Monthly Minute | Commercialization of an Invention
I. Minerva Surgical v. Hologic: Background - The United States Court of Appeals for the Federal Circuit issued a precedential opinion earlier this year in Minerva Surgical, Inc. v. Hologic, Inc. clarifying the “in public...more
Last week, in a non-precedential opinion for an appeal from a Patent and Trial Appeals Board (PTAB) decision (In re WinGen), the Federal Circuit addressed prior public use under pre-AIA 35 U.S.C. § 102(b). The issue was...more
Sunoco Partners Marketing & Terminals L.P. v. U.S. Venture, Inc., Appeal Nos. 2020-1640, -1641 (Fed. Cir. Apr. 29, 2022) - Our case of the week has a little bit for everyone, including lost profits, reasonable royalties,...more
Declining to extend the public-use bar to third-party commercial uses of secret processes, the US Court of Appeals for the Federal Circuit reversed a summary judgment ruling that found a patent invalid under the “known or...more
In what may be simple happenstance, the Federal Circuit issued opinions on the same day reversing a District Court grant of summary judgment in opinions written by Judge Lourie, here in BASF Corp. v. SNF Holding Co....more
On January 22, 2019, the U.S. Supreme Court affirmed the U.S. Court of Appeals for the Federal Circuit’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 17-1229 (Jan. 22, 2019)....more
Addressing pre-America Invents Act (AIA) 35 USC § 102(b), the US Court of Appeals for the Federal Circuit held that the public-use and on-sale bars did not apply to the claimed surgical method because pre-critical-date...more
Addressing whether the on-sale bar of America Invents Act (AIA) 35 USC § 102(a)(1) applies to confidential sales where specific details are not made public, the Supreme Court of the United States found that the post-AIA...more
If the term "happy hour" in this article's title caught your attention, you may be disappointed by what comes next. This article is actually about limitations on patent protection, which I would argue is just as...more
Helsinn Healthcare (“Helsinn”) is the maker of certain treatments for chemotherapy-induced nausea (the “Palonosetron Products”). During the development process, Helsinn entered into two third party agreements for distribution...more
Helsinn confirmed that the AIA did not alter the meaning of the “on-sale” bar. In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc, the Supreme Court addressed whether a confidential sale of an invention to a...more
Originally published in The Journal Record | January 31, 2019. This month, the U.S. Supreme Court issued its opinion in Helsinn Healthcare v. Teva Pharmaceuticals, confirming that private sales of an invention may preclude...more
The Supreme Court recently issued its closely-watched decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., which has direct implications regarding the scope of § 102 prior art under the America Invents Act...more
Prior to the Leahy-Smith America Invents Act (“AIA”), the patent statute (35 U.S.C. § 102(b)) prohibited patenting an invention that was “on sale in this country, more than one year prior to the date of the application for...more
Inventors should not delay the filing of their patent applications, and preferably should file within one year of any commercialization of the invention, as confirmed by the Supreme Court on January 22, 2019....more
PATENT CASE OF THE WEEK - Mark A. Barry v. Medtronic, Inc., Appeal No. 2017-2463 (Fed. Cir. Jan. 24, 2019) - On Thursday, the Federal Circuit issued a significant decision affirming the district court’s rulings related...more
In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Supreme Court interpreted the “on sale bar” of the America Invents Act (AIA) version of 35 U.S.C. § 102 as unchanged from the pre-AIA version. In so doing, the...more
In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA Inc, the United States Supreme Court held that a prior public sale of a patented product could destroy the novelty of a patent for that product even though there was no...more
U.S. patent law states that any invention that was “on sale in this country, more than one year prior to the date of the application for patent” is not eligible for patent protection. The Supreme Court recently confirmed...more
The America Invents Act (“AIA”), also called the Patent Reform Act of 2011, was enacted to overhaul the U.S. patent system and harmonize the domestic patent laws with those in the rest of the world. The AIA also created new...more
In Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., the Supreme Court affirmed the Federal Circuit’s decision that the sale of an invention to a party who is contractually obligated to keep the invention...more
On January 22, 2019, the U.S. Supreme Court affirmed the U.S. Court of Appeals for the Federal Circuit’s decision in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., No. 17-1229 (Jan. 22, 2019). ...more
In an inter-partes review proceeding (IPR), a challenger can rely only on patents and printed publications to challenge the validity of a patent claim. ...more
In a unanimous decision, the United States Supreme Court has held that inventors are barred from obtaining patents on inventions that were “on sale” more than one year prior to a patent application even if the sale is subject...more
With Helsinn, the Supreme Court confirms that secret sales trigger the on sale bar, just as before the America Invents Act. Patent applicants should be cognizant of all commercial activity related to an invention to ensure...more