Solicitor General’s Briefs Encourage Supreme Court to Put s. 101 Back on Track

Earlier this year, the Supreme Court issued orders to the Solicitor General to weigh in on whether or not the Court should grant cert. in two high profile Fed. Cir. decisions: Hikma Pharm. USA Inc, v. Vanda Pharm. Inc., No. 18-817, and HP Inc. v. Berkheimer (18-415). The SG has responded by filing two amicus briefs to the Court. Each brief argues that cert. should be denied since, in the SG’s opinion, both Vanda and Berkheimer were correctly decided. The SG’s opinions argue that, in the case of Vanda, methods of medical treatment have long been found to be patent eligible (Vanda) and that the question presented in Berkheimer – whether or not s. 101 inquiries involve questions or law or of fact – is not ripe for consideration, since the parties are still arguing over whether or not the invention is patent-eligible in the first place.

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Nuvo Pharms. v. Dr. Reddy’s Labs. – Catch 22 at the Federal Circuit?

A “catch 22” is defined as a “dilemma or difficult circumstance from which there is no escape because of mutually conflicting or dependent conditions.” (As in if a pilot claims he is too mentally ill to fly missions, he has demonstrated his own sanity in making the request. This is from the novel Catch 22 by Joseph Heller.)

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Federal Circuit Rules that PTAB Judges are Unconstitutionally Appointed

In Arthrex, Inc. v. Smith & Nephew, Inc., Appeal No. 2018-2140 (Fed. Cir., Oct. 31, 2019), a three Judge Fed. Cir. panel of Moore, Reyna and Chen took a deep dive into the appointments clause of the constitution and held that PTAB judges (“ APJ’s”) are unconstitutionally appointed “principal officers” of the U.S., who cannot validly be appointed by the Director of the Commerce Department, in consultation with the PTO Director. While the PTAB is mostly made up of APJ’s, the Director, the Deputy Director, and the Commissioners  of Patents and of Trademarks are also considered to be members of the Board.

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October 2019 Update: Subject Matter Eligibility – A Closer Look

Guest post from Edward Sandor. Warren Woessner also posted a blog about the Updated Guidance on October 21.

On October 17, 2019, the USPTO published an October 2019 Patent Eligibility Guidance Update to the earlier 2019 Revised Patent Subject Matter Eligibility Guidance published in January, 2019.

From the practitioner standpoint, the message continues to be encouraging.

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