Posts in IP News

Industry Reaction to Helsinn Healthcare v. Teva Pharmaceuticals Oral Arguments

On Tuesday, December 4th, oral arguments were held before the U.S. Supreme Court in Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA. The nation’s highest court will determine whether a secret sale of an invention, or a sale of a technology under terms that require the invention to remain confidential, triggers the on-sale bar under 35 U.S.C. § 102(a)(1), thereby preventing the invention from being patented. With this question squarely before the Supreme Court, several members of the legal industry who are watching this case offer their views on the major takeaways and the potential consequences of the Supreme Court’s decision, which will issue next year.

Proceed with Caution When Acquiring a Licensor’s Patents

All too often, the prospective licensee/purported infringer usually doesn’t begin its efforts to acquire the patent(s) until after making disparaging statements about them during negotiations.  As an example, consider the time line discussed in the case of Gust, Inc. v. Alphacap Ventures, LLC, No. 2017-2414 (Fed. Cir. September 28, 2018) in which Alphacap Ventures, the purported infringer, demanded re-assignment of the patent owner’s patents as part of a settlement offer, but only after arguing for the invalidity of such patents under 35 U.S.C. § 101… While disparaging the patents question might serve a useful purpose in reducing their value, such disparaging statements will likely haunt the new owner during subsequent assertion assuming the new owner conceals such statements because of their potentially harmful nature. 

Celebrating Innovation: IP Laws Encourage Innovation and Entrepreneurship

Without intellectual property protections it makes it impossible for an innovator to compete, raise money, and succeed in business. That was a story told by Joe Kiani, Founder, Chairman and CEO of Masimo, who receive the IPO Education Foundation’s first IP Champion Award. “While the IP laws are still better than any other country, they aren’t as good as they used to be,” Kiani said on the video introducing himself before receiving the IP Champion Award. Kiani would explain that he doesn’t think of what IP laws mean to Massimo today, but what they would mean for Massimo back in 1980. IP laws encourage innovation and entrepreneurship, he explained.

Federal Circuit Affirms $140M Reasonable Royalty for Sprint in Nonprecedential Decision

The Federal Circuit upheld the district court’s damages award of approximately $140 million for Sprint after Time Warner was found to infringe claims of five patents covering technologies related to methods for linking circuit-switched and packet-switched networks within a telecommunications system. Despite the nonprecedential designation, Circuit Judge Haldane Mayer issued a dissenting opinion reflecting his views that the damages award should be vacated and the asserted patent claims found invalid for failing the written description requirement… The Federal Circuit majority also disagreed with Time Warner that the references to the 25 percent rule of thumb in the 2007 Vonage verdict made it inadmissible as evidence to the jury in district court.

The Administration’s Draft ROI Report: A Promising Roadmap for Accelerating Tech Transfer

After months of anticipation, the just released draft paper Return on Investment Initiative to Advance the President’s Management Agenda: Unleashing American Innovation signals that the Administration is serious about addressing a wide range of long neglected issues undermining effective technology commercialization.The paper, generated under the leadership of Commerce Under Secretary Walter Copan, who heads the National Institute of Standards and Technology (NIST), is “a discussion document”  based on feedback from a series of public meetings and written comments for improving the return on investment from $150 B spent annually on government-supported R&D… The suggested action is to “authorize scientists and engineers at Federal Laboratories to engage in entrepreneurial activities that support technology transfer and commercialization.”… The report effectively addresses a wide variety of problems in the system. Many have lingered for decades but the government lacked the leadership and the will to address them. It looks like that may be ending. That’s a good thing for American taxpayers.

ITC Misapplied Res Judicata, Can Modify Penalty After Asserted Patent Claims Found Invalid

The Federal Circuit panel of Chief Judge Sharon Prost and Circuit Judges Jimmie Reyna and Kimberly Moore determined that the ITC erred in applying res judicata to deny the petition without considering the effect of district court litigation which invalidated the claims asserted in the Section 337 proceeding… Ultimately, the Federal Circuit ruled that the ITC is not barred from reassessing the EPROM factors and determining whether to modify or rescind the civil penalty based on the final judgment of invalidity. The ITC’s decision was, therefore, reversed and the case remanded for the Commission to consider whether to rescind or modify the civil penalty in light of the final judgment of invalidity of the relevant claims.