Supreme Court of the United States · Official docket →
MSN Pharmaceuticals, Inc., et al. v. Novartis Pharmaceuticals Corporation
Paid petition · United States Court of Appeals for the Federal Circuit, No. 2023-2218 · judgment January 10, 2025
Before the decision, well below the 4.1% base rate, with no standout signals pointing toward a grant.
Question presented
In a patent case, “after-arising technology” is technology that was not invented until after the patent’s filing. Neither this Court nor the Federal Circuit en banc has addressed the disclosure rules for after-arising technology. One line of Federal Circuit case law holds that when a patentee secures a claim construction that ensnares, as infringing, an accused device that features after-arising technology, the patentee risks invalidating its own patent under 35 U.S.C. § 112(a), which requires a patentee to describe and teach the claimed invention. A contradictory line of Federal Circuit decisions, including the decision below, carves out an exception for after-arising technology. This line holds that “later-existing state of the art … may not be properly considered” in the validity analysis. After-arising technology, that is, may not “reach back and invalidate” a patent. Yet that proposition conflicts with The Incandescent Lamp Patent, 159 U.S. 465 (1895). Edison’s after-arising bamboo-filament technology exposed the invalidity of Sawyer and Man’s patent for an electric lightbulb. The question presented is: Whether, in a patent-infringement suit, a court may consider afterarising technology to hold that the patent is invalid under § 112(a) of the Patent Act.
Counsel of record
For petitioner
Amit R. Vora
Kasowitz LLP
For respondent
Deanne Elizabeth Maynard
Morrison & Foerster LLP
Proceedings
- Dec 15 2025Petition DENIED.
- Nov 25 2025DISTRIBUTED for Conference of 12/12/2025.
- Nov 25 2025Reply of petitioners MSN Pharmaceuticals, Inc., et al. filed. (Distributed)
- Nov 07 2025Brief of respondent Novartis Pharmaceuticals Corporation in opposition filed.
- Oct 08 2025Brief amicus curiae of Public Interest Patent Law Institute filed.
- Oct 08 2025Brief amici curiae of Biophore Pharma, Inc., et al. filed.
- Oct 08 2025Brief amicus curiae of Sigmapharm Laboratories, LLC filed.
- Oct 08 2025Brief amici curiae of Professor Jonathan Masur, et al. filed.
- Oct 08 2025Brief amici curiae of Intellectual Property Law Professors filed.
- Oct 01 2025Brief amicus curiae of Unified Patents, LLC filed.
- Sep 18 2025Motion to extend the time to file a response is granted and the time is extended to and including November 7, 2025.
- Sep 17 2025Motion to extend the time to file a response from October 8, 2025 to November 7, 2025, submitted to The Clerk.
- Sep 08 2025Response Requested. (Due October 8, 2025)
- Sep 04 2025Letter from counsel of MSN Pharmaceuticals, Inc., et al. received.
- Sep 03 2025DISTRIBUTED for Conference of 9/29/2025.
- Sep 03 2025Brief amicus curiae of Association for Accessible Medicines filed. (Distributed)
- Sep 02 2025Waiver of right of respondent Novartis Pharmaceuticals Corporation to respond filed.
- Aug 22 2025Petition for a writ of certiorari filed. (Response due September 25, 2025)
- Jun 11 2025Application (24A1215) granted by The Chief Justice extending the time to file until August 22, 2025.
- Jun 06 2025Application (24A1215) to extend the time to file a petition for a writ of certiorari from June 23, 2025 to August 22, 2025, submitted to The Chief Justice.