IP Law Daily, SUPREME COURT NEWS: High Court adds trademark and patent cases to argument docket, (Nov 4, 2022)

By Cheryl Beise, J.D.

The Court will weigh in on the Lanham Act’s application to foreign sales and the test for patent enablement.

The U.S. Supreme Court this afternoon granted certiorari in two intellectual property cases. The Court agreed to consider a petition in a trademark case involving the extraterritorial reach of the Lanham Act, in particular whether use of a U.S. trademark abroad is likely to cause confusion in the United States. The Court also agreed to clarify the test for patent enablement, specifically, whether a patent purporting to enable a genus must enable the entire genus without undue experimentation.

Lanham Act extraterritorial application. In Abitron Austria GmbH v. Hetronic International, Inc., German and Austrian distributors of remote controls used in industrial equipment have asked the Court to decide whether the Lanham Act applies to purely foreign sales.

After an 11-day trial, a jury returned a verdict in favor of Hetronic International, Inc., the U.S. manufacturer of the remote controls, awarding over $90 million for trademark infringement, 97% of which was related to foreign sales. In April 2020, the district court entered a permanent injunction against the foreign distributors. In August 2022, the Tenth Circuit affirmed the damages award, finding that the infringement had an effect on U.S. commerce and that the award was warranted under a diversion of foreign sales theory. The court, however, narrowed the scope of the permanent injunction only to those countries where the manufacturer currently markets or sells its products because a party is not entitled to an injunction in markets it has not actually penetrated.

The U.S. government filed an amicus curiae brief on September 23, urging the Court to take up the case to clarify that U.S. trademark law cannot be used as a springboard for regulating foreign conduct that is unlikely to affect the perceptions of U.S. consumers. According to the Solicitor General, the question presented by the petition “is an important and recurring one, and the various tests adopted by the courts of appeals have failed to focus on whether a foreign use is likely to cause U.S. consumer confusion.” Moreover, there is a conflict in the circuit courts regarding the viability of the diversion of sales theory.

The question presented by Abitron’s petition is: “Whether the court of appeals erred in applying the Lanham Act extraterritorially to petitioners’ foreign sales, including purely foreign sales that never reached the United States or confused U.S. consumers.”

The case is Dkt. No. 21-1043.

Patent enablement. In Amgen Inc. v. Sanofi, biopharmaceutical company Amgen Inc. is asking the Court to clarify the test for patent enablement. Amgen maintains that the U.S. Court of Appeals for the Federal Circuit improperly held that an Amgen patent’s broad genus claims for antibody compounds for lowering cholesterol were invalid for lack of enablement.

A jury determined that Sanofi Aventisub—accused of infringing Amgen’s patent relating to antibodies that help reduce low-density lipoprotein cholesterol (LDL-C), or bad cholesterol—failed to prove that the asserted claims were invalid for lack of written description and enablement. The district court, however, granted Sanofi’s motion for judgment as a matter of law (JMOL) for lack of enablement, after concluding that the patents are invalid. The Federal Circuit affirmed, agreeing that the patent claims are not enabled because they require undue experimentation.

Amgen’s petition for certiorari contained two questions, but the Supreme Court agreed only to consider the second question: Whether enablement is governed by the statutory requirement that the specification teach those skilled in the art to “make and use” the claimed invention, 35 U.S.C. § 112, or whether it must instead enable those skilled in the art “to reach the full scope of claimed embodiments” without undue experimentation—i.e., to cumulatively identify and make all or nearly all embodiments of the invention without substantial ‘time and effort,’” Pet. App. 14a (emphasis added). The court declined to consider the first question: Whether enablement is “a question of fact to be determined by the jury,” Wood v. Underhill, 46 U.S. (5 How.) 1, 4 (1846), as this Court has held, or “a question of law that [the court] review[s] without deference,” Pet. App. 6a, as the Federal Circuit holds.

The U.S. government filed an amicus curiae brief on September 21. The government recommended that the Court deny Amgen’s petition. The government said Amgen’s contention that the Federal Circuit erred by treating enablement as a question of law and by examining the full scope of the claims in assessing whether they are fully enabled lacks merit. First, the government argued that the enablement inquiry includes both legal and factual components. The district court submitted enablement to the jury. Although Amgen argued that the district court usurped the jury’s role by overturning the verdict, it conceded that a court may resolve a question initially decided by the jury on a motion for JMOL. The Supreme Court denied Amgen’s petition to the extent it sought to overturn the Federal Circuit’s treatment of enablement

The government also rejected the proposition that the degree of experimentation required to implement the full scope of a patent’s claims is irrelevant to the enablement inquiry. “The Patent Act requires a patent to enable the ‘invention,’” the brief pointed out, citing 35 U.S.C. § 112(a). “Thus, where a patentee purports to invent an entire genus, it must enable the entire genus.”

The case is Dkt. No. 21-757.

Attorneys: James A. Barta (MoloLamken LLP) for Abitron Austria GmbH. Matthew S. Hellman (Jenner & Block LLP) for Hetronic International, Inc. Sarah J. Newman (MoloLamken LLP) for Amgen Inc. George William Hicks Jr. (Kirkland & Ellis LLP) for Sanofi, et al. Elizabeth B. Prelogar, U.S. Department of Justice, for United States

Companies: Abitron Austria GmbH; Hetronic International, Inc.; Hetronic Germany GmbH; Amgen Inc.; Amgen Manufacturing, Ltd.; Amgen USA, Inc.; Sanofi, Aventisub LLC, f/k/a Aventis Pharmaceuticals Inc.; Regeneron Pharmaceuticals Inc.; Sanofi-Aventis U.S. LLC

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