Weekly take: SCOTUS should have accepted Novartis plea after judge change
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Weekly take: SCOTUS should have accepted Novartis plea after judge change

NovartisCOVER.jpg
Credit: Taljat / Adobe Stock

SCOTUS missed an opportunity to take a stance against the Federal Circuit’s choice to add a judge to a panel for rehearing

With all the petitions that the US Supreme Court gets, one can never be too shocked when it declines to hear a case.

Nevertheless, I thought the court missed an opportunity when it announced on April 17, that it would deny Novartis’s petition for writ of certiorari after the company lost a patent case at the Court of Appeals for the Federal Circuit.

Novartis petitioned the court in January this year after the Federal Circuit invalidated a patent covering its Gilenya drug.

The court had initially upheld the validity of the pharma firm’s patent in January 2022. Former judge Kathleen O'Malley wrote the majority opinion joined by Judge Richard Linn, while Chief Judge Kimberly Moore dissented on the basis that the negative claim limitations had zero support in the written description.

But patent challenger HEC filed a request for a panel rehearing, which parties can do when they believe a panel of judges has overlooked or misapprehended a point of law or fact.

O’Malley retired in March 2022, two months after the ruling. Judge Todd Hughes, who wasn’t on the first panel, was then assigned to determine whether to rehear the decision.

The new panel agreed to that and then reversed the January ruling in June 2022. Hughes and Moore decided that the patent was invalid, while Linn dissented on the basis that the majority applied a heightened written description standard to the facts of the case.

In essence, the makeup of the panel that reheard the case was different from the original one, as were the positions taken. Moore had previously dissented while O'Malley wrote the majority that Linn joined, but then Linn dissented while Moore wrote the majority that Hughes joined.

Novartis asked SCOTUS in its January petition to consider whether the Federal Circuit had approached the panel rehearing procedure correctly, as well as the written description issues under Section 112 of the US Code.

I don’t have an opinion about whether the high court should have considered written description. The topic is certainly of interest to the patent bar, but I can’t really say whether the Federal Circuit got it wrong or whether this case would have been the best one to address this issue.

SCOTUS was wrong, however, to fail to correct the procedural missteps in this case.

A request for a panel rehearing shouldn’t have been granted by a different panel, and SCOTUS should have taken up this case on these grounds.

Trying for trust

Ultimately, this comes down to trust in our courts.

Litigants are entitled to certain expectations about how procedures will play out.

It seems fair to expect that if a party requests a panel rehearing, those on the original panel will be the ones to decide the case. There’s a pretty significant difference between judges deciding that a panel they were on has made an error or overlooked something, and a judge determining that others have made a mistake.

Granted, it seems there’s no consensus about how to treat panel rehearings when a judge retires. As the parties in this case pointed out in their SCOTUS briefs, the Ninth Circuit has also appointed new judges to determine panel hearings after retirements.

That would have been all the more reason for the high court to take up this case, however. Procedural certainty is an important way to ensure that parties have faith in their judicial system and feel that they’re getting a fair shake.

Of course, calling for SCOTUS to restore faith in the judicial system may seem somewhat ironic given the ethical issues percolating at the court right now.

Justice Clarence Thomas, after all, is currently under fire from a ProPublica report that he had failed to disclose luxury trips from Republican donor Harlan Crow.

It may seem that a little procedural misstep at the Federal Circuit doesn’t really matter with this significantly bigger story going on.

But even though there are more important issues in the world, this one shouldn’t have been ignored.

Rare occurrence?

Perhaps one reason SCOTUS didn’t care about this dispute was because the circumstances are unlikely to arise too often.

This only happened because O’Malley retired, and there are only so many times when a request for rehearing will coincide with a judge stepping down. It was also an issue because the original panel was split, which doesn’t always happen either.

But even though these situations may not come up all that often, they have happened before and could do so again.

Most Americans have no idea that Novartis’s patent was invalidated. But if these circumstances arise in the future, they could in connection with something that’s much more emotionally and politically charged.

It would have been better for the court to clear up this procedural issue now, rather than risk mixing it up in something that will spark a lot more public outrage.

Perhaps a different case will grab the high court’s attention in the future. But it should have taken advantage of the opportunity to hear this one.


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