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Happy Talk?

Earlier today, the Supreme Court of the United States asked the Solicitor General to file a brief opining on the merits of a request for review in a patent case about the antidepressant drug known as Paxil. (This is known as a CVSG, or “call for the views of the Solicitor General,” in the appellate trade.)

The case, styled SmithKline Beecham Corp. v. Apotex Corp., No. 05-489, is interesting for a host of reasons …
1. At the trial, famed appellate Judge Richard Posner, U.S. Court of Appeals for the Seventh Circuit, sat as the trial judge by designation. (It would appear he likes to hear trials from time to time.) His opinion in the case broke new ground, although little of it survived appellate review at the U.S. Court of Appeals for the Federal Circuit.
2. As Patently-O, the indispensable patent news blog, covered in a number of detailed posts throughout 2004 and 2005, the Federal Circuit had a devil of a time finding the appropriate doctrinal lense through which to view and resolve the case. The lense it finally chose, inherent anticipation, is one of the most slippery. Profs. Dan Burk and Mark Lemley recently offered a comprehensive and (for them, typically) insightful paper on the doctrine.
3. This morning’s CVSG in the case brings to three the number of currently pending CVSGs in patent cases. And the Supreme Court has already heard argument in, or will hear argument in, three other patent law cases this term (Independent Ink, about patent tying; Metabolite, about patentable subject matter; and eBay, about the standards for issuing injunctions against patent infringers). In short, the Supreme Court is showing more vigorous interest in patent law today than it has in many years (possibly since the mid-1960s).

I think one reason the courts have struggled so much with this case is that the technological phenomenon alleged to be at the heart of it seems to pit a variety of patent law doctrines against one another, making for quite a confusing tangle. Paroxetine hydrochloride, Paxil’s active ingredient, has multiple molecular configurations, i.e., it is a polymorph. The different polymorphs have different stabilities, and, according to SmithKline (the patentee), one of these has chased out all the others. We don’t usually think of nonliving chemical entities as having life stories, but with this chemical we have to. The challenge for patent law, if SmithKline is right, is consistently mapping a patent claim onto the past (with respect to the prior art) and the present and future (with respect to infringement). The novelty doctrines, which express patent law’s demand that an invention must be new to be patentable, yoke past and future together: That which would literally infringe if later, anticipates (and thus invalidates) if earlier.

The immediate question is, What will the Solicitor General recommend? The answer … I haven’t a clue.

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