On March 23, 2020, in a decision containing not a small amount of whimsy (more regarding that aspect anon), Justice Kagan, joined almost unanimously by her brethren, upheld a State's ( North Carolina) sovereign immunity...more
3/27/2020
/ Abrogation ,
Allen v Cooper ,
Authors ,
Certiorari ,
Congressional Intent ,
Copyright ,
Copyright Infringement ,
Copyright Ownership ,
Copyright Remedy Clarification Act ,
Fourteenth Amendment ,
SCOTUS ,
Sovereign Immunity
There is a belief in some quarters that the most significant barrier to patent subject matter eligibility reform is an implacable opposition by companies in the high tech sector because those companies are convinced that the...more
2/19/2020
/ Biotechnology ,
CLS Bank v Alice Corp ,
Legislative Agendas ,
Mayo v. Prometheus ,
Myriad ,
Patent Infringement ,
Patent Reform ,
Patent Trolls ,
Patent-Eligible Subject Matter ,
Patents ,
Pharmaceutical Patents ,
SCOTUS ,
Technology Sector ,
Treatment Method Patents
The Supreme Court entered orders denying certiorari in all five cases having petitions on subject matter eligibility, including Athena Diagnostics, Inc. v. Mayo Collaborative Services, LLC; Hikma Pharmaceuticals USA Inc. v....more
On Monday, the U.S. Supreme Court issued an opinion in Iancu v. Brunetti, No. 18-302, finding that the Lanham Act prohibition against registration of scandalous or immoral trademarks violates the First Amendment of the U.S....more
6/28/2019
/ Appeals ,
Constitutional Challenges ,
First Amendment ,
Free Speech ,
Iancu v. Brunetti ,
Lanham Act ,
Reaffirmation ,
Reversal ,
Scandalous/Immoral Marks ,
SCOTUS ,
Trademark Registration ,
Trademarks ,
USPTO ,
Viewpoint Discrimination
Last week, in Merck Sharp & Dohme Corp. v. Albrecht, the Supreme Court continued its explication of the balance between state law tort liability that can be imposed on drug makers and the extent to which this liability can be...more
5/28/2019
/ Agency Disapproval ,
Clear Evidence Standard ,
Failure To Warn ,
FDA Approval ,
Federal v State Law Application ,
Food and Drug Administration (FDA) ,
Judicial Authority ,
Jury Trial ,
Manufacturers ,
Merck Sharp & Dohme Corp. v. Albrecht ,
Preemption ,
Prescription Drugs ,
Question of Fact ,
Question of Law ,
Remand ,
SCOTUS ,
State Law Claims ,
Vacated ,
Warning Labels
Ever since the Supreme Court handed down its decisions in Octane Fitness, LLC v. ICON Health & Fitness, Inc. and Highmark Inc. v. Allcare Health Mgmt. Sys., Inc. about five years ago, liberalizing (or at least simplifying)...more
On April 15, 2019, the U.S. Supreme Court denied a petition for writ of certiorari by the St. Regis Mohawk Indian Tribe on the question (answered in the negative by the Patent Trial and Appeal Board and the Federal Circuit)...more
Sherry Knowles, former chief patent counsel of GlaxoSmithKline, and Dr. Anthony Prosser, a member of her team at Knowles Intellectual Strategies LLC, have written an article recently published in The John Marshall Review of...more
"Pigs fly!" "Hell has frozen over!" Or less dramatically, "Supreme Court affirms Federal Circuit decision!" all would be apt subtitles for any article discussing the Supreme Court's decision today in Helsinn v. Teva. The...more
1/23/2019
/ America Invents Act ,
Appeals ,
Assignment of Inventions ,
Confidentiality Agreements ,
Helsinn Healthcare SA v Teva Pharmaceuticals USA Inc ,
Inventions ,
On-Sale Bar ,
Patent Applications ,
Patent Infringement ,
Patents ,
Pharmaceutical Industry ,
Pharmaceutical Patents ,
Public Use ,
Reaffirmation ,
Reversal ,
SCOTUS ,
Section 102 ,
Third-Party Relationships
The Supreme Court denied certiorari last week in Amgen Inc. v. Sanofi, in a case that asked the Court to review the Federal Circuit's jurisprudence related to the written description requirement of 35 U.S.C. § 112(a)....more
The Supreme Court changed the calculus on what conduct satisfies the "exceptional case" criteria for awarding attorney's fees under 35 U.S.C. § 285 in its Octane Fitness, LLC v. ICON Health & Fitness Inc. and Highmark Inc. v....more
The Supreme Court's recent forays into patent law cases have evinced a tendency towards statutory construction analysis, whether regarding substantive law or the procedural niceties of Federal Circuit review and U.S. Patent...more
Last week, the Supreme Court denied certiorari to Regeneron Pharmaceuticals in its appeal of the Federal Circuit's decision in Regeneron Pharmaceuticals v. Merus that affirmed the District Court's decision that the claims of...more
On Friday, June 22, 2018, the Supreme Court reversed the judgment of the Federal Circuit in WesternGeco LLC v. ION Geophysical Corp. Justice Thomas (joined by Chief Justice Roberts and Justices Kennedy, Ginsburg, Alito,...more
6/25/2018
/ 35 U.S.C. § 271(f)(2) ,
35 U.S.C. § 284 ,
Appeals ,
Damages ,
Domestic Injury ,
Extraterritoriality Rules ,
Foreign Profits ,
Foreign Sales ,
Lost Profits ,
Patent Act ,
Patent Infringement ,
Patents ,
Remand ,
SCOTUS ,
Vacated ,
WesternGeco LLC v Ion Geophysical Corporation
The proper application of the patent venue statute, 28 U.S.C. § 1400(b) in the wake of the Supreme Court's decision in TC Heartland LLC v. Kraft Foods Group Brands LLC (2017), under recent Federal Circuit precedent (see In re...more
Well, that didn't take long. The U.S. Patent and Trademark Office issued Guidance today, just two days after the Supreme Court decision in SAS Institute Inc. v. Iancu came down, regarding how the Patent Trial and Appeal...more
The Supreme Court reversed the judgment of the Federal Circuit today in SAS Institute Inc. v. Iancu. In a rare close decision in patent cases, Justice Gorsuch (joined by the Chief Justice and Justices Kennedy, Thomas, and...more
The tortured path that the Federal Circuit has taken (a path also trodden by the U.S. Patent and Trademark Office and the district courts) of applying the patent eligibility decisions under Mayo Collaborative Services v....more
The U.S. Supreme Court at the end of the past term handed down a decision, Impression Products, Inc. v. Lexmark International, Inc., that greatly expanded the doctrine of patent exhaustion. This equitable doctrine prevents a...more
12/8/2017
/ Breach of Contract ,
Exports ,
First Sale Doctrine ,
Foreign Sales ,
Imports ,
Impression Products v Lexmark International ,
IP License ,
Patent Exhaustion ,
Patent Infringement ,
Patent Litigation ,
Patents ,
Resales Agreements ,
SCOTUS ,
Single-Use/No Resale Restriction ,
Stream of Commerce
Perhaps overlooked in the widespread assessments of the Supreme Court's questioning of the parties in Oil States Energy Services, LLC. v. Greene's Energy Group, LLC is the argument before the Court in SAS Institute, Inc. v....more
12/6/2017
/ Administrative Proceedings ,
America Invents Act ,
Article III ,
Constitutional Challenges ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patents ,
Post-Grant Review ,
Private Property ,
Public Property ,
SCOTUS ,
USPTO
On November 27, 2017, the Supreme Court considered the question of whether the inter partes review process established by the U.S. Patent and Trademark Office in implementing portions of the Leahy-Smith America Invents Act or...more
11/28/2017
/ Administrative Proceedings ,
America Invents Act ,
Amicus Briefs ,
Article III ,
Certiorari ,
Constitutional Challenges ,
Covered Business Method Proceedings ,
Inter Partes Review (IPR) Proceeding ,
Oil States Energy Services v Greene's Energy Group ,
Patent Invalidity ,
Patents ,
Post-Grant Review ,
Private Property ,
Public Property ,
Right to a Jury ,
SCOTUS ,
Seventh Amendment ,
USPTO
On November 17, 2017, the Federal Circuit granted a writ of mandamus to Micron Technology, Inc. involving their motion challenging venue in a patent infringement lawsuit brought by The President and Fellows of Harvard...more
Last month, the Federal Circuit rendered a decision in Amgen Inc. v. Sanofi that brought clarity to how the Court (and U.S. Patent and Trademark Office) should apply the written description requirement in 35 U.S.C. § 112(a)...more
The Supreme Court most recently revisited the proper standards for making an obviousness determination ten years ago, in KSR Int'l. Co. v. Teleflex. Inc. While in some ways changing the obviousness standard, for example...more
Patent law has always been tasked with interpreting law in an ever-shifting factual environment, where well-established principles need to be applied to new technology. Twenty years ago, the Federal Circuit grappled with the...more