Law360 Quotes Akin IP Partner Rachel Elsby on SCOTUS, Federal Circuit Decisions

For its article “The Biggest Patent Rulings Of 2023: A Midyear Report,” Law360 quoted Akin intellectual property partner Rachel Elsby.

First, in its section on the U.S. Supreme Court’s decision in Amgen v. Sanofi, Law360 wrote that the Justices held that broad patents covering anything that can perform a certain function are not allowed, specifically, Amgen’s patents on the cholesterol medication Repatha to be invalid because they cover any antibody that can bind to a specific protein.

Rachel noted that, by upholding the approach that most courts already use, the Court’s decision was more of a “stamp of approval” than a change in the law. However, she said, the outcome could encourage wider use of invalidity arguments involving enablement, as the Justices stressed that the same standard applies to all inventions.

Rachel added that mechanical and high-tech patents have not faced enablement challenges to the same degree as those in the life sciences, such as Amgen’s. She said, “I think this case will potentially open the door to those sorts of arguments, and give them a little bit more weight than they've had in the past.”

Law360 also quoted Rachel in its coverage of Ironburg Inventions v. Valve Corp, an April Federal Circuit decision. 

The article notes the court held that the America Invents Act’s estoppel provision prohibits invalidity arguments in court that could have been discovered by a skilled searcher performing a diligent search when challenging the patent at the Patent Trial and Appeal Board.

Rachel said that, while there would, undoubtedly, be fights over what constitutes a “diligent search by a skilled searcher,” it appears that the Federal Circuit has established hurdles for challengers who seek to present invalidity arguments in court that they did not include in an inter partes review (IPR). She stated, “It's a heightened expectation: It's not like you did the bare minimum. It's not like you did an average job.” and added that, to the extent that patent challengers claim to have not been aware of an invalidity argument when they filed their IPR, “This test gives you some basis to say, well, that may not be good enough.”