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Patents at the High Court: What to Watch in the New Term

September 25, 2018

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Fenwick litigation partner Charlene Morrow and litigation associate Ewa Davison spoke to Law360  about the patent cases that the U.S. Supreme Court may choose to consider during its new term.

The Court has already agreed granted certiorari in Helsinn Healthcare SA v. Teva Pharmaceuticals USA Inc.  At issue in Helsinn is whether the AIA narrowed the scope of the on-sale bar, such that a sale prior to an invention’s filing date qualifies as invalidating prior art only if the sale also publicly discloses the invention itself.

Davison noted that license agreements such as the one in this case are common within the pharmaceutical industry, telling Law360, “The industry does need clarity on when the bar is triggered so that they can enter into these agreements, which are the lifeblood of the industry.” She mentioned the case will present a nice opportunity to resolve this issue.

Another case the Court may consider is RPX Corp v. ChanBond LLC, which looks at standing to appeal an inter partes review decision by the Patent Trial and Appeal Board. In the MedImmune v. Genentech decision, the Court previously rejected a heightened standing requirement relating to patent cases, and Morrow told Law360 that the Federal Circuit appears to have created a similar requirement in the RPX case.

“To say that you can only appeal if you fly too close to the sun and are at risk of being sued seems like an odd result to me,” Morrow said.

Davison also talked about the Amgen Inc. v. Sanofi petition, which takes aim at the Federal Circuit's interpretation of 35 U.S.C § 112 as having a written description requirement, necessitating a showing that the patentee “possessed” the invention at the time of filing, separate from the enablement requirement.

She told Law360 that this case is "critical to the life sciences industry," where patents often claim broad swaths of chemicals and are often challenged as lacking written description, noting that “if possession were no longer the test, and you only have to show a skilled artisan how to make and use the invention, that changes the game a bit.”

The full article is available on Law360 (subscription required). ​​