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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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 »

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

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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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Supreme Court Uproots Current PTAB Practice by Quashing Partial Decisions

By Trisha Farmer Lau and David G. Barker On April 24, 2018, in SAS Institute, Inc. v. Iancu, the Supreme Court held that the Patent Trial and Appeal Board (“PTAB”) must decide the validity of every patent claim challenged when it undertakes inter partes review under the America Invents Act (“AIA”).  In a 5-4 decision, the Court ruled in favor of SAS Institute, Inc., a software developer that filed an inter partes review petition and argued that the PTAB’s final decision must address all challenged claims in the petition. Before this decision, a U.S. Patent and Trademark Office regulation, 37   Read More »

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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 , , , , , ,

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