The Supreme Court seems to be taking a greater interest in patent cases during the last decade or so. During the 2009 term, the Court decided Bilski. During the 2010 term, the Court decided Global-Tech where it ruled that willful blindness=knowledge for induced infringement, and i4i where it ruled that patent invalidity must be proved by clear and convincing evidence. After a number of years of hearing and reversing the Federal Circuit on most cases, such as KSR and eBay, the Court affirmed the Federal Circuit on both major cases this term.
As it nears the end of the current term, the Supreme Court has agreed to review three more patent cases during its October 2011 Term. First, the Court has granted cert. for the second time in Mayo Collaborative Services v. Prometheus Labs., Inc. This is another patentable subject matter case directed to methods of calibrating drug dosages. The Federal Circuit originally reversed the district court opinion finding the patent invalid as not directed to patentable subject matter in 2009. After the Supreme Court’s decision in Bilski, the Court ordered the Federal Circuit to reconsider this case. The Federal Circuit did so and again confirmed the patentability of the claims. The Supreme Court has again agreed to hear the case, presumably because the Federal Circuit disregarded the District Court’s and Mayo’s extreme reliance on Justice Breyer’s dissent from the dismissal order in LabCorp.
Next, the Supreme Court agreed to review the Federal Circuit’s decision in Kappos v. Hyatt. Once a patent applicant has received a final agency action from the Board of Patent Appeals and Interferences, the applicant has two means of challenging that final decision. The applicant may appeal the decision to the Federal Circuit or the applicant may file a civil action against the PTO in district court in Washington, DC and challenge the decision through a trial. In Hyatt, the Court will decide whether an applicant may present new evidence in a district court challenge of the PTO decision that was not presented to the PTO and whether the district court must give deference to the PTO’s prior factual findings in the case. The en banc Federal Circuit had decided both issues in favor of the applicant and the PTO has requested consideration by the Supreme Court.
Finally, Caraco Pharm. Labs., Ltd. v. Novo Nordisk A/S is a case involving a particular aspect of the Hatch-Waxman Act as pertaining to pharmaceutical approval. The Court will decide whether in a patent infringement suit, a generic pharmaceutical company may counterclaim that the brand pharmaceutical company has submitted an overbroad description of its patent claim scope to the FDA. May this information be corrected as argued by the petitioner, or must it simply be deleted as the Federal Circuit ruled.
The Court will hear arguments in these cases during the fall or winter of 2011-12 and issue decisions by the end of the term in June 2012.