus with the Amgen v. Sanofi case. This landmark...more

SCOTUS: “The More a Party Claims for Itself the More it Must Enable”

Sheppard Mullin Richter & Hampton LLP on 5/23/2023

On May 18, 2023, the Supreme Court of the United States issued a unanimous decision in the case of Amgen Inc. et al. v. Sanofi, et al., No. 21-757. After a nine-year saga, beginning when Amgen sued Sanofi for allegedly...more

Supreme Court Affirms Federal Circuit's Decision in Amagen Inc. v. Sanofi & Provides A Reminder of the Fundamental Bargain of...

Sherman & Howard L.L.C. on 5/22/2023

Friday the U.S. Supreme Court issued its anticipated ruling in Amgen Inc. v. Sanofi and affirmed the Federal Circuit's prior decision that Amgen's patent was invalid for lack of enablement. A copy of the Court's Opinion is...more

The Supreme Court Invalidates Functional Genus Claims

Vinson & Elkins LLP on 5/22/2023

In a unanimous opinion in Amgen Inc. v. Sanofi, the Supreme Court held that two functional genus patent claims were not enabled under 35 U.S.C. § 112(a).1 In doing so, it affirmed both the Federal Circuit’s previous decision...more

Supreme Court Unanimously Affirms Enablement Requirement in Closely Watched Amgen-Sanofi Case

Fox Rothschild LLP on 5/19/2023

In a much-anticipated ruling issued on May 18, the U.S. Supreme Court unanimously affirmed the U.S. Court of Appeals for the Federal Circuit’s reading of the longstanding enablement requirement of U.S. patent law in the...more

Patent Poetry: US Supreme Court Declines to Consider Appeal of AI Inventor Decision

AEON Law on 5/9/2023

The US Supreme Court has declined to hear a petition on the issue of whether artificial intelligence (AI) can be considered an inventor on a patent. As we discussed in this blog, in 2019 Stephen Thaler sought patent...more

Federal Circuit Holds That AI Cannot Be an “Inventor” Under the Patent Act - Only Humans Can Get Patents

ArentFox Schiff on 5/8/2023

On April 23, 2023, the US Supreme Court denied a petition for certiorari filed by Stephen Thaler, following the US Court of Appeals for the Federal Circuit’s finding that Thaler’s artificial intelligence system — Device for...more

End of Line: Supreme Court Deletes AI Inventorship

McCarter & English, LLP on 5/1/2023

The Supreme Court dealt the latest blow in Dr. Stephen Thaler’s continuing quest for recognition of AI inventorship of patents, by denying certiorari in Thaler v. Vidal (No. 22-919). Despite support of Dr. Thaler from...more

SCOTUS Denies Cert in Thaler – The Thorny Issue of AI Inventorship

Seyfarth Shaw LLP on 4/25/2023

The Supreme Court yesterday declined to hear a case brought by a computer scientist whose “invention” was in fact created by artificial intelligence. Stephen Thaler was appealing a Federal Circuit decision that interpreted...more

Petition for Writ of Certiorari filed in DABUS AI-as-Inventor Case

McDonnell Boehnen Hulbert & Berghoff LLP on 4/7/2023

Dr. Stephen Thaler, Ph.D., a computer scientist and inventor, has petitioned the Supreme Court of the United States to consider the question of whether the Patent Act restricts the definition of an "inventor" to human...more

Supreme Court to Address What it Means to Have an Enabling Disclosure

BakerHostetler on 11/8/2022

The Supreme Court has granted Amgen’s Petition for a Writ of Certiorari, agreeing to address what it means to provide an enabling disclosure. In particular, Amgen asked the Court to address...more

The Supreme Court Update - November 4, 2022

Dorsey & Whitney LLP on 11/7/2022

Today, the Supreme Court of the United States granted certiorari in three cases: Amgen Inc. v. Sanofi, No. 21-757: This case concerns the Patent Act’s requirement that a patent’s “specification shall contain a written...more

Where Is the Federal Circuit on Using Comparable Licenses to Prove Reasonable Royalties and Apportionment in Patent Cases?

Fitch, Even, Tabin & Flannery LLP on 2/28/2022

In patent litigation, the adequacy of proof of apportionment in reasonable royalty damage claims is often a challenging issue that is hotly contested by the parties. The Federal Circuit has recently focused on the use of...more

Supreme Court: Assignor Estoppel Survives, but Only for Explicit or Implicit Representations

Manatt, Phelps & Phillips, LLP on 1/20/2022

In Minerva Surgical, Inc. v. Hologic, Inc., the Supreme Court held, in a 5–4 opinion, that the doctrine of assignor estoppel continues to apply, but only for an assignor’s invalidity assertion that contradicts explicit or...more

Supreme Court Grants Certiorari to Resolve Long-Running Debate on Assignor Estoppel

Snell & Wilmer on 1/13/2021

Last Friday, the U.S. Supreme Court granted certiorari in Minerva Surgical v. Hologic, thereby agreeing to resolve a long-running debate on patent law’s doctrine of assignor estoppel. Minerva Surgical has asked the Court to...more

High Court to Review Whether Assignor Estoppel Prevents Assignor from Filing an IPR or Relying on a Prior Invalidity Decision

Bradley Arant Boult Cummings LLP on 1/12/2021

Last spring in Hologic, Inc. v. Minerva Surgical, Inc., the Federal Circuit ruled that the doctrine of assignor estoppel does not prevent an assignor from lodging a validity challenge of either patent in an IPR proceeding. In...more

Responses to Infringement Letters Can Reduce Risk of Willful Infringement

Manatt, Phelps & Phillips, LLP on 7/2/2020

In Halo Electronics, Inc. v. Pulse Electronics, Inc.,1 the Supreme Court held that 35 U.S.C. Section 284 provides for enhanced damages in egregious cases...more

Patenting COVID-19 Tests: Avoiding the Common Pitfalls

Bradley Arant Boult Cummings LLP on 7/2/2020

The impact on human health of the global pandemic of the SARS-CoV-2 virus and the resulting disease termed COVID-19 cannot be overstated. Not since the influenza pandemic of 1918 have so many regions of the world been so...more

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Supreme Court of the United States › Patent Act

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