News & Analysis as of

Patent Act Supreme Court of the United States

Pillsbury Winthrop Shaw Pittman LLP

Is the Federal Circuit Breathing Life Back Into False Patent Marking Claims?

The Federal Circuit determined that if a company misleads consumers about the nature of a product by making false patent marking claims, it can be held liable under the Lanham Act. False marking claims under the Lanham Act...more

Haug Partners LLP

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

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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

Haug Partners LLP

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

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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

Buckingham, Doolittle & Burroughs, LLC

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

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

Saul Ewing LLP

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

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​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

Jenner & Block

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

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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

McDonnell Boehnen Hulbert & Berghoff LLP

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

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

Levenfeld Pearlstein, LLC

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

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

Sheppard Mullin Richter & Hampton LLP

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

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

Vinson & Elkins LLP

The Supreme Court Invalidates Functional Genus Claims

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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

Fox Rothschild LLP

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

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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

ArentFox Schiff

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

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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

McCarter & English, LLP

End of Line: Supreme Court Deletes AI Inventorship

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

Seyfarth Shaw LLP

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

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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

McDonnell Boehnen Hulbert & Berghoff LLP

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

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

BakerHostetler

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

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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

Dorsey & Whitney LLP

The Supreme Court Update - November 4, 2022

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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

Fitch, Even, Tabin & Flannery LLP

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

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

Snell & Wilmer

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

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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

Bradley Arant Boult Cummings LLP

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

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

Bradley Arant Boult Cummings LLP

Patenting COVID-19 Tests: Avoiding the Common Pitfalls

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

Fish & Richardson

Supreme Court Holds USPTO Cannot Recover Its Attorney's Fees Under § 145

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On December 11, 2019, the Supreme Court of the United States upheld the long-standing presumption that parties are responsible for their own attorney’s fees—holding that the “[a]ll expenses of the proceedings” provision of...more

McDermott Will & Emery

Supreme Court: PTO Not Entitled to Attorney’s Fees in District Court Appeals

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In a unanimous decision authored by Justice Sotomayor, the Supreme Court of the United States held that the US Patent and Trademark Office (PTO) is not entitled to recover its attorney’s fees in an appeal to a district court...more

Bradley Arant Boult Cummings LLP

Supreme Court Rejects PTO’s Attempt to Recover Attorneys’ Fees - Intellectual Property News

In Peter v. NantKwest, Inc., the Supreme Court held that the Patent and Trademark Office cannot recover attorneys’ fees against an applicant in a civil action under 35 U.S.C. § 145. An unsuccessful applicant for a patent has...more

Weintraub Tobin

U.S. Supreme Court Strikes Down USPTO’s Request For Attorney’s Fees

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In a unanimous ruling, the U.S. Supreme Court in Peter v. NantKwest, case number 18-801, struck down the U.S. Patent and Trademark Office’s (USPTO) recent and often-criticized effort to recoup its legal fees – even in cases...more

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