Helsinn Healthcare v. Teva Pharmaceuticals USA: Textualism Runs Aground

By Andrew F. Halaby Affirming the Federal Circuit, the Supreme Court on January 22 held that post-AIA section 102(a)(1)’s provision, A person shall be entitled to a patent unless . . . the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention, (emphasis added), does not require that the invention “on sale” be “available to the public.” To be sure, the “on sale” bar historically has not required public availability, at least according to the Federal Circuit. (As the   Read More »

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

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How Scandalous! SCOTUS Again Takes up Whether the Lanham Act Violates the First Amendment

By Shalayne Pillar and David G. Barker On Friday, the Supreme Court of the United States agreed to hear a case that will decide whether the federal ban on trademark protection for “scandalous” material is unconstitutional.  In re Brunetti follows the U.S. Patent and Trademark Office’s (“USPTO’s”) denial of trademark registration for the word “Fuct,” which held that the mark “comprises immoral . . . or scandalous matter” and thus could not be registered under Section 2(a) of the Lanham Act.  On appeal, the Federal Circuit sided with the applicant (discussed here), holding the statute violated the Free Speech provision   Read More »

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

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Supreme Court to Decide Multiple IP Issues This Term

 By Taryn J. Gallup and David G. Barker On October 26, 2018, the Supreme Court of the United States (“SCOTUS”) granted certiorari in two IP cases.  In Mission Product Holdings, Inc. v. Tempnology, LLC, SCOTUS will address a circuit split on the effect bankruptcy has on trademark license rights.  In Return Mail, Inc. v. U.S. Postal Service, et al., SCOTUS will address whether the government may challenge patents as a “person” under the America Invents Act (“AIA”). In Mission Product Holdings, Tempnology, LLC (“Tempnology”) filed for Chapter 11 bankruptcy protection and cancelled a trademark licensing agreement that it had with   Read More »

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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 »

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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 , , ,

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