Supreme Court Urged to Review Horizon Case

Writing in Law360, former Federal Circuit Judge Paul Michel and renowned appellate lawyer John Battaglia ask the U.S. Supreme Court to grant certiorari to Horizon.

Two prominent members of the federal bar have weighed in on the Horizon arthritis drug patent case argued earlier this year by Green Griffith partner Caryn Borg-Breen.

Paul Michel, a former Chief Judge of the United States Court of Appeals for the Federal Circuit, and John Battaglia, a federal trial and appellate attorney, published commentary in Law360 arguing that the U.S. Supreme Court should grant certiorari in the matter.

In August, Horizon petitioned for a writ of certiorari with the U.S. Supreme Court. The drug maker is appealing a Federal Circuit decision that struck down part of its patents for its PENNSAID® 2% topical diclofenac sodium product, claiming that uncertainty about an invention’s advantages does not render patent claims on the invention itself to be indefinite.

As the Supreme Court considers whether to hear the case, outside parties can file briefs telling the court why it should grant certiorari. These groups are known as amici curiae, which is Latin for “friends of the court”; the briefs they file are called amicus briefs.

In their piece, Michel and Battaglia offer insights that could inform such briefs, writing that the Federal Circuit decision warrants Supreme Court review because of multiple fundamental errors with the Federal Circuit panel’s analysis of the case.

They say, “The greater harms to public notice and the patent system, in our view, result from […] what the Federal Circuit’s HZNP ruling has done to each, namely, (1) deciding claim indefiniteness based not on any claim language, but on properties incorporated from the specification; and (2) casting a judicial pall on the definiteness of a claim term, ‘consisting essentially of,’ that for decades had an established legal meaning — one that patent stakeholders understood and relied on.”

Horizon is represented by Robert Green, Caryn Borg-Breen, Jessica Tyrus Mackay and Benjamin Witte.

Read the full commentary online here.

Read a PDF of the commentary here.