The Supreme Court Again Declines To Address The Written Description Standard – Patent – United States

Without any comments, the Supreme Court has denied Juno
Therapeutics’ Petition for Rehearing, which requested that
the Court hold the case in abeyance pending the decision of
Amgen Inc. v. Sanofi, Aventisub LLC.

Juno filed its petition after the Federal Circuit held that Juno’s claims were
invalid because the patent at concern “does not disclose
representative species or frequent structural features to permit a
particular person of ordinary skill in the artwork to differentiate between scFvs
that obtain the claimed function and those that do not.”
Juno Therapeutics, Inc. v. Kite Pharma, Inc., 10 F.4th
1330, 1342 (Fed. Cir. 2021), cert. denied, No. 21-1566,
2022 WL 16726060 (U.S. Nov. 7, 2022). According to the Federal
Circuit, to fulfill the written description commonplace, “the
inventors wanted to convey that they possessed the claimed
invention, which encompasses all scFvs, recognized and unknown, as part
of the claimed CAR that bind to a particular goal.”
Id. at 1338. In its Petition for Writ of Certiorari, Juno
requested that the Supreme Court address the following
query:

Is the adequacy of the “written description of the
invention” to be measured by the statutory normal of
“in such full, clear, concise, and actual terms as to enable
any particular person expert in the art to make and use the same,” or is
it to be evaluated under the Federal Circuit’s check, which
demands that the “written description of the invention”
reveal the inventor’s “possession” of “the
full scope of the claimed invention,” together with all
“recognized and unknown” variations of each component?

After the Supreme Court denied certiorari, Juno requested
rehearing and argued that the questions introduced in its case and
in Amgen Inc. v. Sanofi, Aventisub LLC are intently related
as a end result of they involve the same sentence of the identical statute (35
U.S.C. § 112(a)) and each ask whether written description and
enablement are governed by the statutory commonplace or by the Federal
Circuit’s “full scope” requirement:

These two instances involve the actual same sentence of the very same
statute, 35 U.S.C. § 112(a). Both ask whether the “make
and use” language from the statute offers the proper
statutory test, and each ask whether the Federal Circuit’s
addition of a “full scope” requirement is an appropriate
addition to Congress’s language selection. The points presented
are tightly associated, and the result in Amgen is prone to at least
affect, if not be outcome-determinative of, this case. Accordingly,
rehearing ought to be granted.

Although the Supreme Court shall be addressing what’s required
to have an enabling disclosure in the Amgen case, patent applicants are left with a
written description commonplace that, in accordance with the Federal
Circuit, requires inventors to convey that they possessed the full
scope of the claimed invention, together with recognized and unknown
variations of the invention. Time will tell if the Juno case was
simply the wrong case and/or information for the Supreme Court to address
or whether the Supreme Court also believes that written description
requires that inventors convey that they possessed the complete scope
of the claimed invention.

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