Supreme Court Happenings - 1.22.19

Lloenflys

"Certainty is an illusion ..."
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I originally wrote this closer to the issuance of the opinion I'm discussing below, but then realized I had planned to make a request for my own paper to more easily archive my legal ramblings. This post will therefore serve as my first article in Lloenflys's Gavel. Welcome inside, all those who share an interest in the law!

The Court issued a single opinion on Tuesday, January 22 - and for the third time this month, the Opinion's author was Justice Thomas.

Helsinn Healthcare S.A. v. Teva Pharmaceuticals USA, Inc., 17-1229 (Federal Circuit)
MAJ: Thomas (unanimous)

Under the America Invents Act, no one can receive a patent for an invention that was "in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention." 35 U.S.C. 102(a)(1). In this case, the Court had to decide whether this provision barred a patent where an invention was sold to a third party when there is a contractual obligation to keep the invention confidential. The resolution turns on whether such a circumstance rendered the invention "on sale" or not under the meaning of the AIA.

The Petitioner in this case is a Swiss company that invented a drug for treating chemotherapy-induced nausea and vomiting. To market and distribute the medicine in the United States, the Petitioner entered into marketing and distribution agreements with an American company for 0.25 mg and 0.75 mg doses of the drug. Two years later, in 2003, the Petitioner sought a patent, which was granted. When the Respondent sought to bring to market a drug based on the same invention in 2011, the case ended up in front of first a federal District Court (which ruled in favor of the Petitioner), and then the Federal Circuit Court of Appeals (which ruled in favor of the Respondents).

The Court determined that the "on sale" bar for patents, which had been part of US Patent law since 1836, applied to this case. When the Patent law was updated in 2011, it retained the basic character of the "on sale" provision and the caselaw that went with it. The Federal Circuit had never answered this question directly on point, but it had regularly ruled that sales - public or not, secret or open - violated the requirements of the Patent Act and invalidated any potential patent for the invention. The Petitioner argued that by adding the phrase "or otherwise available to the public" to the "on sale" language in the Patent Act, the legislature was making no attempt to overturn the substantial body of precedent on the meaning of "on sale."

While I am hardly an expert on patent law, this decision seems correct. The focus of the statutory language is on whether there was a "sale," and there most assuredly was a sale here. To go further and read in a non-present requirement runs counter to the purpose of the Patent Act, which is to make sure that items are not patented once they have been on sale. Since that sale clearly happened, there's really no strong counter argument. The fact that this case was decided unanimously by the Court is a pretty good indication that this was an easy call under the law.
 
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Nothing about Alito's temporary stay of the LA abortion law? :p
 
Nothing about Alito's temporary stay of the LA abortion law? :p

I guarantee I'll be writing about it as the case progresses, but the law has been stayed since 2014 so while it's news in the sense that ALITO did it, it was actually kind of a routine stay. I'll try to listen to oral arguments in the case and give my thoughts though!
 
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