Fitzpatrick, Cella, Harper & Scinto updates

Supreme Court hears oral argument on constitutionality of inter partes review in oil states
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • December 18 2017

The Supreme Court recently heard oral argument in Oil States Energy Services, LLC v Greene's Energy Group, LLC. The Supreme Court's decision in this case will either spare or strike down inter partes review as a means for challenging the validity of issued patents in the United States.

Federal Circuit holds that TC Heartland was change of law
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • December 04 2017

The Federal Circuit recently held that TC Heartland represented a change of law and that Micron Technology Inc's failure to raise a venue objection in its initial motion to dismiss did not waive the objection under Rule 12 of the Federal Rules of Civil Procedure. However, the court also explained that there may be other bases on which a defendant could be found to have forfeited a venue objection.

Two bites of the apple: five facts about drug patent inter partes review final written decisions
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • November 20 2017

As of July 2017 there had been at least 363 inter partes review petitions filed against patents listed in the Food and Drug Administration's Orange Book and 74 filed against patents that have been identified as reading on Purple Book Centre for Drug Evaluation and Research-listed biologic drugs. Of these 437 inter partes reviews, 116 resulted in a final written decision. There are a number of lessons to be learned from these.

Pharma at Patent Trial and Appeal Board
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • November 06 2017

There has been some concern regarding the statistics periodically issued by the US Patent Trial and Appeal Board, owing to the fact that the reported numbers overlook multiple inter partes review challenges to the same patents and, potentially, different outcomes in those challenges. While certain drug patents have been challenged in multiple inter partes review petitions, concern as to different outcomes appears to be unfounded.

Divided Federal Circuit holds that petitioner must prove all propositions of unpatentability
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • October 30 2017

A divided en banc Federal Circuit recently issued several opinions addressing the burden of proof concerning a motion to amend claims in inter partes review proceedings. While none of the opinions garnered a full majority, the leading opinion placed the burden of persuasion with respect to the patentability of amended claims on the petitioner.

Amgen obtains $70 million damages award against Hospira for erythropoietin patent infringement
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • October 23 2017

The verdict in a recent patent infringement case between two pharmaceutical companies is the first instance in which a patent owner has recovered significant infringement damages under the Biologics Price Competition and the Innovation Act. It is also the first time that a patent owner has recovered damages under the act for infringement that a competitor carried out before the commercial marketing of the competitor's biosimilar.

Determining 'regular and established place of business' under patent venue statute
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • October 16 2017

In a recent patent infringement case, a Federal Circuit panel rejected an Eastern District of Texas judge's proposed four-factor test for determining whether venue is proper over a defendant in a patent infringement action under the 'regular and established place of business' prong of the US patent venue statute. In its place, the Federal Circuit introduced its own three requirements to determine what constitutes a 'regular and established place of business'.

Federal Circuit rules on patent-eligible "improvement to computer functionality"
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • September 11 2017

The Federal Circuit recently reversed a district court's determination that a patent for a computer memory system was invalid because it was directed to a patent-ineligible abstract idea. Referring to other recent decisions on computer-related claims, the Federal Circuit majority instead concluded that the patent was directed to a patent-eligible "improvement to computer functionality".

Drug patents may fare better than other technologies in inter partes review proceedings
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • August 21 2017

The US Patent Trial and Appeal Board (PTAB) recently released updated statistics showing the fate of resolved inter partes review proceedings. These statistics show that a total of 4,563 inter partes review petitions were resolved as of March 31 2017, including 1,577 final written decisions. In 81% of these final written decisions, at least some instituted patent claims were found unpatentable. This statistic has contributed to concerns that the PTAB is a patent 'death squad'.

Supreme Court – Lanham Act disparagement clause unconstitutional
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • July 17 2017

The Supreme Court recently held that the Lanham Act's disparagement clause is unconstitutional under the First Amendment's free speech clause. The court explained that the disparagement clause "offends a bedrock First Amendment disparagement principle". Trademarks cannot be denied federal registration or be cancelled merely because they offend. Assuming that they otherwise qualify, offensive trademarks are entitled to the substantial benefits of federal trademark registration.

Biosimilar makers can give notice of commercial marketing before FDA licensure
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • July 03 2017

The Supreme Court recently ruled that biosimilar makers can give notice of commercial marketing before Food and Drug Administration (FDA) licensure. The ruling resolves an ambiguity in the text of the Biologics Price Competition and Innovation Act, which gave rise to a presumption that biosimilar makers had to wait until 180 days after FDA licensure before providing notice of the commercial marketing of those products.

Federal Circuit weighs tests for evaluating infringement under doctrine of equivalents
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • June 12 2017

In a recent panel decision, the Federal Circuit suggested that an 'insubstantial differences' test may be more suitable than a 'function-way-result' test for evaluating infringement under the doctrine of equivalents in patent cases involving the chemical arts. The decision arises from unusual procedural circumstances.

Supreme Court decision limits venue in patent cases
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • June 05 2017

The Supreme Court recently issued a decision limiting venue in patent cases to districts in which the defendant is incorporated or where the defendant has committed acts of infringement and has a regular and established place of business. The decision overturns decades-long Federal Circuit precedent under which patent defendants have been sued in states other than those in which they are incorporated or have regular places of business.

Federal Circuit clarifies application of post-America Invents Act on-sale bar
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • May 22 2017

The Federal Circuit panel recently held four pharmaceutical patents invalid under the on-sale bar of 35 USC Section 102(b). Under the post-America Invents Act version of Section 102(b), public disclosure of the existence of the sale of a patented item may suffice to invalidate a patent under the on-sale bar, even if the details of the invention are not publicly disclosed in the terms of sale.

Supreme Court hears oral argument in Sandoz Inc v Amgen Inc
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • May 15 2017

The Supreme Court recently heard oral argument in Sandoz Inc v Amgen Inc on two questions regarding the Biologics Price Competition and Innovation Act. If the court affirms Sandoz's position on these issues, sponsors will need to carefully consider how to prepare for and undertake declaratory judgment actions, perhaps within a compressed time frame and with little knowledge at the outset of the proposed biosimilar or its manufacturing process.

Supreme Court hears oral argument in Heartland
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • April 24 2017

The Supreme Court recently heard oral argument in TC Heartland LLC v Kraft Food Brands Group LLC. The case concerns the application of part of the general venue statute which allows a corporation to be sued in multiple districts. If the court rules in TC Heartland's favour, the venue in patent cases could potentially be limited to those districts where the defendant is incorporated or has a regular and established place of business.

Supreme Court hears oral argument in Impression Products Inc v Lexmark Int'l Inc
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • April 17 2017

The Supreme Court recently heard oral argument in Impression Products Inc v Lexmark Int'l Inc on whether a patentee's US patent rights may be exhausted by certain conditional US sales or by foreign sales of a patented item, acknowledging that these would disrupt settled expectations and present serious consequences.

Test determining whether designs on useful articles are eligible for copyright protection
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • April 10 2017

While federal copyright laws unquestionably allow protection for original works of art, copyright eligibility has been less clear in situations where artistic designs are incorporated into articles with utilitarian features. In a recent decision, the Supreme Court clarified the test for determining whether artistic elements incorporated into a useful article are eligible for copyright protection.

Supreme Court rejects Federal Circuit's basis for finding infringement liability for exporters
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • March 13 2017

The Supreme Court recently reversed the Federal Circuit's interpretation of an infringement liability statute in litigation over whether shipping a single component of a patented multi-component invention to be assembled overseas qualifies as infringement under 35 USC Section 271(f)(1). In doing so, the Supreme Court clarified that Section 271(f)(1) does not cover the supply of a single component of a multi-component invention.

Supreme Court hears oral argument in Lee v Tam
Fitzpatrick, Cella, Harper & Scinto
  • Intellectual Property
  • USA
  • February 06 2017

The US Supreme Court recently heard oral argument in Lee v Tam. The decision in this case will address whether Section 2(a) of the Lanham Act, which permits the US Patent and Trademark Office to refuse to register 'disparaging' trademarks, is constitutional under the First Amendment. It is difficult to tell from the oral argument how the Supreme Court will decide this case.

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