Supreme Court Holds Over Two Patent Cases, Considers Two More on Patent Eligibility

by Dennis Crouch

On May 1, the U.S. Supreme Court revealed its decisions from the April 28 conference. Among the three patent cases considered, the court denied certiorari for the pro se case of Wakefield v. Blackboard, while holding over the other two for reconsideration at a later conference. This development increases the likelihood of these two cases being heard by the court, although a grant of certiorari has not yet been announced.

The held-over cases include:

1. Teva Pharmaceuticals USA, Inc. v. GlaxoSmithKline LLC, No. 22-37: This case examines whether FDA-required labeling in a “skinny-label” situation can be considered patent infringement. A skinny-label occurs when a generic drug company seeks approval for a drug with a label that omits the patented indications of the brand-name drug. The case has received support from amici and the Solicitor General through a CVSG (call for the views of the Solicitor General).

2. Fall Line Patents, LLC v. Unified Patents, LLC, No. 22-925: The focus of this case is whether Commissioner for Patents Drew Hirshfeld, who was neither the Director nor Acting Director of the USPTO at the time, properly exercised the authority of the USPTO. The presented question is, “Whether the Commissioner for Patents’ exercise of the Director’s authority pursuant to an internal agency delegation violated the Federal Vacancies Reform Act.”  The question in Fall Line is the same as presented in Arthrex II. The SG filed a joint responsive brief in these cases and so we can expect them to rise and fall together.

As the Supreme Court has held over these cases for further consideration, some justices appear interested in hearing arguments on these matters. However, the final outcome remains uncertain until a grant of certiorari is announced.

On May 11, 2023, the Supreme Court will hold another conference to decide whether to grant certiorari in two patent eligibility cases. Both cases have received support from amici and the Solicitor General.

1. Tropp v. Travel Sentry, Inc., No. 22-22: This case revolves around the patent eligibility of David Tropp’s TSA master-lock method. Although the Solicitor General supports certiorari, it has expressed the view that Tropp’s method is patent ineligible.

2. Interactive Wearables, LLC v. Polar Electro Oy, No. 21-1281: This case addresses the patent eligibility of Interactive Wearable’s claims, which the Solicitor General believes to be a patent-eligible technological improvement, distinguishing it from Tropp.

In addition, the Supreme Court has yet to rule on the Amgen v. Sanofi case, argued in March 2023. The court’s decision will carry significant implications for the biotech and pharma industries and, depending on its statements regarding functional claims, may have broader ramifications across various technology sectors.