Tech Groups Ask High Court to Reject Patent Case to 'Protect Innovation'

The Supreme Court should dismiss a case involving Patent Act Section 112 to “protect innovation” in fields like telecom, software, computing and electronics, tech groups argued this week in Amgen v. Sanofi (21-757).

A high court ruling in this case “risks creating barriers for new tech innovations by upsetting established rules against purely functional claims in patents,” the Computer & Communications Industry Association and the High Tech Inventors Alliance (HTIA) argued in a joint amicus brief. The case is an “ill-suited tool” for altering Section 112, which “supports the delicate balance of the U.S. patents system by codifying essential disclosure and claim requirements,” said CCIA.

CCIA Patent Counsel Joshua Landau noted the high court has “rejected purely functional claims for more than 150 years.” These types of claims give inventors “more than they discovered and block others from finding new ways to solve a problem, completely upending the purpose of the patent system.” The organizations urged the court to dismiss or “strongly narrow its opinion” to protect tech innovation.

The Supreme Court granted Amgen’s petition for certiorari in November, allowing consideration for reviving two of the company’s patents for a cholesterol drug central to its legal battle with Sanofi and Regeneron over competing medicines. In granting review, the high court went against a brief filed by DOJ, which argued against further high court review. DOJ said “enablement is a jury question” that doesn’t warrant high court consideration and said Amgen’s challenge to U.S. Court of Appeals for the Federal Circuit’s enablement ruling doesn’t warrant further review.

If the Supreme Court upholds the Federal Circuit’s decision, it could destroy patent-based incentives that “induce companies and their investors to undertake risky new ventures for bringing such products to market,” the Alliance of U.S. Startups and Inventors for Jobs and Innovation Alliance argued in its brief. “This is particularly true in the case of startups and small companies operating solely on capital supplied by investors.” It said it wrote the brief to protect all American businesses “for which patents constitute a critical part” of business strategy.

The Supreme Court should reverse the Federal Circuit’s decision, intellectual property law professors led by instructors from Stanford, Emory, University of North Carolina and Utah argued in their brief. The Supreme Court, the Federal Circuit and the Patent and Trademark Office have long upheld genus claims, which are the “central feature of patent law in the life sciences industries,” the professors argued: “Without such claims, a competitor could make a minor change to the chemical the patentee invented and avoid liability while capturing the heart of the invention.”

The National Association of Patent Practitioners, AbbVie, the Association of University Technology Managers, Bristol-Myers Squibb, St. Jude Children’s Research Hospital, the Fynder Group and the New York Intellectual Property Law Association asked the high court to reverse the Federal Circuit decision.