Supreme Court on Patents October 2022

by Dennis Crouch

On Oct 14, the Supreme Court met in conference to discuss pending petitions, including two patent cases, both of which remain pending.

Relist on Written Description: The first is the big biotech full-scope written description case of Juno v. Kite.  A jury awarded $1.2 billion in damages, but the Federal Circuit found the claims invalid.  This is the third conference where the case was considered, and for a third time the court has decided to put-off its decision and instead relist the petition for a later conference.  Although the Juno petition remains alive, its odds of being granted are going down (according to historic relisting numbers).

In Ariad, the Federal Circuit definitively held that Enablement and Written Description are two separate and distinct doctrines, but the Supreme Court has not since offered its remarks.  Juno’s petition asks for the court to compare the statutory language of 112(a) against the Federal Circuit’s requirement of showing “possession [of] the full scope of the claimed invention” including all “known and unknown” variations of each component?

CVSG on Eligibility: In the patent eligibility case of Tropp v. Travel Sentry, the Supreme Court asked for the Solicitor General to provide the Government’s views on eligibility. Tropp’s petition asks “Whether the claims at issue in Tropp’s patents reciting physical rather than computer-processing steps are patent-eligible.” U.S. Patent Nos. 7,021,537 and 7,036,728.  The SG has already been requested to file an eligibility brief in Interactive Wearables, LLC v. Polar Electro Oy.   That petition asks identical questions to those proposed in American Axle as well as one focusing on the overlap between sections 112 and 101.  “Is it proper to apply 35 U.S.C. § 112 considerations to determine whether a patent claims eligible subject matter under 35 U.S.C. § 101?”  In its May 2022 filing, the Biden SG’s office supported granting certiorari in American Axle, arguing that Alice Corp. continued to create “uncertainty and confusion in the lower courts.”  This was the same conclusion drawn by President Trump’s SG in Hikma v. Vanda.

1. A method of improving airline luggage inspection by a luggage screening entity, comprising:

making available to consumers a special lock having a combination lock portion and a master key lock portion, the master key lock portion for receiving a master key that can open the master key lock portion of this special lock, the special lock designed to be applied to an individual piece of airline luggage, the special lock also having an identification structure associated therewith that matches an identification structure previously provided to the luggage screening entity, which special lock the luggage screening entity has agreed to process in accordance with a special procedure,

marketing the special lock to the consumers in a manner that conveys to the consumers that the special lock will be subjected by the luggage screening entity to the special procedure,

the identification structure signaling to a luggage screener of the luggage screening entity who is screening luggage that the luggage screening entity has agreed to subject the special lock associated with the identification structure to the special procedure and that the luggage screening entity has a master key that opens the special lock, and

the luggage screening entity acting pursuant to a prior agreement to look for the identification structure while screening luggage and, upon finding said identification structure on an individual piece of luggage, to use the master key previously provided to the luggage screening entity to, if necessary, open the individual piece of luggage.