Supreme Court of the United States · Official docket →
Hikma Pharmaceuticals USA Inc., et al. v. Vanda Pharmaceuticals Inc.
Paid petition · United States Court of Appeals for the Federal Circuit, No. 2016-2707, 2016-2708 · judgment April 13, 2018
Before the decision, modestly above the 4.1% base rate. The model weighted this up for a circuit split argued in the petition, a dissent in the court below (flagged in the petition), and a Federal Circuit decision below, and down for a business respondent.
Question presented
This Court has repeatedly held that “natural phenomena[] and abstract ideas are not patentable” under Section 101 of the Patent Act. E.g., Alice Corp. Pty. Ltd. v. CLS Bank, Int’l, 573 U.S. 208, 216 (2014). Thus, “a process that focuses upon the use of a natural law” must “also contain other elements or a combination of elements, sometimes referred to as an ‘inventive concept,’ sufficient to ensure that the patent in practice amounts to significantly more than a patent upon the natural law itself.” Mayo Collaborative Servs. v. Prometheus Labs., Inc., 566 U.S. 66, 72-73 (2012). Mayo, for example, invalidated a medical diagnosis method patent that was just “an instruction to doctors to apply the applicable laws when treating their patients.” Id. at 79. In the decision below, a divided Federal Circuit panel did exactly what Mayo forbids: it exempted all patent claims that are drafted as reciting a method of medically treating patients from this analysis. Citing the ruling, the Patent and Trademark Office has directed its examiners that “(1) ‘method of treatment’ claims that practically apply natural relationships should be considered patent eligible under * * * the USPTO’s subject matter eligibility guidance; and (2) it is not necessary for ‘method of treatment’ claims that practically apply natural relationships to include nonroutine or unconventional steps to be considered patent eligible under [Section 101].” The question presented is whether patents that claim a method of medically treating a patient automatically satisfy Section 101 of the Patent Act, even if they apply a natural law using only routine and conventional steps.
Counsel of record
For petitioner
Charles Bennett Klein
Winston & Strawn LLP
For respondent
Nicholas Groombridge
Paul, Weiss, Rifkind, Wharton & Garrison LLP
Proceedings
- Jan 13 2020Petition DENIED.
- Dec 26 2019Letter of December 26, 2019 from counsel for petitioner received. (Distributed)
- Dec 23 2019DISTRIBUTED for Conference of 1/10/2020.
- Dec 23 2019Supplemental brief of respondent Vanda Pharmaceuticals USA, Inc. filed. (Distributed)
- Dec 20 2019Supplemental brief of petitioners Hikma Pharmaceuticals USA Inc., et al. filed.
- Dec 06 2019Brief amicus curiae of United States filed.
- May 22 2019Amendment to Rule 29.6 Corporate Disclosure Statement filed with respect to brief in opposition of respondent Vanda Pharmaceuticals Inc.
- Mar 18 2019The Solicitor General is invited to file a brief in this case expressing the views of the United States.
- Mar 15 2019Letter of Hikma Pharmaceuticals USA Inc., et al. received.
- Feb 27 2019DISTRIBUTED for Conference of 3/15/2019.
- Feb 26 2019Reply of petitioners Hikma Pharmaceuticals USA Inc., et al. filed.
- Feb 12 2019Brief of respondent Vanda Pharmaceuticals USA, Inc. in opposition filed.
- Jan 28 2019Brief amici curiae of Intellectual Property and Innovation Professors, Engine Advocacy, et al. filed.
- Jan 28 2019Brief amici curiae of The Association for Accessible Medicines and Certain Individual Companies filed.
- Jan 23 2019Motion to extend the time to file a response is granted and the time is extended to and including February 12, 2019.
- Jan 22 2019Motion to extend the time to file a response from January 28, 2019 to February 12, 2019, submitted to The Clerk.
- Dec 27 2018Petition for a writ of certiorari filed. (Response due January 28, 2019)
- Oct 31 2018Application (18A461) granted by The Chief Justice extending the time to file until December 27, 2018.
- Oct 26 2018Application (18A461) to extend the time to file a petition for a writ of certiorari from November 12, 2018 to December 27, 2018, submitted to The Chief Justice.