In the midst of all of the discussions about Patent Reform and changes at the Federal Circuit, there are a number of cases working their way through the courts that could have profound impact on patent law.
Supreme Court
Caraco Pharm. v. Novo Nordisk is scheduled for argument next week on Monday and concerns pharmaceutical litigation under the Hatch-Waxman Act. The issue in the case is whether a generic manufacturer that is sued for infringement by a brand-name manufacturer may file a counterclaim that the information on the patent listed with the FDA does not accurately and precisely claim the method of use claimed in the patent. The counterclaim would require the brand-name manufacturer to correct or delete the incorrectly listed information.
Mayo v. Prometheus is scheduled for argument next week on Wednesday and concerns patentable subject matter under § 101. The Federal Circuit has twice confirmed the patentability of the claims; now the Supreme Court will weigh in.
Kappos v. Hyatt is scheduled for argument on January 9. This case concerns an issue of civil procedure under the Patent Act. When a patent applicant is finally rejected by the USPTO (through a decision of the Board of Appeals), he has a decision of whether to appeal the case to the Federal Circuit or to sue the PTO Director in district court. The issue in this case is whether when the applicant choses district court, he is entitled to introduce new evidence that was not presented to the PTO and whether the district court can review the evidence de novo or whether it must give deference to PTO decisions.
Saint-Gobain v. Siemens Med.: The Supreme Court has requested input from the Solictor General on whether it should hear the appeal in this case. This case concerns the standards for infringement under the doctrine of equivalents and whether they present a conflict with the rule of obviousness. Can a patent be granted by the PTO as non-obvious over particular prior art while the invention embodied in the patent infringes that prior art under the doctrine of equivalents because the differences are insubstantial? The Federal Circuit issued a number of sharp opinions in its denial to rehear the case en banc. These type of situations often cause the Supreme Court to review these cases. The Solicitor’s opinion will also carry weight with the Court.
Association for Molecular Pathology v. USPTO (Myriad): The ACLU has announced an intention to file a cert. petition in this case that concerns the patentability of isolated gene patents and associated methods. The Federal Circuit denied rehearing in September, which sets a December 12 due date for the cert. petition, unless an extention is granted.
Federal Circuit
En banc arguments were held in Akamai Techs. v. Limelight Networks and McKesson Techs. v. Epic Sys. on November 18. The issue in these cases that were consolidated for review by the court is the proper standard for infringement of a multi-step process when the steps are performed by different parties. The court has made it extremely difficult to prove infringement in such cases, leading patent attorneys to carefully prepare patent claims directed at a single infringing entity.
Other Cases
The Supreme Court may have petitions regarding patentable subject matter in several other cases to consider as well, including Classen v. Biogen and CyberSource v. Retail Decisions.
Finally, several other cases will be decided by the Federal Circuit in the coming months that will determine proper PTO procedure for claim interpretation during examination, affirming rejections on appeal, procedures for reissue applications, and multiple reexaminations, among other things.
Thanks to Hal Wegner for his list of important cases.
