Christopher Loh practices complex patent litigation in the areas of pharmaceuticals, biotechnology and chemistry. Over the past fifteen years, he has litigated patent cases involving oncology therapies, anti-HIV therapies, anti-hepatitis drugs, antidepressants and statins, including as lead counsel. He has experience arguing before the United States Court of Appeals for the Federal Circuit, and has won on behalf of patent owners in inter partes review proceedings before the Patent Trial and Appeal Board. In addition to his litigation work, Christopher also counsels clients on transactional and patent prosecution issues concerning both small-molecule drugs and biological products such as recombinant antibodies, and advises clients on a range of intellectual property matters including inventorship, trade secrets, and licensing.
Christopher is a frequent author and commentator on intellectual property issues, and has twice won the Burton Award for Legal Achievement in recognition of his exceptional writing. His publications have appeared in Lexology, the National Law Journal, the New York Law Journal, Bloomberg IP, and Managing Intellectual Property. He has presented at the BIO IPCC Counsels conference and the New Jersey Intellectual Property Law Association Pharmaceutical/Chemical Patent Practice Update, and has taught for Lawline.
In law school, Christopher served as notes editor for the Columbia Business Law Review and also interned at the New York Volunteer Lawyers for the Arts, counseling clients on copyright, trademark, and artist rights issues.
The Supreme Court has unanimously ruled that the US Patent and Trademark Office cannot shift the fees of its attorneys and paralegals to litigants in district court proceedings brought under Title 35, Section 145 of the US Code. Justice Sotomayor explained that, under the centuries-old presumption commonly known as the 'American rule', each litigant pays its own attorneys' fees "win or lose, unless a statute or contract provides otherwise".
Thus far, 2019 has been an eventful year for US patent law. Over the past seven months, the Supreme Court and the Court of Appeals for the Federal Circuit (the US appellate court tasked with reviewing all district court patent decisions) have issued several significant rulings that may affect the rights of patent owners. This article reviews the most important of these rulings, including decisions on the application of the on-sale bar and state sovereign immunity.
A Federal Circuit panel recently held that state sovereign immunity does not apply to inter partes review proceedings conducted before the Patent Trial and Appeal Board of the Patent and Trademark Office. The dispute had arisen after the University of Minnesota (UMN) sued LSI and Ericsson customers in a district court for the infringement of several UMN patents claiming 4G LTE telecoms technology.
The Supreme Court recently ruled six-to-three that a federal agency cannot petition for the review of an issued patent under the America Invents Act. This decision prevents the government from challenging the validity of issued patents through inter partes, post-grant and covered business method reviews.
The Supreme Court recently held that the sale of a patented invention to a third party that is contractually obligated to keep the invention confidential can trigger the on-sale bar of the Leahy-Smith America Invents Act. The decision clarifies statutory language in the act, which has been a source of considerable confusion to patent litigants. The decision also requires that IP owners carefully ensure that public disclosure of their business dealings does not interfere with their patent rights.
A Federal Circuit panel recently held that a patent term extension (PTE) granted pursuant to 35 USC Section 156 was not invalid for obviousness-type double patenting. The decision should provide pharmaceutical patentees with some assurance that their PTEs generally will not fall foul of the obviousness-type double patenting doctrine.
The Federal Circuit recently held that the assignor estoppel is not available in inter partes review proceedings. Assignor estoppel is a common law doctrine which prevents a party that assigns a patent to another party from later challenging the validity of the assigned patent. In a decision by Chief Judge Prost (joined by Judges Schall and Chen) the Federal Circuit held that the assignor estoppel is not available in inter partes reviews.
The Federal Circuit recently affirmed the Patent Trial and Appeal Board's determination that there was no interference-in-fact between the University of California's Patent Application 13/842,859 and the 12 patents and one patent application owned by the Broad Institute, the Massachusetts Institute of Technology and Harvard University concerning CRISPR-Cas9 technology.
The Federal Circuit recently affirmed a district court's denial of the US Patent and Trademark Office's request for reimbursement of attorneys' fees which it had incurred in defending a district court action brought against it under 35 USC § 145. The majority held that Section 145 expenses do not include attorneys' fees because any statute seeking to depart from the default 'American Rule' must do so using specific and explicit language, which Section 145 lacks.
The US Supreme Court recently held that patent owners can recover lost profits damages under 35 USC Section 271(f)(2) based on acts occurring outside the United States. Section 271(f)(2) imposes patent infringement liability where a party supplies components from the United States that are not "suitable for substantial noninfringing use" which it intends to be combined abroad in a manner that would infringe if the combination had occurred within the United States.
The Patent Trial and Appeal Board (PTAB) has designated a recent order as 'informative'. Although not precedential, the order provides guidance concerning the PTAB's treatment of motions to amend patent claims challenged in inter partes review proceedings following Aqua Products, Inc v Matal, wherein it was held that a patent owner in an inter partes review proceeding does not bear the burden of demonstrating the patentability of substitute claims presented in a motion to amend.
After a week-long trial and four days of deliberation, a federal jury has determined that Samsung owes Apple over $533 million in damages for infringing three design patents asserted by Apple. The jury also found Samsung liable to pay more than $5 million for infringing two utility patents.
Two recent Federal Circuit orders have provided answers to certain venue-related questions that have arisen in patent cases. The first order stipulates that alien corporate defendants remain subject to venue in any judicial district, reaffirming the Supreme Court's long-established Brunette ruling. Further, the second order confirms that when a defendant moves to dismiss for improper venue, the burden of proving that venue is proper rests with the plaintiff and is governed by Federal Circuit law.
The Supreme Court recently heard oral argument in a case which will determine whether US patentees can recover lost profits damages arising under 35 USC Section 271(f) for certain activities occurring outside the United States. Among other things, the justices who asked questions seemed to accept the argument that the application of proximate cause would be sufficient to limit the risk of excessive damages awards and mitigate any potential harm to international comity.
The US Court of Appeals for the Second Circuit recently held that certain aspects of TVEyes's service – which allows users to watch video clips of programmes on Fox News and other channels – are not protected by the copyright fair-use doctrine under 17 USC Section 107. The Second Circuit addressed each of the four statutory fair-use factors and reversed the district court's determination that TVEyes's watch function constituted fair use.
A number of district court decisions have held patent claims to be ineligible under Section 101 during motions brought at the start of litigation or on motions for summary judgment. However, two recent Federal Circuit decisions indicate that factual disputes over aspects of the two-step test for assessing patent eligibility established by the Supreme Court, including the tangibility of claims, may hinder such early or summary Section 101 determinations.
In a recent case, the US Court of Appeals for the Fourth Circuit held that an internet service provider (ISP) was not entitled to the safe harbour of 17 USC Section 512(a) of the Digital Millennium Copyright Act. In so holding, the Fourth Circuit rejected the ISP's argument that the safe harbour requires that an ISP take action only against subscribers who are adjudged in court to be 'repeat infringers'.
The Federal Circuit recently handed down a decision in which it clarified that wilful infringement is an issue to be decided by a jury, rather than a district court. It held that the district court had erred in excluding as unreasonable prior art evidence concerning the defendant's litigation defences, because that evidence may also have been relevant to its subjective intent or knowledge at the time of the alleged infringement.
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.
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.
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.
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'.
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".
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.
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.
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.
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.
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.
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.
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.
In a recent case, petitioner Phigenix challenged the validity of a patent which related to antibody-maytansinoid conjugates for the treatment of cancer. The Federal Circuit dismissed Phigenix's appeal for lack of standing under Article III of the Constitution. In dismissing the appeal, the Federal Circuit, among other things, reiterated the minimum requirements for Article III standing.
In a recent decision, the Supreme Court rejected the Federal Circuit's interpretation of a damages statute in litigation between Apple and Samsung over Apple's smartphone design patents. The court disagreed with the Federal Circuit over the term 'articles of manufacture' and overturned its decision, therefore raising the possibility that Apple's $399 million in damages could be reduced significantly.
The Federal Circuit recently found that the Patent Trial and Appeal Board (PTAB) violated a patentee's rights in an inter partes review proceeding by cancelling patent claims based on a portion of a prior art reference that was not specifically identified and by denying the patentee the opportunity to address that portion of the reference. The Federal Circuit vacated the cancellation of the claims and remanded the matter to the PTAB.
In a recent decision the Federal Circuit en banc held that a contract manufacturer's sale to the patentee of manufacturing services – where both the title to the patented embodiments and the right to market them did not pass to the manufacturer – did not constitute an invalidating sale. The Federal Circuit asserted that commercial benefit is not enough to trigger the on-sale bar. Rather, the transaction must be one in which the product is commercially marketed.
The Federal Circuit recently held that the District of Delaware could exercise specific jurisdiction over generic pharmaceutical company Mylan because its abbreviated new drug application filings and distribution capabilities proved that it planned to market generic versions of its competitors' drug products in Delaware. The Federal Circuit majority opinion did not consider the question of whether general personal jurisdiction was proper.
A Federal Circuit panel recently held that a rebuttable presumption of laches attaches to an inventorship claim when more than six years passes from the time a purported omitted inventor knew or should have known of the issuance of the relevant patent. The case concerned an inventor who initiated litigation seeking to correct the inventorship of a US patent issued in 2002.
The Supreme Court recently lowered the bar for prevailing litigants in certain patent suits to seek attorneys' fees, reversing a Federal Circuit panel decision to hold that the Federal Circuit's traditional framework for assessing "exceptional cases" under 35 USC § 285 was unduly rigid and impermissibly encumbered the discretion of district courts.