Is the Supreme Court Poised to Consider the Federal Circuit's "Possession of the Invention" Definition of Written Description?
October 5, 2022
The Supreme has relisted the petition for certiorari in Juno Therapeutics, Inc. v. Kite Pharma, Inc., 21-1566 where Juno petitioned for review of the Federal Circuit’s decision reported at 10 F.4th 1330 (2021) reversing the decision of the lower court finding U.S.P. 7,446,190 to not be invalid for lack of written description or enablement and awarding damages of over $1.2 billion. While the relisting of a certiorari petition does not guarantee cert will be granted, statically since 2016 between about 30 and 40% of relisted petitions have been granted. The SCOTUS blog has detailed analysis here. Considering that the overall grant rate for petitions is only about 4% this indicates that the Juno petition has a much greater than normal possibility of being granted.
This is particularly true since, as noted by Juno in its petition, the Supreme Court has requested the views of Solicitor General in Amgen Inc. v. Sanofi (No. 21-757) on the same section in 35 U.S.C. § 112 with respect to the Federal Circuit’s separate enablement requirement. Further Chief Justice Roberts this week stayed 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. Both Juno and Amgen in their petitions and Novartis in its motion for a stay of the mandate challenged the Federal Circuit’s interpretation of 35 U.S.C. § 112 as having a separate written description and enablement requirement with Novartis also challenging the “enhanced” requirement.
It appears that the convergence of certiorari petitions has increased the probability of the Supreme Court reviewing the written description issue.