Klarquist Authors Amici Brief in Supreme Court Amgen Sanofi Case on Section 112 of the Patent Act

Published January 3, 2023

Klarquist represented the prevailing party, Nautilus, in the only U.S. Supreme Court decision interpreting Section 112 of the Patent Act. Today, Klarquist filed an Amici brief on behalf of two high technology industry associations in a second Supreme Court case involving Section 112, which likely will be argued this spring, Amgen v. Sanofi, No. 21-757.

While Amgen’s patent concerns antibodies, its claims are of a type that plagues the computer, electronics, telecommunications, and software fields. They are naked functional claims, meaning they recite functions without being limited to particular ways of performing the function, and thus facially cover—and hence discourage—discoveries of others of better ways of performing the same function.

The Supreme Court consistently has prohibited such claims. But, Amgen’s claims have not been analyzed under those precedents, and the Supreme Court took the case without either party fully briefing the Court on those precedents, or sub-section (f) of Section 112 enacted by Congress in response to those precedents. Amici submit that this case therefore is an exceptionally poor vehicle for disturbing the delicate balance of Section 112 of the Patent Act, including its mandates for full-scope enablement, full-scope written description, and distinct and particular claiming, all of which foster innovation across broad swaths of industry. They urge the Court to either dismiss the case or to cabin its opinion to address nothing more than this case’s claims and peculiar posture.

The two Amici are High Tech Inventors Alliance and The Computer & Communications Industry Association. They are represented by Sarah E. Jelsema and John D. Vandenberg.

Link to the brief.