Supreme Court Declines to Review MSN v. Novartis “After-Arising” Tech Case

The U.S. Supreme Court has denied MSN’s petition for certiorari in MSN Pharmaceuticals, Inc. v. Novartis Pharmaceuticals Corp., No. 25-225. This decision leaves in place the Federal Circuit’s ruling on “after-arising” technology in the context of written description and enablement.

As a reminder, the question at issue in the petition for certiorari was whether the Federal Circuit properly determined that U.S. Patent No. 8,101,659 (“the ’659 patent”) covered a generic version of Entresto® (i.e., a complex of valsartan and sacubitril) marketed by MSN. MSN has argued before the Federal Circuit that the ’659 patent that generically claimed valsartan and sacubitril “in combination” did not enable or describe specifically a complex of the two active agents. The Federal Circuit held that:

• Even when asserted by Novartis to protect the complex of valsartan and sacubitril, the ’659 patent was not required to enable the complex because the complex was an "after-arising" technology that was unknown when the patent application was filed; and
• The claim at issue was to valsartan and sacubitril “in combination,” which the court found was adequately described and construed to include the complexed form of valsartan and sacubitril.

The Federal Circuit’s decision, and the Supreme Court’s denial of MSN’s petition for certiorari, suggests that a patent claim that generically covers a later-developed technology may be asserted against that later-developed technology without the patent's specification enabling or describing that specific later-developed technology.

For background on this case, please see our prior client alert: MSN Petitions Supreme Court to Review Patent Dispute over Generic Entresto®.