Posts Tagged: "U.S. Court of Appeals for the First Circuit"

On June 14, the U.S. Court of Appeals for the First Circuit issued a decision in Markham Concepts, Inc. v. Hasbro, Inc. affirming a lower court’s ruling that the game design firm that developed classic board game, “The Game of Life,” possessed no termination rights in Hasbro’s copyright to that game. In so ruling, the First Circuit reiterated that the “instance and expense” test to analyze work for hire status applies to works governed by the Copyright Act of 1909, and found that the district court properly applied that test in determining that Markham’s successors-in-interest had no termination rights.

Last week, the U.S. Court of Appeals for the First Circuit affirmed a district court ruling denying a request for declaratory judgment by Covidien LP and Covidien Holding Inc. (collectively, “Covidien”) against appellee Brady Esch, a former employee who assigned a medical device patent to a company he founded. After a nine-day trial, the jury awarded Covidien nearly $800,000, finding Esch incurred in a breach of confidential information. Covidien subsequently moved for a declaratory judgment asking the court to require Esch to assign later inventions. The district court denied this request. The First Circuit was tasked with determining whether the district court abused its discretion. Finding it did not, they affirmed.

The U.S. Court of Appeals for the First Circuit has made brand companies think twice about creating patent thickets in the Orange Book by resuscitating an antitrust suit against Sanofi by direct purchasers of insulin glargine. In re Lantus Direct Purchaser Antitrust Litigation (Feb. 2020). The Sanofi decision provides a possible opportunity to seek antitrust liability against brand companies for abusing Food and Drug Administration (FDA) regulations. The decisions should make branded companies reconsider over-listing patents in the Orange Book, and potentially slowing down generic competition. While this decision sets the stage for further fights over what patents should not be listed as covering approved “drugs,” it also sets a clear test for courts to consider when evaluating other tactics that brands have used to create regulatory delays to stall approval of potential rival products.