U.S. Supreme Court grants writ of certiorari in Helsinn Healthcare S.A., Teva Pharmaceuticals USA, Inc.Written by David Roncayolo
Last month, the United States Supreme Court granted a petition for a writ of certiorari in Helsinn Healthcare S.A., Teva Pharmaceuticals USA, Inc. In 2017, the U.S. Court of Appeals for the Federal Circuit held that a publicly disclosed commercial sale amounts to an invalidating act, even when the details of the invention are not publicly disclosed.
The United States Supreme Court will decide whether under the Leahy-Smith America Invents Act, an inventor’s sale of an invention to a third party that is obligated to keep the invention confidential qualifies as prior art for purposes of determining the patentability of the invention.
The outcome will be interesting, as sometime in 2019 the Supreme Court should provide some guidance on the scope of the on-sale bar (i.e., those acts and/or disclosures that occur prior to the filing date of a patent application, which could affect the validity of a patent). A different issue, which will not be in front of the U.S. Supreme Court for review, at least for a while, is whether a secret commercial sale amounts to an invalidating act.
An original work of authorship is accorded copyright protection when the work is fixed in a tangible medium of expression (17 U.S.C. §102). However, a copyright owner cannot sue for infringement of the copyrighted work until either 1) “registration has been made” of the work to the Copyright Office, or 2) the work is refused registration by the Copyright Office and the required deposit, application, and fee have been delivered to the Copyright Office in proper form (17 U.S.C. §411).
The phrase “registration has been made” has been interpreted differently by different federal appeals courts. Some courts have ruled the phrase means that the application has been accepted and registered by the Copyright Office. Other courts have ruled the phrase means that a properly filed application for copyright has been received by the Copyright Office. These other courts find support in their interpretation from other statutes where the same phrase is understood to mean properly applying for registration. Supporters of both interpretations point to part 2) of the statute for support of their respective interpretation.
This conflict among federal appeals courts has been recognized in the highest courts, and now the Supreme Court has agreed to settle the dispute in the case, Fourth Estate Public Benefit Corp. v. Wall-Street.com LLC, et al. Does the phrase “copyright registration being made” require only a properly filed application to be received by the Copyright Office? Or does that phrase require an action to be taken by the Copyright Office—either acceptance or refusal—in response to receipt of a properly filed application? The Supreme Court will soon answer that question.
The film studio (STX) behind the raunchy comedy, “The Happytime Murders,” successfully fended off a trademark infringement suit by Sesame Workshop. Specifically, Sesame Workshop contended that the R-rated movie depicting puppets joking about drugs, sex, and guns confused the public with “Sesame Street,” tarnished the kid-friendly show’s reputation, and exploited Sesame Street’s mark and related goodwill by implying an affiliation that did not otherwise exist. United States District Judge Vernon Broderick disagreed, however, stating that the comedy’s slogan – “No sesame. All street” – actually proved to distinguish the film from the children’s cartoon, and further noted that the “R” rating automatically served as a differentiating characteristic. The Happytime Murders will begin showing in theatres in August of 2018.
Following our previous report, the U.S. Supreme Court held in WesternGeco LLC v. ION Geophysical Corp. that WesternGeco, the patent owner, can recover lost foreign profits as a result of ION's infringement under §271(f)(2) of the Patent Act. WesternGeco LLC v. Ion Geophysical Corp., U.S., No. 16-1011, 6/22/18. Justice Thomas delivered the majority opinion in the 7-2 decision.
Over ION's objection that the lost-profits damages occurred outside of the United States and the foreign conduct after ION's infringement was necessary to give rise to the infringement, Justice Thomas wrote that awarding lost-profits damages under the circumstances was a domestic application, and therefore, consistent with the presumption against extraterritoriality that presumes federal statutes apply within the U.S.
The United States Patent and Trademark Office celebrates a milestone today as it issues United States Patent No. 10,000,000 to the Raytheon Company for "Coherent LADAR Using Intra-Pixel Quadrature Detection." The patent is due to be signed by President Trump and will be the first patent to bear the USPTO's new patent cover design.
In Oil States Energy Services, LLC v. Greene’s Energy Group, LLC, et al., the Supreme Court ruled that an inter partes review (IPR) proceeding does not violate the Constitutional right to be heard in court. But that decision did not consider whether an IPR—a procedure in effect only since September 16, 2012—could be applied to patents filed prior to that date. In fact, the Supreme Court expressly reserved that issue of “retroactive application” for a future case. That is, the Court acknowledged there is a potential controversy regarding the application of IPR to patents filed before the effective date of the IPR procedure.
So, are patents that were filed prior to September 16, 2012, subject to IPR? If not, does that mean those patents are not subject to any inter partes challenge at the PTO? Or does that mean those patents may still be subject to an inter partes reexamination, as that proceeding existed prior to September 16, 2012?
Since the Supreme Court expressly reserved this issue for future cases, and since the IPR procedure remains a popular option, it is likely the Federal Circuit will weigh in on the issue before too long. Which aspects will the Federal Circuit find compelling?
-The reliance on the pre-IPR patent system by inventors who chose not to protect their invention through trade secrets?
-Statistical data that illustrates different substantive results between inter partes reexaminations and inter partes reviews?
-The strength or weakness of the particular patents before the court?
The statute that created the IPR defines that proceeding to apply to “any patent issued before, on, or after that effective date.” Pub. L. 112-29, § 6(c)(2). But with the express reservation by the Supreme Court, will the statute—or at least the retroactive application of it—survive?
On May 14, 2018, the Supreme Court issued a landmark 6-3 ruling in favor of striking down the Professional and Amateur Sports Protection Act (“PASPA”), which came into effect in 1992. PASPA was a federal law that barred state-authorized sports gambling on baseball, basketball, football and several other sports; a few states, however, and particularly Nevada, were exempted from the law because they had approved some form of sports wagering prior to when the law was enacted.
The decision in Murphy v. Ncaa, Nos. 16-476, 16-477, 2018 U.S. LEXIS 2805 (May 14, 2018) originated in a case from New Jersey, where the state argued that PASPA violated the Tenth Amendment because it was essentially compelling states to prohibit sports wagering. Writing for the majority, Justice Alito held that “[j]ust as Congress lacks the power to order a state legislature not to enact a law authorizing sports gambling, it may not order a state legislature to refrain from enacting a law licensing sports gambling.” Id. at 40-41. With the federal ban on sports gambling lifted, states are now given the green-light to legalize sports betting if they choose. In the months leading up to the high court’s decision – and assuming that PASPA would be struck down – various research firms estimated that at least 30 different states would likely offer sports betting within the next five years.
Public Domain Day, January 1 in the U.S., marks the end of term of copyright protection for all copyrights expiring within the year. For the last 20 years, however, Public Domain Day in the U.S. has been largely uneventful, as there has been an effective freeze on copyright expiration since 1998. January 1, 2019 will be the first Public Domain Day since then that copyrighted works see their expiration and transition into the public domain in the U.S.