Federal Circuit Holds Tribal Immunity Does Not Bar IPR of Tribe-Owned Patents

By Tyler J. Fortner and David G. Barker Last week, the Federal Circuit held that tribal sovereign immunity does not apply to inter partes review (IPR) actions instituted at the Patent Trial and Appeal Board.  The decision, in Saint Regis Mohawk Tribe et al. v. Mylan Pharmaceuticals Inc., comes approximately a month and a half after a Federal Circuit panel heard the issue (see here). The decision opens the door for generic drug manufacturers (including Mylan) and others to challenge the validity of patents owned by Native American tribes that enjoy sovereign immunity. During oral argument, Allergan and the Mohawk Tribe   Read More »

Posted in Inter Partes Review, IP and Technology Litigation, Patent Litigation | Tagged

Share this Article:

Supreme Court Opens the Door to Recovering Lost Foreign Profits in Patent Cases

By Peter R. Montecuollo and David G. Barker In a 7-2 decision, the Supreme Court of the United States has opened the door for patent owners to recover lost foreign profits under §§ 284 and 271(f)(2) of the Patent Act. Although the Court’s decision in WesternGeco LLC v. ION Geophysical Corp. represents a marked shift from the lost-foreign-profits calculus courts applied previously, it does not create an automatic right to recover lost foreign profits.  Instead, the Court supplanted the Federal Circuit’s rigid prohibition against recovering lost foreign sales (see Power Integrations, Inc. v. Fairchild Semiconductor Int’l, Inc.) with a case-by-case   Read More »

Posted in IP and Technology Litigation, Patent Litigation | Tagged , , ,

Share this Article:

Federal Circuit Considers Possible Tribal Immunity from Inter Partes Review

By Daniel S. Ivie and David G. Barker Last week, a Federal Circuit panel considered whether transferring patents to a tribal nation invoked the tribe’s sovereign immunity precluding inter partes review. The panel heard oral argument in Saint Regis Mohawk Tribe et al. v. Mylan Pharmaceuticals Inc. et al., which concerns an appeal from the Patent Trial and Appeal Board’s recent decision that the St. Regis Mohawk Tribe’s sovereign immunity did not shield it from inter partes review. In late 2017, pharmaceutical company Allergan transferred the patents for its dry-eye medication Restasis to the St. Regis Mohawk Tribe. Allergan paid   Read More »

Posted in Inter Partes Review, Patent Litigation | Tagged

Share this Article:

Supreme Court Confirms Inter Partes Review Is Constitutional

By Jacob C. Jones and David G. Barker In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, the United States Supreme Court held today, in a 7-2 decision, that the inter partes review process under the America Invents Act (AIA), 35 U.S.C. § 100 et seq. (2011), does not violate Article III or the Seventh Amendment of the U.S. Constitution. As we noted previously, inter partes review is a popular administrative proceeding where the Patent Trial and Appeal Board (PTAB; part of the United States Patent and Trademark Office) decides whether challenged patents are valid.  As of March   Read More »

Posted in Inter Partes Review, IP and Technology Litigation, Patent Litigation, Post Grant Proceedings | Tagged , , , , , ,

Share this Article:

Billions Once Again on the Line After Federal Circuit’s Reversal in Oracle v. Google

By Rachael Peters Pugel and David G. Barker The Federal Circuit has reversed, for the second time, the much-followed copyright infringement case, Oracle America, Inc. v. Google LLC, which has been ongoing since 2010.  Oracle filed suit alleging Google copied and used 37 packages of Oracle’s Java application programming interface (“API”), as well as the structure, sequence, and organization (“SSO”) of those API packages, in its Android smartphone platform. Google and Oracle’s predecessor, Sun, began discussing Google’s licensing of the Java platform for mobile devices in 2005.  But the parties were unable to come to an agreement.  Google then worked   Read More »

Posted in Copyright Litigation | Tagged ,

Share this Article: