Supreme Court Denies Cert. in Vanda, Berkheimer and Athena

This morning, the Supreme Court denied the petitions for cert. filed in the Vanda, Berkheimer and Athena appeals. While the Court had requested and received amici briefs from the Solicitor General that opined that the Court should not grant cert. in Vanda (genotyping to identify appropriate amounts of drug to administer and then administering it) and Berkheimer (Is patent eligibility, e.g., “inventive step” a question of law or fact?), because they were correctly decided, the briefs also strongly suggested that the Court should revisit Prometheus v. Mayo and the patent eligibility of diagnostic tests. Of course, this is not the question that the Court asked the SG to opine on, but the patent bar had some hope that Athena might provide a vehicle for the Court to distinguish Mayo.

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Hulu v. Soundview Innovations – the Shifting Sands of Printed Publications

In Hulu v Soundview Innovations, IPR2018-01039, the PTAB was faced with the question of whether or not a certain textbook was a “printed publication” that was “publicly available” and so qualified as prior art against U.S. Pat. No. 5,806,062 – Patent Owner, Soundview. At the institution phase of the IPR, the Board had found that the textbook (“Dougherty”) had not been adequately shown to be “publicly accessible” enough to qualify as prior art. Because prior Board decisions were in conflict on this issue, a Precedential Opinion Panel (“POP”) review was granted.

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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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