The Supreme Court is currently posed with the question: Does the confidential sale of an invention disqualify that invention from later patenting? Helsinn Healthcare S.A. v. Teva Pharm. USA, Inc., 138 S.Ct. 2678 (2018).
The patent statute does not directly address this question, but does state that an invention is precluded from patenting if that invention was “on sale” or “in public use” prior to the filing date for that patent application. Years of case law have added to the meanings of these terms. But now there is an additional term, “or otherwise available to the public.” 35 U.S.C. § 102(a)(1). Under which circumstances does this new term preclude patenting? Circumstances that are applicable to the certified question for the Court?
The Supreme Court has previously ruled that public use of an invention will not preclude patenting if the public use is for experimentation. Pfaff v. Wells Elecs., 525 U.S. 55, (1998). That Court qualified the statutory language, reading in the experimentation use. But that Court did not rule on the “on sale” criteria except to identify a distinction between experimental use and “products sold commercially.” Is there a similar qualification of a commercial sale, supported by precedent and legislative history, that can exempt a confidential sale from being barred from patenting?
And where would “otherwise available to the public” fit in here? Does “otherwise” mean that the previous items in the list, such as “on sale,” are also to be understood as “available to the public?” Or is it a modern catch-all for new patentability conditions that were not contemplated when the provision was written in 1952?
One measure of damages for patent infringement is compensation for lost profits of the patent owner. Additionally, a patent owner may enjoin the export of parts of a patented invention from the United States, if the parts will be assembled or used for an infringing purpose. However, the Supreme Court is set to answer the question of whether lost profits may be awarded to the patent owner for service contracts, performed outside the U.S., making use of those parts exported from the U.S. in the case of WesternGeco LLC v. ION Geophysical Corp. If the answer is affirmative, then the scope of damages available to a patent owner may be drastically expanded -- up to USD $93 Million in WesternGeco's case.
In the case of TC Heartland LLC v. Kraft Foods Group Brands LLC, the United States Supreme Court issued an opinion that is likely to limit the universe of available venues in which a patent holder can bring an action for infringement. Under the particular patent venue statute, the appropriate venue for patent infringement is anywhere infringement has occured, as long as the accused infringer has a regular and established place of business, or where the accused infringer "resides." In the context of a corporation, the definition of residing had been open to interpretation, but the TC Heartland opinion made explicit that residence under the patent venue statute refers only to the state of incorporation.
The Supreme Court recently held in SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC that the defense of laches cannot be invoked against a claim for damages brought within the statutory six-year limit. The decision comes at little surprise given the Court's ruling in Petrella v. Metro-Goldwyn-Mayer, which considered a similar provision of the Copyright Act. The Court reasoned that Congress set forth an express limitations period in the patent laws, and giving effect to laches within the statutory period would amount to judicial overriding. In his lone dissent, Justice Breyer noted that the decision ignores the application of laches to reign in abusive pre-litigation conduct by a patent holder who unreasonably delays suit, knowing he can collect damages for the previous six years of infringement.
The USPTO recently introduced its initiative to "fast track" patent applications which cover immunotherapies for cancer. The program is designed to support the White House's National Cancer Moonshot, which aims to eliminate cancer with a $1 Billion call to arms to find new therapies and techniques for prevention. Eligible applications will be prioritized for examination, and, once accepted into the program, applicants can expect to receive a final decision in one year or less.
In Petrella v. Metro-Goldwyn-Mayer, the "Raging Bull" case, the Supreme Court of the United States held that the defense of laches, whereby the accused infringer alleges that the right holder sat on its rights for too long before bringing suit, cannot be used to shorten the three-year statute of limitations set forth in the Copyright Act. In the case of SCA Hygeiene Products, AK v. First Quality Baby Products, LLC, the Supreme Court has recently taken up the question as it pertains to the defense of laches and the six-year statute of limitations set forth in the Patent Laws. Follow the case here for updates.
Today, the US PTO issued revisions to the Rules of Procedure for the Patent Trial and Appeal Board, at 81 Fed. Reg. 18750. This Federal Register Notice includes various changes to the duty of candor, the rules on pleading page limits, as well as grounds for instituting IPR and PGR proceedings.
In the unending saga of Samsung v. Apple, the Supreme Court has recently granted certiorari on a single question relating to damages in a case of design patent infringement, that is: where a design patent only covers a single component of an overall product, should a damages award be limited only to those profits attributed to that component? For more on this case, head over to SCOTUSblog.
The Supreme Court has granted writ of certiorari in a pending Inter Partes Review (IPR) challenge in Cuozzo Speed Tech v. Lee. The questions on review relate to whether the court of appeals erred in holding that in IPR proceedings, the PTAB may construe claims in an issued patent according to their broadest reasonable interpretation, rather than their plain and ordinary meaning, as well as on whether the PTAB's decision to institute an IPR proceeding is itself unreviewable.
The United States District Court for the Eastern District of Texas recently granted a Motion for Summary Judgment seeking to dismiss a patent infringement suit on the basis that the asserted claims are directed to ineligible subject matter under the two-step test recently reaffirmed by the United States Supreme Court in Alice Corporation Pty. Ltd. v. CLS Bank International, 134 S. Ct. 2347 (2014). Reportedly, one effect of the ruling was to dispose of 168 patent cases pursued by the same Plaintiff, asserting the same claims against separate Defendants. The Court has also requested briefing on an award of attorney's fees.