Is the Supreme Court about to review the Federal Circuit’s written description definition of “possession of the invention”? – Lawsuits & Appeals & Compensation


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The Supreme relisted the petition for certiorari in Juno Therapeutics, Inc. v. Kite Pharma, Inc.., 21-1566 where Juno sought review of the Federal Circuit’s decision reported at 10 F.4th 1330 (2021) reversing the lower court’s decision finding that USP 7,446,190 was not invalid for lack of a written description or and awarding damages in excess of $1.2 billion. While relisting a certiorari petition does not guarantee that the cert will be granted, statically since 2016, between approximately 30-40% of relisted petitions have been granted. The SCOTUS blog has a detailed analysis here. Considering that the overall grant rate for petitions is only around 4%, this indicates that the Juno petition has a much higher than normal chance of being granted.

This is all the more true since, as Juno noted in its motion, the Supreme Court sought the opinion of the Solicitor General in Amgen Inc. vs. Sanofi (No. 21-757) on the same section in 35 USC § 112 with respect to the separate federal circuit clearance requirement. Additionally, Chief Justice Roberts this week suspended the Federal Circuit’s mandate in Novartis v HEC Pharm Co., Ltd. where the Federal Circuit controversially on rehearing had applied an enhanced written description requirement. Juno and Amgen in their motions and Novartis in its motion to stay the warrant challenged the Federal Circuit’s interpretation of 35 USC § 112 as having a separate written description and empowerment requirement, with Novartis also challenging the “enhanced” requirement .

It appears that the convergence of certiorari motions has increased the likelihood that the Supreme Court will consider the issue of the written description.

The content of this article is intended to provide a general guide on the subject. Specialist advice should be sought regarding your particular situation.

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